A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Immunex Corp., et al. v. Sandoz Inc., et al., No. 2020-1037 (Fed. Cir. (D.N.J) July 1, 2020). Opinion by O’Malley, joined by Chen. Dissenting opinion by Reyna.
Hoffmann-La Roche Inc. and its exclusive licensee Immunex are parties to a 2004 Agreement covering two patents owned by Roche and licensed to Immunex. The patents are directed to the fusion protein etanercept, which is the active ingredient in Enbrel®. When Sandoz requested approval to market a biosimilar version of Enbrel®, Immunex and Roche filed suit under the Biologics Price Competition and Innovation Act. Sandoz stipulated to infringement but challenged the patents’ validity. The district court found that Sandoz failed to establish that the patents were invalid based on (i) obviousness-type double patenting in view of earlier Immunex patents, (ii) failure to meet the written description requirement, and (iii) obviousness. Sandoz appealed, addressing all three issues.
Regarding obviousness-type double patenting, the Federal Circuit explained that an agreement conveying “all substantial rights” in a patent is “tantamount to an assignment of ownership,” which informs ownership for purposes of obviousness-type double patenting. The Federal Circuit held that “where one of the rights transferred is the right to prosecute the patent at issue, identification of the effective ‘patentee’ is informative in evaluating whether the patents are ‘commonly owned’ for purposes of obviousness-type double patenting.” Applying these concepts to the 2004 Agreement, the Federal Circuit ruled that Roche had not transferred all substantial rights in the patents to Immunex. As a result, the patents-in-suit and the earlier Immunex patents were not commonly owned and, therefore, obviousness-type double patenting did not apply.
Turning to the written description, Sandoz argued that the patents were invalid because the specification did not support a full-length p75 DNA sequence or the claimed p75-IgG1 fusion protein. Regarding the former, the Federal Circuit recognized that the specification provided only portions of the full sequence but determined that the disclosed portions would have led a skilled artisan to complete the sequence. Regarding the p75-IgG1 fusion protein, the Federal Circuit held that the disclosures in the specification, including one example, would have led a skilled artisan to the protein.
Finally, on the issue of obviousness, the Federal Circuit held that the district court’s analysis of motivation to combine and objective indicia of non-obviousness were not legally erroneous.
Judge Reyna dissented. In his view, the 2004 Agreement was “an effective assignment of the patents-in-suit to Immunex,” and therefore “Immunex is a common owner for obviousness-type double patenting purposes.” Also, in Judge Reyna’s view the rights retained by Roche in the 2004 Agreement, including a secondary right to sue and a right to veto an Immunex assignment, were illusory because they did not “prevent Immunex from enjoying the patents-in-suit in any meaningful way.”
Electronic Communication Technologies, LLC v. ShoppersChoice.com, LLC, No. 2019-2087 (Fed. Cir. (S.D. Fla.) July 1, 2020). Opinion by Wallach, joined by Prost and Dyk.
Electronic Communication Technologies (ECT) sued ShoppersChoice for infringement of a patent directed to automated systems for providing notifications regarding the travel status of pickups and deliveries. ShoppersChoice filed a motion for judgment on the pleadings, challenging the lone asserted claim as patent ineligible under 35 U.S.C. § 101. The district court applied the two-step Alice analysis and found the claim ineligible. ShoppersChoice then filed a motion for attorneys’ fees, which the district court denied. ShoppersChoice appealed that denial.
The Federal Circuit vacated and remanded the denial of attorneys’ fees, ruling that the district court erred by “failing to address ECT’s manner of litigation and the broader context of ECT’s lawsuit against ShoppersChoice.” The district court had been presented with evidence that ECT sent standardized demand letters, filed infringement actions against over 150 defendants to obtain “low-value ‘license fees,’” and used litigation “to achieve a quick settlement with no intention of testing the strength of the patent.” Also, the district court failed to consider the objective unreasonableness of ECT’s infringement allegations, including failing to address two other district court cases that had undermined the patent’s validity. The Federal Circuit summarized that “by not addressing the adequate evidence of an abusive pattern of ECT’s litigation, the District Court failed to conduct an adequate inquiry and so abused its discretion.”