Intellectual Property

Mending A Fallen Kite

The Federal Circuit had no qualms about invalidating on written description grounds a patent that had previously been counted among the most valuable single patents ever issued. 

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When I first wrote about the patent battle between Juno and Kite in 2017, I was confident of one thing: “Juno’s patent will eventually reach its day of reckoning on the merits.” And that prediction became a nearly sure bet in late 2019, when Juno’s $1 billion-plus trial victory with its ’190 patent became public. (A result I discussed in detail on these pages.) Even though that trial victory was one I correctly characterized as a “interim result in the ’190 patent saga,” the size of the verdict made an appeal on the merits to the Federal Circuit a virtual certainty, especially when the parties had already gone through appellate review of the positive-for-Juno IPR decision on the ’190 patent earlier on — an IPR result that I suggested would contribute toward Juno being “emboldened to seek maximum redress when and if the patent survives.” As expected, an appeal from the trial victory on the ’190 patent did move forward, with perhaps more than just dollars at stake for both Juno and Kite.

Led by new Chief Judge Moore, an all-female panel of the Federal Circuit issued a 19-page opinion completely eviscerating one of the largest patent verdicts of all-time — finding that “no reasonable jury could find the ’190 patent satisfies the written description requirement.” For Juno, that bad news was made worse by the panel’s awarding of costs to Kite, thereby sending the message that this was not much of a close call on the merits. Put another way, the Federal Circuit had no qualms about invalidating on written description grounds a patent that had previously been counted among the most valuable single patents ever issued.

In effect, the panel told Juno that there was clear evidence that the inventors of the ’190 patent had not possessed the entirety of the invention they claimed at the time they claimed it, irrespective of the jury’s belief to the contrary. With the patent thereby invalid, there was no reason for the Federal Circuit to rule on the damages question presented, continuing the reported streak of $1 billion-plus verdicts in patent cases not surviving appeal. Here, of course, the value of the ’190 patent was ratcheted all the way down to zero, unless the inevitable petition to SCOTUS ends up beating the odds and gets granted. (At the same time, it would have been nice to have gotten some more Federal Circuit commentary on the royalty rate question in particular, considering the outsized nature of the 25 precent-plus royalty rate awarded relative to accepted royalty rates in the high-tech sector, for example.)

As with anything appellate, understanding the scope of appellate review helps to understand the actual appeal result. Because the case was before the Federal Circuit on an appeal of a JMOL denial, the review was de novo, even as the issue of written description is a question of fact on which deference is given to a jury’s factual findings that are supported by substantial evidence. As presented with respect to the ’190 patent, the inquiry turned on a simple question: Was the breadth of the claims matched by the teachings of the specification, so as to show that the inventors possessed the full scope of the invention as claimed? In the eyes of the panel, the answer to that question was a resounding no.

First, the panel called out the “scant details” in the ’190 patent’s specification regarding a key element of the claims, namely, use of “scFvs that bind to selected targets.” That lack of detail failed “to demonstrate to a skilled artisan that the inventors possessed and disclosed in their filing the particular species of scFvs that would bind to a representative number of targets” as required to comply with the written description requirement. Nor could Juno’s reliance on extrinsic evidence in the form of expert testimony cure the defects in the ’190 patent’s teachings, especially where the prior art record as to which antibody would be expected to bind to which target was not fully developed. Accordingly, the fact that there were “general assertions of structural commonalities” in the record for the antibodies in question was not enough to save the claims, and because the ’190 patent failed “to disclose structural features common to scFvs capable of binding specific targets, it also fails to disclose a way to distinguish those scFvs capable of binding from scFvs incapable of binding those targets.” Likewise, other claims directed to binding to the CD19 antigen were also invalid for lack of written description because the ’190 patent “provides no details about which scFvs bind to CD19 in a way that distinguishes them from scFvs that do not bind to CD19.” Absent such “guidance, under our controlling Ariad decision, no reasonable jury could find the ’190 patent satisfies the written description requirement.” From being worth over a billion to zero in the space of a relatively short appellate opinion, such was the fate of Juno’s ’190 patent.

Ultimately, this decision reinforces the challenge for both patent lawyers and their clients in properly claiming what in the art could be hailed as seminal technological or scientific advances. On the one hand, there is a reasonable temptation to claim broadly so as to capture a broader swath of potential future infringers. On the other, there is the need — especially in the biotech/pharma space — to make sure that the balance demanded by Ariad on written description is met whereby “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Here, Juno’s ’190 patent high-flying trial win ended in a reprise of Icarus’ too-high flight toward the sun, with the Federal Circuit’s written description glare ultimately proving too bright for Juno’s flight to patent glory to endure. Whether this presents the end of the road for the dispute between Kite and Juno may end up a question for SCOTUS to decide. But the potential ramifications for patent holders susceptible to a written description/Ariad attack will undoubtedly receive more immediate attention. In the meantime, Kite seems free to fly away unburdened by the prospect of paying Juno a healthy cut of its sales, just because Juno claimed a bit more patent territory than it was entitled to.

Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

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Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.

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