CAFC reverses Summary Judgment on inherent anticipation, affirms no Inequitable Conduct

Federal CircuitU.S. Water Servs., Inc. v. Novozymes A/S, Nos. 2015-1950, 2015-1967, 2016 U.S. App. LEXIS 22244 (Fed. Cir. Dec. 15, 2016)(Before Wallach, Hughes, and Stoll, J.)(Opinion for the court, Wallach, J.).

U.S. Water Services and Roy Johnson sued Novozymes A/S and Novozymes North America in the Western District of Wisconsin. At issue was a method patent disclosing the reduction of a byproduct that leads to fouling of processing equipment during alcohol production (i.e., ethanol). The patented method reduces the byproduct by introducing an enzyme, phytase.

The district court found that either of two prior art references inherently anticipated the asserted claims by disclosing the addition of phytase. However, there was a disputed material fact. The Federal Circuit pointed to expert testimony that disputed whether adding phytase according to the references would necessarily lead to reduction of the byproduct. By disregarding this expert testimony, the district court improperly made credibility determinations and weighed evidence during its summary judgment analysis. Thus, the judgment was reversed.

Next, Novozymes argued that it was inequitable conduct by U.S. Water to broaden certain claims in an amendment, because the amendment contradicted positions U.S. Water took in a parent patent during related litigation, and the contradiction was not disclosed to the examiner. The patent in suit required specific timing for the addition of phytase, while the amended application did not. The Federal Circuit affirmed the district court’s summary judgment of no inequitable conduct. It agreed that the examiner was aware of the differences between the patent and the application. Thus, Novozymes could not show that the patent would not have issued but for the examiner’s ignorance of a contradictory stance by U.S. Water. Because there was no genuine dispute about the materiality requirement, the Court did not reach the finding of no intent to deceive the USPTO.

It is inappropriate for a trial court to discount material expert testimony so as to weigh the evidence in favor of a party seeking summary judgment. The presence of a genuine dispute precludes summary judgment in such cases. … Failure to disclose arguments concerning claims of a different scope in a different patent application was not inequitable conduct when differences were apparent to the Examiner.

The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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