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In our Case of the Week, the Federal Circuit discussed the corroboration requirement concerning the amount of evidence needed to successfully invalidate a patent as anticipated. 

Mosaic claimed that Ridge infringed Mosaic’s patent and trade dress for a money-clip wallet.  Ridge countered that Mosaic infringed Ridge’s own patent for a money-clip wallet.  After claim construction, the parties stipulated, subject to the right to appeal the District Court’s claim construction, that Mosaic could not prove that Ridge infringed Mosaic’s patent.  The district court then granted Mosaic’s motion for summary judgment on invalidity of Ridge’s patent, based on anticipation; denied as moot Mosaic’s motion for summary judgment that Ridge had obtained its patent through inequitable conduct; and granted Ridge’s motion for summary judgment on Mosaic’s trade dress claim, finding Mosaic’s trade dress invalid.  The Federal Circuit affirmed the district court’s claim construction, and affirmed the grant of summary judgment against Mosaic’s trade dress claim.  However, the Federal Circuit reversed the district court’s grant of Mosaic’s motion for summary judgment that Ridge’s patent was invalid, and vacated the district court’s denial of Mosaic’s motion for summary judgment that Ridge’s patent was obtained through inequitable conduct.

On the anticipation issue, the parties did not dispute that Mosaic’s SMCII wallet embodied all claims of Ridge’s patent-in-suit.  They only disagreed as to whether the SMCII was sold before the filing date of Ridge’s patent-in-suit.  Mosaic presented testimonial evidence from its inventor that the SMCII was first sold in 2011, more than a year before Ridge’s filing date.  Ridge argued that the inventor’s testimony lacked adequate corroboration and that their testimony was not credible.  Mosaic supported its inventor’s testimony with design plans for the wallet dated October 19, 2010, and invoices that seemingly showed the SMCII to have been sold at a trade show in 2011.  The Federal Circuit agreed with the district court, relying also on design plans and invoices that accompanied the testimony: If a factfinder found the inventor to be credible and his documents authentic, this would provide a sufficient basis from which the factfinder could find that the SMCII was on sale by 2011.  This led the district court to grant summary judgment for Mosaic, with the SMCII anticipating Ridge’s patent-in-suit.  However, the Federal Circuit faulted the district court for ending the anticipation inquiry prematurely.  

While Mosaic may have presented sufficient evidence to corroborate its inventor’s testimony, the district court had not considered whether the inventor’s testimony was credible and persuasive.  Ridge pointed to facts in the record that created doubt as to the inventor’s credibility: the lack of contemporaneous images of the SMCII from 2011, the lack of documented sales between 2012 and 2019, the inventor’s motive to lie about the invention date, the lack of any metadata confirming the supporting documents’ authenticity, and the lack of any third-party corroborating evidence.  These facts in the records were sufficient to create a genuine dispute over the inventor’s credibility and the persuasiveness of Mosaic’s evidence, such that summary judgment in Mosaic’s favor was not appropriate.  Mosaic argued that Ridge had failed to put forward any affirmative evidence challenging the credibility or persuasiveness of the inventor’s testimony.  The Federal Circuit explained that while Ridge had in fact put forward such affirmative evidence, there was no burden on Ridge to do so.  Instead, the burden was on Mosaic to present clear and convincing evidence showing that the SMCII anticipated Ridge’s patent-in-suit.  Ridge pointed to enough issues in the record to undermine the credibility of Mosaic’s inventor’s evidence, and to call into question the authenticity of Mosaic’s evidence, which prevented Mosaic from meeting the high bar required to show that the SMCII was prior art at the summary judgment phase. 

Because the Federal Circuit reversed the grant of summary judgment for invalidity of Ridge’s patent, Mosaic’s assertion of inequitable conduct was no longer moot, and the Federal Circuit vacated the district court’s denial of Mosaic’s motion for summary judgment based on inequitable conduct.

The opinion can be found here.

By Tyler Hall

ALSO THIS WEEK

Genentech, Inc. v. Sandoz Inc., Appeal No. 2022-1595 (Fed. Cir. Dec. 22, 2022)

Upon appeal from a bench trial, the Federal Circuit affirmed a district court’s findings that patents relating to certain pharmaceuticals were obvious, and other patents were not infringed.  The first category of patents generally disclosed administering certain doses of pirfenidone.  The district court found those patents invalid as obvious.  Genentech challenged those findings based on numerous claims of error.  The Federal Circuit affirmed in a thorough analysis, though noting its “initial perception that . . . varying doses in response to the occurrence of side effects would seem to be a well-established, hence obvious, practice.  Thus, claiming it as an invention would appear to be at best a long shot.”  With respect to the second category of patents, Genentech asserted induced infringement by means of the labeling.  The patent, however, concerned prescribing pirfenidone to patients who are also taking fluvoxamine.  The district court found no induced infringement, in part because there was no evidence of actual, direct infringement—i.e., no evidence that doctors would prescribe pirfenidone to patients who are also taking fluvoxamine.  On appeal, the Federal Circuit revisited its Hatch-Waxman case law concerning induced infringement and affirmed the district court.  Specifically, there was insufficient evidence that there would ever be a direct infringement in practice—that “if Sandoz’s drug were put on the market, it would infringe” the asserted patent claims.  Thus, the Court affirmed.  Judge Newman dissented without opinion.

The opinion can be found here.

By Nika Aldrich

Plastipak Packaging, Inc. v. Premium Waters, Inc., Appeal No. 2021-2244 (Fed. Cir. Dec. 19, 2022)

In an appeal from a district court’s summary judgment, the Federal Circuit reversed and remanded, finding that there were genuine disputes of material fact precluding a grant of summary judgment.  The patents at issue were generally concerned with “plastic containers and plastic container preforms with a neck portion.”  The district court granted summary judgment in favor of Premium Waters, finding that Plastipak’s patents were invalid for nonjoinder of inventor, Falzoni, under Pre-AIA 35 U.S.C. § 102(f) (2006).  The district court reasoned that “Falzoni was at least a joint inventor of the patented invention, having initially disclosed to Darr a design of a neck finish measuring less than 0.580 inches.”  Plastipak appealed, arguing that the district court’s grant of summary judgment was improper.  The Federal Circuit agreed with Plastipak, explaining that “the record reflects a genuine dispute of material fact as to whether Falzoni sufficiently contributed to the X Dimension Limitation.”  The Court further emphasized that “often the assessment of what contribution has been made by a purported inventor, and whether that contribution is significant, is bound up with material fact disputes which a reasonable factfinder could resolve in favor of either party.”  The Court reversed and remanded for further proceedings.

The opinion can be found here.

By Annie White

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This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.