Centocor Ortho Biotech, Inc. v. Abbot Laboratories, No. 2010-1144 (Fed. Cir. Feb. 23, 2011) (Judges Bryson, Clevenger, and Prost)

Although it was the big cheese at the trial court, Centocor got caught in its own mousetrap at the Federal Circuit.  Abbott appealed the district court’s denial of JMOL after a jury found that Abbott had willfully infringed Centocor’s patent to pharmaceutical antibodies used to treat arthritis and awarded Centocor over $1.67 billion in damages.  The Federal Circuit reversed the denial of JMOL of invalidity, concluding that the asserted claims failed to meet that statutory written description requirement.

Throughout the 1990s, both Centocor and Abbott were developing antibodies to neutralize human tumor necrosis factor α (“TNF-α”).  Centocor’s invention modified a mouse antibody and produced a “‘chimeric’ antibody with a mouse variable region and a human constant region.” Slip Op. at 4-5.  Centocor filed three CIP applications in 1994 that disclosed these antibodies, but these CIPs did not present claims to human variable regions.  Abbott, on the other hand, decided to create a fully-human antibody to human TNF-α, focusing on exclusively on human variable regions, and received patent on its invention in 2000.  Centocor’s asserted patent claims also cover human variable regions.  Centocor did not file claims to fully-human antibodies until 2002, but it relied on the description in the 1994 CIPs to support these claims.

The Federal Circuit found the written description from the 1994 application insufficient because the specification only described a mouse variable region.  Additionally, Centocor presented no expert testimony to combat Abbott’s expert testimony that in 1994, one skilled in the art would not know how to make a fully-human variable region simply from looking at information regarding a mouse variable region.  The court described Centocor’s claims as “a wish list” and noted that “a mere wish list or plan for obtaining the claimed invention is not sufficient.”  Slip Op. at 17 (internal quotations omitted).  Based on the record before it, the court concluded that Centocor was not entitled to claim the fully-human antibody because it had not invented that antibody in 1994.  Since the jury lacked substantial evidence to support its verdict, the Federal Circuit reversed the denial of Abbott’s JMOL and held that the asserted claims in Centocor’s patent are invalid.

Read the original opinion here.

Hologic, Inc. v. SenoRx, Inc., No. 2010-1235 (Fed. Cir. Feb. 24, 2011) (Judges Newman, Friedman, and Lourie)

The Federal Circuit deflated SenoRx’s success at the trial court in this appeal of judgments invalidating the asserted claims of Hologic’s patent.  The technology at issue in this case is a balloon brachytherapy device used in radiation treatment.  At the district court, SenoRx conceded infringement of the asserted claims but argued that the claims are invalid.  Hologic’s asserted claims contain references to asymmetric location of the radiation source and predetermined asymmetric isodose curves.  In construing the claim language, the district court did not adopt Hologic’s proposed construction, which limited them to require asymmetry with respect to the longitudinal axis.  Based on its broader construction, the district court invalidated one claim at SJ as anticipated and a jury found the second asserted claim invalid for obviousness.

The Federal Circuit reversed these judgments, holding that they were based on an erroneous claim construction.  The court considered the summary of the invention and the rest of the specification and found that both “ma[de] clear what the inventors contemplated as their invention,” slip op. at 13, agreeing with Hologic’s proposed construction that includes the longitudinal axis limitation.

Judge Friedman provided a brief opinion dubitante, noting that two other nonasserted independent claims explicitly include the “longitudinal axis” language, which, to him, indicates that “when the patentee wanted the claim to include that limitation, he knew how to do so.”  Op. dubitante at 2.

Read the original opinion here.

Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., No. 2010-1145, -1177 (Fed. Cir. Feb. 24, 2011) (Judges Lourie, Linn, and Prost)

This case poses an interesting question concerning a potential tension between the doctrine of equivalents and nonobviousness.  At the trial court, a jury found that Saint-Gobain infringed Siemens patent under the doctrine of equivalents and awarded Siemens damages of over $52 million.  Saint-Gobain filed a motion for JMOL, which challenged “(1) a decision not to instruct the jury that infringement by equivalence must be proved in this case by clear and convincing evidence; [and] (2) a decision not to instruct the jury that [U.S. Patent 6,624,420 (“the ‘420 Patent”), licensed to Saint-Gobain] is presumed valid,” among other decisions by the court.  Slip Op. at 7.  The court denied Saint-Gobain’s motion for JMOL, and Saint-Gobain appealed.

Saint-Gobain argued that this case requires a higher standard of proof–clear and convincing evidence–for a finding of infringement under the doctrine of equivalents because that finding would “constructively invalidate” its ‘420 Patent, which covers the technology alleged to be equivalent.  Saint-Gobain relied on language from Festo stating “when a device that incorporates the purported equivalent is in fact the subject of a separate patent, a finding of equivalency, while perhaps not necessarily legally foreclosed, is at least considerably more difficult to make out.”  Slip Op. at 10 (internal quotations omitted).  The panel majority disagreed, and held that preponderance of the evidence was indeed the correct standard of proof to apply in this case.  The majority found Saint-Gobain’s reliance on Festo misplaced, noting that Festo only considered the foreseeability of an equivalent at the time of filing not the circumstance that the court was presented with in this case.  The majority also remarked that the analyses for obviousness and equivalents involve different tests and the inquiries occur at different times.  The majority concluded that, though the separate patent is relevant, this goes to the weight of the evidence for and against an equivalency finding but does not raise the standard of proof.

In dissent, Judge Prost found Saint-Gobain’s predicament posed a perplexing problem:  “When a fact finder concludes that a feature is ‘insubstantially different’ from a patent, how are we then to view the validity of the patent putatively establishing that same feature as ‘nonobvious’?”  Dissenting Op. at 2.  Noting the potential for overlap in the tests for obviousness and equivalence, Judge Prost stated that “a separately-patented (and presumptively nonobvious) substitution cannot be ‘insubstantial’ unless some fact distinguishes the equivalence finding from the PTO’s earlier nonobviousness determination.”  Dissenting Op. at 5.  Judge Prost further proposed that the different time frames of the two analyses offered an opportunity for such a finding:  because obviousness is assessed at the time of the invention and equivalence at the time of infringement, a finding that “the state of the art had advanced in such a way as to make a previously non-obvious substitution obvious” should be required for an equivalence finding if the substitution is separately patented.  Id. Judge Prost found reversible error in the trial court’s failure to instruct the jury that such a finding was necessary.

Read the original opinion here.