Sometimes the Application of a New Technology is Obvious from the New Technology Itself

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In In re Cree, [2015-1365] (March 21, 2016), the Federal Circuit affirmed the decision of the PTAB in an ex parte reexamination that the claims directed to the production of white light through the “down-conversion” of blue light from LEDs was obvious from references teaching the down-conversion from other light sources including lasers.  The Board found that the claimed invention was predictable in view of the state of the art in LEDs, the market demand for white light devices, the finite number of identified means to convert light from LEDs into white light, and the advantages of using the down-conversion approach.

Among other things Cree contended that neither the Examiner nor the Board articulated any rational motivation to combine the teaches of down-conversion of laser light with high intensity LEDs.  The  Federal Circuit said that it was the availability of high-powered LEDs that provided the motivation to use such LEDs in known down-conversion production of white light.  Cree further argued that a person of ordinary skill would fail to appreciate that  teachings on down-conversion of laser light would be applicable to LEDs as well.  However the Federal Circuit found sufficient factual evidence that those of skill in the art have sufficient understanding of the scientific and engineering principles involved to have had a reason to combine the references.  Finally Cree argued that the Board’s rejection was based on “impermissible hindsight,” but the Federal Circuit found this to simply be “a repackaging” of the argument that there was insufficient evidence of a motivation to combine the references.

The Federal Circuit was also unimpressed with Cree’s showing of secondary considerations.  Cree pointed to third party press releases about the third party’s work on the same concept.  The Federal Circuit agreed that praise from a competitor tends to show non-obviousness, “self-serving statements from researchers about their own work do not have the same reliability.”   The Federal Circuit discounted evidence of licensing because it was unclear whether the licensing was due to the merits of the claimed invention or because of a desire to avoid litigation, prior business relationships, or for other economic reasons.”  Finally the Federal Circuit discounted evidence of commercial success because of a lack of showing of nexus between the invention and the success.

 

ANDA Filings Create Personal Jurisdiction Everywhere

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In Acorda Therapeutics, Inc. v, Mylan Pharmaceutical Inc., [2015-1460) (March 18, 2016), the Federal Circuit affirmed that Mylan was subject to specific personal jurisdiction in the District of Delaware,  The Federal Circuit said that under Fed. R. Civ. P. 4(k)(1)(A), the district court had personal jurisdiction over Mylan if Mylan would be “subject to the jurisdiction of a court of general jurisdiction in the state where the district court is located,” and there is no dispute that Mylan would be subject to Delaware courts’ jurisdiction under Delaware’s long-arm statute, Del. Code Ann. tit. 10, § 3104, as long as Delaware’s exercise of personal jurisdiction over Mylan would be consistent with the Fourteenth Amendment’s Due Process Clause.

The Federal Circuit noted that Mylan had taken the costly, significant step of applying to the FDA for approval to engage in future activities—including the marketing of its generic drugs— that will be purposefully directed at Delaware (and, it is undisputed, elsewhere). The Federal Circuit said that if Mylan had already begun its deliberate marketing of these drugs in Delaware, there is no doubt that it could be sued for infringement in Delaware. The Federal Circuit concluded that the minimum-contacts standard is satisfied by the particular actions Mylan has already taken—its ANDA filings—for the purpose of engaging in injury-causing and allegedly wrongful marketing conduct in Delaware.

 

PTAB Can’t Rely on Anticipation Argument first Made during the Oral Hearing

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In Dell Inc, v, Acceleron, LLC, [2015-1513, -1514](March 15, 2016) the Federal Circuit affirmed the confirmation of claims, but remanded the cancellation of two claims for reconsideration in view of corrected claim construction.  At issue was the claim language “a microcontroller module and a dedicated ethernet path, wherein the dedicated ethernet path is separate from a switched fast ethernet connection and provides the microcontroller module with a connection to remotely poll the CPU module, the power module and the ethernet switch module.”  The Board concluded, that it is enough that there be an ethernet path that would provide a connection for polling if the microcontroller were configured for, and engaged in, remote polling of the three identified modules.  The Federal Circuit held that this construction runs counter to the claimconstruction principle that meaning should be given to all of a claim’s terms, denying any substantial meaning to “remotely poll.”

Also at issue was the anticipation of the claim limitation “caddies” which the Federal Circuit found was first identified in the reference during the oral argument before the Board.  The Federal Circuit vacated the finding of anticipation because the Board denied the patent owner notice and a fair opportunity to respond to this basis of cancellation.  The Federal Circuit explained that a patent owner is undoubtedly entitled to notice of and a fair opportunity to meet the grounds of rejection.  The Federal Circuit said that for a formal adjudication like the inter partes, the APA imposes particular requirements on the PTO. The agency must timely inform the patent owner of the matters of fact and law asserted (5 U.S.C. § 554(b)(3)), must provide all interested parties opportunity for the submission and consideration of facts and arguments and hearing and decision on notice, (5 U.S.C. § 554(c)), and must allow a party to submit rebuttal evidence  as may be required for a full and true disclosure of the facts, (5 U.S.C. § 556(d)). The Federal Circuit noted that the PTO has advised participants in its Board proceedings that, at oral argument, a party may only present arguments relied upon in the papers previously submitted, and that no new evidence or arguments may be presented at the oral argument.  However, the Federal Circuit found that the Board denied the patent owner its procedural rights by relying in its decision on a factual assertion introduced into the proceeding only at oral argument, after the patent owner could meaningfully respond.