Fresh From the Bench: Latest Federal Circuit Court Cases

CASE OF THE WEEK

D Three Enterprises, LLC v. SunModo Corporation, Appeal Nos. 2017-1909, -1910 (Fed. Cir. May 21, 2018)

The Court affirmed a grant of summary judgment of invalidity in favor of patent infringement defendants, based on a lack of written description support for the patents’ claimed priority date, resulting in a finding of anticipation by the accused products.

The asserted patents were directed to roof mount sealing assemblies, with claims directed to such assemblies both with and without soft washers, which may be located above or below a flashing piece, and with various types of bracket assemblies.  The asserted claims all claimed priority to a 2009 application, which the district court found disclosed a “washerless” assembly only with a “W-pronged attachment bracket 1700” (“1700 bracket”), and disclosed a “washered” assembly only with the washer situated above the flashing.  As such, the district court found that claims directed to washerless assemblies with other kinds of brackets, and to “washered” assemblies with washers situated below the flashing or elsewhere, were not entitled to the 2009 application’s priority date, and were invalid as anticipated by the accused sealing assemblies and other prior art.

On appeal, plaintiff argued that there was a genuine issue of fact as to whether a POSITA would have understood the 2009 application to disclose washerless assemblies with various brackets, or assemblies with washers below the flashing.

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ALSO THIS WEEK

XY, LLC v. Trans Ova Genetics, L.C., Appeal Nos. 2016-2054, -2136 (Fed. Cir. May 23, 2018)

In an appeal from a jury trial, Trans Ova appealed the district court’s antitrust, breach of contract, invalidity, and willfulness rulings and XY appealed the ongoing royalty rate adopted by the district court.  The Federal Circuit upheld the District Court’s grant of summary judgment in favor of XY, LLC on Trans Ova’s antitrust counterclaims.  It also upheld the jury’s findings of no invalidity, infringement and breach of contact.  The Court also vacated the ongoing royalty rate and remanded to the District Court to recalculate an ongoing royalty rate in accordance with the remainder of its opinion.

Opinion can be found here.

UCB, Inc. v. Accord Healthcare, Inc., Appeal Nos. 2016-2610, -2683, -2685, -2698, -2710, 2017-1001 (Fed. Cir. May 23, 2018)

In an appeal from a bench trial, the Federal Circuit affirmed the district court’s findings that patent claims related to anticonvulsant drugs for the treatment of epilepsy are not invalid.  The Court considered whether the asserted claims are invalid for obviousness-type double patenting, a judicially-created doctrine which “prohibits an inventor from obtaining a second patent for claims that are not patentably distinct from the claims of the first patent.”  The Federal Circuit determined that the differences between an earlier patent and the asserted claims are not “patentably distinct,” and the district court did not err by focusing its double patenting analysis on the claims’ differences, as well as the claims as a whole.  The appellate court also affirmed rejection of the defendant’s other invalidity arguments, including obviousness, anticipation, indefiniteness, and improper reissue.

Opinion can be found here.

Written by: Scott D. Eads and Nika F. Aldrich, Schwabe Williamson & Wyatt

Contributors: Cristin Wagner, Jason Wrubleski and Angela Addae