Innogenetics v. Abbott Laboratories (CAFC 2007-1145, -1161)

'704 goes to diagnostic tools for hepatitis C.

On appeal, Abbott's claim construction repeatedly drew hoots. After slashing Abbott's tortured constructions with phrases like: "a plain reading of the claim limitation suggests that it does just what it says," and "Abbott’s reading of the process of detection improperly narrows the claim language," the flogging ends with -

Lastly, relying on various dictionaries, Abbott argues that the word “as” is correctly defined as “at the same time that: while.” Abbott’s reliance on a single dictionary definition without explanation - especially where “as” has multiple meanings - commits the very error of construction that we warned against in Phillips.

Reference to Phillips of course being Phillips v. AWH, the CAFC claim construction classic.

In determining the meaning of a disputed claim limitation, we look primarily to the intrinsic evidence of record, examining the claim language, the written description, and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). Words of a claim “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art. Id. at 1312-13. Claims are read in view of the specification, which is the single best guide to the meaning of disputed terms. Id. at 1315. “In examining the specification for proper context, however, this court will not at any time import limitations from the specification into the claims.” CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (citing Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1326 (Fed. Cir. 2002)).

On missing expert witness testimony with regard to obviousness:

At the final pre-trial conference, the district court granted Innogenetics’ motion in limine and excluded testimony on obviousness by Abbott’s witness, Dr. Patterson. However, the written order commemorating the conference rulings inaccurately stated that defendant was precluded from entering any evidence of obviousness at trial. Aware of the mistake, Abbott nonetheless never moved for correction or reconsideration of the written order. Instead, it advised plaintiff’s counsel in writing that it would not be contesting the written ruling and would put in no evidence of obviousness. Abbott confirmed this decision on the first day of trial, noting only that it wished to preserve an objection on the issue. Post-trial, the district court denied Abbott’s Rule 50(b) motion for a new trial on obviousness because Abbott, despite its knowledge from the very beginning that the written order was inaccurate, was only then seeking correction by way of overturning the jury’s unfavorable verdict against it. Abbott now appeals the district court’s denial of its motion for a new trial on obviousness on the grounds that Dr. Patterson’s testimony on the issue was excluded and that, furthermore, no other evidence on the issue was allowed. Because the district court’s rulings were not an abuse of discretion, we leave the jury verdict intact.

After we all thought asserting impermissible hindsight for obviousness, post KSR, was like flogging a dead horse, and that needing to show motivation for combination was old school; on the report Dr. Patterson submitted:

The district court did not err in finding that Dr. Patterson’s report on the alleged obviousness of the asserted claims of the ’704 patent was deficient for purposes of disclosure under Rule 26. For each of the claims that he analyzes for obviousness, Dr. Patterson merely lists a number of prior art references and then concludes with the stock phrase “to one skilled in the art it would have been obvious to perform the genotyping method in [claims 1-9 & 12-13] of the ’704 patent.”2 “[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (“To facilitate review, this analysis should be made explicit.”) (citing Kahn, 441 F.3d at 988). Nowhere does Dr. Patterson state how or why a person ordinarily skilled in the art would have found the claims of the ’704 patent obvious in light of some combination of those particular references. As the district court found: “It is not credible to think that a lay jury could examine the Cha application, the Resnick ’718 patent that defendant cited as prior art or any of the other references and determine on its own whether there were differences among them and the ’704 patent.” Innogenetics, N.V. v. Abbott Labs., No. 05-C-0575-C, slip op. at 14 (W.D. Wis. Jan. 3, 2007). Such vague testimony would not have been helpful to a lay jury in avoiding the pitfalls of hindsight that belie a determination of obviousness. See Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (discussing the “importance of guarding against hindsight . . . and resist[ing] the temptation to read into the prior art the teachings of the invention in issue” when considering the obviousness of a patent).

On appeal, Abbott argues in a single sentence, without any explanation, that the district court erred in concluding that Dr. Patterson did not offer any evidence of a “motivation to combine” the various prior art references that he opined rendered the claims of the ’704 patent obvious. To be sure, Dr. Patterson suggested that one of skill in the art was motivated to find a method capable of genotyping because at least one prior art reference had disclosed that “different genotypes of HCV respond differently to interferon therapy.” The district court was nevertheless correct that knowledge of a problem and motivation to solve it are entirely different from motivation to combine particular references to reach the particular claimed method. Innogenetics, slip op. at 14 (“A generalized motivation to develop a method is not the kind of motivation required by the patent laws.”). We cannot conclude that the district court abused its discretion when it precluded Dr. Patterson’s vague and conclusory obviousness testimony which did not offer any motivation for one skilled in the art to combine the particular references he cites in order to practice the claimed method.

Abbott also argues that there is no requirement that an expert opine on motivation to combine references, and that motivation can be established by other witnesses or the prior art. Abbott is correct that an expert is not the only source for evidence that it would be obvious for one skilled in the art to combine references to reach the claimed method. But, as the district court held, “some kind of motivation must be shown from some source, so that the jury can understand why a person of ordinary skill would have thought of either combining two or more references or modifying one to achieve the patented method.” Id. at 13. However, as we discuss in the next section, Abbott was precluded from offering any other evidence of obviousness, due to Abbott’s own failure to notify the district court of its error in its preclusion order, and this determination was not an abuse of discretion.

One of very few arguments Abbott won was improper preclusion of testimony from expert witness Dr. Patterson based upon faulty claim construction. That got Abbot a remand for a new trial.

Dr. Patterson’s failure to use the district court’s exact words does not change the substance of his testimony or render it inapplicable.

We therefore find improper the district court’s preclusion of Dr. Patterson’s testimony on the basis that he was using a different definition of “method of genotyping.” Accordingly, we reverse the district court’s entry of JMOL and remand for a new trial on the issue of whether the Resnick patent anticipated claim 1 of the ’704 patent consistent with this opinion.

On the supposedly killer patent showing up at the 11th hour, and its inventor being shut out from chiming in:

Additionally, the district court precluded the following evidence related to anticipation: 1) U.S. Patent No. 6,071,693 (the Cha patent) on the grounds that Abbott did not disclose the patent as an anticipating prior art reference until the last day of discovery and 2) any testimony beyond the actual words and content of the Cha PCT application from Dr. Cha, the inventor of the Cha patent and the Cha PCT application, on the grounds that he had not been tendered as an expert witness and that an expert report had not been submitted.

Although Abbott technically complied with the requirements of § 282, the district court did not abuse its discretion in excluding the Cha patent from trial. Abbott’s disclosure of the Cha patent as an anticipatory prior art reference on the very last day of discovery meant Innogenetics was stripped of any meaningful opportunity to prepare an adequate cross-examination of the reference. See ATD Corp. v. Lydall, Inc., 159 F.3d 534, 551 (Fed. Cir. 1998) (“The purpose of § 282, like that of the Federal Rules, is to prevent unfair and prejudicial surprise, not to facilitate last-minute production of evidence.”).

On appeal, Abbott couldn't even get it straight that the issue was playing by the rules.

On appeal, Abbott contends that “[t]here is no requirement that a retained expert, rather than the prior art’s author, provide [an explanation of how the ordinary artisan would have understood a reference’s disclosures.]” Abbott entirely fails to address the district court’s reason for restricting Dr. Cha’s testimony—that witnesses who will be giving scientific testimony are not exempt from the report requirements of Rule 26(a)(2)(B), even when they are not compensated for their work. In sum, the district court concluded that Abbott should have provided an expert report to Innogenetics for Dr. Cha’s specialized testimony. The Seventh Circuit has expressly left open the question of whether experts not specially retained but providing scientific testimony must comply with Rule 26(a)(2)(B), see Musser v. Gentiva Health Servs., 356 F.3d 751, 758 n.3 (7th Cir. 2004), and we need not reach this issue since Abbott has not challenged this determination.

Another wasted opportunity by Abbott sitting on its thumbs pointed out by the appeals court in affirming literal infringement:

We affirm the JMOL entered against Abbott for literal infringement of claims 1, 2, and 3 of the ’704 patent because it has not properly raised any plausible arguments on appeal. Given that the district court did not adopt Abbott’s proposed claim construction, the sole defense against literal infringement asserted by Abbott was that Realtime PCR, the method of detection used in its assay kits, was not known to the ordinary artisan at the time of the filing of the ’704 patent application. However, the district court deemed this issue forfeited because Abbott “did not raise this issue before trial when it could have been given thorough consideration. Instead it raised the issue for the first time at 9:30 p.m. on the night before the start of trial and did so simply by submitting a proposed jury instruction, rather than by bringing the matter directly to the attention of the court and opposing counsel.”

A cap on the precluded evidence -

This is hardly a case that cries out to be overturned or shocks our conscience. In its opening brief, Abbott’s only support for its argument that it had suffered prejudice from not being able to present other witnesses on obviousness is the bald statement that some of its other non-expert witnesses “could have” established invalidity under § 103. Speculation is not sufficient to demonstrate prejudice. The district court found, and our review of the record does not show otherwise, that Abbott “[said] nothing about what these witnesses would have had to say about obviousness” in specific. Innogenetics, slip op. at 16 (“Without such information, I cannot determine whether defendant was prejudiced by not being permitted to adduce evidence on obviousness.”). Without having provided any satisfactory explanation as to why it waited until the conclusion of trial to alert the court to the inaccurate order, Abbott will have to bear the cost of being precluded from presenting any evidence of obviousness at trial. For the above reasons, the district court did not abuse its discretion denying Abbott a new trial on the issue of obviousness.

Abbott argued that its infringement had not been anticipated. That drew a "so what."

Abbott’s argument lacks merit. Essentially, Abbott argues that a patent can never be literally infringed by embodiments that did not exist at the time of filing. Our case law allows for after-arising technology to be captured within the literal scope of valid claims that are drafted broadly enough. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 878-80 (Fed. Cir. 2004) (finding that the claim limitation “regularly received television signal” is broad enough to encompass digital signals even though no televisions that could receive digital signals existed as of the filing date).

Post-Seagate, nobody gets nabbed for willful infringement without putting out marketing brochures that shout: "covered by somebody else's patents."

Finally, we turn to Innogenetics’ cross-appeal challenging the district court’s grant of JMOL, overturning the jury’s verdict of willful infringement. Under the standard recently articulated in In re Seagate Tech., LLC, “proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness.” 497 F.3d at 1371. “[T]o establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” Id. “[T]he patentee must also demonstrate that this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer.” Id. Our review of the record does not indicate how Abbott’s development and sale of its genotyping products were at risk of an objectively high likelihood of infringement. Accordingly, we affirm the lower court’s grant of JMOL of no willful infringement.

The CAFC concurred that Abbott's charge of inequitable conduct during prosecution of the '704 patent was bogus, and let the attorneys' fees award stand. But the injunction was found an abuse of discretion, and the compulsory license imposed needed further delineation.

Remanded.

Abbot was represented on appeal by Pruetz Law Group and Quinn Emanuel Urquhart Oliver & Hedges.