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  • Eli Lilly and Company v. Perrigo Co. (Fed. Cir. 2017)

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    $$ The very large variable capacity motor spends much of its working life at a small fraction of its maximum capacity, where it runs ine…

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  • CAFC addresses obviousness, marking, damages in Arctic Cat

    In the technical area of thrust steering
    systems for personal watercraft (“PWC”) propelled by jet
    stream, Arctic Cat sued BRP for infringement.

    BRP did not do well before the jury, and sought JNOV:

    At trial, the jury found both patents not invalid,
    awarded a royalty consistent with Arctic Cat’s model
    ($102.54 per unit) to begin on October 16, 2008, and found
    by clear and convincing evidence that BRP willfully
    infringed the asserted claims.


    After post-trial briefing, the district court denied
    BRP’s renewed motion for judgment as a matter of law on
    all issues. It granted Arctic Cat’s motion for an ongoing
    royalty, awarding $205.08 per unit. BRP appeals the
    district court’s denial of judgment as a matter of law on
    validity, marking, damages, and willfulness, as well as its
    grant of an ongoing royalty and decision to treble damages.

    Of motivation to combine, the CAFC wrote:

    Therefore, a motivation to combine can
    be found explicitly or implicitly in the prior art references
    themselves, in market forces, in design incentives, or in
    “any need or problem known in the field of endeavor at
    the time of invention and addressed by the patent.” KSR,
    550 U.S. at 420–21; accord Plantronics, Inc. v. Aliph, Inc.,
    724 F.3d 1343, 1354 (Fed. Cir. 2013) (“[M]otivation to
    combine may be found explicitly or implicitly in market
    forces; design incentives; the ‘interrelated teachings of
    multiple patents’; ‘any need or problem known in the field
    of endeavor at the time of invention and addressed by the
    patent’; and the background knowledge, creativity, and
    common sense of the person of ordinary skill.” (quoting
    Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
    1328–29 (Fed. Cir. 2009))). “The court should consider a
    range of real-world facts to determine ‘whether there was
    an apparent reason to combine the known elements in the
    fashion claimed by the patent at issue.’” Intercontinental
    Great Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336,
    1344 (Fed. Cir. 2017) (quoting KSR, 550 U.S. at 418).
    Motivation to combine is a factual determination as to
    whether there is a known reason a skilled artisan would
    have been motivated to combine elements to arrive at a
    claimed combination. This is not the ultimate legal
    determination of whether the claimed combination would
    have been obvious to the ordinary artisan—meaning that
    it is possible that a reason or motivation may exist, but
    nonetheless the ordinary artisan would not have found
    the combination obvious.

    When a challenger shows that a “motivation” existed
    for a relevant skilled artisan to combine prior
    art in the way claimed in the patent at issue,
    such a showing commonly supports and leads
    readily to the further, ultimate determination
    that such an artisan, using ordinary creativity,
    would actually have found the claimed invention
    obvious. But the latter conclusion does not follow
    automatically from the former finding, and additional
    evidence may prevent drawing it. . . . Even
    with a motivation proved, the record may reveal
    reasons that, after all, the court should not conclude
    that the combination would have been obvious
    . . . .
    Intercontinental Great Brands, 869 F.3d at 1346–47.

    BRP tried the finite, predictable solution approach from KSR:

    BRP argues a skilled artisan would have selected the
    Challenger system because it was one of a finite number
    of identified, predictable solutions to the problem of offthrottle
    steering in PWCs. See KSR, 550 U.S. at 421. The
    SAE Interim and Draft Final Reports identified the
    Challenger’s throttle reapplication as one of four solutions
    to the problem of off-throttle steering, along with rudders,
    flaps, and scoops. The National Association of State
    Boating Law Administrators also explained that jet boats
    and PWCs are similar and off-throttle directional control
    is a problem for both. Rheault ’833 disclosed that its
    steer-responsive throttle “is applicable to single-engine
    personal watercraft,” and Rheault ’938 states the Challenger
    jet boat’s thrust steering “is applicable to all types
    of watercraft vehicles, including personal watercraft
    vehicles.” J.A. 8942 at Abstract; J.A. 8920 at 8:15–17.
    For these reasons, BRP argues a reasonable jury could
    only have found a skilled artisan would have been motivated
    to modify a PWC with Challenger’s off-throttle
    thrust reapplication system, which would have combined
    known elements to improve the system in the same way
    and yield expected results

    The “substantial evidence” standard was pivotal:

    If such a fact finding is supported by substantial evidence,
    we may not reverse it. In briefing and oral argument,
    BRP devoted much of its argument to re-litigating its case
    and its evidence rather than addressing the evidence that
    could have supported the jury’s finding of no motivation to
    combine. We do not reweigh the evidence and reach our
    own factual determination regarding motivation. The
    question for us on appeal is only whether substantial
    evidence supports the jury’s presumed finding. See, e.g.,
    Apple, 839 F.3d at 1052 (“Our job is not to review whether
    Samsung’s losing position was also supported by substantial
    evidence or to weigh the relative strength of Samsung’s
    evidence against Apple’s evidence. We are limited
    to determining whether there was substantial evidence
    for the jury’s findings, on the entirety of the record.”). We
    conclude that it does.

    There was asserted ambiguity on motivation to combine:

    This evidence may not rise to the level of teaching
    away. Nonetheless, in light of this record, the jury’s
    determination that there was no motivation to make this
    particular combination is supported by substantial evidence.
    Evidence suggesting reasons to combine cannot be
    viewed in a vacuum apart from evidence suggesting
    reasons not to combine.
    In this case, the same reference
    suggests a reason to combine, but also suggests reasons
    that a skilled artisan would be discouraged from pursuing
    such a combination. Under such circumstances, the jury’s
    fact finding regarding motivation is supported by substantial
    evidence. Coupled with testimony confirming the
    potential problems of automatic throttle reapplication and
    suggesting an alternative approach might reduce those
    same problems, J.A. 2230–32, a jury could find a skilled
    artisan would not have been motivated to combine the
    Challenger system with a PWC to arrive at the claimed

    Of some interest is the text

    An internal BRP “brainstorming” session identified thirtytwo
    possible designs directed to off-throttle steering. J.A.
    9454. And there is evidence that other potential solutions
    to the off-throttle steering problem existed but were not
    fully disclosed for confidentiality and other concerns. See,
    e.g., J.A. 7532 (noting that some ideas offered in response
    to SAE’s inquiry “have typically either not conveyed
    sufficient information or have patent, propriety, or litigation

    What can happen when does not object:

    BRP argues that substantial evidence does not support
    the jury’s presumed factual finding that the claimed
    invention received industry praise because “praise from a
    Coast Guard official in Arctic Cat’s own press release” is a
    “hearsay statement [that] cannot overcome persuasive
    evidence that the claimed technology described the same
    approach as BRP’s system.” Appellant’s Br. 35–36 (citing
    J.A. 7828; J.A. 7871; In re Cree, Inc., 818 F.3d 694, 702
    (Fed. Cir. 2016)). We disagree for at least two reasons.
    First, Arctic Cat contends—and BRP does not contest—
    that BRP failed to object to this evidence as hearsay at
    trial, so the jury was entitled to credit the statement.
    Appellee’s Br. 12. Second, that Captain Holmes’ statements
    appear in Arctic Cat’s press release goes to evidentiary
    weight. Captain Holmes’ statements and
    Mr. Bernier’s testimony constitute substantial evidence to
    support the jury’s presumed factual finding that the
    claimed invention received praise from the industry. This
    evidence of industry recognition of the significance and
    value of the claimed invention weighs in favor of nonobviousness.

    Of marking, note

    We hold an alleged infringer who challenges the patentee’s
    compliance with § 287 bears an initial burden of
    production to articulate the products it believes are unmarked
    “patented articles” subject to § 287. To be clear,
    this is a low bar. The alleged infringer need only put the
    patentee on notice that he or his authorized licensees sold
    specific unmarked products which the alleged infringer
    believes practice the patent. The alleged infringer’s
    burden is a burden of production, not one of persuasion or
    We do not here determine the minimum showing
    needed to meet the initial burden of production, but we
    hold in this case it was satisfied by BRP. At trial BRP
    introduced the licensing agreement between Honda and
    Arctic Cat showing Honda’s license to practice “Arctic Cat
    patents that patently cover Arctic Cat’s Controlled Thrust
    Steering methods, systems and developments.” J.A. 7830
    § 1.01. BRP identified fourteen Honda PWCs from three
    versions of its Aquatrax series sold between 2002 and
    2009. J.A. 3540–41 ¶ II. BRP’s expert testified that he
    “review[ed] information regarding those models” and
    believed if BRP’s OTAS system practiced the patents, so
    did Honda’s throttle reapplication system in the Aquatrax
    PWCs. J.A. 2447–49; J.A. 2482. This was sufficient to
    satisfy BRP’s initial burden of production.


    The district
    court erred in placing this burden upon BRP and thus we
    vacate and remand on marking.

    Because the district court adopted this legal approach
    at the summary judgment stage, it made clear to the
    parties that it would be BRP’s burden to prove that the
    unmarked products fell within the patent claims. Arctic
    Cat, therefore, did not have a fair opportunity to develop
    its case regarding the Honda PWCs at trial.
    Arctic Cat was not on notice regarding its burden, and in
    fact labored under the assumption that BRP had the
    burden of proof, reversal would be improper. We thus
    vacate the district court’s judgment as to marking and
    remand so that Arctic Cat has an opportunity to proffer
    evidence related to the identified Honda PWCs.2

    Of making arguments in footnotes, from footnote 4 of the
    CAFC opinion:

    BRP states in a footnote that even if this testimony
    were admissible, it is irrelevant and thus Arctic Cat
    failed to provide sufficient evidence to support the jury’s
    award. Appellant’s Br. 46 n.3. This single sentence,
    devoid of any analysis, is insufficient for BRP to meet its
    burden on appeal, and we nevertheless conclude
    Mr. Bratic’s testimony constitutes substantial evidence
    supporting the jury’s reasonable royalty award.

    Of a decision without briefing:

    Finally, the district court did not abuse its discretion
    by trebling damages. While the district court initially
    trebled damages without much explanation, J.A. 97–98, it
    explained its decision in a subsequent thorough and wellreasoned
    opinion. See J.A. 99–116 (applying the factors
    outlined in Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed.
    Cir. 1992)). Although the district court did not allow the
    parties to brief the issue, we will not adopt a blanket rule
    that a district court abuses its discretion by deciding an
    issue without receiving briefing from the parties. That is
    especially true where, as here, BRP attacks the district
    court’s procedure but does not explain how additional
    briefing would have changed the outcome. In short, BRP
    has not shown that the district court’s failure to allow
    briefing amounts to an abuse of discretion. We affirm the
    district court’s denial of judgment as a matter of law on
    willfulness and its order trebling damages.

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  • Perry Mason does patents

    In “The Case of the Irate Inventor” (first broadcast 28 May 1960), “Perry Mason” brushes with patent law.Thirty-nine years before Pfaff, the idea of whether or not an invention was “ready for patenting” arose in determining “who owned” rights to an inv…

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  • Lost Profits for Infringement Abroad

    In WesternGeco v. ION Geophysical, the Supreme Court is being asked to decide Whether the court of appeals erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases where patent infringement is proven under 35 U.S.C. § 271(f). The case is at the petitions […]

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