Latest Federal Court Cases – May 2023 #3 | Schwabe, Williamson & Wyatt PC
In this week’s Case of the Week, a split panel of the Federal Circuit considered issues pertaining to reduction to practice and inventor corroboration as pertained to various related pre-AIA patents owned by appellee Teleflex and directed to guide extension catheters for use in coronary arteries. In the underlying inter partes reviews, the Patent Trial and Appeal Board had found that petitioner Medtronic’s primary asserted prior art patent (“Itou”) was not prior art because Teleflex’s claimed invention had been actually reduced to practice prior to Itou’s effective filing date of September 23, 2005, and that Medtronic had therefore failed to show that the claims were unpatentable. On appeal, Medtronic argued that the Board had not correctly identified the invention’s intended purpose for reduction-to-practice purposes, that it should have required comparative testing to show that the invention worked for that purpose, and that the inventors’ reduction-to-practice testimony was insufficiently corroborated. A majority of the Federal Circuit panel affirmed.
In order to show actual reduction to practice, a patentee must demonstrate that the inventors constructed an embodiment that met all the limitations of the claimed invention, and that the inventors determined that it would work for its intended purpose. The Board had found that the “intended purpose” of the claimed guide extension catheter was to provide increased backup support compared to a guide catheter alone, and Medtronic argued that (1) the Board erred in considering extrinsic evidence to arrive at this determination, which it argued should be based on intrinsic evidence alone, and (2) the “intended purpose” should also have included facilitating the delivery of interventional devices through tough or chronic occlusions in arteries. The Federal Circuit rejected the first argument, holding that as in claim construction, resort to extrinsic evidence to determine the intended purpose may be appropriate, but that since a finding of intended purpose is reviewed de novo, it did not matter for purposes of appeal what the Board actually relied on. Reviewing the intrinsic and extrinsic evidence of record, the Federal Circuit agreed with the Board that Medtronic’s proposed purpose was too narrow, and that facilitating delivery through tough or chronic occlusions was simply a specific example of a broader general purpose described in the patents of simply providing improved support. Indeed, the majority opinion noted that based on the title of the patents—“Coaxial Guide Catheter for Interventional Cardiology Devices”—and the claims’ recitation of a “device for use with a standard guide catheter,” the intended purpose may be considered to be simply performing the functions of a guide extension catheter.
Having determined that the intended purpose required (at most) providing increased backup support compared to a guide catheter alone, the majority agreed with Teleflex that quantitative, comparative testing was not required in this case to show that the claimed devices would work for that purpose. “Rather, it simply requires that an inventor, a skilled artisan, would observe the tests and understand that they indicate the prototype is more effective than a guide catheter alone.” As such, the majority found that the Board’s determination that this had occurred was supported by substantial evidence.
The parties’ corroboration arguments largely concerned the fact that at the same time the inventors were developing the patented extension catheter in early 2005, they were also working on another (unclaimed) version that was more akin to prior art extension catheters. As such, it was unclear whether much of the documentary evidence such as material orders and schematics were associated with prototypes of the claimed extension catheter as opposed to the conventional version. However, Teleflex had submitted non-inventor testimony that the claimed prototypes had been tested during the critical period, and the Court re-affirmed that the “law does not impose an impossible standard of ‘independence’ on corroborative evidence by requiring that every point of a reduction to practice be corroborated by evidence having a source totally independent of the inventor; indeed, such a standard is the antithesis of the rule of reason.” Knorr v. Pearson, 671 F.2d 1368, 1374 (C.C.P.A. 1982). Applying a “rule of reason” standard, the majority found that although largely based on circumstantial evidence, the Board’s finding that testing had shown the invention worked for its intended purpose prior to Itou’s filing date was supported by substantial evidence. Accordingly, the majority agreed that Itou had not been shown to be prior art and affirmed the Board’s decision that the claims had not been shown to be unpatentable.
Judge Dyk dissented, however, arguing that the inventor’s testimony that the device had been shown to work for the intended purpose of providing increased backup support—compared to a guide catheter alone—was not sufficiently corroborated. Judge Dyk noted that there was no direct documentary evidence of testing for the claimed prototypes, and that none of the witnesses (including the inventors) had testified as to exactly what those tests were or their specific results. He noted that the record indicated that any direct documentary evidence of the testing may have been destroyed, and that “[a] rule that favors the retention of relevant documents does not create an ‘impossible standard’” as the majority had suggested. Accordingly, Judge Dyk would have found that the Board’s holding was not supported by substantial evidence and would have reversed its finding that Itou was not prior art.
The opinion can be found here.
By Jason A. Wrubleski
ALSO THIS WEEK
OneSubsea IP UK Ltd. v. FMC Techs., Inc., Appeal No. 22-1099 (Fed. Cir. May 23, 2023)
In an appeal from a district court’s denial of attorneys’ fees against appellee OneSubsea, the Federal Circuit affirmed. The eight-year-old case involved patents in the subsea oil and gas exploration and extraction industry. Both parties asserted a number of patents against each other, totaling well over 100 claims. The case had a long and tortuous history, including inter partes review proceedings and appeals. Eventually, the district court granted summary judgment of non-infringement in favor of FMC based on its Markman decision concerning the meaning of a particular claim term. FMC then moved for fees pursuant to Section 285. The case was thereafter transferred to a different judge (the case’s third), who denied the motion. The new judge held that the case was not objectively baseless even after the Markman decision. The district court also held that OneSubsea did not engage in litigation misconduct, and that any alleged misconduct should be excused “[g]iven the large number of patents, claims, and counterclaims,” “the three-year stay during PTAB proceedings, and additional procedural complexities.”
The Federal Circuit affirmed that decision, finding no abuse of discretion. In addition to agreeing with the district court judge’s analysis, the Court also rejected FMC’s argument that no deference should be given to the district court decision because the judge who decided the sanctions motion had no prior history with the case. The Court cited a long line of cases adhering to the abuse of discretion standard even where a successor judge is called upon to assess the parties’ litigation conduct throughout the case.
The opinion can be found here.
By Nika Aldrich
