Precedential Federal Circuit Opinions
1. MEDYTOX, INC. v. GALDERMA S.A. [OPINION] (2022-1165, 6/27/2023) (Dyk, Reyna, and Stark)
Reyna, J. The Court affirmed a decision by the PTAB in a post-grant review denying an appellant’s motion to substitute claims of a patent directed to a botulinum toxin composition. During the PGR, the Appellant filed a motion to amend, seeking to cancel the challenged claims of the patent and substitute other claims. The Appellee opposed the motion, arguing that the substitute claims added new matter “because the claims covered compounds with a 16-week responder rate between 50% and 100% but the specification only disclosed responder rates of up to 62%.”
The PTAB issued a Preliminary Guidance and gave its “preliminary view” that the Appellant’s “proposed responder-rate limitation did not add new matter.” In its Final Written Decision, the PTAB “interpreted the claim differently,” and ultimately, “the Board found that the substitute claims impermissibly introduced new matter with the inclusion of the responder rate limitation and thus, failed to meet the requirements for revised motions to amend.”
On appeal, Appellant “assert[ed] that the Board’s revision of its claim construction of the responder rate limitation made between its Preliminary Guidance and FWD” was “arbitrary and capricious.” The Court affirmed the PTAB’s final claim construction, and then held that “the Board’s decision to change its claim construction for the responder rate limitation was not arbitrary and capricious” because “[t]he extrinsic record relied on by the Board was developed after the Board’s Preliminary Guidance was issued.” The Court also rejected the Appellant’s argument “that it was prevented from a full and fair opportunity to litigate the case because the Board’s reversal was ‘solely based on the Board’s about-face on the responder rate limitation.’”
The Court held that the Appellant “was able to present its case on the issues before the Board, including claim construction, and again when it filed a Request for Director Review or Panel Rehearing,” and thus, “the Board did not violate due process or the APA.”
2. LKQ CORPORATION v. GM GLOBAL TECHNOLOGY OPERATIONS LLC [ORDER] (2021-2348, 6/30/2023) (Moore, Newman, Lourie, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stoll, and Stark)
Per Curiam. The Court granted the petition for rehearing en banc regarding the standard for proving obviousness for design patents. The Court vacated the panel opinion issued on January 20, 2023 (which had affirmed a decision by the PTAB that Appellants had failed to show by a preponderance of the evidence that U.S. Patent D797,625 was anticipated or would have been obvious over the cited prior art), and reinstated the appeal. The Court ordered the parties to address questions including whether “KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), overrule[s] or abrogate[s] In re Rosen, 673 F.2d 388 (CCPA 1982), and Durling v. Spectrum Furniture Co., Inc., 101 F.3d 100 (Fed. Cir. 1996).” The Court also asked for briefing on, “[a]ssuming that KSR neither overrules nor abrogates Rosen and Durling,” whether “KSR nonetheless appl[ies] to design patents and suggest[s] the court should eliminate or modify the Rosen-Durling test.”
Judge Cunningham did not participate.
3. INGURAN, LLC v. ABS GLOBAL, INC. [OPINION] (2022-1385, 7/05/2023) (Lourie, Bryson, and Reyna)
Reyna, J. The Court reversed a dismissal by the district court of the induced infringement suit brought by Appellant. In an earlier judgement, “[j]udgment [wa]s entered for [Appellee’s] future infringement” of the U.S. Patent No. 8,206,987 (the “’987 patent”), “granting [Appellant] an on-going royalty … per straw of sexed semen sold by [Appellee] that was processed with the infringing GSS technology.” In the case on appeal, Appellant “asserted additional patent infringement claims on the same ’987 patent,” including induced infringement “based on [Appellee’s] selling or licensing GSS machines to third parties.” The district court found that Appellant’s claim that Appellee indirectly infringed the ’987 patent “was precluded by res judicata based on an earlier judgment the court entered against Appellee.”
The Court reversed, holding that “the induced infringement claim brought in [the case on appeal] [wa]s not precluded by the direct infringement claim brought in [the earlier case] because the claims [we]re not based on the same transactional facts.” “Framed differently, the evidence that [Appellant] needs to support a claim for direct infringement by [Appellee] is different from the evidence required to sustain a claim of induced infringement by third parties.” The Court also “agree[d] with [Appellant] that it could not have asserted an inducement claim during [the earlier case],” partly because “[a]t the time of the [earlier] trial, [Appellee] had not yet commercially launched its GSS System.”
In addition, “the district court found that the ongoing royalty rate of [the earlier case] reached induced infringement by [Appellee],” which the Court also reversed. The Court held that the district court “improperly broadened the scope of the [earlier] judgment to address induced infringement activity,” and that “the scope of [the] direct infringement allegations” in the earlier case could not “reasonably be expanded to cover actions of third-party licensees using GSS technology to make their own straws.”
4. AXONICS, INC. v. MEDTRONIC, INC. [OPINION] (2022-1451, 2022-1452, 7/10/2023) (Lourie, Dyk, and Taranto)
Taranto, J. The Court vacated and remanded the PTAB’s IPR decisions that Appellant had failed to prove any of the challenged claims unpatentable. The PTAB found that Appellant had not “demonstrated” a motivation to combine the proposed prior art references because the challenged patents “address[ed] . . . sacral nerve stimulation,” while one of the prior art references “address[ed] . . . the trigeminal sensory root.” Thus, the PTAB found that there would have been no motivation to combine because the proposed combination “would not be feasible in the trigeminal nerve region.”
The Court held that “[t]he Board thus improperly limited the [proposed prior art] combination analysis to what would work in the trigeminal-nerve area.” “The proper inquiry is whether the relevant artisan would be motivated to make the combination to arrive at the claims’ actual limitations, which are not limited to the trigeminal-nerve context.”
“Relatedly,” the Court “also conclude[d] that the Board erred in its definition of ‘the relevant art’ as limited to medical leads for sacral-nerve stimulation.” “The [challenged] patent claims make no reference to sacral anatomy or sacral neuromodulation, and they [could] not be properly construed as so limited.”
