## Facts

- Johns Hopkins University and its licensees (Baxter Healthcare Corp. and Becton Dickinson & Co.) asserted two patents covering monoclonal antibodies and methods for producing relatively pure suspensions of immature blood cells used in stem-cell enrichment for transplantation.
- CellPro marketed a competing stem-cell separation system accused of infringing claims 1–5 of one patent and claims 1 and 4 of the other.
- The district court construed the claims and granted judgment as a matter of law and summary judgment that CellPro literally infringed the asserted claims.
- The district court granted summary judgment rejecting CellPro’s invalidity defenses based on lack of enablement and lack of written description.
- On obviousness, the district court excluded a prior-art reference (Morstyn) and entered summary judgment of nonobviousness; the claim construction later broadened the claims’ scope without revisiting that exclusion.
- A jury found willful infringement, and the district court enhanced damages (treble damages).
- Before judgment, six vials of CellPro product were exported to Canada; the district court ordered the vials repatriated to the United States and destroyed.
- CellPro appealed the infringement, validity, evidentiary, damages, and remedial rulings.

## Issues

1. Whether the district court correctly construed the asserted patent claims and properly found literal infringement under that construction.
2. Whether summary judgment rejecting CellPro’s enablement and written-description defenses under 35 U.S.C. § 112 was proper.
3. Whether summary judgment of nonobviousness under 35 U.S.C. § 103 was improper because the Morstyn prior-art reference was excluded after the claim scope was broadened.
4. Whether the willfulness finding and enhanced damages under 35 U.S.C. § 284 were supported.
5. Whether the district court had authority to order repatriation and destruction of products exported to Canada consistent with the territorial limits of U.S. patent law.

## Decision

- Affirmed the district court’s claim construction.
- Affirmed findings of literal infringement of claims 1–5 of the ’680 patent and claims 1 and 4 of the ’204 patent.
- Affirmed summary judgment rejecting invalidity defenses based on lack of enablement and lack of written description.
- Affirmed the willfulness verdict and the enhancement of damages (subject to proceedings on remand).
- Vacated and remanded the summary judgment of nonobviousness because the exclusion of Morstyn became erroneous after the broadened claim construction expanded the relevant prior-art field.
- Vacated the order requiring repatriation and destruction of the vials exported to Canada as beyond the district court’s authority and an abuse of discretion.

## Legal Principles

- Claim construction is a legal question reviewed de novo; infringement determinations must follow the adopted construction.
- Summary judgment on enablement and written description is appropriate when the challenger fails to raise a triable issue that the patent fails 35 U.S.C. § 112 requirements.
- Obviousness under 35 U.S.C. § 103 depends on the properly construed claim scope; when claim construction changes and expands scope, the court must reassess the relevance and admissibility of prior art excluded under a narrower understanding.
- Willfulness and enhanced damages under 35 U.S.C. § 284 may be sustained where the record supports deliberate infringement in light of knowledge of the patents and litigation events, and enhancement is reviewed for abuse of discretion.
- U.S. patent rights and equitable remedies are territorially limited; injunctions generally may not regulate noninfringing foreign use of exported products absent a statutory basis or a domestic infringement nexus.

## Conclusion

The Federal Circuit largely upheld liability and damages for infringement of stem-cell enrichment patents, but required a renewed obviousness proceeding because prior art became relevant under the broadened claim construction, and it struck an injunction provision that attempted to reach products exported for foreign use beyond the territorial reach of U.S. patent law.


Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342 (Fed. Cir. 1998)