Trimble Inc. v. PerDiemCo LLC
, Appeal No. 2019-2164 (Fed. Cir. May 12, 2021)
In this week’s Case of the Week, the Federal Circuit revisited its decision in
Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355 (Fed. Cir. 1998), often cited for the proposition that a patentee does not subject itself to personal jurisdiction in a forum merely by sending correspondence asserting patent infringement by a resident of the forum. On the facts presented, the Court found that a patentee’s negotiations with a California-headquartered corporation supported jurisdiction in the Northern District of California for the corporation’s declaratory judgment action, reversing the district court’s dismissal for lack of personal jurisdiction.
Uniloc 2017 LLC v. Facebook Inc.
, Appeal Nos. 2019-1688, -1689 (Fed. Cir. Mar. 9, 2021)
In this week’s Case of the Week, Uniloc appealed from two consolidated IPR decisions finding multiple claims unpatentable as obvious. The Federal Circuit affirmed, addressing several discrete issues. It first addressed the foremost issue of “whether 35 U.S.C § 314(d)’s ‘No Appeal’ provision bars this court’s review of the Board’s conclusion that under § 315(e)(1) a petitioner is not estopped from maintaining the IPR proceeding before it.” Next, the Court addressed multiple challenges to the Board’s estoppel conclusions. Finally, the Court addressed challenges to the Board’s findings of unpatentability on all claims and the Board’s claim construction of the term “attaches to.”
Amgen Inc. v. Sanofi
, Appeal No. 2020-1074 (Fed. Cir. Feb. 11, 2021)
In this week’s Case of the Week, the Federal Circuit affirmed a district court’s JMOL ruling that asserted claims of two related pharmaceutical patents were invalid because their shared specification did not enable the full scope of the claims. The patents were directed to synthetic antibodies used in high cholesterol treatments that operate by binding to specified amino acids (or “residues”) of enzyme PCSK9, thereby blocking PCSK9 from binding to LDL cholesterol receptors (“LDLR”) and permitting those receptors to remove LDL cholesterol from the bloodstream.
The claims at issue contained dual functional limitations, requiring that a claimed antibody both bind to at least one or two of numerous listed PCSK9 residues (i.e., in ranges from one or two residues to all of them), and that the antibodies block the PCSK9/LDLR interaction. Appellee Sanofi contended that because there are millions of antibody candidates potentially falling within the scope of the claims, and because antibody generation is unpredictable, practicing the full scope of the claims would require substantial trial and error in screening each candidate antibody for the claimed binding and blocking functionalities. Appellant patent owner Amgen contended that in finding the claims not enabled, the district court erred by focusing on the effort required to discover and make every embodiment of the claims, that the patent adequately disclosed the required screening methods, and that the examples provided were sufficiently structurally representative to enable the claims.