- Challenging Therapeutics IP After Fed. Circ. Drink Can Ruling – Issued on the last day of 2020, the Federal Circuit’s opinion in Ball Metal Beverage Container Corp. v. Crown Packaging Technology Inc., raises important considerations for patent challengers alleging the indefiniteness of measurement claim terms that describe pharmacologic or physicochemical properties of an invention.
- Apple Transfer Win Survives Bid for Full Federal Circuit Review – The Federal Circuit denied a petition for an en banc review of an earlier decision that enabled Apple to transfer its case to the Northern District of California.
- Federal Circuit Says PTAB Failed to Provide Proper Notice to IPR Respondent of Anticipation Theory – A recent Federal Circuit decision held that the Patent Trial and Appeal Board erred in finding a claim anticipated by prior art even though the petition for inter partes review had only asserted obviousness as to the claim.
Here’s the latest.
Challenging Therapeutics IP After Fed. Circ. Drink Can Ruling
On December 31, 2020, the Federal Circuit issued an opinion in Ball Metal Beverage Container Corp. v. Crown Packaging Technology Inc., in which the court vacated and remanded a district court’s ruling that two beverage can patents were invalid for indefiniteness. Specifically, the district court found that the patents were indefinite for including an imprecise measurement claim term: “second point.” The Federal Circuit vacated this indefinite ruling because the district court failed to assess whether the selection of one measurement method would actually yield materially different results from another measurement method and thereby affect whether a product infringes the claim. Although the Federal Circuit’s decision was nonprecedential, Vanessa Yen and Evan Diamond explain how the case will impact future challenges to therapeutic inventions, “including patents claiming new pharmaceutical or biologic drug compositions, new methods of treating disease, or new dosing regimens.” According to Yen And Diamond, the Ball Metal case illustrates that a claim is not automatically deemed invalid as indefinite under Section 112, Paragraph 2 merely because it includes a parameter that is sensitive to the method used to measure or locate it.
In light of Ball Metal, both patentees and patent challengers of therapeutic inventions should keep in mind that a measurement claim term is not necessarily indefinite, even if multiple measurement methods are applicable to the term, and that the term’s scope or value can vary depending on which of the applicable methods is used.
But if such method-sensitive variations in term scope are shown to be materially different, such that the measurement method selected could control whether or not a realistic, otherwise operational embodiment would infringe the claims, then an indefiniteness challenge may potentially carry more weight.
Yen and Diamond also discuss that the case may have future procedural implications regarding the standard of review.
At the district court level, a genuine factual dispute regarding whether variations in a measurement method-sensitive term are materially different could potentially preclude some early findings of indefiniteness at the summary judgment or claim construction stages.
And at the appellate level, fact-intensive disputes regarding whether measurement outcomes are materially different might be subject to greater Federal Circuit deference if addressed by the court below or lead to remand if, as in Ball Metal, the issue was not fully considered below.
Apple Transfer Win Survives Bid for Full Federal Circuit Review
After a divided panel of the Federal Circuit granted Apple’s mandamus petition in November, Uniloc sought full Federal Circuit review of the decision. However, in a nonprecedential order and without explanation, the Federal Circuit denied Uniloc’s request. While the patent infringement suit was originally filed in the Western District of Texas, which Perry Cooper describes as a “magnet jurisdiction for patent litigation,” Apple successfully petitioned for a transfer to a “more convenient” court in the Northern District of California. As Cooper emphasizes, this is just one decision in a long line of transfer cases arising out of the Waco Division.
Uniloc sought en banc review of the decision, which it called “the latest in a line of cases eroding trial courts’ discretion to weigh facts, decide issues within their power, and manage their dockets, effectively converting them into special masters of this court.”
Federal Circuit Says PTAB Failed to Provide Proper Notice to IPR Respondent of Anticipation Theory
The Federal Circuit vacated one aspect of a Patent Trial and Appeal Board decision, stating that the PTAB erred in finding that one patent claim was anticipated when the inter partes review petition only asserted obviousness as to that claim. However, the court affirmed the holding of unpatentability as to the rest of the asserted claims. The patent at issue in M&K Holdings, Inc. v. Samsung Electronics Co. Ltd. involves “an efficient method for compressing video files.” Samsung Electronics filed for inter partes review (IPR) challenging all claims of the patent as unpatentable. Additionally, as Eileen McDermott outlines in the article, Samsung Electronics specifically said that “claims 1, 5, and 6 were anticipated by a reference known as ‘WD4-v3’”; “claim 2…was both anticipated by WD4-v3 and rendered obvious by the combination of WD4-v3 and a paper by Park et al. [and] claims 3 and 4…were rendered obvious by the combination of WD4-v3, Park, and a paper by Minhua Zhou.” M&K responded and argued that those references do not qualify as printed publications under 35 U.S.C. § 102. The crux of the issue on appeal, however, revolves around PTAB’s finding that claim 3 was anticipated by WD4-v3, even though Samsung’s petition had only asserted obviousness as to that claim.
Explaining that the Administrative Procedure Act “imposes particular procedural requirements on the Board” that mandate the PTAB must “timely inform the patent owner of ‘the matters of fact and law asserted’” and “give all interested parties the opportunity to submit and consider facts and arguments,” the CAFC agreed with M&K that “the Board deviated impermissibly from the invalidity theory set forth in Samsung’s petition when it held that claim 3 was anticipated by WD4-v3.” Despite Samsung’s argument that the PTAB’s analysis was merely “a simpler path to invalidating claim 3” that “was inherent in Samsung’s obviousness theory,” the CAFC said that the holding represented “a marked deviation” from “the evidence and theories presented by the petition or institution decision, creating unfair surprise.” Arthrex, Inc. v. Smith & Nephew, Inc., 935 F.3d 1319, 1328 (Fed. Cir. 2019).