CAFC remands part of Roche/Nova case; Roche wins remainder of appeal issues

GRANTLAND G. DRUTCHAS won a vacate and remand for appellant-plaintiff Roche in the case against Lifescan and Nova. The key element of the conclusion of the decision: We vacate the judgment of non-infringement, however, and remand to the district court to consider the parties’ arguments that pertain to the scope of the term “electrode.” The patents in suit generally aim to facilitate faster measurements (compared to the prior art) of glucose concentrations in small blood samples.

Here, as to "electrode," the CAFC noted:

Claim construction is a question of law, and thus we review de novo a district court’s claim construction. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454–55 (Fed. Cir. 1998) (en banc). Nonetheless, this court is a court of appellate jurisdiction, and “[n]o matter how independent an appellate court’s review of an issue may be, it is still no more than that—a review.” Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1426 (Fed. Cir. 1997); see also Metro. Life Ins. Co. v. Bancorp Servs., LLC, 527 F.3d 1330, 1336 (Fed. Cir. 2008) (declining to consider a claim construction issue that the district court did not “expressly” address and remanding to the district court for further proceedings). The procedural posture of this case, however, deprives us of the district court’s resolu- tion (and illumination) of the issues that are raised with respect to the construction of the term “electrode.” Roche raised its current claim construction argument to the district court in a motion for reconsideration, which the district court denied. The district court did not address whether reconsideration was procedurally appropriate, and, if so, whether Roche’s argument has merit. Nova and Lifescan do not dispute on appeal, however, that Roche’s argument should be addressed on the merits. Thus, in effect, we are called on to address the substance of a claim construction issue that has never been consid- ered by the district court. We do not opine, as a general matter, whether and under what circumstances this court may address new claim construction arguments on appeal if urged to do so by the parties. As we explain below, however, the specific nature of this case makes it impru- dent for us to address Roche’s claim construction argument for the first time on appeal.

Why construction of the term electrode was important:

the judgment of non- infringement was entered solely on the basis that the term “electrode” in the asserted claims does not cover electrodes that are wider than approximately 100 μm.

The evidence:

For example, the specification of the ’146 patent states,
Preferred dimensions for micro-electrodes can be, e.g., feature size or width of elec- trodes . . . in the range from 15 or 20 or 25 μm, up to about 100 μm, more preferably from greater than or about 25 or 30 μm to about 50 μm.
’146 patent col.3 ll.9-13; see also ’147 patent col.3, ll.9-12.

Roche counters (rather persuasively, in our view) that this statement, like other similar statements in the specification, is merely a non-limiting description of a preferred embodiment of the claimed invention.

As to "electrode," the CAFC sends the case back to district court:

In sum, we decline to address the claim construction issue raised by Roche because it has never been addressed by the district court. Accordingly, we remand the case to the district court for the purpose of construing the term “electrode” and any subsequent proceeding that might be necessary once the court construes that term.

Nova got no traction on its assertions:

We also affirm the district court’s resolution of Nova’s non-patent counterclaims, as well as the jury’s ultimate verdict of no-liability in Roche’s favor.

First, Nova argues that the district court erred in finding that a Swiss choice of law provision in the Agreement barred Nova’s trade secret misappropriation and conversion counterclaims. We disagree. The choice of law provision unambiguously provides that the parties’ relationships under the Agree- ment “shall be governed in all respects by the laws of Switzerland.” (...)
Since there is no dispute that Swiss law does not recognize Nova’s trade secret misappropriation and conversion counterclaims, the district court did not err in rejecting those claims as a matter of law.

Second, Nova argues that the district court abused its discretion in not allowing Nova to disclose to the jury that Roche had sued Nova for infringement and lost. We disagree. The district court was well within its discretion to find that the probative value of disclosing the in- fringement suit to the jury was substantially outweighed by the risk of prejudice or waste of time. See Fed. R. Evid. 403; United States v. Long, 574 F.2d 761, 767 (3d Cir. 1978) (noting that when reviewing a district court’s Rule 403 analysis, an appellate court ought to be highly defer- ential). We see no abuse of discretion in the district court’s evidentiary ruling.

It is true that Nova’s evidence shows that Roche’s executive, who had learned of Nova’s technology, discussed some aspects of Nova’s invention with Roche’s inventors. It is also true that the evidence shows that Roche decided to patent its invention almost immediately after learning of Nova’s test-strips, even though Roche claims that it had invented the tech- nology long before. Nonetheless, we must review the record in the light most favorable to the jury’s verdict, and we cannot disturb the verdict unless we determine that “’there is insufficient evidence from which a jury reasonably could find’” for Roche. Cordance Corp. v. Amazon.com, Inc., 658 F.3d 1330, 1333 (Fed. Cir. 2011) (quoting Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153, 1166 (3d Cir. 1993)). Nova’s counterclaims are based on circumstantial evidence, and the jury heard testimony from both sides on the events that transpired during and after negotiations between Nova and Roche. We have reviewed the evidence that the parties presented to the jury, and we hold that it was within the jury’s purview to find that Roche was not liable. We thus affirm the jury’s verdict in Roche’s favor.