Promega Corp v. Life Technologies, Inc.

This case returns to us on remand from the Supreme Court. See Life Techs. Corp. v. Promega Corp., 137 S. Ct. 734, 741 (2017) (Promega II). Defendants-Appellants (collectively, Life) sought review of our decision in Promega Corp. v. Life Technologies Corp., 773 F.3d 1338 (Fed. Cir. 2014) (Promega I), arguing, inter alia, that we erred in holding that a multicomponent product assembled overseas could infringe a United States patent under 35 U.S.C. § 271(f)(1)1 when only a single component of the product is supplied from the United States. The Supreme Court granted Life’s petition for a writ of certiorari, reversed our judgment, and remanded for further proceedings consistent with its holding that “§ 271(f)(1) does not cover the supply of a single component of a multicomponent invention.” Promega II, 137 S. Ct. at 743.

The Supreme Court’s opinion did not affect several of our prior holdings. First, we held that the asserted claims of four patents owned by Promega Corporation (Promega) were invalid for failure to comply with the enablement requirement in 35 U.S.C. § 112, ¶ 1. Promega I, 773 F.3d at 1346–50. Second, we held that certain of Life’s alleged acts of infringement were not licensed under a 2006 license agreement between Life and Promega.2 Id. at 1357–58. Finally, we held that Life was not required to “actively induce” a third party to combine the components of the accused products to be liable under § 271(f)(1). Id. at 1351–53. Rather, the active inducement requirement could be met if Life had the specific intent to combine the components itself. Id. We reaffirm our holdings on the enablement, licensing, and active inducement issues.

The Supreme Court’s opinion, however, requires us to reconsider two of our prior holdings. First, we must reexamine our reversal of the district court’s grant of Life’s motion for judgment as a matter of law (JMOL) that Promega failed to prove its infringement case under 35 U.S.C. § 271(a)3 and § 271(f)(1).4 See id. at 1358. Second, we must reconsider our vacatur of the district court’s denial of Promega’s motion for a new trial on damages and infringement. Id. For the reasons below, we now affirm the district court’s decisions on these motions.

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Sanofi v. Watson Laboratories Inc.

Sanofi owns U.S. Patent Nos. 8,318,800 and 8,410,167, which describe and claim compositions and uses of the cardiovascular (specifically, antiarrhythmic) drug dronedarone. The ’800 patent, which expires in 2019, claims pharmaceutical compositions containing dronedarone. The ’167 patent, which expires in 2029, claims methods of reducing hospitalization by administering dronedarone to patients having specified characteristics. Sanofi’s subsidiary, Sanofi-Aventis U.S., LLC, received approval in mid-2009 for New Drug Application No. 022425 for 400 mg tablets of dronedarone, sold as Multaq®.

Both the ’800 and the ’167 patents are listed in the Food and Drug Administration’s publication Approved Drug Products with Therapeutic Equivalence Evaluations (the “Orange Book”) as patents claiming either Multaq® or a method of using Multaq®. Watson Laboratories Inc. and Sandoz Inc., hoping to market generic versions of Multaq®, filed abbreviated new drug applications with the Food and Drug Administration. Both firms certified, under 21 U.S.C§ 355(j)(2)(A)(vii)(IV), their beliefs that the ’167 and ’800 patents were invalid and/or that the manufacture, use, and sale of the proposed generic drugs would not infringe either patent. Upon receiving notice of the paragraph IV certifications, the two Sanofi firms, which we will simply call “Sanofi,” sued Watson and Sandoz for infringement of the two patents under 35 U.S.C. § 271(e)(2)(A).

After a three-day bench trial, the district court ruled in crucial respects for Sanofi. Sanofi v. Glenmark Pharm. Inc., USA, 204 F. Supp. 3d 665, 704–705 (D. Del. 2016). As to the ’167 patent, the court made the following rulings of relevance here: Sanofi proved that Watson’s and Sandoz’s sale of their proposed generic drugs, with their proposed labels, would induce physicians to infringe all but one of the asserted claims, id. at 673–84; and Watson and Sandoz did not prove that any of the asserted claims were invalid for obviousness, id. at 685–96. As to the ’800 patent, the district court, rejecting the non-infringement argument made by Watson and Sandoz, concluded that the asserted claims do not exclude compositions containing polysorbate surfactants. Id. at 699–704. The district court then entered a final judgment rejecting the obviousness challenge to claims 1–6, 8–13, and 16 of the ’167 patent; finding inducement of infringement, by both defendants, of all of those claims except claim 5; and finding infringement by both defendants of claims 1–3, 5- 9, and 12–15 of the ’800 patent and by Watson of claims 10 and 11 as well.

Watson and Sandoz appeal. We have jurisdiction under 28 U.S.C. § 1295(a)(1). We affirm.

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Bayer Pharma AG v. Watson Laboratories, Inc.

Watson Laboratories, Inc. appeals the District of Delaware’s final judgment holding Watson failed to prove by clear and convincing evidence that claims 9 and 11 of U.S. Patent No. 8,613,950 (“the ’950 patent”) would have been obvious. We hold the district court clearly erred in finding a skilled artisan would not have been motivated to use the claim elements. Considering the district court’s clear error together with the remainder of its fact findings, we conclude that claims 9 and 11 of the ’950 patent would have been obvious. We therefore reverse.

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Mastermine Software, Inc. v. Microsoft Corp.

MasterMine Software, Inc. appeals from a stipulated judgment of noninfringement and invalidity following adverse claim construction and indefiniteness rulings from the United States District Court for the District of Minnesota. Because the district court’s construction is supported by the intrinsic evidence, and the claims do not improperly claim both an apparatus and a method of using the apparatus, we affirm the court’s claim construction, reverse the court’s indefiniteness determination, and remand for proceedings consistent with this opinion.

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Merck Sharp & Dohme Corp. v. Hospira, Inc.

LOURIE, Circuit Judge. Merck Sharp & Dohme Corp. (“Merck”) appeals from the decision of the United States District Court for the District of Delaware concluding, after a bench trial, that claims 21–34 (“the asserted claims”) of U.S. Patent 6,486,150 (“the ’150 patent”) are invalid under 35 U.S.C. § 103 (2006). See Merck Sharp & Dohme Corp. v. Hospira Inc., No. CV 14-915-RGA, 2016 WL 5872620, at *21 (D. Del. July 10, 2016) (Decision). Because the district court did not err in its conclusion of obviousness, we affirm.

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Arista Net 2 Works, Inc. v. International Trade Commission

The International Trade Commission entered a limited exclusion order against Arista Networks, Inc. based on its final determination that Arista infringed three of Cisco Systems, Inc.’s patents. The Commission also determined that Arista did not infringe two other Cisco patents. The exclusion order excluded entry into the United States imports of certain network devices, related software, and components thereof. Arista appeals the Commission’s infringement determination and the scope of the limited exclusion order. Cisco cross-appeals the Commission’s noninfringement determination. Finding no error in the Commission’s final determination or exclusion order, we affirm.

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Smart Systems Innovations, LLC v. Chicago Transit Authority

Appellant Smart Systems Innovations, LLC (“SSI”) sued Appellees Chicago Transit Authority et al. (collectively, “Appellees”) in the U.S. District Court for the Northern District of Illinois (“District Court”), alleging infringement of U.S. Patent Nos. 7,566,003 (“the ’003 patent”), 7,568,617 (“the ’617 patent”), 8,505,816 (“the ’816 patent”), and 8,662,390 (“the ’390 patent”) (collectively, “the Patents-in-Suit”). Appellees responded by filing a motion for judgment on the pleadings, asserting that various claims of the Patents-in-Suit (“the Asserted Claims”)2 are patent ineligible under 35 U.S.C. § 101 (2012).3 The District Court granted Appellees’ Motion, holding that the Asserted Claims are directed to an abstract idea and otherwise lack an inventive concept, such that they are patent ineligible under § 101. See Smart Sys. Innovations, LLC v. Chi. Transit Auth., No. 1:14-cv-08053, 2015 WL 4184486, at *7 (N.D. Ill. July 10, 2015). The District Court later entered final judgment as to the Asserted Claims pursuant to Federal Rule of Civil Procedure 54(b).4 J.A. 1−2. SSI appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (2012). We affirm.

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Secured Mail Solutions LLC v. Universal Wilde, Inc.

Secured Mail Solutions LLC appeals from the United States District Court for the Central District of California’s grant of a motion to dismiss on grounds that the claims of seven asserted patents are directed to subject matter ineligible for patenting under 35 U.S.C. § 101. Because the claims of the asserted patents are directed to an abstract idea and the claims contain no additional elements that transform the nature of the claims into a patent-eligible application of the abstract idea, we affirm.

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Organik Kimya AS v. Rohm and Haas Co.

Organik Kimya AS (“Organik”) appeals the decisions of the Patent Trial and Appeal Board (“PTAB” or “Board”) in two related inter partes review (“IPR”) proceedings for which Organik is the Petitioner. The Patent Owner is the Rohm and Haas Company. The PTAB sustained the patentability of claims 1–5 of U.S Patent No. 6,020,435 (“the ’435 Patent”), and claims 1–7 of its division, U.S. Patent No. 6,252,004 (“the ’004 Patent”). On appellate review, we affirm the PTAB’s decisions.

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Owens Corning v. Fast Felt Corp.

Fast Felt Corporation owns U.S. Patent No. 8,137,757, which describes and claims methods for printing nail tabs or reinforcement strips on roofing or building cover material. Fast Felt sued Owens Corning for infringement, and Owens Corning then filed a petition with the Patent and Trademark Office (PTO) seeking an inter partes review of claims 1, 2, 4, 6, and 7 under 35 U.S.C. §§ 311–19. The Patent Trial and Appeal Board, acting as the delegate of the PTO’s Director under 37 C.F.R. § 42.4(a), instituted a review of all of the challenged claims on grounds of obviousness. Institution of Inter Partes Review at 26, Owens Corning v. Fast Felt Corp., No. IPR2015-00650 (P.T.A.B. Aug. 13, 2015), Paper No. 9 (Institution Decision). After conducting the review, the Board concluded that Owens Corning had failed to show obviousness of any of the challenged claims. Final Written Decision, Owens Corning v. Fast Felt Corp., No. IPR2015-00650, 2016 WL 8999740, at *23 (P.T.A.B. Aug. 11, 2016) (Final Decision).

Owens Corning appeals from the Board’s decision. It contends that, once the key claim term is given its broadest reasonable interpretation, the record conclusively establishes obviousness. We agree, and we reverse the Board’s decision.

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