Petitioner Allowed to Supplement Evidence that Reference was Available

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In Telefonaktiebolaget LM Ericsson v. TCL Corp., [2017-2381, 2017-2385] (November 7, 2019) the Federal Circuit affirmed the Board’s decision that the specified publication is an available reference, and based on this publication in combination with other prior art it affirmed the Board’s decision of invalidity of the challenged claims.

Ericsson argued that the Jentschel article is not prior art because it was not publicly available more than one year before Ericsson’s earliest asserted filing date, and thus is subject to antedating by Ericsson’s invention date. During the trial TCL sought to provide evidence of the date of availability of this journal issue in university libraries in Germany.

TCL first submitted to the PTAB a letter from a librarian from the “Periodicals Team” at the Technische Informationsbibliothek and Universitätsbibliothek in Hannover, Germany. Ericsson objected to the letter as inadmissible hearsay, and the statement was withdrawn when the librarian declined to provide a sworn statement and declined to testify in the United States. TCL then moved to submit the sworn Declaration of Doris Michel, a librarian at the Technische Universität Darmstadt in Germany. Ericsson again objected, stating that the submission was not in compliance with the Board’s Rules, which required a petitioner to present sufficient evidence, at the petition stage, and requires that a party who seeks to submit new or supplemental information more than one month after the date an IPR is instituted must show why the supplemental information rea-sonably could not have been obtained earlier, and that consideration of the supplemental information would be in the interests-of-justice.

TCL responds that Regulation § 42.123(b) gives the Board discretion to accept a tardy submission and to consider the interest of justice. TCL argues that the Jentschel article is very close prior art and that Ericsson was allowed to file supplemental briefing and to depose Ms. Michel.

The Federal Circuit concluded that the Board did not abuse its discretion in admitting the Michel Declaration, for when the challenged evidence is reasonably viewed as material, and the opponent has adequate opportunity to respond and to produce contrary evidence, the interest of justice weighs on the side of admitting the evidence.

Ericsson argues that the date of availability to the public of the Jentschel reference was not established by the Michel Declaration, even if that Declaration were deemed admissible. The Federal Circuit explained that a reference is deemed publicly available if it has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it. The Federal Circuit noted that Ericsson provided no evidence to counter the Michel Declaration, the date on the face of the journal, and the Library’s records showing receipt of the journal and its shelving. The Federal Circuit found that substantial evidence supports the Board’s ruling that Jentschel was accessible to the public in the May/June 1996 period, and that the Board did not abuse its discretion in receiving the Jentschel article as a reference.

The Federal Circuit further concluded that substantial evidence supports the Board’s finding that Jentschel renders obvious the claims.

OK, Campers, Here’s How to Make Your Claim Preamble a Limitation

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In In re Fought and Clanton, [2019-1127](November 4, 2019) the Federal Circuit reversed the PTAB decision that the claims 1 and 2 in U.S. Application Serial No. 13/507,528 were anticipated.

The claims were directed to travel trailer with a movable garage wall. Claim 1 read:

Claim 1 form U.S. Application 13/507528
Figs. 1 and 2 of Application 13/507528

The Examiner rejected both claims 1 and 2 as anticipated. The Board affirmed the examiner’s rejection, concluding the preamble term “travel trailer” is a mere statement of intended use that does not limit the claim.

The Federal Circuit rejected appellants first argument that “A travel trailer having” was not a preamble, noting though this claim does not use the typical claim language (comprising) which denotes the transition be-tween the preamble and the body, the word “having” performs the same role.

Appellants next argument was that even if “travel trailer” is part of the preamble, it is limiting because limitations in the body of the claims rely on “travel trailer” for antecedent basis and for structural limitations. On this point, the Federal Circuit agreed, noting that it has repeatedly held a preamble limiting when it serves as antecedent basis for a term appearing in the body of a claim. Appellants provided extrinsic evidence to support their assertion that “travel trailer” is a specific type of recreational vehicle that includes a living quarters. The Federal Circuit said:

Based on the extrinsic evidence, we conclude that a “travel trailer” is a specific type of recreational vehicle and that this term is a structural limitation of the claims. There is no dispute that if “travel trailer” is a limitation, Dietrich and McDougal, which disclose cargo trailers and shipping compartments, do not anticipate. Just as one would not confuse a house with a warehouse, no one would confuse a travel trailer with a truck trailer.

The Federal Circuit rejected appellant’s argument that the Patent Office had an obligation to identify the level of ordinary skill in the art — at least where the applicant had not put it in issue.

Whether a preamble is a limitation is a two-edged sword for applicants, one the one hand if the preamble is a limitation, it can make the claim patentable, but on the other hand it can also make the claims harder to infringe, Where the applicant wants the preamble to be a limitation, purposely using the words in the body of the claim will achieve that goal, however idly parroting the words of the preamble in the body can unintentionally limit the claims for purposes of infringement.

Federal Circuit Gives the PTAB an Inferiority Complex

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In Arthrex, Inc. v. Smith & Nephew, Inc., [2018-2140](October 31, 2019), the Federal Circuit vacated and remanded the Final Written Decision of the PTAB in IPR2017-00275 because the decision was issued while there was an Appointments Clause Violation.

The Board held that claims 1, 4, 8, 10–12, 16, 18, and 25–28 of Arthrex’s U.S. Patent No. 9,179,907 were unpatentable as anticipated. Arthrex appealed, contending that the appointment of the Board’s Administrative Patent Judges (“APJs”) by the Secretary of Commerce, as currently set forth in Title 35, violates the Appointments Clause of the constitution (Art. II, § 2, cl. 2). The Federal Circuit agreed concluding that the statute as currently constructed improperly makes the APJs principal officers.

More specifically, Arthrex argued that the APJs who presided over its inter partes review were not constitutionally appointed; they were principal officers who must be, but were not, appointed by the President with the advice and consent of the Senate. The issue was whether the APJs were in fact “Officers of the United States” and if so, whether they are inferior officers or principal officers. The Federal Circuit held that in light of the rights and responsibilities in Title 35, APJs were principal officers.

The Federal Circuit, under cover of Free Enterprise Fund v. Public Company Accounting Oversight Board, 561 U.S. 477 (2010) determined that the solution was to sever the problematic portions of the patent act, while leaving remaining provisions intact. The Federal Circuit thus severed the portion of the Patent Act restricting removal of the APJs, thereby rendering the APJs inferior officers and solving the constitutional appointment problem.

Poof. Fixed.

Synthesizing and Screening Thousands of Candidate Compounds Constitutes Undue Experimentation

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In Idenix Pharmaceuticals LLC. v. Gilead Sciences Inc., [2018-1691] (October 30, 2019), the Federal Circuit affirmed that U.S. Patent No. 7,608,597
was invalid for lack of enablement, and further held that it was invalid for lack of written description as well. A jury found that patent not invalid, and awarded damages. Gilead’s motion for JMOL was granted as to enablement, but denied as to written description.

The only independent claim of the ’597 patent recites:

  1. A method for the treatment of a hepatitis C virus infection, comprising administering an effective amount of a purine or pyrimidine β-D-2′-methylribofuranosyl nucleoside or a phosphate thereof, or a pharmaceutically acceptable salt or ester thereof.

The district court construed the structural limitation “β-D-2′-methyl-ribofuranosyl nucleoside” to require “a methyl group in the 2′ up position
and non-hydrogen substituents at the 2′ down and 3′ down positions,” while construing the preamble “[a] method for the treatment of a hepatitis C virus infection,” as a narrowing functional limitation, limiting the scope to the set of compounds that are effective for treatment of HCV.

The Federal Circuit observed that while the claim requires methyl at the 2′-up position, it allows nearly any imaginable substituent at the 2′-down position. It was undisputed that there are billions of potential 2′-methyl-up nucleosides. The key enablement question was whether a person of ordinary skill in the art would know, without undue experimentation, which 2′-methyl-up nucleosides would be effective for treating HCV. The Federal Circuit concluded they would not.

The Federal Circuit agreed with the district court that the quantity of experimentation required to determine which 2′-methyl-up nucleosides meet claim 1 was very high, favoring a finding of non-enablement. Even taking into account that a person of ordinary skill would know to eliminate certain substitutes, there was still a large number of possibilities. Even just testing the compounds expressly listed in the specification would require considerable effort.

The Federal Circuit further found that there was insufficient guidance in the specification as to which the 2′-methyl-up nucleosides will effectively treat HCV, stating that without specific guidance on that point, the specification provides “only a starting point, a direction for further research.” It is not enough to identify a “target” to be the subject of future testing. A specification that re-quires a POSA to “engage in an iterative, trial-and-error process to practice the claimed invention” does not provide an enabling disclosure.

The unpredictability of the art, and the broad scope of the claims weighed in favor of non-enablement.

Weighing each of the Wands factors, the Federal Circuit concluded as a matter of law that the ’597 patent is invalid for lack of enablement. Having to synthesize and screen each of at least tens of thousands of candidate compounds constitutes undue experimentation.

On the issue of written description, the Federal Circuit, the Federal Circuit said that to fulfill the written description requirement, a patent owner must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention,’ and demonstrate that by disclosure in the specification of the patent. In the context of the this case, this meant that the patent must demonstrate that the inventor was in possession of those 2′-methyl-up nucleosides that fall within the boundaries of the claim (i.e., are effective against HCV), but are not en-compassed by the explicit formulas or examples provided in the specification.

A genus can be sufficiently disclosed by features common to the members of the genus so that one of skill in the art can visualize or recognize the members of the genus, which the Federal Circuit has described as “looking for blaze marks which single out particular trees” in a forest, rather than simply “pointing to trees.”

In particular the Federal Circuit noted the conspicuous absence of any disclosure of the accused compound, saying that a POSA would not “visualize or recognize the members of the genus” as including the accused compound, and thus the specification could not demonstrate to a POSA that the inventor had possession of that embodiment at the time of filing.

Federal Circuit Loosens the Iron Grip on Evidence of Copying

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In Liqwd v L’Oreal USA Inc., [2018-2152](October 17/30, 2019), the Federal Circuit vacated and remanded the PTAB’s final written decision that cetain claims of U.S. Patent No. 9,498,419 directed to forulations and methods of keratin treatment are unpatentable as obvious.

During the PGR Liqwd presented evidence that L’Oreal had used Liqwd’s confidential information and copied Liqwd’s patented invention as an objective indicia of non-obviousness. However, the Board concluded that the copying involved was legally irrelevant, because it was not evidence of copying a specific product, citing Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004), and thus was not “copying of the type that is relevant to the question of obviousness.”

Objective indicia are essential safeguards that protect against hindsight bias, and thus are a fundamental part of the overall § 103 obviousness inquiry. The Federal Circuit said that It is well established that copying by a competitor is a relevant consideration in the objective indicia analysis, as such copying may be evidence that the patented invention is nonobvious. However copying requires duplication of features of the patentee’s work based on access to that work, lest all infringement be mistakenly treated as copying. Evidence of copying may include internal documents, direct evidence such as photos of patented features or disassembly of products, or access and similarity to a patented product.

The Federal Circuit conceded that in Iron Grip Barbell, it stated that “copying requires the replication of a specific product,” but explained that it was simply stating that something more than showing similarity between the accused product and the patent was needed. The Federal Circuit pointed that that access to the patent, or access to articles about a patented invention have been sufficient to establish copying, in the absence of a specific product to be copied. What the Federal Circuit meant was “copying requires duplication of features of the patentee’s work based on access to that work, lest all infringement be mistakenly treated as copying” and that the relevant inquiry was whether there was evidence of copying efforts.

The Federal Circuit concluded that the evidence presented by Liqwd shows more than merely a competing product that arguably falls within the scope of a patent. Determining that this evidence is relevant does not implicate the concern with avoiding every infringement suit turning into a confirmation of the nonobviousness of a patent. The Federal Circuit said that because this evidence of actual copying efforts was relevant, the Board erred by disregarding it. The Federal Circuit vacated the Board’s obviousness determination and remanded the case for the Board to consider this evidence in its obviousness analysis.

Setting the Standard for Claim Drafting

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Claims often reference government or industry standards. However standards can change over time, which has the potential to change the scope of the claim, unless it is understood that the meaning is fixed as of the filing date, and that is what the BPAI does.

In Ex parte McClary, Appeal 2009-001300, Application 11/101,897 (May 17, 2010), the Board reversed the Examiner’s 112 rejection that reference to the ARINC 615 protocol (an industry standard in the field of avionics) was indefinite because it was subject to being changed in the future. The Board said:

Compliance with the provisions of 35 U.S.C. § 112 is determined as
of the filing date of the application. W.L. Gore & Assoc., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1556 (Fed. Cir. 1983). There does not appear to be any
dispute here that a particular version of the ARINC 615 protocol was in
existence as of Appellant’s filing date. Thus, one of ordinary skill in the
art, with reference to the standard in effect as of the filing date of
Appellant’s application, would readily be able to determine the metes and bounds of this element found in claims 10 and 12. Accordingly, we will not sustain the rejection of claims 10 and 12 under 35 U.S.C. § 112, second paragraph, as being indefinite.

Some drafters affirmatively control the meaning of their claims by expressly referencing the standard or protocol “in effect on the filing date.

Claim 11 of U.S. Patent No. 9,945,005 provides:

11. The method according to claim 1 wherein the material is leached for a sufficient period of time that the residue after leaching meets the EPA TCLP limits according to EPA Test Method 1311 procedure in effect on the filing date of this application.

Claim 27 of U.S. Patent No. 7,043,402 provides:

27. The system of claim 20, wherein said electrical indication means is comprised of at least one of: (a) a serial communications port; (b) a bi-directional serial data bus chosen from among standards SAE/TMC J1708/J1587 protocol in effect on the filing date hereof, or SAE J1939 communications protocol in effect on the filing date hereof; (c) a CAN data bus; (d) a RF device; and/or (e) an IR device.

Claim 16 of U.S. Patent No. 6,889,385 provides:

16. The apparatus of claim 8 wherein said DOCSIS cable modem is compatible with any DOCSIS national standard for cable modems as of the filing date of the parent patent application of this patent application.

While claims referencing standards are not indefinite merely because the standard could be changed in the future, claim drafters still have to account for how infringement can be proved if the standard is in fact changed.

Marking Your Territory in Patent Claims

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The use of trademarks in patent claims was previously discussed here. Trademarks continue to be used in patent claims, despite the potential for problems, not doubt because the trademark was seen as the best way to properly claim the invention. There is of course the concern that a trademark is indefinite, because the product can be changed at any time by the trademark owner. However changing meaning is a condition that can afflict any word in a claim, not just trademarks, granted changing meaning it is more likely with a trademark because it requires the action of a single person or entity, while changing the meaning of the work requires consensus.

Here are examples of trademarks recently used in patent claims:

AEROSIL– 10,154,954 (claim 2)

Android – 10,417,998 (claim 6), 10,417,008 (claim 6), 10,331,433 (claim 4).

ARSENSA – 10,154,954  (Claim 2)

Bluetooth – 10,420,011 (claim 9), 10,419,592 (claim 1), 10,365,866 (claim 10), 10,341,313 (claim 4), 10,321,516 (claim 6), 10,285,041 (claim 2), 10,027,169 (claim 7), 10,026,018 (claim 5), 9,998,996 (claim 7, 14), 9,955,515 (claim 8), 9,930,669 (claim 1), 9,912,794 (claim 1), 10,129,431 (claim 7, 16), 10,123,333 (claim 3, 14, 28), 10,019,852 (claims 2, 9,16), 9,980,059 (claims 1, 12, 23).

EPO-TEK – 10,330,233 (claim 17)

ETHERNET – 10,303,160 (claim 3,8)

Felica – 10,126,703 (claim 13)

Inconel – 10,392,728 (claim 10)

JAVA – 9,930,201 (claim 1)

JavaScript – 10,365,868 (claim 7)

Java Virtual Machine – 9,727,374 (claim 6)

Kahoot! 10,026,331 (claim 1)

KOVAR – 10,139,700 (claim 3)

Linux – 10,417,998 (claim 5), 10,417,008 (claim 5).

MIFARE – 10,126,703 (claim 13)

Monel – 10,392,728 (claim 10)

TRITON X – 10,254,276 (claim 5)

TWEEN – 10,254,276 (claim 5)

PARLEAM – 10,154,954 (claim 2)

QR Code – 10,223,625 (claim 5), 9,940,565 (claims 7, 10).

RLSA – 10,190,217 (claim 3), 10,017,853 (claim 7, 8)

SOFTISAN – 10,154,954 (claim 2)

VELCRO – 10,151,558  (claims 4, 7)

Vespel – 10,047,863 (claim 20)

VITRALI – 10,330,233 (claim 16)

Wi-Fi – 10,244,055 (claim 11), 10,044,903 (claims 6, 18), 10,129,431 (claims 6, 8, 17).

Wi-Fi Direct – 10,416,941 (claim 8), 10,342,071 (claim 12), 9,942,759 (claim 6).

Windows – 10,275,192 (claim 9).

ZIRCON – 10,240,814 (claims 1, 2, 9)

ZYLON – 10,201,999 (claim 8, 18)

Additional examples are relatively easy to find by search for the word trademark in the text of the claims, or searching for the R-in-the-circle symbol “.RTM.”

Although the meaning of a trademark can change over time, this is apparently understood by those of ordinary skill in the art, and rarely if ever is it necessary to specify that the meaning is determined “as of the filing date.”

Hope is not Enough to Create a Reasonable Expectation of Success

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In OSI Pharmaceuticals, LLC v. Apotex Inc., [2018-1925] (October 4, 2019), the Federal Circuit reversed the PTAB’s determination that claims 44-46 and 53 of U.S. Patent No. 6,900,221 on the use of erlotinib on non smallcell lung cancer (NSCLC) would have been obvious because the Board’s finding of a reasonable expectation for success was not supported by substantial evidence.

The Board found that the disclosures in OSI’s own 10-K that erlotinib targeted a variety of cancers including NSCLC, and that erlotinib had entered Phase II clinical trials, would have provided a person of ordinary skill with a reasonable expectation of success in light of the other prior art references. The Board concluded that an ordinary artisan would under-stand from the commencement of Phase I studies referenced in the 10-K that “pre-clinical animal efficacy data” had been submitted to the FDA.

The Federal Circuit said that an obviousness determination requires finding that a person of ordinary skill in the art would have been motivated to combine or modify the teachings in the prior art and would have had a reasonable expectation of success in doing so. The Federal Cicuit said that when the references are properly read, the Board’s finding that the asserted references provide a reasonable expectation of success also is not supported by substantial evidence.

The Federal Circuit noted that the record does not contain any clinical (human) data or pre-clinical (animal) data. It did not even include in vitro (test tube) data regarding erlotinib’s effect on NSCLC. The Federal Circuit added that at the same time, it is undisputed that NSCLC treatment was highly unpredictable with an over 99.5% rate of failure for drugs entering Phase II clinical studies. On this record, the Federal Circuit was not persuaded that a reasonable fact finder could conclude that a person of ordinary skill would have reasonably expected success based on the combination of the references and OSI’s 10-K.

The Federal Circuit examined one reference (Gibbs) that said “these compounds appear to have good anti-cancer activity in preclinical models, with an acceptable therapeutic index, particularly in patients with non-small cell lung cancer. The Federal Circuit consulted the footnotes and conclude that the reference as a whole would not be understood by a person of ordinary skill in the art to refer to erlotinib, because the supporting article did not refer to erlotinib. The Federal Circuit said that the Board’s finding that there is a “clear inference” in Gibbs that “erlotinib has anti-cancer activity against non-small cell lung cancer” is thus not supported by substantial evidence.

On the specific issue of reasonable expectation of success the Federal Circuit found that the asserted references do not disclose any information about erlotinib’s efficacy in treating NSCLC in a mammal (in Scnhur and Gibbs). These references contained no data or other promising information regarding erlotinib’s efficacy in treating NSCLC, just cancer generally and this was not enough “because of the highly unpredictable nature of treating NSCLC.” With respet to OSI’s own 10-K the Board emphasized the 10-K’s statement that erlotinib had completed Phase I clinical trials, which require preclinical animal efficacy data. However, the Federal Circuit noted, there was nothing in OSI’s 10-K suggesting the existence of erlotinib preclinical efficacy data that is specific to NSCLC.

The Federal Circuit concluded that “[t]hese references provide no more than hope—and hope that a potentially promising drug will treat a particular cancer is not enough to create a reasonable expectation of success in a highly unpredictable art such as this.”

When They Came for My Software and Medicine, I did Nothing; “Monstrous” Law Now Targets Mechanical Arts

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In American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, [2018-1763] (October 3, 2019), the Federal Circuit affirmed summary judgment that the asserted claims of U.S. Patent No. 7,774,911 on a method for manufacturing driveline propeller shafts designed to attenuate vibrations transmitted through a shaft assembly were ineligible under §101.

1. A method for manufacturing a shaft assembly of a driveline system, the driveline system further including a first driveline component and a second driveline component, the shaft assembly being adapted to transmit torque between the first driveline component and the second driveline component, the method comprising:
providing a hollow shaft member;
tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member; and
positioning the at least one liner within the shaft member such that the at least one liner is configured to damp shell mode vibrations in the shaft member by an amount that is greater than or equal to about 2%, and the at least one liner is also con-figured to damp bending mode vibrations in the shaft member, the at least one liner being tuned to within about ±20% of a bending mode natural frequency of the shaft assembly as installed in the driveline system.

Two types of attenuation were involved — resistive attenuation and reactive attenuation. Resistive attenuation of vibration employs something that deforms as vibration energy is transmitted through it absorbing the vibration energy. Reactive attenuation of vibration refers to a mechanism that can oscillate in opposition to the vibration energy to thereby ‘cancel out a portion of the vibration energy.

The analysis of § 101 follows the Supreme Court’s two-step test established in Mayo and Alice, asking first whether the claims are directed to a law of nature, natural phenomenon, or abstract idea, and second whether the claims embody some “inventive concept”—i.e., whether the claims contain “an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.

The claims are directed to tuning liners—i.e., controlling a mass and stiffness of at least one liner to configure the liner to match the relevant frequency or frequencies. It was known that vibrations could be damped by resistive attenuation and that bending mode vibrations could be damped by reactive attenuation. the selection of frequencies for the liners to damp the vibrations of the propshaft at least in part involves an application of Hooke’s law. The problem, the Federal Circuit found, was that the solution to these desired results is not claimed in the patent.

The elements of the method here that AAM argues take the patent outside the realm of ineligible subject matter i.e., the mechanisms for achieving the desired result—are not actually claimed in the claims. The Federal Circuit noted that “the patent specification recites only a nonexclusive list of variables that can be altered to change the frequencies exhibited by a liner and a solitary example of a tuned liner (though not the process by which that liner was tuned).” “Most significantly,” the Federal Circuit said, the claims do not instruct how the variables would need to be changed to produce the multiple frequencies required to achieve a dual-damping result, or to tune a liner to dampen bending mode vibrations.

The Federal Circuit said that this case might well be significantly different, if, for example, specific models were included in the claims. But, the claims’ general instruction to tune a liner amounts to no more than a directive to use one’s knowledge of Hooke’s law, and possibly other natural laws, to engage in an ad hoc trial-and-error process of changing the characteristics of a liner until a desired result is achieved. The Federal Circuit said that this claiming of a natural law runs headlong into the very problem repeatedly identified by the Supreme Court in its cases shaping eligibility analysis.

Citing Parker v. Flook, the Federal Circuit said “if a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.” In contrast, the Federal Circuit noted that in Diamond v. Diehr, the claims recited other steps apparently adding to the formula something that in terms of patent law’s objectives had significance—they transformed the process into an inventive application of the formula.

The Federal Circuit concluded that the claims here simply instruct the reader to tune the liner—a process that, as explained above, merely amounts to an application of a natural law (Hooke’s law) to a complex system without the benefit of instructions on how to do so. The focus of the claimed advance here is simply the concept of achieving that result, by whatever structures or steps happen to work. Thus the subject matter of the claims was not patent eligible.

Judge Moore dissented, observing that “[t]he majority opinion parrots the Alice/Mayo two-part test, but reduces it to a single inquiry: If the claims are directed to a law of nature (even if the court cannot articulate the precise law of nature) then the claims are ineligible and all evidence of non-conventionality will be disregarded or just plain ignored.” Judge Moore quoted the majority that “it makes no difference to the section 101 analysis whether the use of liners to attenuate bending mode vibration was known in the prior art,” saying that this disregarded the second part of the Mayo test.

Judge Moore argues that the majority’s concern with the claims at issue had “nothing to do with a natural law and its preemption and everything to do with concern that the claims are not enabled.” Respectfully, there is a clear and explicit statutory section for enablement, § 112. We cannot convert § 101 into a panacea for every concern we have over an invention’s patentability, especially where the patent statute expressly addresses the other conditions of patentability and where the defendant has not challenged them.”

Judge Moore was also concerned that the natural law two which the claims were supposedly directed, was never identified, saying “Section 101 is monstrous enough, it cannot be that now you need not even identify the precise natural law which the claims are purportedly directed to.”

Judge Moore also took exception to the majority’s rejection of the inventive concepts asserted by the patentee, first as inaccurate (a fact finding made by the majority on appeal and contrary to all the evidence of record) and second as irrelevant. Judge Moore said that “[u]ltimately, the majority says the inventive concept “makes no difference to the section 101 analysis” — a statement she takes to be an outright rejection of the second step of the Alice/Mayo test.

Judge Moore concludes that “[t]he majority’s true concern with these claims is not that they are directed to Hooke’s Law (because this is clearly a much more complex system not limited to varying mass and stiffness), but rather the patentee has not claimed precisely how to tune a liner to dampen both bending and shell mode vibrations.” Thus the issue was really not one of eligibility, but rather one of enablement. She said: “[a] patentee’s failure to enable his invention renders the claims invalid under § 112, it does not, however, render the claims ineligible under § 101.

Judge Moore finishes: “The majority’s validity goulash is troubling and inconsistent with the patent statute and precedent. The majority worries about result-oriented claiming; I am worried about result-oriented judicial action. I dissent.”

Posted in 101

Federal Circuit Reminds PTAB That it Doesn’t Decide Petitions for Certificate of Correction

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In Honeywell International Inc. v. Arkema Inc., [2018-1151, 2018-1153](October 1, 2019), the Federal Circuit vacated and remanded the Board’s denial of authorization to file a motion for leave to Petition for a Certificate of Correction to correct a mistake in the chain of priority.

During prosecution of the patent, Honeywell replaced all of the pending claims in a preliminary amendment to pursue different subject matter, but inadvertently failed to make corresponding amendments to the list of priority applications. As a result of this error, the patent’s priority claims are invalid, and Arkema asserted that the patent was invalid over prior art, including work by Honeywell’s own inventors, and further that the patent was subject to Post Grant Review (which only applies to post-AIA patents).

Honeywell did not immediately realize its priority change mistake, and filed a preliminary response that the patent was not subject to PGR proceedings, arguing that the patent was entitled to priority of at least as early as 2004. The PTAB instituted two Post Grant Reviews, and while preparing its Patent Owner Response, Honeywell discovered the error in its priority claim, and requested permission to file a motion for leave to request a Certificate of Correction from the Director of the PTO (“Director”) that would amend the priority chain, explaining that its proposed correction would include additional Honeywell patent applications in the priority chain that would provide written description support for the subject matter eventually claimed.

The Board denied Honeywell’s request because there was a failure to show that the requirements of 35 USC §255 had been met, and the error was not a typographical or clerical error. The proceedings continued, with the Board issuing a combined Written Decision finding claims 1-20 were invalid.

Under the Administrative Procedure Act, the courts hold unlawful and set aside agency action, findings, and conclusions that it finds are arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law. 5 U.S.C. § 706(2)(A). An abuse of discretion occurs when a decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.

The Federal Circuit found that the Board abused its discretion by assuming the authority that 35 U.S.C. § 255 expressly delegates to the Director: to determine when a Certificate of Correction is appropriate. Section 255 does not grant the Board authority to determine whether a mistake in an issued patent is of “minor character” or “occurred in good faith.” 35 U.S.C. § 255. That authority is expressly granted to the Director. The Director has not delegated its Section 255 authority to the Board, but has instead promulgated procedures by which patentees may seek the Board’s leave to petition the Director for a Certificate of Correction.

The Federal Circuit noted that a patent owner subject to a post-issuance review proceeding must take three steps in order to file a petition for a Certificate of Correction: (1) seek authorization from the Board to file a motion, 37 C.F.R. § 42.20(b); (2) if authorization is granted, file a motion with the Board, asking the Board to cede its exclusive jurisdiction so that the patentee can seek a Certificate of Correction from the Director, 37 C.F.R. § 1.323; MPEP § 1485; and (3) if the motion is granted, petition the Director for a Certificate of Correction under 35 U.S.C. § 255.

The Federal Circuit noted that the Board did not review Honeywell’s motion for leave to seek a Certificate of Correction from the Director to determine if Honeywell had demonstrated a “sufficient basis” that the mistake “may” be correctable. Instead, the Board prohibited Honeywell from even filing a motion for leave. The Board refused to authorize Honeywell to file a motion for leave because there has been a failure to show that the requirements of 255 have been met. By requiring that Honeywell show that the requirements of 255 have been met before authorizing Honeywell to file a motion for leave to seek a Certificate of Correction from the Director, the Board abused its discretion. The Board further abused its discretion by assuming the authority that § 255 delegates to the Director and deciding the merits of Honeywell’s petition for a Certificate of Correction.

The Federal Circuit vacated the Final Written Decisions, and remanded, directing the Board to authorize Honeywell to file a motion seeking leave to petition the Director for a Certificate of Correction, and review Honeywell’s motion for leave in accordance with 37 C.F.R. § 1.323 and MPEP § 1485, including to evaluate whether prejudice to Arkema requires accommodation.

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