Federal Circuit Patent Updates, 10/13/20 – 10/26/20

• Arthur Coviello, Omar Khan, William McElwain
• 10.27.2020

Precedential Federal Circuit Opinions

1. WARSAW ORTHOPEDIC, INC. v. SASSO [OPINION] (2019-1583,10/14/20) (Newman, Schall, Wallach)
   Newman, J. Affirming dismissal of declaratory judgment action without prejudice.  “The district court dismissed the complaint without prejudice, applying the doctrine of federal court ‘abstention’ in view of the concurrent action in Indiana state court between the same parties concerning the same dispute…  We conclude that the district court acted within its discretion, abstaining without prejudice, on the facts hereof, for the question of contract interpretation is on appeal in the Indiana state court, and federal action based on the federal issues is not precluded.”  The state court excluded the issue of validity from a trial on royalties and found that reexaminations that had canceled claims of the relevant patents were not relevant to the trial.  Regarding abstention, the Court found that the district court’s application of the Wilton/Brillhart standard “was reasonable on the facts here, for there had already been a trial in the state court and it is now on appeal at the Indiana Court of Appeals.” WilmerHale represented the plaintiffs-appellants, Warsaw Orthopedic, Inc., Medtronic, Inc., and Medtronic Sofamor Danek, Inc.
2. ST. JUDE MEDICAL, LLC v. SNYDERS HEART VALVE LLC [OPINION] (2018-1763, 10/23/20) (Dyk, Moore, Taranto)
   Taranto, J.  Affirming Board’s determination in IPR that claims related to artificial heart valve were not anticipated.  The Court rejected petitioner’s argument that “no width restriction can be part of the ordinary skilled artisan’s understanding of the term ‘band.’”  Also reversing the Board’s decision on other claims and finding them not anticipated under the correct construction of a “sized and shaped” limitation:  “Those passages [in the specification] make it unreasonable to read the ‘sized and shaped for insertion’ claim language as covering an artificial valve fitted for the space left after removing the native valve.”  Also affirming Board’s decision that other claims were not obvious.  Although the Board agreed with petitioner that a skilled artisan would have been motivated to combine two references, the petitioner failed to establish that an artisan would have made the particular proposed combination.
3. ST. JUDE MEDICAL, LLC v. SNYDERS HEART VALVE LLC [OPINION] (2018-1763, 10/23/20) (Dyk, Moore, Taranto)
   Dyk, J.  Denying motion to stay the mandate pending filing of a petition for writ of certiorari because “the irreparable injury requirement is not satisfied here.”  Moore, J. concurred, writing “Today, we adopt the three-prong test for staying a mandate adopted by our sister circuits and several individual Justices…  While [plaintiff] has established a reasonable probability that certiorari will be granted and a fair prospect that the majority of the Court will reverse, it fails to establish irreparable harm and thus a stay is not warranted.”
4. TECSEC, INC. v. ADOBE INC. [OPINION] (2019-2192, 2019-2258, 10/23/20) (Prost, Reyna, Taranto)
   Taranto, J.  Reversing decision to exclude evidence regarding inducement and remanding.  That a (later reversed) claim construction provided an objectively reasonable belief in noninfringement was insufficient to eliminate a claim of inducement because the defendant’s subjective belief remained at issue:  “As a logical matter, a defendant may have the liability-supporting subjective state of mind even if a person could believe, with objective reasonableness (though wrongly), that the induced conduct was not infringing.”  Also rejecting “challenges to the district court’s reduction of the jury’s damages award to zero…  The statute does not require an award of damages if none are proven that adequately tie a dollar amount to the infringing acts.”  Also affirming decision that claims were not invalid under § 101 and rejecting challenge to jury instructions regarding infringement.