Federal Circuit Review - September 2014
Misrepresentation Regarding Prior Art Lead to Inequitable Conduct
In APOTEX INC. v. UCB, INC., Appeal No. 2013-1674, the Federal Circuit affirmed a judgment of inequitable conduct.
Apotex sued UCB for patent infringement. The two accused products were also prior art to the asserted patent. During prosecution, the patentee found through experimentation that the process that is the subject of its application was already used in making one of the accused products. The patentee repeatedly misrepresented this information before the PTO. Further, the patentee did not cite other prior art and submitted results of experiments that were never conducted. The district court ruled the asserted patent unenforceable due to the patentee’s inequitable conduct before the PTO.
The Federal Circuit affirmed. Clear and convincing evidence demonstrated that the patentee engaged in material misconduct. The patentee’s affirmative misrepresentations of facts were “but-for material” to the issuance of the patent. The Federal Circuit determined that the Examiner allowed the claims only after being convinced that the prior art did not use the same process as the applicant’s invention. Clear and convincing evidence also demonstrated that the patentee intended to deceive the PTO. The patentee knew, or at least had a strong suspicion, that it was seeking to patent the very same process used to obtain an already existing and widely available drug.
Post-Verdict Claim Construction Allowable
In MFORMATION TECHNOLOGIES, INC. v. RESEARCH IN MOTION LTD., Appeal Nos. 2012-1679, 2013-1123, the Federal Circuit affirmed a district court’s JMOL in light of a post-trial claim construction.
Mformation sued RIM for patent infringement. After the jury returned an infringement verdict of $147.2 million in favor of Mformation, the district court issued an order raising a claim construction issue and requesting further briefing. In light of the court’s explanation of the claim term at issue, Blackberry renewed its JMOL of non-infringement, which was granted. Mformation appealed, arguing that (1) the district court improperly introduced a post-verdict claim construction issue, (2) the construction was incorrect for requiring an order-of-steps in a method claim, and (3) the JMOL was improper even when relying on that claim construction.
The Federal Circuit affirmed. The Federal Circuit determined that the post-verdict discussion of claim language was an allowable elaboration or clarification of what was inherent in the original construction, and thus was not done in error. Next, the Federal Circuit determined that order-of-steps was required based on the claim language and earlier construction, and that logic dictates a particular order-of-steps. Finally, the Federal Circuit affirmed that JMOL of non-infringement was appropriate because substantial evidence did not support a jury verdict under the elaborated or clarified claim construction.
