Welcome to Winston & Strawn’s Federal Circuit Patent Decision Summaries. This bulletin provides a short summary of, and links to, the precedential patent cases decided by the Federal Circuit last week. We hope that these summaries are useful in keeping you updated on the Federal Circuit’s patent decisions.

Obviousness-type double patenting analysis should focus on the entire claims, not just the differences between the two claims; disclosure of later-claimed use in an earlier patent is only invalidating if the compounds in the two patents are identical.

Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., No. 2011-1561, -1562 (Fed. Cir. Aug. 24, 2012).

The district court found asserted claims for a therapeutic compound were not invalid due to obviousness-type double patenting over two earlier-issued claims. The Federal Circuit affirmed, finding the asserted claims patentably distinct from the earlier-issued claims.

In analyzing claims from the first earlier-issued patent, the panel acknowledged that the only difference between the two claimed compounds was the number of members in one ring. But the panel rejected the notion that only the differences should be analyzed—instead “the claims must be considered as a whole.” The proper analysis “requires identifying some reason that would have led a chemist to modify the earlier compound to make the later compound with a reasonable expectation of success.” The panel found no clear error in the district court’s factual findings that the prior art never suggested or provided a reason to expect success in making the necessary modification.

The second earlier-issued claim claimed a chemical intermediary that could be used to produce the compound in the asserted claim. Although the use of the final product was disclosed in the specification of the earlier-issued patent, a court may not rely on the specification of the supposedly invalidating patent in deciding obviousness-type double patenting; only the claims are compared. Earlier cases involving disclosure of uses of products in earlier-issued patents were distinguished because each earlier-issued patent claimed the same compound as was later patented. The claimed intermediary, though, could be used to make a variety of final compounds. Further, the compound of the asserted claim could be made using a different intermediary. Therefore, the intermediary and the final claimed compound were found to be “separate and independent chemical compounds.” 

Finally, the Federal Circuit again noted that secondary indicia of nonobviousness should be analyzed when evaluating claims of invalidity based on obviousness-type double patenting. 

A copy of the opinion can be found here.  

Directed verdict of non-infringement of several patents was appropriate where: 1) patentee failed to demonstrate element-by-element equivalence for the patents asserted under DOE infringement, and 2) patentee had put forth no evidence of any instance of direct infringement of the patent asserted under induced infringement. 

Mirror Worlds, LLC v. Apple, Inc., No. 2011-1392 (Fed. Cir. September 4, 2012).

Post-trial, the district court granted the accused infringer’s JMOL motion of non-infringement on all three asserted patents. For the first two, the court concluded that the patentee had failed to present substantial evidence of infringement under the doctrine of equivalents for claims of two of the asserted patents. For the third, the district court’s non-infringement decision was based upon the patentee’s failure to present evidence that any party performed all of the steps of the claimed methods. The Federal Circuit affirmed the district court’s rulings. 

First, the Federal Circuit agreed that, although expert testimony was presented that the accused embodiment as a whole was the equivalent of the claimed invention, the patentee failed to put forth evidence that an equivalent of each claim element in the first two patents was present in the accused product. Since infringement under the doctrine of equivalents requires an element-by-element analysis, the court held that JMOL of non-infringement was proper. This conclusion was further justified by the rule that DOE infringement cannot read out a limitation of the asserted claim. 

Second, the Federal Circuit agreed that the patentee had failed to set forth evidence that either the accused infringer or its customers actually performed all the steps of the asserted claims in the third patent. Although the court recognized that circumstantial evidence can justify a finding of infringement, the majority opinion agreed with the district court that merely showing that the accused embodiment was capable of performing the claimed method was insufficient to support a finding of direct infringement. Similarly, where patentee was unable to demonstrate a single customer who performed the claimed method, and thus was unable to demonstrate a single customer who directly infringed the asserted claims, there was a lack of substantial evidence on which a jury could find inducement of infringement. 

J. Prost dissented in part with the court’s holding on induced infringement, stating that the record indicated that the claimed method not only could have been performed by a customer using the accused product, but that the evidence was sufficient for a jury to reasonably find that at least one customer more likely than not infringed the asserted claim. 

A copy of the opinion can be found here.