FEDERAL CIRCUIT DECISIONS FOR WEEK ENDING February 5, 2016

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1 P+S FEDERAL CIRCUIT SUMMARIES VOL. 8, ISSUE 6 FEDERAL CIRCUIT DECISIONS FOR WEEK ENDING February 5, 2016 Site Update Solutions, LLC v. CBS Corp., No , February 1, 2016 (nonprecedential); Patent No. US RE40,683 Attorney s fee issues under Octane Fitness are within the sound discretion of the district court and such decisions can only be disturbed on appeal if they are based on an erroneous view of the law or other abuse of discretion. Facts/Background: Site Update sued 39 companies in the Eastern District of Texas in 2010, asserting claim 8 of U.S. Patent No. RE40,683. All defendants except for Newegg settled. The case was transferred to the Northern District of California. After the trial judge construed the claims in a way that favored Newegg, Site Update agreed to dismiss the claims against Newegg. Newegg sought an award of attorney fees, arguing that the suit by Site Update was frivolous and the company should be punished for pursuing a strategy of seeking nuisance value settlements. The district court disagreed, and denied Newegg s request for attorney s fees. Newegg appealed, and the district court was ordered to review its decision after the Supreme Court established a more lenient fee-shifting standard in Octane Fitness. After reviewing its decision, the district court again denied Newegg s request for attorney s fees, and this appeal followed. Holding: Affirmed. The Federal Circuit concluded that the district court did not abuse its discretion in denying Newegg s request for fees. Under Octane Fitness, courts may award reasonable attorney s fees to the prevailing party in exceptional cases. [A]n exceptional case is simply one that stands out from others with respect to the substantive strength of a party s litigating position or the unreasonable manner in which the case was litigated. Octane Fitness, 134 S. Ct. at Here, Site Update s positions were not so weak that they stand out from others, and losing a case does not automatically make it exceptional. Attorney fee issues are within the sound discretion of the district court. Decisions on fee award requests by district court can only be disturbed on appeal if they are based on an erroneous view of the law or otherwise constitute an abuse of discretion.

2 Page 2 Purdue Pharma L.P. v. Epic Pharma, LLC No , February 1, 2016 (precedential) (3-0); U.S. Patent Nos. 7,674,799; 7,674,800; 7,683,072; and 8,114,383 The terms such as and and the like established that McGinity disclosed a broader group of analgesic than just those listed. In addition, opioids are a major class of analgesics, and oxycodone was a widely prescribed analgesic at the time. Therefore, selecting analgesics from a long list of pharmaceutical categories and further choosing oxycodone, even though it was not disclosed by the McGinity reference, was permissible because the selected disclosures used by the district court are all directly related to the teachings of the cited reference. Facts/Background: Oxycodone Hydrochloride (an opioid analgesic) is the active pharmaceutical ingredient (API) in Purdue s OxyContin. Purdue scientists discovered 8α as a source of the impurity at step one of the three-step process. The scientists added a hydrogenation step after step three to reduce the impurity level to less 10ppm. The 799, 800, and 072 patents all relate to this discovery (the low- ABUK patents). The 383 patent claimed a formulation of tablets that resisted breaking up to exertion of 500N of force. The district court found that all of the claims were invalid as anticipated by or obvious over prior art. The district court held the claims of the Low-ABUK patents invalid over a prior art reference that concededly disclosed a different process (the prior art taught that oxidation of thebaine (8β) produced 14-hydroxy and that it was well known in the art that 14- hydroxy could be removed using hydrogenation). Holding: Affirmed. With respect to the Low-ABUK patents, the Federal Circuit reasoned that although determining 8α as the source of 14-hydroxy in the end product was not obvious, that problem did not need to be solved to arrive at the claimed invention. Purdue did not claim a process of overcoming the problem of remaining 14-hydroxy in the API by performing the additional hydrogenation step. Instead, it claimed the end product (an oxycodone API with low-abuk levels). The asserted patents did not indicate any differences between the process to remove 8α derived 14-hydroxy and the process to remove 8β derived 14-hydroxy The product claims were obvious because one skilled in the art would not need to know the source of the 14-hydroxy to remove it. In determining validity of a product-byprocess claim, the Federal Circuit focused on the product and not the process of making it. Here, the derived from 8α[] limitation was a process limitation because the limitation did not describe the structure of 14-hydroxy. However, even if the claim did describe the structure of 14-hydroxy, it would not have made a difference because the structure of 14-hydroxy generated from 8α is the same structure generated from 8β. With respect to the 383 patent, Purdue argued that the district court erred because, unlike the oxycodone (an opioid analgesic) claimed in the 383 patent, McGinity only discloses various non-opioids therapeutic compounds to be used in formulations. In addition, Purdue argued that the district court picked analgesics from a long list of pharmaceutical categories, and then further selected oxycodone, which was not disclosed by the reference. However, the Federal Circuit ruled that although McGinity only discloses various non-opioids therapeutic compounds to be used in formulation, the compounds disclosed were analgesic to treat pain such as aspirin and the like. The terms such as and and the like established that McGinity disclosed a broader group of analgesic than just those listed in the application. The selected disclosures used by the district court are all directly related to the teachings of the cited reference.

3 Page 3 Trustees of Columbia Univ. v. Symantec Corporation No , February 2, 2016 (precedential) (3-0); U.S. Patent Nos. 7,487,544; 7,979,907; 7,448,084; 7,913,306; 8,074,115; and 8,601,322 Claims must be construed separately if they are from separate patent families claiming different inventions, where the patents are filed separately and years apart, and with only one common inventor. Facts/Background: The 544 and 907 patents share the same specification and relate to detecting malicious attachments. The 084 and 306 patents share the same specification and relate to a method for detecting intrusions in computer system operations. The 115 and the 322 patents share a common specification and relate to detecting anomalous program executions. The district court construed byte sequence feature of the 544 and 907 patents to mean a feature that is a representation of machine code instructions of the executable. The district court construed probabilistic model of normal computer system usage of the 084 and 306 patents to mean a model of typical attack-free computer system usage that employs probability, and the generation of the model must be based only on attack-free data. The district court relied on its construction of normal computer usage from the 084 and 306 patents and construed the term anomalous in the 115 and 322 patent claims as requiring the model of normal computer usage be built only with attack-free data. The parties filed a joint motion for entry of final judgment of non-infringement on all asserted claims and a finding of invalidity for indefiniteness of claims 1 and 16 of the 544 patent, with Columbia reserving the right to appeal the claim construction. The district court entered partial judgement under Rule 54(b) of the Federal Rule of Civil Procedure, and Columbia appealed. Holding: Affirmed-in-part, Reversed-in-part, Remanded-in-part. At the outset, the Federal Circuit rejected Columbia s argument that the presumption of plain and ordinary meaning can be overcome only when the patentee has expressly defined a term or has expressly disavowed the full scope of the claim in the specification and the prosecution history. The Federal Circuit affirmed the construction of byte sequence feature because the specification twice described the byte sequence feature as useful and informative because it represents the machine code in an executable. The specification also clearly described that a byte sequence feature extraction is just one type of feature extraction and not a general term. The appellate court also noted that a provisional application had the same description for the term byte sequence feature. The Federal Circuit affirmed the construction of probabilistic model of normal computer system usage because it found the specification consistently described an implementation where the inventors ran ordinary programs to generate normal data for building an accurate and complete training model. The prosecution history also confirmed this construction. Columbia presented an academic paper referenced in the application to show that a model was built utilizing both attack-free and attack data, but the paper was insufficient to overcome the overwhelming evidence in the specification and the prosecution history. By contrast, the Federal circuit reversed the construction of anomalous for the 115 and 322 patents because, although claims must be interpreted consistently across all asserted patents where the multiple patents are derived from the same parent application and share terms, the four patents here (the 084 and 306 patents and the 115 and 322 patents) are from two different families and have only one common inventor for the two families of different inventions. Further, the two families of patents were filed years apart and resulted from separate patent applications. Therefore, the district court erred by relying on the 084 and 306 claim construction to construe the 115 and 322 claims.

4 Page 4 TriVascular, Inc. v. Samuels, No , February 5, 2016 (precedential) (3-0); Patent No. 6,007,575 Prosecution history disclaimer requires the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art. Proposed claim amendments that are ultimately not adopted at issuance would most likely not viewed as a disclaimer required for patentability by the court. Facts/Background: Samuels sued TriVascular for infringement of his 575 patent, which claims vascular stents that can be attached to a vascular wall by an inflatable and deflatable cuff without penetrating the wall. TriVascular petitioned for an inter partes review (IPR) and the PTAB found TriVascular had established two potential grounds for a reasonable likelihood of success. In its Institution Decision, the PTAB construed the term circumferential ridges to mean raised strip disposed circumferentially about the outer surface of the inflatable cuff. The IPR proceeded to trial, and the PTAB s final decision concluded that TriVascular had not met its burden of proof that the 575 claims were invalid. In its decision, the PTAB adopted Samuels construction of inflatable protrusions as protrusions that are themselves inflatable, i.e., expandable by being filled with fluids. The PTAB ruled that the prior art did not teach continuous circumferential ridges, as claimed in the 575 patent. Based on a general dictionary definition of ridge, the PTAB held the broadest reasonable meaning of circumferential ridges did not include discontinuous points on the surface of a stent. TriVascular appealed. Holding: Affirmed. TriVascular argued that the term circumferential ridges should be construed to mean an elevated part of the outer surface disposed about the inflatable cuff that can be either continuous or discontinuous. TriVascular referred to the Blue Ridge mountains in the Appalachian mountain range as support for its construction that ridge included discontinuous protrusions. The Federal Circuit found the argument unpersuasive because TriVascular did not explain why the PTAB should have adopted a topological definition of ridge over a general dictionary definition which is also consistent with the specification and other claim limitations. TriVascular invoked prosecution history disclaimer to show that construction of the term circumferential ridge should not be limited to continuous ridges. According to TriVascular, the prosecution history showed that the Examiner initially rejected the Samuels 575 patent claims because Samuels 851 was interpreted as having inflatable protrusions that form a circumferential ridge. Samuels responded by asserting that his 851 patent did not teach continuous. He added the word continuously to the claims, although the final issued claims did not include that term. TriVascular argued that these exchanges between Samuels and the PTO barred a construction limited to continuous circumferential ridges. However, the Federal Circuit noted that after an interview between Samuels and the Examiner, the continuously amendment was ultimately deleted from Samuels 575 while other claim amendments remained. Further, after the interview, the Examiner was convinced of the patentability of the claimed 575 invention without the word continuously. According to the Federal Circuit, it would be difficult to see how a skilled person in the art could interpret the proposed amendment as a disclaimer required for patentability. Therefore, TriVascular failed to meet its burden to prove the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art. The Federal Circuit also reasoned that the Board rendered its Institution Decision based on its preliminary consideration of the matter without the benefit of a full record; and after further development of the record, if the Board is convinced its initial findings were wrong, it should and is free to change its view of the merits.

5 Page 5 TriReme Medical, LLC v. Angioscore, Inc., No , February 05, 2016 (precedential) (3-0); U.S. Patent Nos. 8,080,026; 8,454,636; and 8,721,667 Estoppel by contract does not apply when an unlisted inventor, or his successor in interest, is not seeking to enforce any rights under the contract. Facts/Background: AngioScore sells a line of balloon catheters that are designed to open arterial blockages. On May 1, 2003, Dr. Lotan signed a Consulting Agreement with AngioScore. However, prior to the effective Agreement date, Dr. Lotan performed a single-day study testing the device. During the study, Dr. Lotan discovered a retention problem with the device, and he contributed to a memorandum summarizing the retention issue and presented potential solutions to the problem. Dr. Lotan further contributed to the invention in two follow-up meetings with AngioScore. However, none of the patents listed Dr. Lotan as an inventor. In 2014,TriReme obtained from Dr. Lotan an exclusive license to any and all legal and equitable rights he held in the AngioScore patents, although Dr. Lotan subsequently testified that he did not retain any financial interest in the patents. TriReme then sued AngioScore for correction of inventorship to add Dr. Lotan. AngioScore moved to dismiss for lack of subject matter jurisdiction, contending that TriReme lacked standing because Dr. Lotan had assigned all rights he may have had to the patents under the Consulting Agreement, and thus had nothing to subsequently license to TriReme. Specifically, AngioScore argued that it had acquired all of Dr. Lotan s interest pre-may 1, Section 9(a) provided that as part of Exhibit C, a list describing all inventions developments, improvements, and trade secrets which were made by Consultant prior to the date of this Agreement (collectively referred to as Prior Inventions ), that belong solely to Consultant or belong to Consultant jointly with another [i]f, in the course of providing the Services, Consultant incorporates into a Company product, process or machine or into any Invention a Prior Invention owned by Consultant [AngioScore is] hereby granted and shall have a non-exclusive license. Further, AngioScore argued that under Section 9(b) of the Agreement, all of Dr. Lotan s rights in his inventive contribution were assigned to AngioScore including the contribution before the effective date of the Agreement. Section 9(b) stipulated on the assignment of inventions. The district court granted AngioScore s motion, dismissing the complaint. TriReme appealed. Holding: Reversed and Remanded. The appellate court reasoned that Section 9(a) did not provide for inventions not listed as a Prior Inventions would not be retained. Further, 9(a) did not provide for inventions that are not listed are assigned. The Prior Inventions could potentially include independent inventions dating years before the effective Agreement date, and thus did not make sense. Therefore, 9(a), at best, only granted AngioScore a non-exclusive license if Dr. Lotan incorporated a Prior Invention into an AngioScore product during the term of the Agreement. This non-exclusive license would not prevent Dr. Lotan from later assigning his rights in the inventive contributions to TriReme. And the district court erred in finding Dr. Lotan had assigned his rights to AngioScore to the extent that it relied on Section 9(a). AngioScore then argued that because TriReme was Dr. Lotan s successor in interest, estoppel by contract binds TriReme to Dr. Lotan s representation under 9(a) that he had no prior invention relevant to AngioScore, and thus did not own any rights to purported development or improved of AngioScore s prototype. However, the Federal Circuit ruled that estoppel by contract did not apply because neither Dr. Lotan nor TriReme was seeking to enforce any rights under the contract. The Federal Circuit remanded the interpretation of 9(b) because of insufficient fact finding by the district court.