Motivation to Modify Under Obviousness Standard Does Not Need to Align with Patentee’s Goal
In Honeywell International Inc. v. 3G Licensing, S.A., Appeal No. 23-1354, the Federal Circuit held that under the obviousness standard of 35 U.S.C. § 103, the motivation to modify prior art does not need to be the same as the patentee’s motivation.
Honeywell filed a petition for inter partes review challenging claims of a patent owned by 3G Licensing, arguing that the claims were obvious in view of two prior art references. The Board ruled in favor of 3G Licensing, finding that Honeywell failed to demonstrate sufficient motivation for a person of ordinary skill in the art to modify the first reference or to combine the approaches described in the two references.
The Federal Circuit reviewed the Board’s determination de novo and reversed its decision, identifying several errors. The Federal Circuit reiterated that the motivation to modify prior art does not need to align with the patentee’s specific motivations, and therefore, it was an error to rely on the patentee’s goal in determining obviousness. Further, the Federal Circuit also relied on unrebutted expert testimony from Honeywell to find that the Board’s conclusion that a person of ordinary skill in the art would not understand certain modifications to the reference was unsupported by substantial evidence. The Federal Circuit also found that the Board applied the wrong standard by conflating obviousness with anticipation. Finally, the Federal Circuit found that the Board erred by failing to recognize that the claimed modification needed only to be desirable in light of the prior art and not the “best” or “preferred” approach. The Federal Circuit, therefore, reversed the Board’s decision.
In dissent, Judge Stoll argued that the Federal Circuit exceeded its appellate role by reweighing evidence and making factual determinations, contending the proper remedy was to vacate and remand the Board’s decision for further review rather than outright reversal.
Later-Existing State of The Art Can Not “Reach Back” to Invalidate Claims
In Novartis Pharmaceuticals Corporation v. Torrent Pharma Inc., Appeal No. 23-2218, the Federal Circuit held that patent was not required to include written description of later-discovered chemical complexes, even though claims were construed to arguably cover those later-discovered complexes.
Patentee Novartis sued Defendants, including Appellee MSN, for infringement of a patent claiming a pharmaceutical composition. At claim construction, the parties disputed the claim term “wherein said [valsartan and sacubitril] are administered in combination.” MSN argued that the term limited to claim to administration of valsartan and sacubitril as two separate components rather than a complex, because MSN’s product included valsartan and sacubitril as a complex. The district court rejected MSN’s position, instead construing the term based on its plain and ordinary meaning, because the intrinsic record was “silent on whether sacubitril and valsartan must be separate (and not complexed).” MSN stipulated to infringement under this construction and the case proceeded to a bench trial on invalidity. The district court determined that the patent was invalid for lack of written description on valsartan and sacubitril complexes, which were not known at the time the patent was filed.
On appeal, the Federal Circuit reversed the district court’s finding of lack of adequate written description. The Federal Circuit criticized the district court for conflating the issues of patentability and infringement, emphasizing that the written description inquiry is about the invention that is specifically claimed, rather than what the claim is construed to cover. Here, the claim recited a combination of valsartan and sacubitril, which was described throughout the specification. The Court reasoned that the fact that the patent did not describe the complexed form of valsartan and sacubitril did not affect the validity of the patent, because the complex was not “what is claimed.”
A Published Patent Application Is IPR Prior Art as of its Filing Date
In Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., Appeal No. 23-2346, the Federal Circuit held that in an IPR, a patent application is considered a “printed publication” as of the application’s filing date, not its publication date.
Samsung filed a petition for IPR of a Lynk Labs patent, challenging various claims as obvious. Several of Samsung’s asserted grounds of unpatentability relied on a patent application which was filed before, but published after, Lynk Labs’ priority date. Lynk Labs argued that an IPR can only be instituted based on prior art “printed publications,” and that the reference was not a “printed publication” in the prior-art period because it published afterward. The Patent Trial and Appeal Board found the challenged claims unpatentable for obviousness based on the published patent application reference. Lynk Labs appealed.
The Federal Circuit affirmed. The court noted the parties agreed the published patent application reference was a printed publication and was thus a type of reference that can be used as the basis of an IPR challenge under 35 U.S.C. § 311(b). The Federal Circuit further noted that, under 35 U.S.C. § 102(e)(1), a published patent application is deemed prior art as of its filing date. The court held that reading these two provisions together, in an IPR, a published patent application can be deemed a printed publication as of its filing date.
Reversal on Reverse Doctrine of Equivalents?
In Steuben Foods, Inc. v. Shibuya Hoppmann Corporation, Appeal No. 23-1790, the Federal Circuit held that conflicting expert testimony constitutes substantial evidence for the jury’s rejection of a reverse doctrine of equivalents argument.
Plaintiff Steuben sued Defendant Shibuya for infringing three patents. After a jury trial found the patents valid and infringed, the defendant moved for JMOL of noninfringement. In particular, for one of the patents, the defendant argued that its product did not infringe under the reverse doctrine of equivalents (RDOE), which is the concept that a product that is sufficiently different in its principle of operation from that of the asserted claims does not infringe. The district court granted the motion, finding that the defendant’s expert provided testimony supporting the RDOE argument and that the plaintiff’s contrary expert testimony was wrong as a matter of law. Plaintiff appealed.
The Federal Circuit reversed and agreed with the plaintiff that the district court erred in relying on RDOE to overturn the jury’s verdict of infringement. The Court noted the parties’ dispute as to whether RDOE, a common law doctrine, survived the 1952 Patent Act and stated that it found arguments that RDOE does not survive compelling. The Court also noted it has never affirmed a decision finding noninfringement based on RDOE. Here, without deciding whether RDOE survives, the Federal Circuit stated that the plaintiff’s expert testimony constituted substantial evidence for the jury’s rejection of the defendant’s RDOE argument. The Court stated that, in its view, the jury merely heard conflicting expert testimony regarding principle of operation and must be presumed to have resolved the conflict in favor of the verdict. Accordingly, the Federal Circuit reversed and reinstated the jury’s verdict of infringement.
The Patent Trial and Appeal Board Has Jurisdiction Over IPRs Challenging Expired Patents
In Apple Inc. v. Gesture Technology Partners, LLC., Appeal No. 23-1501, the Federal Circuit held that The Patent Trial and Appeal Board has jurisdiction over IPRs concerning expired patents because the review of such patents involves adjudication of a public right.
Apple filed an IPR petition challenging an expired Gesture patent relating to image-capture technology. The Board concluded that challenged claims 1-3 and 5-7 were unpatentable as obvious, but declined to find claim 4 unpatentable. Apple appealed and Gesture cross-appealed.
Gesture argued that the Board did not have jurisdiction over the IPR because the ’949 patent expired before Apple filed its petition. The Federal Circuit rejected this argument because review of a patent involves the adjudication of a public right, and even an expired patent confers a limited set of rights on the patentee. Notably, Gesture failed to explain why an IPR, which could affect the patentee’s ability to recover damages for infringement that occurred during the life of the patent, should fall outside the scope of the public-rights doctrine, merely because the patentee’s prospective right to exclude others has terminated.
The Federal Circuit also affirmed the Board’s conclusion that claims 1-3 and 5-7 were unpatentable, but reversed the Board’s conclusion that claim 4 was not unpatentable. Apple argued the Board had improperly ignored its expert’s supplemental testimony which, if considered, showed that the claimed relationship between certain components would have been desirable. The Board had refused to consider the expert’s supplemental testimony because it was not contained in the Apple’s petition. The Federal Circuit disagreed, ruling that Apple’s expert had simply expanded on an argument expressly raised in the petition. The Federal Circuit further held that, in view of the expert’s supplemental testimony, there could be no reasonable dispute that claim 4 was unpatentable as obvious.
Personal Jurisdiction Exists Based On aBLA filing and Nationwide Distribution Channels
In Regeneron Pharmaceuticals, Inc. v. Mylan Pharmaceuticals Inc., Appeal No. 24-1965 the Federal Circuit held that the district court could exercise personal jurisdiction over a foreign defendant based on its aBLA filing and elaborate distribution agreement that did not carve out specific jurisdiction.
Regeneron owns patents covering EYLEA—a brand-name therapeutic product for treating eye disease. Samsung Bioepis (“SB”) filed an abbreviated Biologics License Application (aBLA) with the FDA, seeking approval to market its EYLEA biosimilar. Regeneron sued SB in the Northern District of West Virginia for patent infringement. The District Court concluded that it had personal jurisdiction over SB and granted Regeneron’s motion for a preliminary injunction. SB appealed.
SB, a South Korean company without any facilities or employees in the United States, argued that the district court lacked personal jurisdiction over SB because it would not distribute, market, or sell its biosimilar product in West Virginia. SB highlighted its distribution agreement with Biogen, which gave Biogen the exclusive rights to commercialize SB’s biosimilar in the United States. Thus, SB argued that it would sell its biosimilar to Biogen in a state other than West Virginia, and Biogen would then distribute the product. SB also argued that there was no evidence that West Virginia was specifically targeted.
The Federal Circuit rejected SB’s arguments, finding that SB’s aBLA filing with the FDA was evidence of SB’s plan to market its biosimilar product throughout the United States. The Federal Circuit also emphasized that the distribution agreement between SB and Biogen did not carve out West Virginia from the market. The Federal Circuit also concluded that there is no reason under the constitutional standard to require singling-out evidence when there is persuasive evidence of nationwide targeting without a carve-out. Therefore, the exercise of personal jurisdiction was proper.
Finally, the Federal Circuit affirmed the district court’s grant of a preliminary injunction against SB because SB failed to present a substantial question of validity.