Last week, the Seventh Circuit issued an opinion in ABS Global, Inc. v. Inguran, LLC, No. 17-1873 (7th Cir. Jan. 29, 2019), affirming the district court’s judgment in part, but ordering a new trial on enablement. ABS initiated the case against Inguran asserting antitrust violations. Inguran asserted counterclaims for breach of contract and infringement of its patent claims covering a method of sorting sperm cells to permit cattle breeders to determine the sex of calves. After a jury trial on ABS’s antitrust claims and Inguran’s counterclaims, the district court entered an injunction against Inguran for its antitrust violation and judgment in favor of Inguran on its claims for patent infringement and breach of contract. ABS appealed.
The Court first addressed how it came to have jurisdiction over the appeal, even though it involved patent issues. The Court explained that because the patent claims were permissive counterclaims the case did not fall within the exclusive jurisdiction of the Federal Circuit, which extends only to actions, or compulsory counterclaims, arising under the patent laws.
On the substantive issues, the Court affirmed the district court’s ruling that the asserted patent claims were nonobvious and that ABS was liable on Inguran’s breach of contract claims. On the issue of enablement under 35 U.S.C. § 112(a), however, the Court concluded a new trial is necessary. Specifically, the jury found independent claim 1 enabled, but dependent claim 2 not enabled. The Court explained “the jury’s verdicts were irreconcilable. A proper dependent claim cannot fail for lack of enablement while its independent claim stands, because the dependent claim’s scope is a subset of the independent claim’s scope.” The Court distinguished the enablement requirement from the written description requirement, explaining that the lack of support for a dependent claim limitation could render such a claim invalid for lack of written description even where the independent claim from which it depends is adequately described. Indeed, the Court noted, “dependent claims may be more likely than independent claims to fail the written description requirement simply because they feature more limitations.” Regarding enablement, however, the Court concluded “it is certainly possible for a dependent claim to be more enabled than the independent variant, [but] it is impossible for it to be less so.” Concluding that the jury’s verdict was “irreconcilably inconsistent,” the Court reversed and remanded the case to the district court for a new trial on that issue.
