Posts Tagged: "Judge Todd Hughes"

The sole modification in the figure amended was to change one of the 13 amino acids in the structure of daptomycin from an L-stereoisomer to a D-stereoisomer of asparagine. At the time of the invention, it was universally believed that daptomycin included the L-stereoisomer. Not until years later did Eli Lilly discover the error. In any case, the certificate of correction did not affect the validity of the patent, because daptomycin had been described in numerous ways in the application, including by referencing another application that described how to make daptomycin, which would have inherently included the D-stereoisomer.

The issue on appeal was whether a mixture comprising at least 92% of the (6S) isomer of leucovorin would have been obvious when both the 50/50 mixture of isomers and the pure (6S) isomer were known in the art. Affirming the district court, the Federal Circuit agreed that “one of skill would have been motivated to modify the prior art 50/50 mixture to make the claimed mixture,” especially when it was known that the desired activity lies with the (6S) isomer. The Court found no evidence indicating that the claimed mixture “possess[ed] unexpected advantages over the prior art pure material” so as to overcome obviousness.

Despite the Supreme Court ruling that laches is no defense to a copyright infringement action brought during the statute of limitations, the Federal Circuit ruled laches can bar recovery of legal remedies in patent infringement. The Federal Circuit explained that the 1952 Patent Act codified the common law rule, meaning that laches was codified as a defense under 35 U.S.C. 282.
The Federal Circuit, sitting en banc, followed the common law principle that, ”[w]hen a statute covers an issue previously governed by the common law, [the Court] must presume that Congress intended to retain the substance of the common law.” The Federal Circuit also ruled that laches does not preclude an ongoing royalty.

Summit 6 LLC (“Summit”) sued Samsung Electronics Co. Ltd. and Samsung Telecommunications America, LLC (collectively “Samsung”) and others alleging infringement of U.S. Patent No. 7,765,482 (“the ’482 patent”), which relates to the processing of digital photos and other digital content before being transmitted over a network by client devices (e.g., cell phones). Summit’s expert testimony and the license resulting in settlement for another defendant, RIM, supported the damages verdict. The RIM license was comparable because both RIM and Samsung sell camera phones having the accused MMS functionality.

While Dome’s argument against obviousness based on Tanaka teaching away was plausible, it was not sufficient to overcome the district court’s factual findings that a person of ordinary skill would have been motivated to combine the identified prior art to arrive at the claimed invention. Accordingly, the Federal Circuit affirmed.

The Federal Circuit affirmed the TTAB, noting that substantial evidence supported the TTAB’s findings. Where, as here, the disputed term is highly descriptive, the TTAB acted within its discretion in refusing to accept evidence of five years’ use as prima facie evidence of distinctiveness.

The en banc Court reversed the previous panel, and expanded the circumstances under which an alleged infringer may be liable under §271(a). In addition to circumstances identified by the panel, liability may arise if “an alleged infringer conditions participation in an activity or the receipt of a benefit upon performance of a step or steps of the patented method, and establishes the manner or timing of that performance.” When that standard is satisfied, the actions of a third party may be attributed to the alleged infringer, who thereby directly infringes under §271(a), even though there was no “mastermind” acting though a formal agent.

The Federal Circuit affirmed. The asserted claims were not obvious because, although the claimed amounts (0.01% bimatoprost and 200 ppm BAK) fell within the range disclosed in the prior art (0.001-1% bimatoprost and 0-1000 ppm BAK), Allergan “had produced ample evidence of teaching away and unexpected results, and that such evidence fully support[ed] a conclusion of non-obviousness.” For example: (1) BAK is a toxin and “should be minimized in ophthalmic formulations to avoid safety problems,” (2) BAK decreases permeability of bimatoprost, and (3) BAK causes hyperemia at high concentrations. Thus, the prior art “’criticize[d], discredit[ed], or otherwise discourage[d]’ the use of 200 ppm BAK in a bimatoprost formulation.”