Andersen Corp. v. Pella Corp., No. 2010-1481 (Fed. Cir. May 17, 2011) (non-precedential order) (Judge Gajarsa)

This is an interesting little order. Andersen sued W.L. Gore and Pella for infringement of its patent related to a reduced visibility insect screen. The parties settled all issues except for an indemnification dispute between W.L. Gore and Pella.

The settlement agreement stated that the indemnification dispute would be submitted to the magistrate for “binding resolution” and that “The decision rendered … shall be final.” The magistrate denied Pella’s indemnification request. Pella objected and appealed to the district court. The district court dismissed the appeal because the parties had agreed that the magistrate’s decision would be final. Pella appealed to the Federal Circuit.

W.L. Gore moved to dismiss the appeal, again arguing that under the settlement agreement, the magistrate judge’s decision was final and not appealable. The Federal Circuit disagreed, finding that the parties had simply consented to let the magistrate judge decide the issue without the right to object or seek district court review of the magistrate’s determination, as allowed by Federal Rule of Civil Procedure 73. But the right to appeal to the Federal Circuit was not waived.

The motion to dismiss was denied and a briefing schedule was set.

You can read the court’s order here.


In re Brimonidine Patent Litigation, Nos. 2010-1102, −1103 (Fed. Cir. May 19, 2011) (Judges Bryson, Dyk, and Prost)

This case is an Abbreviated New Drug Application (ANDA) litigation relating to eye drops used to treat glaucoma. Allergan, Inc., has a number of patents protecting its glaucoma drug Alphagan®. Apotex, Inc. and Exela Pharmsci, Inc., each filed an ANDA for approval to market a generic version of Alphagan® P.  Allergan sued both companies, and won after a bench trial. Apotex, which had stipulated to infringement, appealed the validity finding. Exela appealed the infringement finding.

The appellate court’s review of the invalidity issues involves a detailed examination of the evidence. The panel split, however, over whether the asserted patents are obvious. The majority found that the asserted claims of one patent are obvious, but affirmed the judgment that the remaining patents are not invalid. Judge Dyk, in a separate opinion dissenting-in-part, also examined the evidence thoroughly, but came to a different conclusion. He would have held all of the asserted claims obvious.

Exela contested infringement on the basis that the product described in its ANDA has a maximum pH of 6.7. The asserted claims of the ’834 patent (the only patent asserted against Exela) require a pH of 7.0 or greater. The district court found that over six months, the pH of Exela’s formulation would drop by about 0.5 pH units. The district court reasoned that in order to reach the pH of 6.7 on its ANDA, Exela would have to manufacture its product at an infringing pH of 7.0 or above.

The court noted that Exela is legally bound by the ANDA. If it manufactures a product outside the specified bounds, that product would be illegal. And the parties agreed that if Exela complied with its ANDA, it would not infringe. The court found no reason to believe that Exela would not comply, and reversed the district court’s finding of infringement.

You can read the court’s opinion here.


Arris Group, Inc. v. British Telecommunications PLC, No. 2010-1292 (Fed. Cir. May 19, 2011) (Chief Judge Rader, Judges Dyk and Newman)

The issue in this case is declaratory judgment jurisdiction. British Telecom held licensing negotiations with CableOne, one of Arris’s customers. Because Arris’s equipment was part of the technology that had been accused of infringement, CableOne contacted Arris for indemnification. Arris then got involved in the negotiations, holding a couple of meetings with BT and CableOne at its offices in Georgia. Arris also exchanged correspondence with BT regarding BT’s infringement allegations. At no time, however, did BT expressly accuse Arris of infringement, either direct or indirect.

So when Arris sued BT for a declaratory judgment of non-infringement, the district court dismissed the case for lack of subject matter jurisdiction, holding that because BT had never accused Arris of infringement there was no case or controversy. Arris appealed.

The Federal Circuit didn’t buy BT’s story. The court seemed to believe that BT was trying to avoid saying anything that would give Arris standing to file a declaratory judgment action, while still accusing Arris’s products of contributory infringement. For example, the court stated that, “BT’s disclaimer that nothing in its assertion is meant to accuse any particular supplier of infringement is at best a transparent attempt to defeat Arris’ [sic] standing to bring this declaratory judgment action.” Slip op. at 20. The court examined all of the infringement contentions and noted that the Arris products were cited as key components of every claim. That, plus Arris’s involvement in the negotiations, was enough to show a case or controversy with respect to the contributory infringement claim.

One notable open issue: the court declined to rule on whether potential indemnification liability would be sufficient to create a case or controversy.

You can read the Arris opinion here.


In re Clark, No. 2010-1456 (Fed. Cir. May 20, 2011) (nonprecedential) (Judges Lourie, Mayer, and O’Malley)

This case involves an appeal from a rejection made during a reexamination proceeding. The patent is for a system for the controversial practice of “computerized electrodermal screening.” The Abstract of the patent states that it relates to “providing therapeutic treatment and promoting health of the body or for treating food, chemical, vitamin, mineral, metal, and biological sensitivities, through the application of electromagnetic radiation to the body in the form of signals of nonionizing, nonthermal, low energy, frequency specific electromagnetic radiation or low voltage alternating or direct current.” Slip op. at 2.

The PTO rejected Clark’s claims over two references from the early 1990s that describe Clark’s own Life Information System Tens device (“LISTEN”). In order to traverse an obviousness rejection over the LISTEN device, Clark amended the “radio frequency transmitter” limitation to comprise a “modulation transmitter.” Clark submitted a third-party affidavit stating that the LISTEN device did not use an FM transmitter or any other modulation circuit, despite statements in one of the references to the contrary. The examiner rejected the claims anyway, and the BPAI affirmed the rejection.

The court disagreed with Clark’s argument about the LISTEN device. The court noted that, “absent an obvious error on the face of the reference, a reference is prior art for what it discloses, even if the commercial system that the reference describes operated differently than disclosed in the reference.” Slip op. at 8. Thus, it makes no difference whether the actual LISTEN system used an FM transmitter or not, because one of ordinary skill in the art would have gotten the suggestion from the reference.

The BPAI’s obviousness rejection was affirmed.

Note: the technology at issue in the patent is, as noted above, quite controversial. For example, the Washington Supreme Court upheld sanctions against a doctor for use of the LISTEN device to allegedly diagnose and treat an egg allergy. Ames v. Washington State Health Dep’t Medical Quality Health Assurance Commission, 208 P.3d 549 (Wash. 2009). There is no mention of this controversy regarding the validity of the science in the court’s opinion, however.

You can read the court’s opinion here.