Fed. Circ. Patent Rulings May Shift Use Of Motion To Dismiss

By Steven D. Roth, Law360, June 10, 2020

Two recent U.S. Court of Appeals for the Federal Circuit cases demonstrate that courts are now more amenable to dismissing a complaint for patent infringement based on its merits.

In Amgen Inc. v. Coherus Biosciences Inc.,[1] the Federal Circuit affirmed dismissal of the complaint, finding no infringement under the doctrine of equivalents based on the doctrine of prosecution history estoppel, and, in Eagle Pharmaceuticals Inc. v. Slayback Pharma Inc.,[2] the Federal Circuit affirmed dismissal of the complaint, finding no infringement under the doctrine of equivalents based on the disclosure-dedication doctrine.

Although largely left to the discretion of the district court, in view of these cases, a motion to dismiss on the merits at the outset of a case is a strategy a patent litigation defendant should consider.

Motions to dismiss for failure to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6) are governed by the law of the regional circuit in which the case is brought. Generally, courts ask whether the plaintiff would be entitled to the requested relief assuming all factual allegations asserted in the complaint are true.[3] This assumption has a few important exceptions. Courts, for example, do not have to accept allegations that are conclusory[4] or implausible.[5]

In determining whether a factual claim is plausible, the regional circuits are in general agreement that a court may consider documents attached to or integral to the complaint, or public records of which the court may take judicial notice.[6] But courts do not ordinarily consider other documents, such as fact or expert declarations, without converting the motion to dismiss into a motion for summary judgment.

A critical question is whether a court may consider the file history of an asserted patent in determining whether to dismiss a claim for infringement of that patent on the merits. Courts, surprisingly even in the same district, appear to be split on this question.

For example, while U.S. District Court for the District of Delaware in Par Pharmaceutical Inc. v. Hospira Inc.,[7] refused to consider the file history not referenced in the complaint on a motion to dismiss, the Delaware district court in Amgen v. Coherus Biosciences dismissed the complaint based on prosecution history estoppel, specifically stating that the prosecution history of the asserted patent may be relied upon in deciding a motion to dismiss because it is in the public record.[8]

Literal Infringement

So long as the complaint identifies with specificity the allegedly infringing product or process, and preferably identifies the features of the allegedly infringing product or process that correspond to the elements of the asserted claims, courts will routinely deny a motion to dismiss a claim for literal infringement. Moreover, courts have routinely refused to construe a claim term in the context of a motion to dismiss, so long as the plaintiff’s contention regarding the meaning of the claim term is plausible.[9]

Nevertheless, when alleging literal infringement, counsel should be wary of Federal Rule of Civil Procedure 11, requiring that factual contentions have evidentiary support or, if specifically so identified, will likely have evidentiary support after a reasonable opportunity for further investigation or discovery.

Infringement Under the Doctrine of Equivalents

As discussed above, in two recent Federal Circuit cases, claims for infringement under the doctrine of equivalents were dismissed as a matter of law as they were barred by the legal doctrines of prosecution history estoppel and disclosure-dedication. In both cases, literal infringement was not asserted.

Prosecution history estoppel may however require resolution of subsidiary issues of fact, such as the reason for the amendment, if the estoppel is based on an amendment made during prosecution, or whether the equivalent at issue was unforeseeable during prosecution or tangential to the reason for the amendment. These potential subsidiary factual issues are less likely to require resolution if the estoppel is argument based.

Thus, in Amgen, the Federal Circuit affirmed the district court’s holding that Amgen “clearly and unmistakably surrendered unclaimed salt combinations during prosecution,” by arguing during prosecution that only the particular combination of salts claimed in Amgen’s patent achieved the advantages of the invention.[10] Amgen, according to the court, effectively disclaimed other salt combinations, and therefore cannot assert them as equivalents of the claimed salt combination.

The disclosure-dedication doctrine may bar application of infringement under the doctrine of equivalents when the accused equivalent is disclosed but not claimed in the asserted patent. The only document outside the complaint that needs to be considered on a motion to dismiss based on this doctrine is the asserted patent.

The Federal Circuit in Eagle v. Slayback thus affirmed dismissal of a complaint, finding that Eagle is barred, under the disclosure-dedication doctrine, from arguing that Slayback’s ethanol ingredient is equivalent to the claimed ingredient propylene glycol, because Eagle’s patent specification “expressly and repeatedly identifies ‘ethanol’ as an alternative ‘pharmaceutically acceptable fluid’ to propylene glycol.”[11]

Thus, according to the court, by disclosing but not claiming ethanol, Eagle surrendered ethanol as an equivalent to the claimed propylene glycol.

Conclusion

In view of recent Federal Circuit cases, patent litigation defendants should seriously consider moving to dismiss a complaint on the merits, in lieu of answering, when (1) there is no plausible argument for literal infringement, (2) there is no claim construction issue necessary to resolve the motion, and (3) there was a clear surrender of the alleged equivalent pursuant to a legal doctrine barring application of infringement under the doctrine of equivalents, such as prosecution history estoppel or the disclosure-dedication doctrine.

Steven D. Roth is a partner at Lucas & Mercanti LLP. The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.

[1] Amgen Inc. v. Coherus Biosciences Inc. , 931 F.3d 1154 (Fed. Cir. 2019).

[2] Eagle Pharmaceuticals Inc. v. Slayback Pharma Inc. , 958 F.3d 1171 (Fed. Cir. 2020).

[3] Amgen, at 1159.

[4] Eagle, at 1175.

[5] Ottah v. Fiat Chrysler , 884 F.3d 1135, 1141 (Fed. Cir. 2018), citing, Ashcroft v. Iqbal , 556 U.S. 662, 678 (2009).

[6] See, e.g., Kleinman v. Elan Corp. , 706 F.3d 145, 152 (2d. Cir. 2013); In re Burlington Coat Factory , 114 F.3d 1410, 1426 (3d. Cir. 1997); Philips v. Pitt Cty. Mem’l Hosp. , 572 F.3d 176, 180 (4th Cir. 2009); Williamson v. Curran , 714 F.3d 432, 436 (7th Cir. 2013); Schwarz v. United States , 234 F.3d 428, 435 (9th Cir. 2000).

[7] Par Pharmaceutical, Inc. v. Hospira, Inc. , 2018 WL 3343238 at *2 (D. Del. April 27, 2018).

[8] Amgen Inc. v. Coherus Biosciences Inc., C.A. No. 17-546-LPS-CJB, D.I. No. 59, p. 6, fn. 6 (D. Del. 2018).

[9] See, e.g., Ultimate Home v. Camco Man. Inc. 2020 WL 1169358 (M.D.N.C. March 11, 2020); Boston Fog LLC v. Ryobi Tech. Inc. 2020 WL 1532372 (D. Del. March 31, 2020); Regents Univ. of Mich. V. Leica Microsystems Inc. 2020 WL 2084891 (N.D. Cal. April 30, 2020); Liqui-Box Corp. v. Scholle IPN Corp. , 2020 WL 1491144 (ND Ill. March 27, 2020). Compare Nalco Co. v. Chem-Mod, LLC , 883 F.3d 1337, 1349-50 (Fed. Cir. 2018) (legitimate dispute over claim construction not suitable for resolution on a motion to dismiss) with, Ottah v. Fiat Chrysler, 884 F.3d 1135, 1141-42 (Fed. Cir. 2018) (affirmed dismissal because a claim to a book holder cannot plausibly be interpreted as covering a camera holder).

[10] Amgen, at 1160.

[11] Eagle, at 1174.