Latest Federal Court Cases, 08/10/20
PATENT CASE OF THE WEEK
Illumina, Inc. v. Ariosa Diagnostics, Inc., Appeal No. 2019-1419 (Fed. Cir. Aug. 3, 2020)
Our Case of the Week this week is a rehash of a case we discussed several months ago. But it is the second time in only a few days that a panel of the Federal Circuit has reissued an opinion concerning patentability under Section 101 following a petition for panel rehearing or rehearing en banc. For our write-up of last week’s reissuance of the Federal Circuit’s controversial opinion in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, see here. Because the Illumina case is a further telling indication of the struggles the Courts are having with Section 101 jurisprudence, it is worth discussing briefly as our Case of the Week.
In its original March 17, 2020 opinion, the Court found that claims directed to methods of preparing plasma to isolate extracellular fetal DNA, based on the inventors’ discovery that fetal DNA strands in maternal plasma are relatively short compared to maternal DNA, were directed to patent-eligible subject matter under step 1 of the Supreme Court’s Alice/Mayo inquiry. Our previous write-up of that opinion is available here. In its modified opinion, the majority added support for its conclusion that the claims were not “directed to” the natural phenomenon of shorter fetal DNA strands, noting, for example, that they recited human-engineered size discrimination thresholds that were not dictated by the natural phenomenon, as the natural size distribution of fetal and maternal extracellular DNA overlap each other. Rather, the majority found that the claimed size thresholds were human-engineered parameters to balance the practicalities of removing enough maternal DNA to enrich the plasma while leaving enough fetal DNA to allow for testing. Judge Reyna dissented, arguing that the claims were directed to the natural phenomenon and contained no other inventive concept sufficient to transform them into patent-eligible subject matter. The modified opinion is available here.
This case stands in contrast to American Axle v. Neapco, which was re-issued last week and reached the opposite conclusion with respect to claims directed to methods of manufacturing a driveshaft assembly through what the majority argued was a straightforward application of Hooke’s law. Judge Moore was assigned to the panels hearing in both cases and joined Judge Lourie’s majority opinion in Illumina, having entered a vigorous dissent in American Axle arguing against what she characterized as a finding of ineligibility based only on the claims’ invocation of a natural phenomenon, as opposed to being directed to the natural phenomenon itself.
The opinion can be found here.
ALSO THIS WEEK
Godo Kaisha IP Bridge 1 v. TCL Communication Technology Holdings Ltd., Appeal No. 2019-2215 (Fed. Cir. Aug. 4, 2020)
In this appeal from the U.S. District Court for the District of Delaware, the Federal Circuit addresses issues relating to proving infringement by relying on an industry standard, and when such a theory may be asserted. The parties to this appeal disputed whether the patentee, Godo Kaisha IP Bridge (“IP Bridge”), was allowed to prove that the accused products infringed the claims of the asserted patent by presenting to the jury (1) that the claims are essential to mandatory aspects of a specific industry standard and (2) that the accused products practice that standard. TCL, the accused infringer, argued that IP Bridge could not prove infringement by relying on an industry standard because such an infringement theory is only approved in circumstances where the patentee asks the district court to assess essentiality in the context of claim construction. The Court disagreed with TCL, holding that standard-essentiality is a question for the factfinder: “if a district court finds that the claims cover any device that practices a standard, then comparing the claims to that standard is the same as the traditional infringement analysis of comparing the claims to the accused products.” The Court explained that its previous “passing reference” to claim construction in a prior case, which TCL relied upon, was simply a recognition of the fact that the first step in any infringement analysis is claim construction. Accordingly, the Court affirmed the district court’s decision finding TCL’s products infringed the asserted patent.
The opinion can be found here.
Bio-Rad Laboratories, Inc. v. 10X Genomics Inc., Appeal Nos. 2019-2255, -2285 (Fed. Cir. Aug. 3, 2020)
In this case, the Federal Circuit addressed numerous issues following a jury trial concerning three patents directed to systems and methods for forming microscopic droplets of fluids for biochemical reactions. The issues on appeal were numerous, resulting in a 39-page decision. Of note, the Court held that prosecution history estoppel did not bar application of the doctrine of equivalents because a narrowing amendment made during prosecution was only tangentially related to the accused equivalent. The Court also visited the “vitiation” doctrine, holding that application of the doctrine of equivalents to accuse a negatively fluorinated product did not vitiate use of the claim term “non-fluorinated.” The Court found that substantial evidence supported an infringement finding. With respect to two other patents, the Court held that the district court’s claim construction was erroneous, in failing to find the preamble limiting. The Court remanded for a new trial with respect to those two patents, based on a corrected claim construction. The Court also addressed damages issues, and affirmed the jury’s award of the highest amount sought at trial—equivalent to a 15% royalty. The Court rejected attempts to attack the admissibility of three disputed licenses, and also rejected an argument raised by 10X that Bio-Rad failed to properly apportion patented from unpatented components of the accused products. Finally, the Court substantially affirmed the injunction granted to Bio-Rad, carving out two product lines.
The opinion can be found here.
By Nika Aldrich