Fresh From the Bench: Latest Precedential Patent Case

CASE OF THE WEEK

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.

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ALSO THIS WEEK

Amgen Inc. v. Sandoz Inc., Appeal Nos. 2022-1147, -1149, -1150, -1151 (Fed. Cir. Apr. 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.

Editors:

Nika Aldrich, IP Litigation Group Leader, Schwabe, Williamson & Wyatt, P.C.

Jason A. Wrubleski, Shareholder