Today the Federal Circuit issued two precedential opinions in patent cases and one nonprecedential opinion in a patent case. Here are the introductions to the opinions.

Idenix Pharmaceuticals LLC v. Gilead Sciences Inc. (Precedential)

Idenix Pharmaceuticals LLC and Universita Degli Studi Di Cagliari (collectively, “Idenix”) appeal from the decision of the U.S. District Court for the District of Delaware granting judgment as a matter of law (“JMOL”) against Idenix and finding that U.S. Patent No. 7,608,597 is invalid for lack of enablement. Idenix Pharm. LLC v. Gilead Scis., Inc., 2018 WL 922125, at *25 (D. Del. Feb. 16, 2018) (“JMOL Opinion”). Gilead Sciences Inc., (“Gilead”) argues that the patent is also invalid for failure to meet the written description requirement, and that the district court erred by failing to grant JMOL on that ground as well. We affirm as to non-enablement and hold that the patent is also invalid for lack of written description.

NEWMAN, Circuit Judge, dissenting.

I respectfully dissent. The court errs in holding that the specific narrow claims of the ’597 patent are invalid. The large number of unclaimed chemical variants in the specification are not described, not synthesized, and not tested for antiviral activity. It is incorrect to include these variants in the claims and then to invalidate the claims because these variants are not described and not enabled.

The panel majority, overturning the jury verdict, finds the ’597 claims invalid on the grounds of non-enablement and inadequate description. The majority finds that there are “billions and billions” of possible nucleosides in the omnibus specification. On this reasoning, the majority finds invalid the narrow claims of the ’597 patent. However, a reasonable jury could have understood the claims as directed to the nucleosides that are specifically described and that are shown to have the claimed antiviral activity. A reasonable jury could have credited the evidence that the ’597 claims are for these specific compounds, not the “billions and billions” of unsynthesized and unevaluated variants in the specification. It is not disputed that the specific claimed compounds meet the requirements of 35 U.S.C. § 112. The jury verdict of validity must be viewed in light of the evidence and argument before the jury.

The majority’s holding that validity under section 112 is determined based on whether unclaimed subject matter is described and enabled, provides a new path of uncertainty and unreliability of the patent grant. I respectfully dissent.

Liqwd, Inc. v. L’Oréal USA, Inc. (Precedential)

Liqwd, Inc., appeals from a decision by the Patent Trial and Appeal Board that certain claims in its patent on formulations and methods of keratin treatment are unpatentable as obvious. In its obviousness analysis, based on evidence presented by Liqwd, the Board found that L’Oreal USA, Inc., used Liqwd’s confidential information and copied Liqwd’s patented method. But the Board disregarded its factual finding when concluding that the copying involved was legally irrelevant. Because that conclusion was error, we vacate the Board’s obviousness determination and remand. We agree with the other appealed aspects of the Board’s final written decision.

Metricolor LLC v. L’Oréal S.A. (Nonprecedential)

Plaintiff-appellant Metricolor LLC sued defendants-appellees L’Oréal S.A., L’Oréal USA, Inc., L’Oréal USA Products, Inc., L’Oréal USA S/D, Inc., and Redken 5th Avenue NYC, LLC (collectively, “L’Oréal” or “L’Oréal defendants”) in the United States District Court for the Central District of California alleging various claims related to the launch of two L’Oréal hair bonding products that allegedly resemble the hair coloring system claimed in Metricolor’s patent, U.S. Patent No. 9,301,587 (’587 patent). L’Oréal moved to dismiss the complaint for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6). L’Oréal S.A., the parent corporation of the other defendants, separately moved to dismiss the complaint against it for lack of personal jurisdiction under Fed. R. Civ. P. 12(b)(2). Metricolor opposed these motions and, in the alternative, requested leave to amend the complaint and leave to conduct jurisdictional discovery. The district court granted both motions to dismiss. Metricolor now appeals these two rulings.

Because the district court did not address Metricolor’s request for leave to amend the complaint, much less conduct an analysis of whether any amendment would have been futile, we vacate the district court’s grant of L’Oréal’s Rule 12(b)(6) motion and remand for the district court to address Metricolor’s request for leave in the first instance. We affirm the district court’s grant of L’Oréal S.A.’s Rule 12(b)(2) motion without granting leave to conduct jurisdic- tional discovery due to lack of actual and substantial prejudice to Metricolor.