Spotlight on Upcoming Oral Arguments – April 2020

April 6, 2020

Clarus Therapeutics, Inc. v. Lipoline, Inc., No. 19-1566, Courtroom 402 (telephonic argument)

Lipoline initiated an interference proceeding on Clarus’s patent under 35 U.S.C. § 135(a). Lipoline argued to the Patent Trial and Appeal Board (“PTAB”) that Clarus’s patent cannot claim a priority date to a provisional application, because the provisional application did not provide sufficient written description support for the claimed formulation. The PTAB granted Lipoline’s motion on the priority date. Then, Lipoline convinced the PTAB that its own invention date preceded the patent’s priority date. As a result, the PTAB revoked Clarus’s patent.

On appeal, Clarus argues that the provisional application provides at least one anticipatory embodiment of the claim, allowing a person of ordinary skill in the art (“POSA”) to recognize that the inventor invented what is claimed. More specifically, Clarus argues that to provide support for the claimed negative limitation at issue, the provisional application only needs to describe a reason to exclude the limitation, and the reason to exclude need not rise to a level of disclaimer. Clarus cites caselaw holding that elements that are positively recited in the alternative in the specification may provide support for elements explicitly excluded in the claims. Lipoline responds that Clarus incorrectly assumes that any discussion of alternatives constitutes a discussion of mutually exclusive alternatives. In Lipoline’s view, the provisional application discloses too many alternatives that can be used in combination, and such disclosure is not sufficient to provide support for the negative limitation.

April 8, 2020

Canfield Scientific, Inc. v. Melanoscan, Inc., No. 19-1927, Courtroom 201 (telephonic argument)

Canfield petitioned for inter partes review (“IPR”) of Melanoscan’s patent, and one question before the PTAB was whether a POSA would have been motivated to combine the asserted prior art references. In the IPR proceeding, Canfield provided a number of theories for combinations that a POSA allegedly would have been motivated to make. Each theory is based on a different set of prior art references, but all the theories involve a common reference. In its final written decision, the PTAB focused on the common reference, and concluded that Canfield failed to meet its burden to show that a POSA would have been motivated to combine under any of the theories that Canfield put forward.

On appeal, Canfield argues that by focusing on the common reference, the PTAB only addressed one theory for combination and failed to address all the other theories that Canfield advanced. In response, Melanoscan argues that the PTAB is not required to explicitly discuss every issue or address every argument raised by a party.

April 10, 2020

Bio-Rad Laboratories, Inc. v. 10x Genomics, Inc., No. 19-2255, Courtroom 201 (telephonic argument)

Bio-Rad sued 10x for allegedly infringing three patents directed to systems and methods for forming droplets within microchannels. The jury found that five 10x products infringed the patents, awarding Bio-Rad $23.9 million in royalties. The district court later issued a permanent injunction on the accused products.

On appeal, 10x argues that the district court erred in construing the preambles as nonlimiting. According to 10x, the body of the claims references the preambles for antecedent basis, the specification repeatedly focuses on the feature in the preamble, and the Examiner added the feature to the preamble during prosecution. In response, Bio-Rad argues that 10x’s products still infringe even if the feature at issue in the preamble is limiting. 10x also appeals the permanent injunction, arguing that Bio-Rad never claimed that its products competed with the enjoined 10x products. Bio-Rad  responds by citing numerous accounts in which 10x allegedly admitted that the two companies are competitors.