Exergen Corp. v. Kaz USA, Inc.

Docket No. 2016-2315, -2341

March 8, 2018


Brief summary: DC finding of § 101 eligibility affirmed as “the inventor” here “transformed the process into an inventive application”; jury determinations of infringement and damages affirmed for the ‘938 claims but not the ‘685 claims.

Summary: Kaz appealed DC decision finding certain claims of Exergen’s US 6,292,685 and 7,787,938 relating to a body temperature detector to be directed to patent eligible subject matter, and the DC’s denial of JMOL on noninfringement and it motion for a new trial on damages. Exergen cross-appealed DC finding of no willfulness. Two other trials regarding the patents-at-issue here have been pending and claim construction was consolidated; in “Brooklands” (D. Mass. 2015), ‘938 claim 54 was held ineligible under § 101, and in “Thermomedics” (D. Mass. 2015, aff’d FC 2016) ‘938 claims 51, 52, 54 and 55 were similarly held ineligible. Kaz unsuccessfully argued Thermometics had preclusive effect. In this case, the jury found all asserted claims infringed and not invalid and awarded Exergen ~$9.8 million in lost profits and ~$4.8 million in reasonable royalties. The FC panel reviewed the denial of JMOL de novo (under First Circuit law) to determine whether “the facts and inferences point so strongly and overwhelmingly in favor of the movant that a reasonable jury could not have reached a verdict against that party”, and “the denial of a motion for a new trial for abuse of discretion.” The issue of patent eligibility was review de novo with “clear error deference” (Intell. Ventures I (IV I), FC 2017; Mortg. Grader, FC 2016) using the Alice/Mayo two-step analysis (US 2014 and US 2012, respectively; step 1: are the claims “directed to a patent-ineligible concept”? step 2: do the claims “contain[] an ‘inventive concept’ sufficient to ‘transform the claimed abstract idea into a patent-eligible application’”?) It was undisputed here “that the asserted claims employ a natural law to achieve their purpose” (step one). The DC concluded “the claims recite additional steps” (“moving while laterally scanning”, “obtaining a peak temperature reading”, and “obtaining at least three readings per second”) “which…‘transformed the underlying natural laws into inventive methods’” (Diamond, US 1981). The FC explained that, here, “the step two dispute…turns entirely on” the factual determination of “whether the combination of elements was well-understood, routine, and conventional at the time of the invention” (Mayo; Content Extraction, FC 2014; IV I; In re Hall, FC 1986 (single copy of German thesis qualified as prior art, the FC panel explaining that such a reference “would not suffice to establish that something is ‘well-understood, routine, and conventional activity”)). The FC panel found this case to be unlike “either Mayo or Ariosa,” (FC 2015; see also Bascom, FC 2016) “where well-known, existing methods were utilized to determine the existence of a natural phenomenon” as “the inventor” here “transformed the process into an inventive application”. Thus, the FC panel agreed with the DC on its § 101 determination. The FC panel also concluded Kaz waived its right to a jury trial regarding the facts underlying that determination. The FC panel found support for the the jury’s findings of infringement of the ‘938 claims but not ‘685 claims 7, 14 and 17 as not supported by substantial evidence. The FC panel also found “both portions of the jury’s damage award” under § 284 to be “supported by substantial evidence” (except as to the ‘685 claims found not to be infringed). The FC panel also reviewed the DC’s decision of no enhanced damages under § 284 for abuse of discretion under the Halo standard (US 2016). It affirmed the DC’s pre-Halo decision because “the objective prong of Seagate was not the only rationale on the record” (e.g., no evidence of copying, no concealment or litigation misconduct (the Read factors (FC 1992)), noting that “[e]ven if the jury had found” willful infringement, “an award of enhanced damages does not necessarily flow from a willfulness finding” (Presidio, FC 2017). Judge Hughes’s dissent argued the § 101 step two analysis was incorrect as “the claimed inventions merely calculate a law of nature using conventional, commercially available technology.”

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Par Pharmaceutical et al. v. Novartis AG

Case No. IPR2016-00084 (U.S. Pat. No. 5,665,772 B2)
Final Written Decision (Jan. 11, 2018)

Brief summary: PTAB concluded “Par’s articulated lead compound is insufficient to establish the obviousness of any of the challenged claims” encompassing Novartis’s everolimus.

Summary: Par challenged claims 1-3 and 8-10 (only claim 1 is independent) of the ‘772 patent directed to Novartis’ rapamycin 40-O-substituted derivatives (e.g., everolimus). Breckenridge Pharmaceutical and Roxane Laboratories challenges were joined to this IPR (IPR Nos. 2016-01103; and 2016-01059, -01102, and -01103, respectively). The challenge “is based on a lead compound analysis” based in part on expert declarations. The FWD explained that “[a] lead compound analysis follows a two-part inquiry”: 1) “determine whether a chemist of ordinary skill would have selected the asserted prior art compounds as lead compounds, or starting points, for further development efforts…guided by the compound’s pertinent properties” (“most promising to modify” or “a natural choice for further development” (Takeda, FC 2007; Altana Pharma AG, FC 2009); and 2) “whether the skilled artisan would have had reason to modify the lead compound to make the claimed compound, with a reasonable expectation of success” (Otsuka, FC 2012). The level of skill in the art was agreed to be a Ph.D. or Masters in a chemistry-related field. Par argued rapamycin would have been selected by a person of ordinary skill in the art “as a lead compound for developing improved immunosupressants”, citing the prior art’s “disclosure of rapamycin’s ‘potent immunosuppressant activities’ as well as its description…as ‘particularly intriguing’” (supporting this with an expert declaration). Par noted rapamycin’s known poor solubility, arguing “this would have been understood to limit the bioavailability of drug” and would have provided a reason to modify it. Par’s expert testified “that the skilled artisan would have looked to C10, C28, and C40 as potential sites for substitution”, based in part of the prior art’s disclosure that C40 is positioned “on the periphery of” rapamycin’s binding site with its ligand (FKBP-12) and otherwise been able to confirm[] the suitability of C40 as a potential site for substitution.” Par also argued “that a person of ordinary skill in the art would have looked to other prior art “to determine which substitutions to make at C40” (“a flexible side chain containing an alcohol, amine or carboxylic acid group). Novartis disagreed, arguing that “the totality of the prior art” showed “there were a number of known, promising immunosuppresants…reported to have effectiveness without major adverse effects, while rapamycin was known to be toxic.” Novartis argued “Par failed to provide any advantageous properties of rapamycin that would have led to its selection over these other compounds, other than its hindsight-based similarity to the claimed compound everolimus.” Par cited Daiichi Sankyo, FC 2010, alleging “the law does not require it to identify the most promising lead compound”, and rapamycin would have been among the group that a person of ordinary skill would have targeted for investigation”). The PTAB sided with Par, finding the beneficial properties of the other compounds would not have led those of ordinary skill in the art to “only investigate those compounds, ruling out rapamycin entirely”. The PTAB also agreed with Par that a prior-art recognized rationale to modify rapamycin was to improve its solublity “to form a safe and injectable solution” (Par, FC 2014 (“a suitable option from which the prior art did not teach away”), and that there would have been a reasonable expectation of success in doing so (Intelligent Bio-Sys, FC 2016 (“[I]t is the limitations of the claims themselves that define the reasonable expectation of success…one must have a motivation to combine accompanied by a reasonable expectation of achieving what is claimed in the patent-at-issue.”)). However, the PTAB disagreed with Par that it would have been obvious to select the C40 site on rapamycin for modification. Par’s expert testified that “hydroxyl groups have high potential for substitution”, C40 would be the “optimal position for modification”, and that a person of ordinary skill in the art would have “begun with a narrow genus of three potential substituents” including an ethyleneoxy group. The PTAB found this testimony to be based on the expert’s unsupported “‘general rule’ that the smallest substituents are considered first” (“we cannot conclude that the group of candidates would have been limited to only those three, or that those would have been the first investigated”). The PTAB also disagreed with Par’s comparison of this case to Bristol-Meyers Squibb (FC 2014 (“‘structurally similar ocmpounds often have similar properties,’ and that this may support a reasonable expectation of success”) since, e.g., “the possible options skilled artisans would have encountered” were not “‘finite,’ ‘small,’ or ‘easily traversed’” (In re Cyclobenzaprine, FC 2012) (e.g., rapamycin “was only one among many possible” lead compounds, the experts opinions “diverge significantly”, the subsituent options “would not have been as narrow as those proposed by Par”). The PTAB therefore concluded “Par’s articulated lead compound is insufficient to establish the obviousness of any of the challenged claims” (including the method claims).

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

Capital Security Systems, Inc. v. NCR Corporation, et al.

Docket No. 2017-2368

March 7, 2018


Brief summary: FC panel reversed the DC finding that “ascertains an apparent signature” is indefinite as it would be “understood in light of the specification…with reasonable certainty”, but agreed with the DC’s determination that “transactional operator” is indefinite (“no rationale supporting the seemingly arbitrary definition”).

Summary: CSS appealed DC finding that DC findings that “ascertains an apparent signature” and “transactional operator” are indefinite (US 5,897,625; 7,653,600; 7,991,696; and 8,121,948 related to automated teller machines (ATMs)). The DC construed “ascertains an apparent signature” as “[discovering] the presence of a person’s cursive signature in the signature field”, finding that “[a] skilled artisan would not have been able to decide amongst four different plausible meanings”. The FC panel found that “a skilled artisan would understand” from the specification that “[t]he four implementations…fall within a reasonable range of implementations permitted by the broad claim language as understood in light of the specification…with reasonable certainty” (unlike Datamize, FC 2005 (“aesthetically pleasing” indefinite term as dependent on the “unrestrained, subjective opinion of a particular individual), Interval Licensing (FC 2014) (“unobtrusive manner” indefinite as “subject to the ‘unpredictable vagaries of any one person’s opinion’”), and In re Walter (FC 2017 (“block-like” indefinite “in view of applicant’s ‘erratic’ statements made during prosecution that defined the term in ‘inconsistent’ ways”)). The FC panel therefore reversed the DC finding that this term is indefinite, but agreed with the DC claim construction except that it “would remove the ‘cursive’ limitation” (defining it as “to discover the presence of a person’s signature in the signature field”). The DC construed “transactional operator” as “[a] computer within an automated banking system that, after deposit of sufficient cash, permits the user to perform the requested transaction” and “concluded that ‘[a] person of ordinary skill in the art, informed by the specification and the prosecution history, would not be apprised with reasonable certainty about the scope of the invention.’” The FC panel agreed, concluding it is “unclear from” the specification “whether the computer or ‘transactional operator’ includes the microcomputer 21, the keyboard 18, and the display 20, or a subset thereof”, and “[t]his uncertainty” to be “compounded by [CSS’s] representations during oral argument”. It found “no rationale supporting the seemingly arbitrary definition of ‘transactional operator’ as a microprocessor and keyboard, while excluding the associated display and keypads.” The FC panel therefore agreed with the DC’s finding of indefiniteness of “transactional operator”.

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William Grecia v. McDonald’s Corporation

Docket No. 2017-1672

March 6, 2018


Brief summary: DC’s dismissal of complaint alleging that McDonald’s “through its use of various credit card companies’ authorization networks directly infringed” under § 271(a) affirmed because the only benefits to McDonald’s referenced in the complaint related to “the claimed system as a whole-the argument we rejected in Intellectual Ventures”.

Summary: Mr. Grecia appealed from the DC’s dismissal of his complaint alleging that McDonald’s “through its use of various credit card companies’ authorization networks directly infringed” (i.e., “every time it accepted Visa cards as a payment tool for food purchases”) US 8,533,860 and 8,402,555 “that claim systems for managing access to digital data” (“relate to the field of digital rights management, which aims to restrict access rights to digital media in order to curb unlawful copying”). McDonald’s moved to dismiss the complaint since, it argued, “because it did not control any of the accused system’s components, it did not ‘use’ the claimed system as required to plausibly plead direct infringement under 35 U.S.C. § 271(a)”. McDonald’s relied on Uniloc (FC 2011) “which held that Microsoft could directly infringe for its manufacture and use of a patent software registration system, where the claims required end-user participation on a local computer.” “McDonald’s argued that like the claims in Uniloc, the asserted claims” here “are drafted to focus on the actions of one entity, Visa, and because Visa possessed and controlled all the claimed systems’ six modules, only Visa could directly infringe”. Mr. Grecia relied on Centillion (FC 2011) which “held that ‘use’ should be broadly interpreted to require only that an accused infringer ‘put the invention into service, i.e., control[led] the system as a whoel and obtain[ed] a benefit from it.’” The DC agreed with McDonald’s, concluding “Centillion did not apply because the holding was limited to divided systems, while in the instant dispute, Visa possessed all of the allegedly infringing systems’ components”, finding “Uniloc to be controlling” (“McDonald’s role in sending customers’ credit card data to Visa was akin that of ‘Microsoft’s customers’ computers in Uniloc, merely part [of] the environment in which the claimed inventions function”). The DC denied Grecia’s request for reconsideration and to amend his complaint because his original complaint did not “allege that McDonald’s point-of-sale devices are part of the claimed systems.” The FC panel explained that it reviewed the DC’s dismissal according to Seventh Circuit law (Glenayre, FC 2006) which “does ‘not accept as true any legal assertions or recital of claim elements of a cause of action supported by mere conclusory statements” (Vesely, 7th Cir. 2014). It explained the parties here ask the FC “to define what is considered ‘use’ of a claimed system when the accused infringer must act to put the claimed system into service, but the accused infringer does not appear to possess any element of the claimed system”, noting there is “no controlling precedent”. The FC panel disagreed with the DC that Uniloc controlled (unlike here, “predicated on the system claims being drafted in a way that focuses on ‘one entity’”), and also disagreed with Mr. Grecia that Centillion controlled (“it does not appear that McDonald’s is in the possession of any of the six modules claimed”). The FC panel explained that in Intellectual Ventures I (FC 2017), it “clarified that the infringer must ‘benefit from each claimed component,’ i.e., from ‘each and every element of the claimed system’” and rejected the notion that it “needs only to ‘benefit from the system as a whole’ by deriving a benefit from ‘any claimed component of the claimed system.’” Here, the FC panel concluded, McDonald’s benefits that Grecia referenced in his complaint as with respect to “the claimed system as a whole-the argument we rejected in Intellectual Ventures” (“The alleged benefit should be tangible, not speculative, and tethered to the claims.”) Thus, it agreed with the DC’s conclusion, although “on different grounds”, and found no abuse of discretion in the DC’s denial of Mr. Grecia’s motion to amend since “he failed to describe or attach an amended complaint to his request for leave, not did he ‘offer any meaningful indication of how [he] would plead differently’” (Indep. Trust, 7th Cir. 2012).

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Dexcom, Inv. v. Waveform Technologies, Inc.

Case No. IPR2016-01679 (U.S. Pat. No. 7,146,202 B2)
Final Written Decision (Feb. 28, 2018)

Brief summary: PTAB FWD found claims 1-3, 6, 8, and 11 (but not claim 10) of Waveform’s ‘202 patent relating to continuous glucose monitoring to be anticipated but others not obvious.

Summary: This FWD relates to Dexcom’s petition for IPR against Waveform’s ‘202 patent related to a “sensing element adapted to be inserted…into a mammalian body” that “may be used…for continuous sensing of…glucose” (Dexcom’s area of technology) for anticipation or obviousness. Litgation regarding the ‘433 patent is ongoing (3:16-cv-00536-MO (D. Or.)) as are two IPRs regarding additional Waveform patents (IPR2017-01051 (US 7,529,574 (ongoing)) and IPR2016-01680 (US 8,187,433 B2 (2/28/18 FWD, not unpatentable)). Under the broadest reasonable interpretation (BRI (§ 42.100(b); Cuozzo, US 2016; In re Translogic, FC 2007 (“in the context of the entire patent disclosure”); Microsoft, FC 2015 (BRI “does not include giving claims a legally incorrect interpretation”, “PTO should…consult the patent’s prosecution history” (PH))), the PTAB construed “structurally flexible core” not to to be “robust” based on the PH as “it was removed by Applicants during prosecution” (Laryngeal, FC 2010 (imporpoper to “read[] such limitations back into the claim…‘regardless of why [applicant] amended its claims’”)); instead the term was determined to mean “able to be flexed or bent repeatedly”. The PTAB also construed “in contact with” to mean “touching” (and the parties agree; “consistent with the ordinary meaning”, “not an ‘intervening layer,’ as disclaimed during prosecution”). The PTAB explained that the “Petitioner bears the burden of proving unpatentability of the challenged claims, and the burden of persuasion never shifts to the Patent Owner” (Dynamic Drinkware, FC 2015; § 316(e), § 42.1(d) (preponderance of the evidence)). An anticipatory reference (§ 102) must be show to “disclose…not only all of the limitations but also…arranged or combined in the same way” (Net MoneyIN, FC 2008), and obviousness is considered using the Graham factors (Graham, US 1966; KSR, US 2007). The PTAB agreed with the parties regarding the definition of a person of ordinary skill in the art (POSA). The PTAB concluded that “Petitioner has not shown by a preponderance of the evidence that the” first combination of references “teaches or suggests the ‘in contact with’ limitation” of claims 1-3, 5, 6, or 9-11 (e.g., “Rosenblatt teaches that an intervening alloy later is essential”, supported by expert testimony). The PTAB also concluded claim 5 was not shown by a preponderance of evidence to be obvious (e.g., the combination does not teach or suggest the “‘in contact with’ limitation”). The PTAB found claims 1-3, 6, 8, and 11 (but not claim 10) to be anticipated by the “Hagiwara” reference (e.g., disclosed claim 1’s preamble and the “structurally flexible core” and the coating thereof, placing the sensor into an animal, and measuring the electrical current). The PTAB also dismissed as moot Dexcom’s motions to exclude an expert declaration and an exhibit related to the construction of “outer surface”, and granted Waveform’s petition to exclude an exhibit improperly relied upon “to assert new grounds of unpatentability” (§ 42.23(b); Belden, FC 2015; EmeraChem, FC 2017).

Posted in Anticipation (35 USC 102), Claim Construction, Inter Parties Review (IPR), IPR, Obviousness | Leave a comment

Knowles Electronics LLC v. Cirrus Logic et al.

Docket No. 2016-2010

March 1, 2018

Brief summary: PTAB decision affirming rejection of Knowles’s claims as anticipated or lacking written description (proposed amended claims) affirmed.

Summary: Knowles appealed PTAB decision following inter partes reexamination affirming the examiner’s rejection of claims 1-4 of US 6,781,231 directed to microelectromechanical system (“MEMS”) packages for shielding the microphone thereof from an interference signal or an environmental condition for anticipation and proposed new claims 23-27 for lack of an adequate written description. The FC panel explained that it reviews PTAB’s “ultimate claim construction in a reexamination de novo” (on which the anticipation finding was based) (In re CBS-Int’l, FC 2015 (broadest reasonable interpretation (Cuozzo, US 2016)) after considering the patent’s specification, prosecution history (intrinsic evidence considered de novo) and any extrinsic evidence (expert testimony, dictionaries; reviewed for substantial evidence (Microsoft, FC 2015; Consol. Ed., US 1938); In re Jolly, FC 2002 (court “will not find the [PTAB’s] decision unsupported by substantial evidence simply because the [PTAB] chose one conclusion over another plausible alternative”); BRI cannot be divorced from the specification and record evidence (Microsoft)). “Package” is a limiting preamble term (Catalina, FC 2002) that the PTAB construed to “refer to chip assemblies that possess any type of second-level connection mechanism”, not limited “to one that uses a ‘mounting mechanism’” (as argued by Knowles, i.e., Knowles argued the PTAB interpreted the term too broadly). The FC panel found that neither claims 1-4 nor the specification “specify the type of connection required to form the MEMS package”, and found no error with the PTAB’s construction based on extrinsic evidence (Phillips, FC 2005; unlike in PPC Broadband (FC 2016) in which the PTAB “failed to consider evidence ‘in light of the specification’ and ‘claims themselves’”); finding no inconsistency with the definition in MEMS Tech. (FC 2011); Virnet X, FC 2016 (“We will not find legal error based upon an isolated statement stripped from its context.”)) On written description of the “reflow process limitation”, Knowles argued the PTAB “fail[ed] to consider…how a PHOSITA would understand that solder pads were capable of attachment via reflow” or “‘other methods of soldering’ in its analysis” but the FC panel disagreed, finding the PTAB’s conclusion of no WD supported by substantial evidence (e.g., “the specification does not require solder pads to connect to the circuit board by any particular process”, “other processes…were known in the art…and could have been used”; Ariad, FC 2010 (WD “must clearly allow [a PHOSITA] to recognize that the inventor invented what is claimed”); Lockwood, FC 1997 (insufficient to argue “the disclosure, when combined with the knowledge in the art, would lead one to speculate as to the modifications that the inventor might have envisioned, but failed to disclose”); Enzo, FC 2002 (whether the specification conveyed possession of the invention with reasonable clarity)). Knowles also argued Cirrus Logic, which replaced one of the original three requestors (the other two of which dropped out), was not a proper party to the proceeding but the FC panel concluded that argument waived since Knowles did not object to the PTAB’s entry of Cirrus Logic. Judge Newman’s dissent argued that the MEMS (FC 2011) claim construction should have been applied by the PTAB as not doing so “impart[s] uncertainty”.

Posted in Anticipation (35 USC 102), Claim Construction, Reexamination | Leave a comment

Nalco Company v. Chem-Med, LLC et al. (24 other parties)

Docket No. 2017-1036

February 27, 2018

Brief summary: DC dismissal of Nalco’s complaint for failing to properly allege infringement reversed and remanded since “[t]he ‘purpose of a motion to dismiss is to test the sufficiency of the complaint, not to decide the merits’” (e.g. Nalco’s “allegations adequately plead attribution of the testing activities to Defendants”.)

Summary: Exclusive licensee Nalco appealed DC dismissal of its fourth amended complaint (4AC) alleging indicrect, direct, doctrine of equivalents (DOE), and willful infringement claims for US 6,808,692 which describes “a method for the removal of elemental mercury from the flue gas created by combustion in coal-fired power plants.” A reexamination certificate was issued for the ‘692 patent on April 7, 2014. The DC rejected Nalco’s claims (after considering four amended complaints) “due to a failure to plead direct infringement”, found it “failed to plead induced infringement claim because it failed to please facts indicating an intent to induce infringement”, and “denied Nalco’s motion for reconsideration, finding that Nalco failed to establish ‘manifest error of law or fact.’” The FC panel reviewed the DC’s dismissal for failure to state a claim under Rule 12(b)(6) de novo and its decision to dismiss with prejudice under Rule 12(b)(6) for abuse of discretion, assuming “all well-pleaded allegations are true and draw[ing] all reasonable inferences in the light most favorable to the plaintiff.” The FC panel explained that “[t]o survive a motion to dismiss under Rule 12(b)(6), a complaint must ‘contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face’” (Ashcroft, US 2009 (“the plaintiff must plead ‘factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged’…the plaintiff must do more than plead facts ‘merely consistent with’ a defendant’s liability”)). Nalco asserted “two main theories of direct infringement-each explaining how use of the Chem-Mod Solution could” be used in an infringing manner (e.g., “to effect oxidation of elemental mercury” in flue gas). The FC panel agreed its theories were “plausibl[e]”, noting that “Nalco is entitled to all inferences in its favor”. The FC panel also found that the “Defendants’ arguments boil down to objections to Nalco’s proposed claim construction for ‘flue gas,’ a dispute not suitable for resolution on a motion to dismiss”, that the “Defendants have not explained why we should-or could” make “a factual finding that a thermolabile material could not survive passing from the combustion zone to the flue” “at this stage” of the case, and that none “of the evidence cited by the parties indicate that Nalco has pled itself out of court” (“The ‘purpose of a motion to dismiss is to test the sufficiency of the complaint, not to decide the merits.” Gibson, 7th Cir. 1990). On Nalco’s allegation of divided infringement, the DC concluded that “Nalco failed to alleged that any Defendant is directly responsible for performing all method steps” of the claims (§ 271(a); Akamai, FC 2015 (“the acts of one” must be “attributable to the other…directs or controls other’s performance’, or ‘where the actors form a joint enterprise’”). The FC panel disagreed (except with respect to “commercial applications”), finding Nalco’s “allegations adequately plead attribution of the testing activities to Defendants” (e.g., “what matters is that, according to Nalco’s allegations, the testing can be attributed to the Defendants” as the testing facility “was directed to do so by the Defendants”). The FC panel similarly found Nalco’s claim for infringement under DOE (Warner-Jenkinson, US 1997) was also adequately stated. Regarding indirect infringement, the DC found Nalco had failed to plead a direct infringement claim (required to show inducement or contributory infringement (Linear Tech., FC 2004); § 271(b) requires intent (Global-Tech., US 2011). The FC panel disagreed, finding Nalco pleaded “facts plausibly showing that the accused infringer ‘specifically intended [another party] to infringe [the patent] and knew that the other party’s acts constituted infringement” (Lifetime Indust. (FC 2017)) and did not waive its challenge to the DC’s determination (e.g., “[t]he [DC’s] treatment of the inducement claim was cursory”). The FC panel similarly found Nalco had properly pleaded contributory infringement (§ 271(c); requires knowledge of the patent in suit and knowledge of patent infringement (Commil, US 2015)), again noting it “must presume [Nalco’s] allegations are true at the pleading stage.” The FC panel also reversed the DC’s dismissal of Nalco’s willful infringement claims since Nalco “adequately stated a direct infringement claim for at least some of the methods.”

Posted in Appeal, Contributory Infringement, Doctrine of equivalents, Inducement to Infringe, Infringement | Leave a comment