Federal Circuit Applies Pre-KSR Obviousness Analysis to Affirm Preliminary Injunction | Practical Law

Federal Circuit Applies Pre-KSR Obviousness Analysis to Affirm Preliminary Injunction | Practical Law

In Celsis In Vitro, Inc. v. CellzDirect, Inc., a divided US Court of Appeals for the Federal Circuit affirmed the grant of a motion for a preliminary injunction in favor of Celsis In Vitro, Inc. on January 9, 2012. Notably, Circuit Judge Gajarsa's dissent argued that the majority failed to follow the US Supreme Court's non-obviousness analysis in KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007) in evaluating Celsis' patent.

Federal Circuit Applies Pre-KSR Obviousness Analysis to Affirm Preliminary Injunction

by PLC Intellectual Property & Technology
Published on 13 Jan 2012 • USA (National/Federal)
In Celsis In Vitro, Inc. v. CellzDirect, Inc., a divided US Court of Appeals for the Federal Circuit affirmed the grant of a motion for a preliminary injunction in favor of Celsis In Vitro, Inc. on January 9, 2012. Notably, Circuit Judge Gajarsa's dissent argued that the majority failed to follow the US Supreme Court's non-obviousness analysis in KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007) in evaluating Celsis' patent.

Key Litigated Issue

In Celsis In Vitro, Inc. v. CellzDirect, Inc., the key issue before the US Court of Appeals for the Federal Circuit was whether the district court erred in granting a preliminary injunction motion in favor of the patent owner, Celsis In Vitro, Inc., by determining that Celsis proved a likelihood of success concerning the non-obviousness of the claimed method.

Background

This litigation concerned U.S. Patent No. 7,604,929 (the '929 patent), which covers a method of repeatedly freezing human liver cells to preserve them for medical research. The defendants CellzDirect, Inc. and Invitrogen Corp., now Life Technologies Corp. (LTC), also sold similar products using a process that Celsis alleged infringes the '929 patent. In June 2010, Celsis sued LTC and later moved for a preliminary injunction.
Following an evidentiary hearing, the District Court for the Northern District of Illinois granted Celsis' motion for a preliminary injunction. LTC then appealed to the Federal Circuit.

Outcome

In its decision on appeal, the Federal Circuit affirmed the district court's grant of the motion for a preliminary injunction. In the majority's discussion of the '929 patent's non-obviousness it pointed out that:
  • A prior art article relied on by LTC mentioned a preservation process in which the liver cells were frozen only once.
  • LTC did not identify any teaching, suggestion or motivation in the article of multiple rounds of freezing.
The court noted that LTC's mere references to a market need for a multi-cryopreservation process and expert witness testimony in support of its argument that this teaching, suggestion or motivation existed instead shows a long felt need for the claimed invention and its non-obviousness.
Notably, Circuit Judge Gajarsa dissented from the majority's decision because he determined that LTC had raised a substantial question concerning the '929 patent's validity. Judge Gajarsa's dissent faulted the majority's determination that LTC failed to show an explicit teaching, suggestion or motivation for repeatedly freezing liver cells. Judge Gajarsa argued that the majority's decision:
  • Contradicts the Supreme Court's opinion in KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007) that the obviousness analysis should not be confined to rigid and mandatory formulas.
  • Reinvigorates the pre-KSR obviousness standard by rigidly requiring an explicit teaching, suggestion or motivation for the claimed invention.

Practical Implications

Alleged infringers seeking to defeat a motion for preliminary injunction in a patent infringement case should be prepared to produce evidence of an explicit teaching, suggestion or motivation in the prior art to show a likelihood of success in proving the obviousness of the patent.

Court Documents