Egenera, Inc. v. Cisco Systems, Inc., No. 2023-1428 (Fed. Cir. (D. Mass.) July 7, 2025). Opinion by Stark, joined by Prost and Taranto.
Egenera owns a patent related to improved systems and methods for deploying and reconfiguring server systems by use of a digitalized “processing platform” that enables virtual management in lieu of physical rewiring. Egenera sued Cisco for infringement of device claims 1 and 3 and method claims 5 and 7. The court granted summary judgment of noninfringement as to claims 1 and 5, and a jury found noninfringement as to claims 3 and 7. The district court denied Egenera’s posttrial motions, and Egenera appealed.
The Federal Circuit first considered the district court’s award of summary judgment of noninfringement for claims 1 and 5. The court had held that the evidence could not demonstrate, to a reasonable factfinder, that the processors within Cisco’s accused product “include network emulation logic to emulate Ethernet functionality.” The only component of Cisco’s product that possibly “emulates” Ethernet functionality is the network interface card (“NIC”), not the processors. The Federal Circuit thus affirmed the award of summary judgment, ruling that “a reasonable jury, viewing the evidence in the light most favorable to Egenera, could find only that the … CPUs have knowledge of, and use, Ethernet functionality, but do not—as the claims require—actually ‘emulate’ Ethernet functionality.”
The Federal Circuit also noted that, “with the benefit of hindsight and further consideration on appeal,” it appeared the issue “was actually about the proper construction of ‘emulate.’” But no party had identified a claim construction dispute, and Egenera never argued that claim construction is necessary. Accordingly, the Federal Circuit affirmed the summary judgment determination.
Turning next to the jury verdict of noninfringement of claims 3 and 7, the Federal Circuit again affirmed. At trial, Cisco presented three alternative noninfringement grounds, each premised on its product not practicing a different claim limitation. The jury returned a general verdict of noninfringement, which the Federal Circuit will uphold “if there was sufficient evidence to support any of the prevailing party’s alternative factual theories.” The Federal Circuit needed to consider just one of the grounds to affirm. That ground turned on a claim limitation requiring the processors to “establish the specified virtual local area network topology providing communication among said corresponding set of computer processors.” The Federal Circuit held that the evidence presented at trial was sufficient to support a finding that the accused product establishes network topology only at the NICs, not at the processors, thus failing to satisfy this claim limitation.
Lastly, Egenera asserted five grounds for reversing the district court’s denial of a new trial: “(i) the verdict is against the weight of the evidence; (ii) the district court should have provided a curative instruction to fix statements made during empanelment; (iii) there were errors in the jury instructions; (iv) Cisco introduced expert opinion from lay witnesses; and (v) Cisco’s counsel made improper statements during closing.” The Federal Circuit considered each ground and found “no abuse of discretion in any of these rulings.”
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Janssen Pharmaceuticals, Inc., et al. v. Teva Pharmaceuticals USA, Inc., et al., Nos. 2025-1228, -1252 (Fed. Cir. (D.N.J.) July, 8, 2025). Opinion by Taranto, joined by Prost and Reyna.
Janssen sued Teva for infringement of a patent concerning dosing regimens of a long-acting injectable antipsychotic medication, paliperidone palmitate. Teva stipulated to infringement but challenged the patent’s validity on several grounds. Pertinent here, the district court held that the claims had not been proved invalid as obvious. Teva appealed.
The Federal Circuit first considered the district court’s decision not to apply a presumption of obviousness to the treatment regimen recited in representative claim 2. Teva contended that these claims should be presumed obvious because they recite numerical ranges overlapping with the prior art. But the Federal Circuit affirmed, explaining that the presumption is not automatic and depends on the context and the specific facts, including whether the claimed invention is simply an optimization of known ranges or involves a more complex combination of variables. Here, the claimed treatment regimen—a combination of specific loading doses at specific times—was not shown to be a routine optimization, and the district court’s factual findings did not support applying the presumption.
Next, the Federal Circuit considered the district court’s holding that Teva did not prove representative claim 2 obvious. Teva argued that the claimed regimens were obvious in light of prior art, including a Janssen clinical trial protocol describing three equal loading doses, Janssen’s own prior patents and publications disclosing paliperidone palmitate formulations and dosing ranges, and other references on antipsychotic dosing strategies. The Federal Circuit found no clear error in the district court’s findings that Teva failed to prove a motivation to combine the prior art references to arrive at the claimed regimens, or that a skilled artisan would have had a reasonable expectation of success. The prior art did not disclose the specific sequence of unequal, decreasing loading doses, and the evidence did not show that a skilled artisan would have been motivated to adopt such a regimen or would have expected it to be safe and effective.
Lastly, the Federal Circuit considered the district court’s holding that two other groups of claims were not proved obvious. For the first group, involving representative claims 10 and 13, Teva argued that the district court applied an erroneously narrow test for obviousness. The Federal Circuit was not persuaded: “The district court found—without clear error—that Teva failed to prove a motivation to reduce the prior art’s dosing regimens in such a way as to arrive at the regimens of claims 10 or 13.” Also, the district court did not clearly err in weighing the expert testimony when determining that Teva’s theory of motivation was not supported by the record.
For the second group, involving representative claims 20 and 21, the court ruled that they likewise were not proved invalid for obviousness. These claims depended on other claims that were not proved invalid.
For these reasons, the Federal Circuit affirmed the district court’s judgment that Teva had not proved the asserted claims invalid for obviousness. Because the Federal Circuit affirmed the rejection of Teva’s affirmative case for obviousness “on its own terms,” the court did not reach the issue of objective indicia of nonobviousness invoked by Janssen.
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