Computer Interface Was Not an Abstract Idea

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In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., [2016-2684, 2017-1922](January 25, 2018), the Federal Circuit affirmed the denial of summary judgment that claims 8 and 9 of U.S. Patent No. 8,713,476 and claims 11 and 13 of U.S. Patent No. 8,434,020 are directed to patent ineligible subject matter under 35 U.S.C. § 101; (2) the denial of JMOL that Blanchard anticipates the asserted claims under 35 U.S.C. § 102; and (3) the denial of JMOL that the claims are not infringed.

The  patents disclose improved display interfaces, particularly for electronic devices with small screens like mobile telephones, which allow a user to more quickly access desired data stored in, and functions of applications included in, the electronic devices.  Claim 1 was representative of the claims of the ‘476 patent:

1. A computing device comprising a display screen, the computing device being configured to display on the screen a menu listing one or more applications, and additionally being configured to display on the screen an application summary
that can be reached directly from the menu, wherein the application summary displays a limited list of data offered within the one or more applications, each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application, and wherein the application summary is displayed while the one or more applications are in an un-launched state.

LG moved for summary judgment of invalidity of the asserted claims under 35 U.S.C. § 101, which the court denied, finding that crediting LG’s characterization of the claims as directed to “displaying an application summary window while the application is in an unlaunched state,” the concepts of “application,” “summary window,” and “unlaunched state” are specific to devices like computers and cell phones, and explaining that LG identified no analog to these concepts outside the context of such devices, and further alternatively finding claim 1 patent eligible at least because it passes the machine-or-transformation test.

The Federal Circuit conducted the Alice two-step analysis, noting that at step one it must “articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful.  The Federal Circuit pointed out the difficulty inherent in delineating the contours of an abstract idea, and observing that all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” The Federal Circuit also considered whether the claims are directed to a specific improvement in the capabilities of computing devices, or, instead, a process that qualifies as an abstract idea for which computers are invoked merely as a
tool.

The Federal Circuit asserted claims in this case are directed to an improved user interface for computing devices, not to the abstract idea of an index, as argued by LG. Although the generic idea of summarizing information certainly existed prior to the invention, these claims are directed to a particular manner of summarizing and
presenting information in electronic devices.   The Federal Circuit disclosed invention improves the efficiency of using the electronic device by bringing together a limited
list of common functions and commonly accessed stored data ,” which can be accessed directly from the main menu. The Federal Circuit found that the this language clearly indicates that the claims are directed to an improvement in the functioning of
computers, particularly those with small screens.  Referring to the language of the specification, the Federal Circuit found that it the claims were directed to an improvement in the functioning of computers, particularly those with small screens.

Having determined that the claims were not directed to an abstract idea, the Federal Circuit did not reach the second part of the Alice test.

On the anticipation issue, the Federal Circuit found that LG failed to carry its burden to show the claims anticipated.  On the infringement issue, the Federal Circuit found that because the claim language, specification, and prosecution
history all support the district court’s construction, that this construction was correct. Further, the Federal Circuit found substantial evidence supports the jury’s verdict of infringement based. While LG argued no reasonable
jury could find the accused devices satisfy this claims the Federal Circuit disagreed.

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Drag things out? Disclaimer creates estoppel.

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In Arthrex, Inc. v. Smith & Nephew, Inc., [2017-1239] (January 24, 2018), the Federal Circuit affirmed the Board’s entry of an adverse judgment pursuant to 37 C.F.R. § 42.73(b) in an IPR, after patent owner Arthrex disclaimed all claims that were the subject of the petition, despite Arthrex’s express request that no adverse judgment be entered.

After first considering and concluding that the adverse judgment was appealable, the Federal Circuit then considered whether the entry of adverse judgment was proper.  Although Arthrex specifically stated that it was not requesting an adverse judgment, the Federal Circuit found that the application of the rule on its face does not turn on the patentee’s characterization of its own request.  The rule gives the Board authority to construe a patent owner’s actions as a request for an adverse judgment, suggesting the Board’s characterization of the action rather than the patent owner’s characterization is
determinative.

The Federal Circuit held that 37 C.F.R. § 42.73(b) permits the Board to enter an adverse judgment when a patent owner cancels all claims at issue after an IPR petition has been filed, but before an institution decision.

How this affects Arthrex remains to be seen.  The Federal Circuit noted that at  the time of the adverse judgment, Arthrex had two pending continuation
patent applications that the estoppel provision would impact, and that those two applications have since issued as patents. However, Arthrex recently filed another continuation application, which remains in prosecution and therefore is
affected by the adverse judgment.  The Federal Circuit is indicating that the current prosecution is complicated by the adverse judgment, although it did not comment on the effect on the patents that issued from the applications that were pending at the time of the adverse judgment.

The estoppel provisions prevent a patentee “from taking action inconsistent
with the adverse judgment, including obtaining in any patent . . . [a] claim that is not patentably distinct from a finally refused or canceled claim.”  The estoppel provision prevents a patent owner from obtaining a patent on a pending application, but does it also prevent a patent owner from defending a claim an issued patent?  If not, then Arthrex erred by doing the right thing and disclaiming unpatentable claims; instead it should have dragged out the proceedings while rushing to get its pending applications to issue.

 

A C-I-P Application is not Entitled to the Section 121 Safe Harbor from Double Patenting; and Cannot Retroactively be Turned into a Divisional Application

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In In re: Janssen Biotech, Inc., [2017-1257] (January 23, 2018), the Federal Circuit affirmed the rejection during reexamination of claims 1-7 of U.S. Patent No. 6,284,471 for obviousness-type double patenting.

The doctrine of obviousness-type double patenting is intended to prevent the extension of the term of a patent by prohibiting the issuance of the claims of a second patent that are not patentably distinct from the claims of the first patent.  Janssen argued that obviousness-type double patenting is not applicable because the safe-harbor provision of 35 U.S.C. § 121 protects the ’471 patent claims, so double-patenting turned on whether §121 applied, which in turn depended upon an interpretation of the prosecution history of the ’471 patent and that patent’s relationship to application to its parent application.

In that prosecution history, Janssen filed an application and received a 5-way restriction requirement with Group I drawn to antibodies, pharmaceutical compositions, and assay methods, and Group IV drawn to methods for treating an animal.  Rather responding to the restriction, Janssen expressly abandoned that application and filed two continuation-in-part application, one of which resulted in the patent under reexamination.

During reexamination, the Board found no reason to permit Janssen by amendment, to acquire the benefit of the safe harbor when Janssen  voluntarily and deliberately filed a continuation-in-part application with claims directed to subject matter absent from the parent application and outside the scope of its restriction.  Applying the one-way test for double patenting because it found that there were at least four instances where Janssen’s actions constituted deliberate and unnecessary actions that lengthened the prosecution time of the application.

The Federal Circuit agreed that the §121 safe harbor, by its literal terms, protects only divisional applications (or the original application) and patents issued on such applications.  Accordingly, the Federal Circuit said that patents issued on CIP applications or continuation applications are not within the scope of §121. The Federal Circuit said that its precedent was clear: aside from the original application and the original patent, the protection afforded by §121 is limited to divisional applications and patents issued on divisional applications.

Further, the Federal Circuit said that a patent owner cannot retroactively bring its challenged patent within the scope of the safe-harbor provision by amendment in a reexamination proceeding.

 

Pro Tip: If the District Court Asks if You Have Objections, Raise Your Objections

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In Flexuspine, Inc. v. Globus Medical, Inc., [2017-1188, 2017-1189] (January 19, 2018), the Federal Circuit affirmed the district court’s decisions denying Globus’s Rule 59(e) motion, denying as moot its Rule 50(b) motion, and granting summary judgment of noninfringement.

Globus complained that the court did not decide the validity of Flexuspine’s patent. but over a month before trial the parties submitted a joint proposed pre-trial order along with proposed jury instructions and verdict forms from each party. Flexuspine’s proposed verdict form included a “stop instruction” which conditioned the submission of invalidity on an affirmative finding of infringement, while Globus’s proposed verdict form did not.  On the second
day of trial, the parties submitted proposed joint final jury instructions but competing verdict forms. Again, Flexuspine’s amended proposed verdict form continued to include the same stop instruction, while Globus’s amended
proposed verdict form did not condition the invalidity question on an infringement finding.

The court finalized the jury instructions, and the district court afforded the parties an opportunity to object to the final jury instructions and
verdict form on the record. The district court went page-by-page through
the final instructions and the verdict form asking the parties if they had any objections. Neither party objected.

The jury returned the verdict form, indicating that the patent was invalid, but the district court determined that the jury had not filled out the verdict form correctly. The district court instructed the jury to retire again with a blank verdict form, review the verdict form, and return a verdict consistent with both questions asked and the district court’s written instructions on the verdict
form. The court then asked, “[d]oes either party object to the Court having sent the jury back to re-execute the verdict form consistent with each instruction included therein?” In response, neither party lodged a formal objection. Globus stated, “[y]our Honor, I was not present at the charge conference but I—as I understand it, or as I thought I understood it, a jury could still be allowed to
pass on the validity of patents even in the absence of a finding of infringement.” The court responded that it had reviewed the verdict form with the parties and
no formal objection had been made at the on-the-record charge conference.
Shortly thereafter, the jury returned a verdict in accordance with the district court’s instructions. This verdict found the claims not to be infringed and left the
other questions unanswered.  It was at this point, after the jury returned its final verdict without answering the validity or damages questions, that Globus lodged its first formal objection.

Globus filed a Rule 59(e) motion requesting that the judgment be amended to
include the jury’s invalidity verdict, and a Rule 50(b) motion for judgment as a matter of law on invalidity, both of which the district court denied.  The Federal Circuit declined to disturb the district court’s proper exercise of its discretion.  The Federal Circuit noted that Globus did not object to the verdict form, and the extent that there was any conflict between the verdict form and jury instructions, the district court clearly instructed the jury on which
instructions should control when it asked the jury to retire again with a blank verdict form and return a verdict consistent with both the questions asked and the stop instructions on the verdict form.

The Ultimate Reasonable Royalty Award Must be Based on the Incremental Value that the Patented Invention Adds

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In Exmark Manufacturing Company Inc. v. Briggs & Stratton Power Products Group, LLC., [2016-2197](January 12, 2018) the Federal Circuit vacated summary judgment that claim 1 of U.S. Patent No. 5,987,863 is not anticipated or obvious, affirmed summary judgment that claim 1 was not indefinite, reversed the denial of a new trial on damages and several evidentiary rulings related to damages, vacated the finding of willfulness; and affirmed the denial of Briggs’ laches defense.

Regarding the denial of summary judgment of invalidity, the Federal Circuit found that the district court denied the motion because “examined four times by the PTO, and each time the PTO held the claims of the ’863 patent to be patentable.”  While facially logical, this is not legally correct, the Federal Circuit held that

a reexamination confirming patentability of a patent claim alone is not determinative of whether a genuine issue of fact precludes summary judgment of no invalidity.  Surviving a reexamination does not warrant ipso facto summary judgment that a patent is not invalid. Holding otherwise would improperly give complete deference  and preclusive effect to the PTO’s patentability determination, foreclosing challenges to patent validity in district court based on the same prior art.

This holding is supported by Federal Circuit precedent that that a district court is never bound by an examiner’s finding in an ex parte patent application proceeding.  To the extent that an ex parte reexamination is entitled to deference, it comes from the presumption of validity of an issued patent.

The Federal Circuit found that the district court’s denial of summary judgment went beyond giving substantial weight to the reexamination proceedings.  The Federal Circuit found that the district court’s summary judgment was based solely on the fact that the patentability of claim 1
was confirmed following multiple reexaminations — the district court made no other findings regarding the elements of anticipation or obviousness to determine whether a genuine issue of material fact precluded summary judgment.

The Federal Circuit said that is must be furnished with sufficient findings and reasoning to permit meaningful appellate scrutiny.  These were lacking so the Federal Circuit vacated the district court’s summary
judgment of no invalidity and remanded with instruction for the district court to consider the entire record and reach its own independent conclusion on validity.

On the issue of definiteness, Briggs complained that Briggs contends that the patent does not explain how to objectively determine whether a
baffle portion is straight enough or long enough to be “elongated and substantially straight” as required by the claim.  The Federal Circuit disagreed, holding no numerical precision is required when using such terms of degree.  All that is required is some standard for measuring the term of degree.

The Federal Circuit also found that the function of the elongated and substantially straight baffle portions provided further guidance regarding
the scope of the claim language. The Federal Circuit noted that functional language can promote definiteness because it helps bound the scope of the claims by specifying the operations that the claimed invention must undertake.

With respect to damages, Briggs complained first that Exmark improperly determined a royalty rate without properly identifying a royalty base to apportion the value of the patentee’s invention in comparison to the value of the whole, and second that at Exmark’s expert did not adequately explain how she arrived at her proposed 5% royalty rate.  The Federal disagreed that the Exmark needed to apportion the value of the baffle from the other features of the mower through the royalty base rather than the royalty rate, noting that apportionment can be achieved, by careful selection of the royalty base to reflect the value added by the patented feature; by adjustment of the royalty rate so as to discount the value of a product’s non-patented features; or by a combination thereof.  The essential requirement is that the ultimate reasonable royalty award must be based on the incremental value that the patented invention adds to the end product.

While the Federal Circuit agreed with Exmark on the apportionment question, and agreed with Briggs that Exmark’s damages expert’s opinion was inadmissible as it failed to adequately tie the expert’s proposed reasonable royalty rate to the facts of this case. Exmark’s expert concluded with little explanation the parties would have agreed to a 5% reasonable royalty rate; nowhere in her report, however, did she tie the relevant Georgia-Pacific factors to the 5% royalty rate or explain
how she calculated a 5% royalty rate using these factors.  The Federal Circuit vacated the damages award and remand for a new trial on
damages.

The Federal Circuit held that the district court abused its discretion by holding that prior art is relevant to damages only to the extent that the prior art was commercialized, stating that the fact that some prior art mowers were not commercialized does not make them immaterial to determining the extent to which the claimed subject matter provides utility and advantages over the prior art.  but affirmed the district court’s exclusion of other types of mower, and of Exmark’s delay in bringing suit.

On the award of damages for willful infringement,  the Federal Circuit found that the District Court’s precluding Briggs from presenting any evidence regarding the validity of the claim or how closely the prior art tracked the claim was error.  The Federal Circuit said that to the extent that decision excluded evidence relevant to Briggs’ state of mind at the time of the accused infringement,  however, it does not comport with the standard articulated in Halo, which mandates that willfulness is an issue for the jury, not the district court.  The Federal Circuit vacated the jury’s finding of willful infringement, vacated the district court’s enhanced damages award, and remanded for the district court to determine whether a new trial on willfulness is necessary.

Finally, on this issue of laches, the Federal Circuit agreed with the district court that in light of SCA Hygiene Products Briggs cannot assert laches as a defense.

 

“Will Assign” ≠ “Do Assign”; Check Your Chain of Title

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In Advanced Video Technologies LLC v. HTC Corporation, [2016-2309, 2016-2310, 2016-2311] (January 11, 2018) the Federal Circuit affirmed the dismissal of an action for infringement of U.S. Patent No. 5,781,788 on the ground that a co-owner of the patent was not a party to the suit.

The Federal Circuit explained that the single issue involved in the appeal was whether a co-inventor of the patent transferred her co-ownership interests in the patent under the terms of an employment agreement.

Plaintiff, Advanced Video, Advanced Video asserted that it obtained co-inventor Hsiun’s co-ownership interests in the invention through a
series of transfers:

  1. The first transfer was made before the ’788 patent application was
    filed, pursuant to a January 1992 Employment Agreement
    (“Employment Agreement”) between Ms. Hsiun and
    Infochips.
  2. The second transfer occurred when Infochips’ “receivables,” which had been pledged as security in a financing agreement between Infochips and an entity called Lease Management Services, were seized by Lease Management when Infochips went out of business in 1993.
  3. The third transfer occurred in 1995 when Lease Management sold the Infochips assets to Mr. Woo, one of the three co-inventors.
  4. The fourth transfer occurred when Mr. Woo assigned his ownership interest in the ’788 patent to an entity called AVC Technology Inc. (“AVC”),

Hsiun’s employment agree provided that she would “hold in trust” for the company and “will assign” to the company all inventions, and quitclaimed any and all claims for infringement.  The district court concluded that these provisions did not effect a transfer of Hsiun’s ownership rights to Advanced Video.

The district court found that “will assign” invoked a promise to do
something in the future and did not effect a present assignment, and the Federal Circuit agreed.  Regarding the trust language, the Federal Circuit said even if it determined that Hsiun’s interests in the invention were immediately placed in trust, it did not follow that those interests were automatically, or ever, actually transferred out of trust in favor of
Advanced Video’s predecessor. Absent a transfer, Hsiun would continue
to hold the invention rights as a trustee.  Noting that because Advanced Video had not sought to enforce any obligation Hsiun might have under the trust, it ultimately has no standing to bring a patent infringement
action.  The Federal Circuit was similarly unimpressed with the quitclaim assignment of right to sue for infringements, noting that this cannot result in a transfer that did not in fact occur.

 

 

Software Innovations Make Non-Abstract Improvements to Computer Technology

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In Finjan, Inc., v. Blue Coat Systems, Inc., [2016-2520] (January 10, 2018), the Federal Circuit affirmed subject matter eligibility of U.S. Patent No. 6,154,844; affirmed infringement of the U.S. Patent Nos. 6,154,844 and 7,418,731;  affirmed the award of damages of $ 6 million for U.S. Patent No. 7,418,731 and $1.6 million for U.S. Patent No. 7,647,633,  reversed the denial of JMOL of non-infringement of U.S. Patent No.  6,965,968 and vacated the corresponding damage award.

Regarding subject matter eligibility of U.S. Patent No. 6,154,844, the Federal Circuit started at Step 1 of the Alice test, finding that the ’844 patent is directed to a method of providing computer security by scanning a downloadable and attaching the results of that scan to the downloadable itself in the form of a “security profile.”  While the Federal Circuit noted that in Intellectual Ventures I LLC v. Symantec Corp. it held that virus screening is well-known and constitutes an abstract idea, the Federal Circuit said that in the present case “the claimed method does a good deal more.”  The Federal Circuit framed the question as “whether
this behavior-based virus scan in the ’844 patent constitutes an improvement in computer functionality,” and found that it does.  The Federal Circuit said that its cases confirm that software-based innovations can make “non-abstract improvements to computer technology” and be deemed patent-eligible subject matter at
step 1.

The Federal Circuit also rejected the challenge that even if the claimed idea is new, it is still abstract, noting that the claims recite more than a mere result. Instead, the Federal Circuit found that they recite specific steps—generating a security profile that identifies suspicious code and linking it to a downloadable—that accomplish the desired result.

Regarding infringement of the ’844 and ’731 patents, the Federal Circuit found that the JMOL of non-infringement for the first time raised issues of claim construction, which it cannot do: “it is too late at the JMOL stage to argue for or adopt a new and more detailed interpretation of the claim language and test the jury verdict by that new and more detailed interpretation.” The Federal Circuit found the verdict of infringement of these patent was supported by substantial evidence.  Regarding the ‘968 the Federal Circuit agreed with the defendant that the patentee failed to introduce substantial evidence of infringement.

Regarding damages for infringement of the ’844 patent, the Federal Circuit agreed that the patentee failed to apportion damages to the infringing functionality, stating that “[w]hen the accused technology does not make up the whole of the accused product, apportionment is required.”  The Federal Circuit said that the patentee must give evidence
tending to separate or apportion the infringer’s profits and the patentee’s damages between the patented feature and the unpatented features, and such evidence must be reliable and tangible, and not conjectural or
speculative.  The patentee argued that it based the royalty on the “smallest, identifiable technical component” but the Federal Circuit held that this does not insulate them from the essential requirement that the ultimate reasonable royalty award must be based on the incremental value that the patented invention adds to the end product.  Noting that reversal of the denial of JMOL could result in a situation in which Finjan receives no compensation for Blue Coat’s infringement of the ’844 patent, the Federal Circuit remanded to the district court to determine whether Finjan has waived the right to establish reasonable royalty damages under a new theory and whether to order a new trial on damages.  This aspect of the decision caused the district judge in the middle of a trial relating to the same patent to declare a mistrial, and reschedule the infringement and damages cases.

Regarding damages for infringement of the ’731 and ’633 patents, the Federal Circuit held that the awards were supported by substantial, if conflicting, evidence.

This is a rare Step 1 victory for a software inventor, and although the decision will no doubt be cited by hopeful applicants and patent owners, it does not bring any clarity to what it means to claim an abstract idea.

Vocabulary: Infundibuliform

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Today’s A.Word.A.Day from wordsmith is infundibuliform, a neat word for funnel-shaped.  The word has been used in at least two dozen patents and in the claims of five: 6,276,549, 4,747,343, 4,416,404, 4,288,982,  4,054,970.  In U.S. Patent No. 4,747,343, claim 6 is directed to the  infundibuliform shape of the end of an auger, which is described in the specification:

One can imagine circumstances where a fancy word like infundibuliform might enhance the prestige of an invention, but for most applications good old “funnel-shaped” is probably the best choice

Director’s Time-Bar Determinations under § 315(b) are not Exempt from Judicial Review

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In Wi-Fi One, LLC v. Broadcom Corp., [2015-1945, 2015-1946](January 8, 2018) the Federal Circuit, en banc, held that the bar on judicial review of institution decisions in 35 U.S.C. §314(d) does not apply to timebar determinations made under § 315(b), overruling Achates
Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015).

Wi-Fi argued that the Director lacked authority to institute IPRs under
§315(b) because petitioner Broadcom was in privity the defendants that the prior owner of the patents (Ericsson) served with an infringement complaint more than a year before Broadcom filed the IPRs.  The Board nonetheless instituted the IPRs, finding that Wi-Fi Wi-Fi had not shown that Broadcom was in privity with the defendants in the prior litigation.  In its Final Written Decision, the challenged claims were found unpatentable.

Wi-Fi appealed the Final Written Decisions, asking the Federal Circuit to reverse or vacate the Board’s time-bar determinations, but a panel of the Federal Circuit found the §315(b) time-bar rulings nonappealable under Achates.  Wi-Fi petitioned for rehearing en banc, asking the Federal Circuit to consider whether Achates should be overruled, and hold that the Director’s § 315(b) time-bar determinations are subject to judicial review.

The majority started its analysis with the the “strong presumption”
favoring judicial review of administrative actions, including the Director’s IPR institution decisions.  In view of this strong presumption, the Federal Circuit said it would abdicate judicial review only when Congress provides a “clear and convincing” indication that it intends to prohibit review.  The Federal Circuit found no clear and convincing indication in the specific statutory language in the AIA, the specific legislative
history of the AIA, or the statutory scheme as a whole that demonstrates Congress’s intent to bar judicial review of § 315(b) time-bar determinations.

The Federal Circuit said that §315(b), which controls the Director’s authority to institute IPR that is unrelated to the Director’s preliminary  patentability assessment or the Director’s discretion not to initiate an IPR even if the threshold “reasonable likelihood” is present.  Because §314(a) does not mention the timer bar, the PTO’s position that the time-bar determination is unreviewable runs counter to the principle, as reflected in Cuozzo, that favors reading the statute to comport with, not depart from, familiar approaches to comparable issues.  The majority found this reading was consistent with the overall statutory scheme as understood through the lens of Cuozzo’s directive to examine the statutory scheme in terms of what is “closely related” to the § 314(a) determination.

The Federal Circuit concluded that whether a petitioner has complied with §315(b) has nothing to do with the patentability merits or discretion not to institute.  Thus, the majority said that the statutory scheme as a whole demonstrates that § 315 is not “closely related” to the institution decision addressed in § 314(a), and it therefore is not subject to §314(d)’s bar on judicial review.

Moreover the Federal Circuit observed that timely filing of a petition under § 315(b) is a condition precedent to the Director’s authority to act, and said that enforcing statutory limits on an agency’s authority to
act is precisely the type of issue that courts have historically reviewed.

The Federal Circuit said that the Supreme Court in Cuozzo instructed that the “strong presumption” favoring judicial review “may be overcome by ‘“clear and convincing”’ indications, drawn from ‘specific language,’ ‘specific legislative history,’ and ‘inferences of intent drawn from the statutory scheme as a whole,’ that Congress intended to bar review.” However, finding no such clear and convincing indications, the Federal Circuit held that the Director’s time-bar determinations under §315(b) are not exempt from judicial review, and overruled Achates’s contrary conclusion.

About “About”: “Less Than About 3%” Includes 4%

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In Monsanto Technology LLC v. E.I. DuPont De Nemours & Co., [2017-1032] (January 5, 2018), the Federal Circuit affirmed the PTAB’s decision that affirmed reexamination examiner’s rejection of claims of U.S. Patent No. 7,790,953, on Soybean Seed and Oil Compositions and
Methods of Making Same as anticipated by or obvious from U.S. Patent No. 6,426,448.

Monsanto argued that misconstruing the Board misconstrued the “about 3% or less” limitation in the ’953 patent to include progeny with a linolenic acid content of 4%, but the Federal Circuit found that the PTAB “reasonably interpreted” Booth’s parent line containing 4% linolenic acid “to be within the scope of ‘about 3%,’” as recited in claim 1 step (a).  The Federal Circuit found that the claim language was not instructive, so it turned to the the remainder of the specification.  The Federal Circuit noted that Exhibit 9, which purportedly had a linolenic acid content of about 3%, which included a reference that disclosed linolenic acid contents from 2.3% to 4.1%.  Thus the Federal Circuit found that the intrinsic evidence supported finding that a person having ordinary skill in the art would reasonably consider “about 3%” to encompass a range that includes 4%, and that Monsanto’s counterarguments were “unavailing.”

Monsanto further argued that the finding of anticipation was not supported by substantial evidence because the anticipation was not inherent, as the PTAB found.  The Federal Circuit disagreed, saying that inherent anticipation applies because the prior art “necessarily include the unstated limitation.”  Declarations in the record confirmed that the generation identified in the prior art would necessarily result in progeny within the scope of claim 1. Monsanto challenged the PTAB’s reliance on this “non-prior art data” and “secret data” in the declarations, but the Federal Circuit found this was appropriate, saying that Monsanto was confusing prior art with extrinsic evidence used to support what is “necessarily present” in a prior art’s teaching. Extrinsic evidence may be used to interpret the allegedly anticipating reference and to shed light on what it would have meant to a person of ordinary skill in the art. The Federal Circuit said that the declarations did not expand the
meaning of reference or serve as prior art: they demonstrate
what is inherent in the disclosure.  Second the declarations were not improper “secret data” — the were not used as prior art , but merely in support of prior art already of record.  Third, the Federal Circuit offered no rebuttal evidence to the declarations.

The Federal Circuit further affirmed the obviousness determination, noting that PTAB did not rely solely on its finding of inherent anticipation, but explained that explained that a PHOSITA would have been motivated to modify the reference to meet the requirements of the claims.