Appellants Sanofi, Aventisub LLC, Regeneron Pharmaceuticals Inc., and Sanofi-Aventis U.S., LLC (collectively, “Appellants”) appeal from a final judgment of the district court holding U.S. Patent Nos. 8,829,165 (“’165 patent”) and 8,859,741 (“’741 patent”) not invalid and granting a permanent injunction enjoining sales of Appellants’ Praluent® alirocumab (“Praluent”).1 In particular, Appellants argue that the district court improperly excluded evidence regarding written description and enablement, improperly instructed the jury on written description, improperly denied Appellants’ motion seeking JMOL of no written description and no enablement, improperly granted Appellees’ motion seeking JMOL of non-obviousness, and improperly issued the permanent injunction. Appellants’ Br. 1. Because we conclude that the district court (i) erred by excluding Appellants’ evidence regarding written description and enablement, and (ii) improperly instructed the jury on written description, we reverse-in-part and remand for a new trial on written description and enablement. We also conclude that Appellants are not entitled to JMOL of no written description and no enablement. We affirm the district court’s grant of Appellees’ JMOL of non-obviousness. Finally, we vacate the district court’s permanent injunction.
In this appeal, we consider the proper allocation of the burden of proof when amended claims are proffered during inter partes review proceedings (“IPRs”) under the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, § 6(a)–(c), 125 Stat. 284–341 (2011) (provisions creating inter partes review codified in ch. 31 of Title 35, 35 U.S.C. §§ 311–19 (2012)). Specifically, we consider how the AIA’s statutory language in 35 U.S.C. § 316(e), which places “the burden of proving a proposition of unpatentability by a preponderance of the evidence” onto the petitioner in an IPR, applies to claim amendments authorized by 35 U.S.C. § 316(d), and whether the Patent Trial and Appeal Board’s (“Board”) current practices with respect to amendments accord with that application.
A panel of our court concluded that the Board did not abuse its discretion in denying Appellant Aqua Products, Inc.’s (“Aqua”) motion to amend various claims of U.S. Patent No. 8,273,183 (“the ’183 patent”) during the course of an IPR. In re Aqua Prods., Inc., 823 F.3d 1369, 1373–74 (Fed. Cir. 2016) (hereinafter “Panel Decision”). The court granted Aqua’s request for en banc rehearing and vacated the panel decision. In re Aqua Prods., Inc., 833 F.3d 1335 (Fed. Cir. 2016) (en banc) (per curiam).
Upon review of the statutory scheme, we believe that § 316(e) unambiguously requires the petitioner to prove all propositions of unpatentability, including for amended claims. This conclusion is dictated by the plain language of § 316(e), is supported by the entirety of the statutory scheme of which it is a part, and is reaffirmed by reference to relevant legislative history. Because a majority of the judges participating in this en banc proceeding believe the statute is ambiguous on this point, we conclude in the alternative that there is no interpretation of the statute by the Director of the Patent and Trademark Office (“PTO”) to which this court must defer under Chevron, U.S.A. Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984). And we believe that, in the absence of any required deference, the most reasonable reading of the AIA is one that places the burden of persuasion with respect to the patentability of amended claims on the petitioner.1 Finally, we believe that the Board must consider the entirety of the record before it when assessing the patentability of amended claims under § 318(a) and must justify any conclusions of unpatentability with respect to amended claims based on that record.
Because the participating judges have different views—both as to the judgment we should reach and as to the rationale we should employ in support of that judgment, as explained below, today’s judgment is narrow. The final written decision of the Board in this case is vacated insofar as it denied the patent owner’s motion to amend the patent. The matter is remanded for the Board to issue a final decision under § 318(a) assessing the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner.
This dispute between G. David Jang, M.D. (Dr. Jang) and Boston Scientific Corp. and Scimed Life Systems, Inc. (collectively, BSC), more than a decade old, returns to us for a fourth time. In the latest appeal of this case involving U.S. Patent No. 5,922,021 (ʼ021 Patent) and BSC’s sales of several coronary stents (collectively, Express stent), Dr. Jang challenges the district court’s denial of his motion for judgment as a matter of law (JMOL) on the ground that no reasonable jury could have found that BSC’s Express stent did not literally infringe claims 1 and 8 (the asserted claims) of the ’021 Patent. Dr. Jang also challenges the district court’s vacatur of the jury’s finding that the Express stent infringed the asserted claims under the doctrine of equivalents, as well as the entry of judgment of non-infringement in favor of BSC, on the ground that the district court incorrectly held that he failed to provide an acceptable hypothetical claim for an ensnarement analysis, and thereby failed to prove that his doctrine of equivalents theory did not ensnare the prior art. Dr. Jang’s appeal is accompanied by a purported cross-appeal from BSC, which assigns error to the district court’s holding that BSC was contractually obligated to pay royalties for past sales of the Express stent if it infringed the asserted claims, notwithstanding the U.S. Patent and Trademark Office’s (PTO) eventual cancellation of them in an ex parte reexamination.
Because we affirm the district court’s denial of Dr. Jang’s motion for JMOL, its vacatur of the jury verdict of infringement under the doctrine of equivalents, and its entry of judgment of non-infringement, we dismiss BSC’s cross-appeal and need not reach the arguments it raised.
Smith International, Inc. (“Smith”) appeals from a decision of the United States Patent and Trademark Office (“the PTO”) Patent and Trial Appeal Board (“the Board”) affirming the examiner’s rejections of claims 28–36, 39–46, 49, 50, 79–81, and 93–1001 of U.S. Patent 6,732,817 (“the ’817 patent”) in an ex parte reexamination. Ex parte Smith Int’l, Inc., No. 2015-008323, 2016 Pat. App. LEXIS 3764 (P.T.A.B. Apr. 29, 2016) (“Board Decision”). For the reasons that follow, we reverse.
Cray Inc. (“Cray”) petitions for a writ of mandamus vacating the order of the United States District Court for the Eastern District of Texas denying its motion to transfer the case to the United States District Court for the Western District of Wisconsin. See Raytheon Co. v. Cray, Inc., No. 2:15-cv-01554-JRG, 2017 WL 2813896 (E.D. Tex. June 29, 2017) (“Transfer Order”). Raytheon Company (“Raytheon”) opposes the petition. The district court misinterpreted the scope and effect of our precedent in determining that Cray maintained “a regular and established place of business” in the Eastern District of Texas within the meaning of 28 U.S.C. § 1400(b). Accordingly, the court’s decision refusing transfer pursuant to 28 U.S.C. § 1406(a) was an abuse of discretion. We therefore grant Cray’s petition for a writ of mandamus and direct transfer of the case.
NFC Technology, LLC (“NFC”) appeals from the final written decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”) proceeding concluding that claims 1–3 and 5 of U.S. Patent 6,700,551 (“the ’551 patent”) are unpatentable as obvious. See HTC Corp. v. NFC Tech., LLC, IPR 2014-01198, 2016 WL 497524, at *1 (P.T.A.B. Feb. 3, 2016) (“Final Decision”). Specifically, the Board rejected NFC’s argument that it had created a prototype embodying the claimed invention before the priority date of a cited reference, on the basis that NFC had not adequately proven that certain third-party activity inured to NFC’s benefit. Id. at *5–15. For the reasons that follow, we reverse the Board’s determination as to inurement, and remand for the Board to determine whether NFC presented sufficient evidence that the prototype embodied the claimed invention.
Idemitsu Kosan Co., Ltd. (“Idemitsu”) seeks review of the July 29, 2016 decision of the Patent Trial and Appeal Board (“the Board”) finding claims 1–5, 7–11, 13, and 14 of U.S. Patent No. 8,334,648 (“the ’648 patent”) invalid as obvious over International Publication WO 02/052904 (“Arakane”). See SFC Co. Ltd. v. Idemitsu Kosan Co., Ltd., No. IPR2015-00564, 2016 Pat. App. LEXIS 13340 (P.T.A.B. July 29, 2016). For the following reasons, we affirm.
First Data Corporation (“First Data”) and Frank Bisignano (“Bisignano”) appeal from the district court’s dismissal of their counterclaims and their declaratory judgment action under Federal Rule of Civil Procedure 12(b)(1). See Bisignano v. Inselberg, Nos. 15-8301 (KM) (JBC), 16-317 (KM) (JBC), 2016 U.S. Dist. LEXIS 113563 (D.N.J. Aug. 25, 2016) (District Court Opinion). They also object to the district court’s order remanding their state law claims to state court. Because the district court correctly dismissed the federal claims for lack of subject matter jurisdiction and we cannot review the remand order, we affirm.
The present appeal arises from the dismissal of a declaratory judgment action in the Southern District of Florida. Allied Mineral Products, Inc. (“Allied”) sued three related entities, OSMI, Inc., Stellar Materials, Inc., and Stellar Materials, LLC (collectively “Stellar”), seeking a declaratory judgment that it did not infringe Stellar’s U.S. Patent No. 7,503,974 (the “’974 patent”), the patent is invalid, and Stellar committed inequitable conduct. The district court dismissed the complaint for lack of subject matter jurisdiction. Because the district court correctly determined that Stellar’s actions do not create a justiciable case or controversy, we affirm.
Intellectual Ventures I LLC and Intellectual Ventures II LLC (collectively “IV”) brought suit against Motorola Mobility LLC (“Motorola”) in the United States District Court for the District of Delaware alleging infringement of claim 41 of U.S. Patent No. 7,810,144 (“the ’144 patent”) and claims 1, 10, 11, and 13 of U.S. Patent No. 7,120,462 (“the ’462 patent”). A jury found the asserted claims infringed and not invalid. The district court denied Motorola’s motion for judgment as a matter of law. Motorola appeals.
We hold that substantial evidence supports the jury’s verdict regarding the validity of claim 41 of the ’144 patent and claims 1, 10, 11, and 13 of the ’462 patent, but conclude that substantial evidence does not support the jury’s verdict of direct infringement of claim 41 of the ’144 patent. Since a finding of direct infringement is a predicate to any finding of indirect infringement, we reverse all of the infringement findings with respect to the ’144 patent. We therefore affirm the district court’s judgment in part, reverse in part, and remand for further proceedings on the asserted claims of the ’462 patent.