Rivera et al. v. International Trade Commission and Solofill, LLC (Intervenor)

Docket No. 2016-1841

May 23, 2017

Brief Summary: ITC decision of no § 337 violation because the asserted claims to a beverage brewer are invalid for lack of written description affirmed.

Summary: Rivera appealed ITC holding that all asserted claims of US 8,720,320 directed to “Pod Adaptor System for Single Service Beverge Brewers” invalid for lack of written description. The ‘320 patent identified “a need for brewers configured for cup-shaped cartridges” as used in Keurig® machines to “also be used to brew beverages from pods” and claimed a “beverage brewer, comprising: a brewing chamber”, a particular type of “container”, and other features. Rivera filed a complaint with the ITC regarding Solofill’s “beverage capsules…made to fit into a Keurig® brewer, and include an integrated mesh filter surrounding a space designed to accept loose coffee grounds.” In its initial decision, the Administrative Law Judge (“ALJ”) held “that Solofill did not directly infringe because [it] only imported the cartridges, and the claims required the combination of Solofill’s accused cartridges and a and a Keurig®-type brewer” and was not liable for induced or contributory infringement because it did not have pre-suit knowledge of the ‘320 patent, and therefore lacked the required mens rea for indirect infringement.” The ALJ also held that “Solofill had not proved invalidity of the ‘320 patent.” “On review, the Commission concluded there was no violation of § 337” because the asserted claims were invalid for lack of written description and certain claims were anticipated (different reasons). The FC panel explained that written description is a question of fact reviewed for substantial evidence on appeal from the ITC (SSIH Equip., FC 1983; Hynix, FC 2011 (must show clear and convincing evidence); Ariad, FC 2010 (“reasonably convey…that the inventor had possession of the claimed subject matter as of the filing date”)). “The basic issue in this case is whether the ‘pod adaptor assembly,’ ‘pod,’ and ‘receptable’ disclosures in the patent as filed, support” the claimed “container…adapted to hold brewing material”. The ITC concluded “the specification was entirely focused on a ‘pod adaptor assembly’ or ‘brewing chamber,’ and did not disclose a container that was itself a pod or that contained an integrated filter”, citing “the explicit definition of ‘pod’ in its Background section” as well as “the narrower ‘typical’ definitions”. The FC opinion explains that “[t]he parties agree that nothing in the ‘320 patent explicitly describes a pod adaptor assembly with a filter integrated into the cartridge” (Solofill’s product). And it found “no hint or discussion of a cartridge or pod adaptor assembly that also serves as the ‘pod’”, explaining that “[i]nstead, the specification explains how the cartridge may be adapted to accept a separate ‘pod’ to be used inside the cartridge” (“The disclosure of the ‘320 patent consistently describes an invention in which the ‘pod’ and the receptacle or container are distinct components…[w]hatever a ‘pod’ is, the specification indicates it is distinct from the receptacle….”) Rivera argued “that an ordinary artisan would read the broad definition of ‘pod’ as encompassing anything containing a water permeable material that contains brewing material, in whatever form” and “that the background knowledge…can supplement the teaching in the specification” but the FC panel disagreed (“an undisclosed configuration”; Boston Sci., FC 2011 and Falkner, FC 2006 (“essential genes” known in the art vs. Ariad, FC 2010 and ICU Medical, FC 2009 (“spikeless” medical valves not disclosed)). Thus, the ITC decision was affirmed (did not reach anticipation).

Posted in Contributory Infringement, Importation, Inducement to Infringe, Infringement, International Trade Commission, Written description | Leave a comment

Mylan Insitutional LLC and Apicore US LLC v. Aurobindo Pharma Ltd., et al.

Docket No. 2017-1645

May 19, 2017

Brief Summary: DC grant of preliminary injunction and finding of infringement Apicore’s “process patents” under the DOE reversed since the function-way-result test not appropriate under this chemical case. Grant of PI for infringement of compound patent affirmed.

Summary: Aurobindo appealed from DC grant of Mylan’s preliminary injunction (PI) regarding the accused isosulfan blue product (“ISB”, a dye for mapping lymph nodes) that allegedly infringes US 7,622,992; 8,969,616; and 9,353,050. The ‘992 and ‘616 patents are directed to a process for preparing ISB (“process patents”) and the ‘050 patent is directed to an ISB compound “having a purity of at least 99.0% by HPLC.” The DC found that Aurobindo “likely infringed the process patents under the” DOE and that it did not raise a substantial question of validity of the ‘050 patent (“by HPLC” not indefinite since it is “a common and well-understood way of designating or determining purity”; § 103 (no substantial question over the motivation to combine references, Mylan’s evidence regarding secondary considerations, Aurobindo admitted it used the ‘992 process); or, § 102(b) or (g)(2) (not anticipated by prior sales as it was not clear it was the same product)). The DC also found Apicore (the owner of the patents, Mylan is exclusive licensee) would be irreparably harmed without the PI (lost sales, lost R&D, price erosion, competition with infringer with “causal nexus”; balance of equities (Windsurfing, FC 1986) and public interest favored PI). The FC panel explained that the grant or denial of a PI “is within the sound discretion of a [DC]” (Amazon, FC 2001) to be overturned only “if ‘the court made a clear error of judgment in weighing relevant factors or exercised its discretion based upon an error of law or clearly erroneous factual findings” (Sanofi-Synthelabo, FC 2006; Winter, US 2008 (likelihood of success on merits, irreparable harm, balance of equities, public interest)).

The DC concluded it was “more likely than not” that Aurobindo’s product infringed the process patents because “manganese oxide and silver dioxide are equivalent in the context of” those patents, based in part on expert testimony. The FC panel disagreed with the DC’s analysis, noting there are few PI decisions based on DOE (Pfizer, FC 2005; Jeneric/Pentron, FC 2000) and that “the law on the [DOE] as applied to chemical materials is not clear”. It explained Graver Tank (US 1950) “set out two frameworks for evaluating equivalence”: the function-way-result test (“FWR”; “limitation-by-limitation”; applied by the DC here) and “the insubstantial differences test” and Warner-Jenkinson’s notes that “equivalence is not a ‘prisoner of formula’” and that FWR may not be an appropriate test for non-mechanical cases (but “leaving to the lower courts in future cases the choice of which to apply”). Here, the FC panel stated that the inapplicability of FWR “seems to be particularly true in the chemical arts” (e.g., “[h]ow a particular component of a composition, or substituent of a compound, functions in a human or animal body, or in what way, may not be known or even knowable (although, as technology evolves, that may change”; “the ‘function’ and ‘way’ of a particular limitation of a chemical process claim may remain vague and overlap.”; “‘way’ and ‘function’ may be synonymous”). It found the DC erred in its equivalents analysis under FWR (“there is room for sufficient doubt as to whether silver oxide and manganese dioxide oxidize isoleuco acid in the same way so as to satisfy the ‘way’ prong”) and suggested that “the court may wish to consider whether the substantially of the differences test may be more applicable in this case.”

Aurobindo argued the ‘050 claims are anticipated by prior sales by another company (Sigma) and that the DC “misread[] the factual content of the prior art.” But the FC panel explained that “what the prior art teaches is a question of fact” reviewed “with deference, especially at the preliminary injunction stage” and they “do not ‘reweigh evidence on appeal’” (In re NTP, FC 2011). The FC panel also found no error with the DC’s finding that Aurobindo did not raise a substantial question regarding motivation to combine the references or a reasonable expectation of success” because, e.g., “a purified compound is not always prima facie obvious over the [prior art] mixture’ if the process to arrive at the purified compound is itself of patentable weight” (“if the prior art teaches a mixture containing a compound but does not enable its purification, then the purified form of the compound may not have been obvious over the prior art mixture…although ISB was known in the prior art, the path to arrive at ISB with a purity of greater than 99.0% was not known before the relevant date of the ‘050 patent”; Aventis, FC 2007; Spectrum Pharm., FC 2015) and Mylan presented evidence of secondary considerations.

It also found no error with the DC’s indefiniteness analysis and that its irreparable harm analysis was correct (e.g., “causal nexus between Aurobindo’s infringement and Apircore’s harm”).

Posted in Anticipation (35 USC 102), Doctrine of equivalents, Infringement, Obviousness | Leave a comment

Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG

Docket No. 2016-2233 (IPR2015-00150)

May 11, 2017

Brief Summary: Board FWD of obviousness vacated and remanded because it failed to “set forth its reasoning in sufficient detail”.

Summary: Rovalma appealed PTAB IPR Final Written Decision finding the claims of US 8,557,056 relating to “methods for making steels with certain desired thermal conductivities” invalid as obvious. The Board instituted review based on Bohler’s proposed claim construction but adopted Rovalma’s construction in the FWD. The Board also found obviousness based on Rovalma’s own submissions; Bohler did not submit arguments based on Rovalma’s construction. The FC panel concluded “the Board set forth its reasoning in sufficient detail for us to determine what inferences it drew from Rovalma’s submissions” (SEC v. Chenery Corp., US 1943; Personal Web, FC 2017; Inre NuVasive, FC 2016; Consolidated Edison, US 1938), and it therefore could not “determine whether the Board’s decision was substantively supported and procedurally proper.” The ‘056 claims are to processes but in its Petition, “Bohler argued the claims should be construed to cover the specific chemical compositions described in the specification, whether or not created according to the process steps” and argued for obviousness of those compositions but not the steps of the claimed process. The Board instituted review and Rovalma’s Patent Owner Response “argued that the claims should be construed to require performance of the processes” and “submitted additional evidence and argument regarding thermoprocessing.” At Oral Argument, “the Board asked Rovalma to discuss the notion of whether it would have been obvious to create steel with the claimed thermal conductivities in light of the prior art references advanced by Bohler because: (a) those references disclosed the chemical compositions…and (b) Rovalma’s submissions showed that a person of ordinary skill in the art would have known how to optimize those compositions to achieve the desired properties”. In its finding of obviousness, “[t]he Board relied on Rovalma’s own submissions for key findings about what a relevant skilled artisan would have taken from the Bohelr-asserted prior art” (e.g., “would have ‘inherently completed the ‘selecting’ steps”). The FC opinion explained that SCOTUS “has recognized the importance of clarity with respect to obviousness determinations” and the “analysis should be made explicit” (KSR, US 2007), noting “that the amount of explanation needed varies from case to case, depending on the complexity of the matter” (Personal Web, FC 2017; Ariosa, FC 2015; In re Lee, FC 2002). Here, the FC panel found the Board did not, e.g., “sufficiently lay out the basis for its implicit findings regarding” the claims other than the “providing” steps, or “adequately explain why a person of ordinary skill in the art would have been motivated to increased the thermal conductivities of the steels disclosed in the prior art”. Rovalma also argued the Board “exceeded its statutory authority” by relying on Rovalma’s own submissions in determining obviousness, relying on In re Magnum Oils (FC 2016) which the FC panel explained is a “burden-shifting” case (the Board is not “free to adopt arguments on behalf of petitioners that could have been, but were not, raised by the petitioner”) and not applicable to this point. It also explained that Rovalma had not identified anything in the statute forbidding the Board from using its own submission against it (Adv. Magnetic, FC 2010). The FC panel also noted it was unclear whether Bohler committed a forfeiture by not presenting arguments under Rovalma’s proposed construction, or whether Rovalma preserved a forfeiture contention. And it found it could not determine how the Board reached its obviousness conclusions and therefore whether the Board complied with the notice / adequate opportunity to be heard requirements of an IPR. It therefore vacated and remanded the decision.

Posted in Claim Construction, Inter Parties Review (IPR), IPR, Obviousness | Leave a comment

Coherus Biosciences Inc. v. Abbvie Biotechnology Ltd.

U.S. Pat. No. 8,889,135B2
May 17, 2017
Final Written Decision (IPR granted May 17, 2016)

Brief Summary: Final Written Decision after IPR finds claims 1-5 of Abbvie’s US 8,889,135B2 relating to Humira® unpatentable for obviousness.

Summary: Coherus requested IPR of claims 1-5 of Abbvie’s US 8,889,135B2 relating to methods for treating rheumatoid arthritis (RA) using a human anti-TNF[alpha] antibody having particular complementarity determining regions (CDRs) and the “heavy chain constant region of D2E7, a known recombinant human anti-TNF[alpha] antibody” (encompassing Humira® (adalimumab)). The claims require “administering subcutaneously…a total body does of 40 mg…once every 13-15 days for time period sufficient to treat” RA. The Petition alleged unpatentability for obviousness (§ 103) in view of the Kempeni (cited as anticipatory and for obviousness by the examiner during prosecution) and van de Putte (cited by the applicant during prosecution and by the examiner for anticipation and obviousness) references, and included 16 background technology references as well as three expert declarations (Drs. Baughman, O’Dell and Reisetter). As noted previously in the summary of the decision to institute IPR, but not in either decision, Kempeni and van de Putte were cited in combination in an obviousness rejection during prosecution, but only with several other references. The Board first determined the level of ordinary skill in the art as one possessing “the skill sets of both a physician treating RA patients and a pharmacokineticist with experience in monoclonal antibodies”. Under the broadest reasonable construction standard (BRC), the Board confirmed its determination in the Institution Decision that the preamble phrase “A method for treating” RA is not limiting. In its Institution Decision, the Board determined “for a time period sufficient to treat” RA as that which “reduce[s] the signs, symptoms, and/or progression of RA” (not meaning “significantly”). AbbVie argued this phrase would be “understood…to require meaningful therapeutic efficacy” but the Board disagreed because, e.g., “the specification uses the word ‘treat’ in its customary and ordinary way.” It did not address “every 13-15 days” or “pharmaceutically acceptable composition” as requested by Coherus.

As in the Institution Decision, Kempeni was found to teach a fully human anti-TNF[alpha] antibody (D2E7) used in RA clinical trials, finding it to be “safe and effective as monotherapy”. And van de Putte was found to “compare[] three dose levels of D2E7 to placebo over three months in patients with long-standing active RA”, showing it to be “statistically significantly superior to placebo”. The Board concluded that these references “collectively disclose each limitation of the challenged claims”. It also noted that “[e]ven ‘[i]f all elements of the claims are found in a combination of prior art references,’ ‘the factfinder should consider whether a person of ordinary skill in the art would [have been] motivated to combine those references, and whether in making that combination…would have [had] a reasonabl expectation of success” (Merck, FC 2015; Pfizer, FC 2007). The Board agreed with Coherus that “the ordinary skilled artisan would have had a reason to select subcutaneous, including that van de Putte used subcutaneous dosing and Kempeni referred to it as a “promising approach”, but also that it would have been “more convenient and less expensive”. The Board found Coherus did not show “a reason to modify van de Putte’s 20 mg weekly dose to a 40 mg biweekly dose” (this argument “appear[ing] to be a shift from the position taken in the Petition” (Wasica Fin., FC 2017 (“[s]uch a shift in position…‘is forclosed’”)) and AbbVie persuasively argued half-life is not the sole determining factor in dose modeling. The Board also concluded Kempeni did not teach away “from the fixed dosing regimen of the claims” or “administering low doses” (In re Gurley, FC 2004; In re Mouttet, FC 2012 (“mere disclosure of alternative designs…does not teach away”)), “the difference in bioavailability between an intravenous and subcutaneous dose would have counseled against a subcutaneous 40 mg dose of D2E7 biweekly”, “[n]othing in the record…suggests that D2E7 has a narrow therapeutic range”, and that disease elimination or “reduc[ing] it to the fullest extent possible” would not have been “the goal of a skilled artisan in June 2001”. Regarding secondary considerations, the Board agreed Humira® is commercially successful but did not find a nexus between that success and the claims (In re Huai-Hung Kao, FC 2011), was not persuaded “the claimed dosing regimen satisfied a long-felt, but unmet need”, and did not find sufficient evidence…the efficacy…would have been unexpected.” Thus, the claims 1-5 were concluded to be unpatentable.

Posted in Claim Construction, Inter Parties Review (IPR), IPR, Obviousness, Obviousness-Teaching Away | Leave a comment

AIPLA Legislative Proposal and Report on Patent Eligible Subject Matter

May 12, 2017

The AIPLA issued a proposed revision to § 101 (“Proposal”) that seeks to “creat[e] a new framework with clearly defined statutory exceptions”, “provide a clear, objective test that will result in appropriately broad eligibility”, “expressly reaffirm[] the gatekeeping conditions of patentability in Sections 102, 103, and 112, to address the concerns about over-claiming, as intended by Congress in 1952”, and “eliminate the current two-part test for eligibility” (e.g., “concerns for the existence of a so-called ‘inventive concept’ were eliminated with the creation of the nonobviousness requirement in Section 103 by the 1952 Patent Act”). The Proposal argues that “[t]he Supreme court has applied its own subjective rules of patent eligibility that have increasingly blurred these statutory functios, causing significant uncertainty in the law and driving innovation investments abroad.” The Proposal suggested revision to § 101 is shown below (amendments in (a); (b) and (c) are new):

(a) Eligible Subject Matter. Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, shall be entitled to a patent therefor, subject only to the conditions and requirements set forth in this title.

(b) Sole Exceptions to Subject Matter Eligibility. A claimed invention is ineligible under subsection (a) only if the claimed invention as a whole exists in nature independent of and prior to any human activity, or can be performed solely in the human mind.

(c) Sole Eligibility Standard. The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard to the requirements or conditions of sections 102, 103, and 112 of this title, the manner in which the claimed invention was made or discovered, or whether the claimed invention includes an inventive concept.

The Proposal reviews the history of § 101 and how this section has been interpreted by the courts including, e.g., Funk Bros., US 1948; the 1952 Patent Act; Parker v. Flook (US 1978) (“the court improperly made its patent eligibility determination by considering factors more appropriate to an assessment of nonobviousness under Section 103”); Diamond v. Diehr (US 1981) (“decision made it clear that, in a determination of patent eligibility: (1) the patent claims must be considered as a whole; (2) the claims are not to be dissected into old and new elements; (3) a new combination of process steps may be patentable even if all the constituents were well known before the combination was made; and (4) novelty ‘is of no relevance’ in determining whether the claimed subject matter falls within the Section 101 categories for patent eligibility” including an “express[] repudiate[ion of] a government argument that the Flook decision permitted dissection of a mathematical algorithm from the claim”); Bilski (FC 2010) (the court “ignored the teachings of Diehr”); Mayo (US 2012) (“finding that the claim lacked an ‘inventive concept’”); Alice (US 2014) (“ineligible…because (1) the claim was directed to an abstract idea, and (2) the claim contained no ‘inventive concept’ that transforms it into a patent eligible claim”). The Proposal summarized the current situation:

“The analysis provided in Mayo and Alice not only fails to recognize the exclusive role of Section 101 in the patent eligibility determination, but also fails to recognize the import of the Court’s decision in Diehr. Mayo and Alice in practical effect revive the patent ineligibility analysis from Flook, which is many respects was limited or repudiated by the Diehr decision.[] The result in confusion about whether the analysis incorporates some version of a novelty and nonobviousness inquiry and whether that is applied to each individual element or the claim as a whole.”

The Proposal also noted the PTO’s efforts to understand and apply the courts’ interpretation of § 101 using Mayo as an example (granted under the agency’s ‘Utility Examination Guidelines,’” only to be turned “upside down” by the Mayo decision’s position that isolated DNA may not be patent eligible). It states: “In our view, current section 101 jurisprudence has had a negative impact, in particular, on the life sciences and software industries”, referring to Ariosa (FC 2015) as an example (ineligible as “directed to well-understood, routine and conventional steps that act on a natural phenomenon, even though the invention was acknowledged to be ‘groundbreaking’”). Much more detail is provided in the Proposal which, as mentioned above, is available here:


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Aylus Networks, Inc. v. Apple Inc.

Docket No. 2016-1599

May 11, 2017

Brief Summary: DC grant of SJ on non-infringement to Apple affirmed since “statements made by a patent owner during an IPR proceeding can be relied on to support a finding of prosecution disclaimer during claim construction” as long as the same are “both clear and unmistakable”.

Summary: Aylus appealed DC grant of SJ that Apple does not infringe the asserted claims of US RE 44,412 related to methods for “controlling and delivering media content from a media server (MS) to a media renderer (MR)”. The contested limitation “wherein the CPP [control point proxy] logic is invoked to negotiate media content delivery between the MS and the MR” appears in dependent claim 2 and which Apple claims it does not practice. After Aylus sued for infringement, Apple filed two IPRs, one challenging certain claims (including claim 2) which was denied and the other challenging all of the claims which was denied as to claims 2, 4, 21 and 23. Aylus then file a notice of voluntary dismissal of its claims except as to claims 2, 4, 21 and 23. In granting Apple SJ, the DC construed the contested limitation as “require[ing] that only the CPP logic is invoked to negotiate media content delivery between the MS and the MR, in contrast to claims 1 and 20 which require both the CP and CPP” to do the same. The FC panel reviews “the ‘ultimate interpretation’ of a claim term” and intrinsic evidence de novo (Teva, US 2015) and “[s]ubsidiary factual determinations based on extrinsic evidence…for clear error” (Info-Hold, FC 2015). And “claim terms are to be given their ordinary and customary meaning” which may include consideration of the prosecution history (Phillips, FC 2005; Aventis Pharm., FC 2013; SAS Inst., FC 2016; Southwall Techs., FC 1995 (“ensures that claims are not ‘construed one way in order to obtain their allowance and in a different way against accused infringers”)). A key question here relates to the DC’s reliance on Aylus’s statement made during the IPR as “akin to prosecution disclaimer”, which Aylus argued was improper. The FC panel disagreed, finding that “statements made by a patent owner during an IPR proceeding can be relied on to support a finding of prosecution disclaimer during claim construction” as long as the same are “both clear and unmistakable” (Omega Eng’g, FC 2003; Biogen, FC 2013 (“when a prosecution argument is subject to more than one reasonable interpretation, it cannot rise to the level of a clear and unmistakable disclaimer”)). It explained that it has “applied the doctrine in other post-issuance proceedings before the PTO” (Standard Oil, FC 1998 (reissue/reexamination); Kripplez, FC 2012 (reexamination)), and in its Cuozzo decision SCOTUS “recognized that an IPR proceeding involves the reexamination of a patent.” Aylus also argued its statements were not part of an IPR proceeding because they were made in a preliminary response before the Board issues its institution decision” but the FC panel disagreed, finding “the differences between the two phases of an IPR” (decision to institute and proceeding/decision) “to be a distinction without a difference” since both the preliminary response and the response are “public papers filed with the PTO and made available to the public” in which “the patent owner can define claim terms and otherwise make representations about claim scope”. Aylus also argued its statements did not “constitute a clear and unmistakable surrender of claim scope” but the FC panel disagreed given Aylus’s “repeated statements that claims 2 and 21 ‘require that…only the [CPP] be invoked”. Thus, the DC decision was affirmed.

Posted in Claim Construction, Inter Parties Review (IPR), IPR, Prosecution History Estoppel | Leave a comment

NOVA Chemicals Corporation, et al. v. Dow Chemical Company

Docket No. 2016-1576

May 11, 2017

Brief Summary: DC award of attorney fees to Dow affirmed as NOVA’s litigation position was found to be “objectively baseless” under Octane Fitness (US 2014).

Summary: NOVA appealed DC award of almost $2.5 million in attorney fees under § 285 to Dow related to its already-decided infringement action regarding US Pat. Nos. 5,847,053 and 6,111,023 (the “2010 judgment” awarding $61+ million in damages to Dow). The patents were held invalid for indefiniteness in “Dow II” (Fed. Cir., 2015) under the intervening Nautilus decision (US 2014) but that “decision…did not disturb the 2010 judgment relating to pre-verdict infringement”. “During the supplemental-damages phase of the infringement action” (the 2010 judgment), “NOVA became aware of evidence allegedly showing that Dow and its counsel had committed fraud on the court” but it was too late to file a motion to set aside that judgment (FRCP 60(b)(3)). “NOVA then filed a separate action in equity” to obtain “relief from the 2010 judgment.” NOVA alleged Dow misrepresented its ownership of the asserted patents and that its expert “had provided conflicting testimony…during a separate litigation in Canada (the ‘Canadian action’).” Dow moved to dismiss the action, which was granted by the DC and affirmed by the FC (2015). Dow then moved for sanctions, attorneys’ fees and costs under § 285. The DC found that “NOVA did not file the equity action in bad faith” but did award attorney’s fees “based on the weakness of NOVA’s litigating position and the manner in which NOVA pursued this case” (its “claims for relief ‘just didn’t stand up’ and were ‘not even plausible’…NOVA ‘could have dealt with the situation’ in ‘less inflammatory ways’”). In this appeal, NOVA challenged the DC’s exceptional-case determination (Octane Fitness, US 2014 (“one that stands out…or the unreasonable manner in which the case was litigated”, DC considers “totality of the circumstances”), arguing that the DC “look[ed] to NOVA’s pursuit of the equity action as ‘[t]he overriding factor’, rather than considering the totality of the circumstances” and that the equity action “could be subject of a fee award.” This FC panel agreed with NOVA that the “mere filing” of the equity action cannot “render a case exceptional under § 285” (“A party whose only option for relief from a prior judgment is to file a separate action in equity should be disincentivized from doing so if that party has a plausible basis for relief.”) However, the FC panel explained, it still needed to consider whether NOVA’s litigating position was “objectively baseless” under Octane Fitness, noting that “[i]t is the ‘substantive strength of the party’s litigating position’ that is relevant…not the correctness or eventually success of that position” (SFA Sys., FC 2015). And it concluded the DC “did not abuse its discretion in holding that NOVA’s litigating position was objectively baseless” because, e.g., the allegedly inconsistent expert testimony upon which it relied on “did not directly relate to the limitation that had been the focus of the parties’ underlying infringement suit.” NOVA also unsuccessfully argued the DC should have compared this case to other equity actions and not to other patent cases.

Posted in Appeal, Attorney's Fees, Expert Testimony | Leave a comment