Posts Tagged: "Federal Circuit Review"

Disputed Claim Construction Not Suitable for Resolution on a Motion to Dismiss

Nalco asserted that the only difference between its patented method and the Chem-Mod Process was the location of the injection. The district court dismissed Nalco’s complaints for failure to state a claim, including its Fourth Amended Complaint (“4AC”) at issue in the present appeal… The Federal Circuit, in an opinion authored by Judge O’Malley, rejected Defendants’ argument that Nalco’s direct infringement claims were implausible and instead agreed with Nalco that the resolution of its claims depended on the construction of the terms “flue gas” and “injecting.” Resolution of this claim construction dispute was inappropriate at the Rule 12(b)(6) stage of the proceedings.

Factual Allegations on Inventive Concept Preclude Dismissal of Complaint Under § 101

In Atrix Software v. Green Shades Software, Aatrix sued Green Shades for infringement, and Green Shades moved to dismiss. The district court granted the motion, holding: (1) claim 1 of the ‘615 patent was not directed to any tangible embodiment and was not patent-eligible subject matter under § 101; and (2) under the Alice/Mayo two-step analysis, the remaining claims were for abstract ideas without inventive concepts and were also ineligible. Aatrix appealed. The Federal Circuit vacated the district court’s decision, reversed its denial of Aatrix’s motion for leave to file a second amended complaint, and remanded for further proceedings… Allegations in a patent infringement complaint that create a factual dispute about whether the claimed invention contains an inventive concept will defeat a motion to dismiss under § 101. For software inventions, such allegations include improvements in how a computer functions. An amended complaint to make such allegations should generally be allowed.

Despite Discovery Violations, Amneal Prevails on against Merck in Nasonex Patent Dispute

Merck appealed the lower court’s finding of non-infringement of U.S. Patent No. 6,127,353 (“the ‘353 patent”), which is directed toward mometasone furoate monohydrate (“MFM”), commercially used in Merck’s Nasonex… Merck further contended that the district court erred by basing its non-infringement ruling on the “Day 1 Batches” rather than the “A Batches” because the focus must be on what will be the final commercial product. However, the Federal Circuit rejected this argument by pointing out Merck’s failure to prove a material difference between the “Day 1 Batches” and the “Day 4 Batches” and “A Batches.”

Federal Circuit vacates PTAB decision for failure to explain reason claims were invalid

Unlike the Board’s anticipation determinations, which contravened the only permissible findings that could be drawn from the prior art under the proper constructions of the relevant claim terms, the obviousness determinations involved “potentially lawful but insufficiently or inappropriately explained” factual findings. In re Van Os, 844 F.3d 1359, 1362 (Fed. Cir. 2017). The Board failed to explain its reasoning to allow the Court to determine whether its findings would be lawful. When faced with similarly deficient factual findings, the Court has “consistently vacated and remanded for further proceedings.” Id. Consequently, the Court vacated the Board’s obviousness rejections with respect to claims 1-3, 5-8, and 21, and remanded for further factual findings and explanation on this issue.

PTAB Ruling Tainted by Hindsight; Failure to Consider Undisputed Commercial Success

The Federal Circuit also remanded to the Board further consideration of the undisputed evidence presented by Polaris that its ATVs were a commercial success. Polaris presented undisputed evidence that its vehicles had generated over $1.5 billion in sales since 2007 and that the commercial product was tied to the patent and claims entitling Polaris to a presumption of a nexus. Despite this undisputed evidence the Board still concluded that Polaris failed to prove a nexus, finding Polaris’ evidence conclusory.