Federal Circuit Review | May 2015
Overly Narrow Statement Of Problem Can Show Reliance On Hindsight
In INSITE VISION INCORPORATED v. SANDOZ, INC., Appeal No. 2014-1065, the Federal Circuit held that enunciating an overly narrow statement of the problem solved by the invention can represent prohibited reliance on hindsight.
Sandoz filed an Abbreviated New Drug Application for a generic version of Azasite, Inspire’s topical azithromycin solution. Inspire sued Sandoz for infringing patents directed to topical ophthalmic treatment with azithromycin. After Sandoz stipulated to infringement, the district court found Sandoz failed to show the asserted claims would have been obvious to one of ordinary skill in the art.
The Federal Circuit affirmed. Sandoz argued the district court’s framing of the obviousness question, whether it would have been obvious to develop a topical ophthalmic formulation containing azithromycin, was improperly broad. The proper question, Sandoz argued, should have been more narrow: whether it would have been obvious to use azithromycin to treat conjunctivitis. The Federal Circuit held the district court did not clearly err in its framing of the question because an overly narrow statement of the problem can represent a form of prohibited reliance on hindsight. The court also affirmed Sandoz failed to show by clear and convincing evidence the claims at issue would have been obvious. The district court did not clearly err in finding various alternatives that directed persons of ordinary skill in the art away from the invention, or in finding objective evidence of non-obviousness such as unexpected results, long-felt need, and skepticism by those of skill in the art.
District Court Must Articulate Reasons For Denying Motion To Recover Fees
In OPLUS TECHNOLOGIES LTD. v. VIZIO, INC., Appeal No. 2014-1297, the Federal Circuit held the district court abused its discretion when it made detailed findings of litigation misconduct by Oplus but did not articulate a reason for denying Vizio’s motion to recover fees.
After a summary judgment of noninfringement on the merits, Vizio moved to recover attorneys’ and expert witness fees under 35 U.S.C. § 285, 28 U.S.C. § 1927, and the district court’s inherent power. The district court found Oplus had unnecessarily delayed the litigation, abused the discovery process, used improper litigation tactics, and had attempted to mislead the court, leading to a holding that the case was exceptional under § 285 and that Oplus and its counsel were vexatious litigants. Despite these findings, however, the district court denied Vizio’s motion. The district court stated, without further explanation, that the “case has been fraught with delays and avoidance tactics to some degree on both sides” and that “[t]here is little reason to believe that significantly more attorney fees or expert fees have been incurred than would have been in the absence of Oplus’s vexatious behavior.”
The Federal Circuit, reviewing for abuse of discretion, held the stated reasons for denying Vizio’s motion were inadequate. The record did not specify any delays or avoidance tactics by Vizio, and counsel for Oplus was unable to articulate any at oral argument. The Federal Circuit noted that “it is difficult to imagine how Vizio had not incurred additional expenses” responding to Oplus’s misconduct, and further noted that Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014) had lowered the legal standard for awarding fees under § 285. Accordingly, the Federal Circuit held that, when a district court finds litigation misconduct and holds that a case is exceptional under § 285, the district court must articulate its reasons for denying a motion to recover fees.
Broader Range Disclosed in Prior Art Anticipates Narrower Range In Claim
In INEOS USA LLC v. BERRY PLASTICS CORP., Appeal No. 2014-1540, the Federal Circuit held that, when a patent claims a range, if the patentee is unable to establish the criticality of the claimed range, then the claimed range is anticipated by a prior art reference if the reference describes the claimed range with sufficient specificity.
Ineos’s patent recites four specific limitations, with each limitation claiming a range:
- At least 94.5%
- 0.05 to 0.5%
- 0 to 0.15%
- 0 to 5%
Ineos sued Berry Plastics for infringement. The district court granted summary judgment that the patent was invalid as anticipated by the prior art.
The Federal Circuit affirmed. The prior art disclosed limitation 1. The prior art also disclosed the range of 0.1 to 5%, which overlaps with limitation 2. However, the prior art did not disclose limitation 3 and 4. Nevertheless, limitations 3 and 4 were found to be optional, and therefore, any prior art did not require anticipating limitations 3 and 4.
Regarding limitation 2, the prior art disclosed a range that overlapped the claimed limitation. The Federal Circuit emphasized that, when a patent claims a range, that range is anticipated by a prior art reference if the reference discloses a point within the range. However, Berry Plastics did not disclose a point, but rather a range. Thus, as is the situation in this case, if the prior art discloses its own range, then the prior art is only anticipatory if it describes the claimed range with sufficient specificity so that a reasonable fact finder could conclude that there is no reasonable difference in how the invention operates over the ranges. Nevertheless, anticipation can be overcome if the patentee is able establish that the claimed range was critical to the invention. Here, however, Ineos was unable to establish the criticality of the claimed range.
Revisiting Indefiniteness Under New Standard Leads To Same Result
In BIOSIG INSTRUMENTS, INC. v. NAUTILUS, INC., Appeal No. 2012-1289, on remand from the Supreme Court, the Federal Circuit applied the Supreme Court’s new “reasonable certainty” standard for indefiniteness and maintained the patent claims were not indefinite because the inherent parameters of the invention were provided in the intrinsic evidence.
Biosig’s patent is directed to a heart rate monitor mounted on exercise equipment. The claim language at issue recites “a first live electrode and a first common electrode mounted on said first half in spaced relationship with each other; a second live electrode and a second common electrode mounted on said second half in spaced relationship with each other.” The district court granted Nautilus’s motion for summary judgment, holding that the patent was invalid because the “spaced relationship” term was indefinite. On appeal, the Federal Circuit used the old standard that a claim is indefinite “only when it is not amenable to construction or insolubly ambiguous” and found the “spaced relationship” term to be not indefinite.
On certiorari, the Supreme Court did not express an opinion on the patent-in-suit, but vacated and remanded the case solely based on legal standard. The Supreme Court rejected the previous indefiniteness standard, and articulated a new standard that “a patent is invalid for indefiniteness if its claims read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc. 134 S. Ct. 2120, 2124 (2014).
The Federal Circuit maintained this new standard of review is a familiar standard that has been applied by jurists all along; it is not a stricter or heightened standard as argued by the defendant. The Federal Circuit reviewed the district court’s claim construction de novo, because only intrinsic evidence was considered. By examining the specification and prosecution history, the Federal Circuit found supporting evidence that a skilled artisan could apply a test to determine the “spaced relationship” and could determine this relationship by calculating the point in which the signals are substantially removed. The Federal Circuit concluded a skilled artisan would understand the inherent parameters of the inventions as provided in the intrinsic evidence and would thus be informed with reasonable certainty of the scope of the claim.
