FS.com Inc. v. Intern. Trade Comm., Appeal No. 2022-1228 (Fed. Cir. Apr. 20, 2023)
Our case of the week focuses on patent enablement. In particular, the Federal Circuit considered the enablement requirement in the context of “unbounded” claim limitations. Ultimately, the Court concluded that the ITC properly found that the claims at issue were enabled, though limited to the scope to which they were enabled. The Court also considered a claim construction issue concerning use of the article “a.” On both bases, the Court affirmed.
The patents at issue are owned by Corning, and concerning fiber optic equipment used in data centers. Specifically, the claims concerned the standardized, 19” data racks that are often seen housing computer equipment. Those data racks are divided into segments, each 1.75” high, called a “rack unit” or “U space.” This is effectively the minimum height of equipment that can fit in an equipment rack, with equipment ranging in multiples of that height.
One set of claims recited a fiber optic apparatus comprising a chassis and “fiber option connection equipment configured to support a fiber optic connection density of at least ninety-eight (98) fiber optic connections per U space.” Other claims recited density of “one hundred forty-four (144) fiber optic connections per U space.” FS argued that these were open-ended density ranges, and that they were not enabled because the specification enabled only up to 144 fiber optic connections per U space.
The ITC found that the claims were enabled, applying the two-part standard set forth in Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361 (Fed. Cir. 2007). In that case, the Court held that “[o]pen-ended claims are not inherently improper[.] . . . They may be supported if there is an inherent, albeit not precisely known, upper limit and the specification enables one of skill in the art to approach that limit.” The Court noted that “this language from Andersen is infrequently applied,” but that it governs this dispute.
Here, the claims had an inherent upper limit. Specifically, at the time, given the types of fiber optic connections that were in use, only 144 of them could fit in a piece of equipment designed for a single U space (19” x 1.75”). An expert further testified that “despite market pressure, no commercial product has achieved a greater density than 144 connections” in a single U space. Thus, the claim was fully enabled up to around 144 connections. But the claims are limited to 144 connections: “[T]he claims are enabled if they do not encompass densities above about 144 connections per U space.”
FS argued that a different type of connector that was developed in 2019 allows up to 432 connections per U space. The Court found that this supported its determination of claim scope. Because the patent was dated 2008, only prior art that existed in 2008 is relevant to the enablement requirement. That after-arising technology expanded the capabilities does not render the claims not-enabled; however those products do not fit within the scope of the claims.
A second set of claims recited “a front opening.” At issue was whether FS’s products, which contain multiple openings separated by material or dividers, infringe. This turned on whether “a front opening” was limited to a single opening or could instead cover multiple front openings. The Court reiterated its general rule that “the terms ‘a’ or ‘an’ in a patent claim mean ‘one or more,’ unless the patentee evinces a clear intent to limit ‘a’ or ‘on’ to ‘one.’” Here, there was no “clear intent to depart from this general rule,” and thus “‘a front opening’ encompasses one or more openings.”
The opinion can be found here.
By Nika Aldrich
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Amgen Inc. v. Sandoz Inc., Appeal Nos. 2022-1147, -1149, -1150, -1151 (Fed. Cir. April 19, 2023)
In cross-appeals from an Abbreviated New Drug Application case, the Federal Circuit affirmed obviousness and non-obviousness determinations by the district court concerning various patents covering Amgen’s Otezla® psoriasis medication comprising the compound apremilast. Of note was the Court’s discussion of the district court’s reliance on objective indicia of non-obviousness in finding certain claims not invalid, affirming a finding of “unexpected results” based on the surprising potency of apremilast over what would have been expected at the time of the invention. Specifically, the district court found certain claims non-obvious in part because the use of racemic mixtures containing apremilast would have led a skilled artisan to expect a two-fold increase in potency using apremilast, whereas the inventors had encountered a 20-fold increase in potency. The Federal Circuit rejected Sandoz’s argument that the district court erred in relying on a difference in degree from expected results, rather than a difference in kind of results, and found that on the facts of this case, the difference in potency over expectations was “dispositive.” Notwithstanding that finding, the Federal Circuit went on to affirm the district court’s findings of other objective indicia including long-felt need, industry skepticism, failure of others, and commercial success. The Court also considered issues concerning motivation to combine, written description support and inherency for purposes of establishing priority, and issues concerning dose variation in finding certain claims obvious.
The opinion can be found here.
By Jason A. Wrubleski
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