Monday, March 23, 2015

CAFC affirms D. Del. in Cadence v. Exela in case related to acetaminophen

Teva v. Sandoz is mentioned in Cadence v. Exela:

In reviewing questions of claim construction
and obviousness,
we review underlying factual determinations for
clear error and ultimate determinations
de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc.,
135 S. Ct. 831,841 (2015)
(claim construction);
Allergan, Inc. v. Apotex Inc.,
754 F.3d 952, 961 (Fed. Cir. 2014) (citing
Novo Nordisk A/S v. Caraco Pharm. Labs., Ltd.
, 719 F.3d 1346, 1354 (Fed. Cir.
2013)) (obviousness).
Because the district court’s claim constructions were based solely on the
intrinsic record, the Supreme Court’s recent
decision in Teva does not require us to review the district court’s
claim construction any differently than under the
de novo standard we have long applied.
Fenner Invs., Ltd. v. Cellco P’ship, ---
F.3d ---- , ---- , available at
2015 WL 570730 (Fed. Cir. Feb. 12,
2015) (“When the district court
reviews only evidence intrinsic to the patent. ., the
judge ’s determination will amount solely to a determina-
tion of law, and [we]
review that construction de novo .”)
(quoting Teva, 135 S. Ct. at 841)
(internal citations re-

[ Fenner, 2015 U.S. App. LEXIS 2203; 113 U.S.P.Q.2D (BNA) 1770, states
We review de novo the ultimate question of the proper construction of patent claims and the evidence intrinsic to the patent. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841, 190 L. Ed. 2d 719 (2015); id. ("[W]hen the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent's prosecution history), the judge's determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo."). The district court's determination of subsidiary facts based on extrinsic evidence is reviewed for clear error. Id. at 835, 841. ]

As to importing limitations from the spec to the claims:

even if “all of the embodiments dis-
cussed in the patent ” included a specific limitation, it
would not be “proper to import from the patent’s written description limitations
that are not found in the claims
themselves.” Flo Healthcare Solutions, LLC v. Kappos,
697 F.3d 1367, 1375 (Fed. Cir. 2012) (citing
Silicon Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 792 (Fed. Cir. 2010)).
Moreover, the fact that during prosecution
applicants added the term “buffering agent” in response
to a rejection does not show that the phrase requires a
minimum concentration or resistance to material change.
The addition of that phrase shows only
that a buffering agent is necessary

Planet Bingo is cited:

It maintains that the facts here are analogous to
Planet Bingo, LLC v. Gam-
eTech International, Inc., where we held
that determining a winning combination after a game started could not be
equivalent to a claim that recited “a predetermined win-
ning combination.” 472 F.3d 1338, 1345 (Fed. Cir. 2006).

Exela fundamentally misunderstands
the doctrine of claim vitiation.
“Vitiation” is not an exception
or thresh-
old determination that forecloses
resort to the doctrine of
equivalents, but is
instead a legal conclusion of
a lack of equivalence based on the evidence
presented and the theory of equivalence asserted

Graver Tank (Mn as an alkaline metal) is mentioned,
as is Moore: Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d
1091, 1106 (Fed. Cir.2000)(“it would defy logic to con-
clude that a minority—the very antithesis of a majority
—could be insubstantially different from a claim limitation
requiring a majority, and no reasonable juror could find

[IPBiz: Bolsheviks and Menshiviks? From urbandisctionary:
Lenin gave his group the name "Bolshevik", which means majority-class.
His opponents were called "Mensheviks", which means minority-class,
although, at the congress in Brussels, there were more Mensheviks than Bolsheviks. ]

OF the USPTO note:

the Patent Office is “‘pre-
sumed to have properly done its job’
” when it ultimately allowed the ’218 patent.
PowerOasis, Inc. v. T-Mobile USA, Inc.
, 522 F.3d 1299, 1304 (Fed. Cir. 2008)
(quoting Am. Hoist & Derrick Co. v. Sowa & Sons, Inc.
, 725 F.2d 1350, 1360 (Fed. Cir. 1984)). Second, patents are pre-
sumed to be valid, 35 U.S.C. § 282, so defendants must
prove invalidity by clear and convincing evidence. Mi-
crosoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2242
Third, we will only overturn the district court’s
underlying factual determinations if we believe they are
clearly erroneous.



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