A Dose of Reality Can Treat Infectious Hindsight

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In Ivera Medical Corp. v. Hospira, Inc., [2014-1613, 2014-1614] (September 8, 2015), the Federal Circuit reversed the district court’s summary judgment of invalidity of U.S. Patent Nos. 7,780,794, 7,985,302, and 8,206,514, directed to a medical implement cleaning device.  One embodiment of the device was a threaded cap containing a cleaning material that contained a cleaning agent.  The invention as a vent in the cap “to allow evaporation of the cleaning agent from the inner cavity and to inhibit a buildup of pressure in the cap when the cleaning material is compressed.”  The district court said that a person of ordinary skill would not “need the benefit of hindsight to realize that adding a vent would relieve possible pressure on the inside of the cap.”  The district court found that a person of ordinary skill would recognize the benefits of adding a vent as allegedly taught in the prior art.  The district court concluded that there was no triable issue of material fact on obviousness for the asserted claims of the patents-in-suit.

 

The Federal Circuit summarized the role of motivation to the obviousness determination:

“A party seeking to invalidate a patent on obviousness grounds must demonstrate by clear and convincing evidence that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.”

The Federal Circuit explained that determining “motivation” is a flexible inquiry, and the motivation is not required to be found in any particular prior art reference.  While Hospira pointed to benefits of venting described in the prior art,  and in the written description of the patents in suit, Ivera pointed to evidence (Declarations from the inventors of the prior art patents)  that the conventional wisdom among those skilled in the art was that disinfecting caps should be fluid tight.  The Federal Circuit agreed that record evidence establishes a genuine dispute over whether a person of ordinary skill would be motivated to add a vent to a prior art disinfecting caps.

Ivera succeeded in creating a factual dispute by showing what members of the prior art actually believed at the time of the invention, providing declarations from the named inventors of two of the prior art references, both of whom explained that their goal was to provide a fluid tight seal, not venting.  Although the statements of an inventor are not controlling as to the content of a patent application, Hospira did not challenge that the inventor was a person of ordinary skill in the art.

Ivera shows the value of presenting an accurate picture of the state of the art, and those of ordinary skill working in it, to combat the tendency of hindsight to make simple inventions appear to be inevitable.

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Functional Language Made Claims Indefinite

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In Media Rights Technologies, Inc. v. Capital One Financial Corporation, [2014-1218] (September 4, 2015), the Federal Circuit affirmed judgment on the pleadings that all of the claims of U.S. Patent No. 7,316,033 were invalid for indefiniteness for containing means plus function elements without an identification of the corresponding structure in the specification.  At issue was the claim term “compliance mechanism” which appeared in every claim of the patent, which related to the prevention of unauthorized recording of media.

The Federal Circuit started with Nautilus’ definition of that a claim is indefinite if it fails to inform those skilled in the art about the scope of the claim with reasonable certainty.  The Federal Circuit noted that a  those skilled in the art about the t he indefiniteness — that a claim is indefinite if its language “might mean several different things and no informed and confident choice is available among the contending definitions.”

The Federal Circuit next address whether “compliance mechanism” was a means plus function element, noting that it is well settled that claim limitation that uses the word “means” invokes a rebuttable presumption that §112, ¶6 [now §112(f)] applies, and that a claim term that does not use “means” invokes a rebuttable presumption that § 112, ¶6 does not apply.  However, the presumption against the application of § 112, ¶ 6 to a claim term lacking the word “means” can be overcome if a party can “demonstrate[] that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.

Media Rights argued that “compliance mechanism” was analogous to “modernizing device” which was not a means-plus-function claim in Inventio AG v. Thyssenkrupp Elevator Ams. Corp., 649 F.3d 1350, 1357 (Fed. Cir. 2011).  However the Federal Circuit distinguished Inventio because “modernizing device” described an electric circuit, which has sufficient structure, while in the present case “the claims do not use the term ‘compliance mechanism’ as a substitute for an electrical circuit, or anything else that might connote a definite structure.”  The Federal Circuit found no guidance in the intrinsic record as to what structure is being referenced. The Federal Circuit said that describing how the “compliance mechanism” is connected to and interacts with the other components of the system, what processes the “compliance mechanism” performs, and what structural subcomponents might comprise the “compliance mechanism,” were not enough.  It was the specification’s disclosure in Inventio regarding how the “modernizing device” and its internal components operated as a circuit, that connoted sufficient structure, and that was missing from Media Rights’ specification.  The Federal Circuit also distinguished Inventio as applying a heavy presumption against the application of §112, ¶6, which the Federal Circuit eliminated earlier this year.

Having determined that “compliance mechanism” was in fact a means-plus-function element, the Federal Circuit then proceeded to identifying the corresponding structure, material, or acts described in the specification to which the claim term is limited.  The Federal Circuit noted that where there are multiple claimed functions, as there are in this case, the patentee must disclose adequate corresponding structure to perform all of the claimed functions.  The Federal Circuit found that four functions were claimed, and the question is whether the specification discloses adequate structure to achieve all four of the claimed functions.

Because the functions are computer-implemented functions, moreover, the structure disclosed in the specification must be more than a general purpose computer or microprocessor, it must also disclose an algorithm for performing the claimed function.  The algorithm may be expressed as a mathematical formula, in prose, as a flow chart, or in any other manner that provides sufficient structure.

Relying on expert testimony, the Federal Circuit found that the disclosed portions of code in the specification did not explain how to perform at least one of the claimed function, making the disclosure inadequate.  The Federal Circuit also found a lack of disclosure of the means for performing another function, finding both a lack of detail and lack of explanation.  The Federal Circuit concluded that all the claims were invalid for indefiniteness.

Media Rights suggests that after Williamson v. Citrix Online, LLC, it more likely for functional language to be found to invoke §112(f), any time that functional language is used in a claim, the drafter should weigh the risk that §112(f), and provide an identification of corresponding structure, just in case.  When the invention is implemented by computer, the drafter must include the algorithm for all of the claimed functions.

 

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A Defined Numerical Parameter Can Still Be Indefinite, If It’s Not Clear How to Measure It

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In The Dow Chemical Co. v. Nova Chemicals Corporation (Canada), [2014-1431, 2014-1462] (August 28, 2015) the Federal Circuit applied the change of law exception to reject Dow’s bid for supplemental damages for infringements occurring after the original judgment — the change of law being the change of the standard of indefiniteness resulting from the Supreme Court decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014).

The Federal Circuit found that its original decision would have been different under the new Nautilus standard.  The claims at issue require “a slope of strain hardening coefficient greater than or equal to 1.3.”  The patent explained that the slope of strain hardening
coefficient was a new Dow construct not previously known in the prior art, and is calculated by a given formula from the slope of strain hardening curve.  However, it turns out that the strain hardening curve is in fact curve, meaning it does not have a single slope.  .Nova complained that the patent fails to teach where and how the slope of strain hardening should be measured.  The Federal Circuit found that there were four ways to measure the slope, and that each of these four methods may produce different results, and because the methods do not always produce the same results, the method chosen
for calculating the slope of strain hardening could affect whether or not a given product infringes the claims.

Under Nautilus a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty,those skilled in the art about the scope of the invention.  The Federal Circuit held that “the required guidance is not provided by the claims, specification, and prosecution history.”  The Federal Circuit said that a claim term is indefinite if it “leave[s] the skilled artisan to consult the ‘unpredictable vagaries of any one person’s opinion.’” The Federal Circuit concluded that the claims here are invalid as indefinite, and the award of supplemental damages must be reversed.

While measured parameters with numerical values at first appear to be definite, patent drafters must be clear about how those parameters are measured — at least where the value can vary depending upon the method used.

 

Avoid Saying Anything About the Prior Art Except How it Differs from the Claims

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In Inline Plastics Corp. v. EasyPak, LLC, [2014-1305] August 27, 2015, the Federal Circuit vacated the district court’s claim construction of “frangible section” as being improperly limited to the preferred embodiment, and therefore reversed the district court’s judgment of non-infringement.

The preferred embodiment of the “frangible section” is described as having a pair of parallel score lines, although an alternative embodiment is described as having a single score line.  EasyPak argued that the prosecution history supports construing frangible section as requiring at least two score lines, but the Federal Circuit disagreed,  noting that the examiner did not require such limitation, and it was not a condition of patentability.

in distinguishing a prior art reference, the applicant described the prior art as having a single score line, but the Federal Circuit observed that this was not the basis for distinction.  The Federal Circuit further found that claim differentiation also supported the broader construction of frangible section, because the alternative embodiment specifically mentioned a single score line.

Although all’s well that ends well, the patent applicant’s description of the prior art formed the basis for the iinfringer’s claim construction arguments.  When characterizing and distinguishing prior art, it is probably best not to mention any aspect of the prior art that is not necessary to the basis for distinguishing the prior art.

 

 

He Fought the Law, and the Law Won

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The most remarkable thing about Hyatt v Lee, [2014-1596], (August 20, 2015), is that the plaintiff Mr. Hyatt has 400 pending patent applications that were filed before June 8, 1995.  This means that any patent that issues on one of this applications will have a 17 year term from issuance, expiring a minimum of 37 years after they were filed.  Each of these applications averages 116 independent claims, and 299 total claims, which if filed electronically today would cost $35620 in filing fees per application.  The Patent Office estimates that combined, Mr. Hyatt’s 400 applications include 45,000 independent claims and 115,000 total claims.

It is not surprising that the USPTO is not amused with Mr. Hyatt, and in August 2013, the began to issue “Requirements” in each of the application families, asking Mr. Hyatt to select a number of claims from each family (not to exceed 600), identify the earliest applicable priority date and supporting disclosure for each selected claim; and 3) present a copy of the selected claims to the USPTO.

Mr. Hyatt’s concern was that as patents issued, this could make information about unpublished applications public to his detriment.  This seems a legitimate concern, but facing the examination of 115,000 total claims, the USPTO was not sympathetic, and the Federal Circuit backed them up.

You can buck the system, but you have to remember that the system bucks back.

 

Obviousness is Alive and Well

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In ABT Systems, LLC v. Emerson Electric Co., [2014-1618, 2014-1700] (August 19, 2015), the Federal Circuit reversed the district court’s denial of Emerson’s motion for JMOL that the claims of the patent in suit were invalid for obviousness.

Rather than mounting a strong challenge to the merits of Emerson’s theory of obviousness based on the disclosures of the prior art references, ABT takes the position that Emerson’s argument is flawed because the references upon which it relies are either non-enabled or teach away.  The Federal Circuit said that the references do not “teach away,” as ABT argues, because it is clear that none come near to criticizing, discrediting, or otherwise discouraging investigation into the claimed invention.  The Federal Circuit also rejected ABT’s argument that the references were not enabled because even “[a] non-enabling reference may qualify as prior art for the purpose of determining obviousness,” Symbol Tech., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991), and even “an inoperative device . . . is prior art for all that it teaches,” Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989).

In looking for a reason to combine the references, the Federal Circuit said that it was well settled that even where references do not explicitly convey a motivation to combine, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”  The Federal Circuit said that a court may find a motivation to combine prior art references in the nature of the problem to be solved, particularly with simpler mechanical technologies.  The Federal Circuit the references themselves and the nature of the problem provided the required reason to combine.

ABT also tried to rely upon commercial success, but the Federal Circuit said that its case was undermined by the failure to establish a nexus between the invention and the commercial success of the products embodying the invention.  Advertisements and press releases were not a substitute for market share information or industry praise or recognition for the novelty of the invention.  The Federal Circuit further found the number of licenses was insufficient to overcome a convincing case of invalidity without showing a clear nexus to the claimed invention.

PTAB in Reexamination Should Have At Least Acknowledged Prior Court Claim Construction

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In Power Integrations, Inc. v. Lee, [2014-1123], (August 12, 2015), the Federal Circuit reversed the PTAB’s decision affirming the rejection of claims of U.S. Patent No. 6,249,876, in a reexamination proceeding.

The Federal Circuit found that the PTAB erred in failing to consider the previous construction of the claims in District Court litigation.  While acknowledging that the PTAB is generally not bound by a prior judicial construction of a claim term, and that in reexaminations the PTAB applies a different claim construction standard than applied by the district court, the Federal Circuit found that the PTAB still had an obligation to “acknowledge” the interpretation, and “assess” whether it is consistent with the broadest reasonable construction of the term.  The Federal Circuit said that het PTAB declined to address or even acknowledged the district court’s prior determination, and because the patent owner’s construction was “tied” to the district courts’ construction, the Federal Circuit thought that the PTAB had an obligation to evaluate that construction and determine whether it was consistent with the broadest reasonable interpretation.

No Liability for Inducing Non-Infringement

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In JVC Kenwood Corporation v. Nero, Inc., 2014-1011 (August 17, 2015), the Federal Circuit held that if what the end user is doing does not constitute infringement (because of standards essential patents licensed to the end users), the inducing those end users to do something that is not infringement, is not inducing patent infringement.

JVC’s patents were part of a patent pool licensed to the manufacturers of DVD discs and disc drives.  Nero’s software helps the end users of licensed DVD discs and disc drives to burn and play the discs.  The end user’s use of the DVD discs and disc drives was not infringement because of a pool license to the manufactures of the discs and disc drives, so Nero’s actions in selling the software did not induce infringement.

 

If the Slipper Fits . . .

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In High Point Design LLC v. Meijer, Inc., [2014-1464], the Federal Circuit in a non-precedential, but still instructive decision, reversed summary judgment of anticipation but affirmed summary judgment of non-infringement of U.S. Patent No. D598183 on a Slipper.

In reversing the district court’s finding of anticipation, the Federal Circuit said that “Design patent anticipation requires a showing that a single prior art reference is ‘identical in all material respects’ to the claimed design.”  View the evidence in the light most favorable to the patent owner, the Federal Circuit found that a reasonable jury could have found that there was not clear and convincing evidence of anticipation.

The Federal Circuit criticized the distraction court for not performing a side-by-side comparison, but instead concluding that the claimed design and the prior art share the same characteristics.  The Federal Circuit noted that the district court’s analysis was “on too high a level of abstraction,” failing to focus on the distinctive visual appearance of the prior art and the claimed design.  The detail of the analysis that the Federal Circuit undertook was instructive:

High_Point_1

The Federal Circuit also pointed to differences in the soles of the slippers, resurrecting the infamous Contessa Food Prods., Inc. v. Conagra, Inc., shrimp platter case.

High_Point_2

While the Federal Circuit reversed the district court’s summary judgment of anticipation, it affirmed the district court’s judgment of non-infringement with a similarly detailed comparison between the accused product and the patent.

The district court conducted a side-by-side comparison between the claimed design and the accused slippers, and concluded that the accused slipper “evokes a soft, gentle image” while the patented design “appears robust and durable.”  The Federal Circuit agreed, finding that “the patented and accused designs bring to mind different impressions.”  The Federal Circuit characterized the accused design as “soft and formless” while the patent design appeared “structured and formed.”

High_Point_3

Differences in the soles of the designs also factored into the determination.

The Federal Circuit recognized that both designs essentially consist of a slipper with a fuzzy portion extending upward out of the foot opening, but said that such high-level similarities, are not sufficient to demonstrate infringement.

Although not precedential, the opinion is instructive on how to compare designs for purpose of anticipation and for purposes of infringement.

Non-Analogous Art is Not Prior Art

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In Circuit Check Inc. v. QZQ Inc., [2015-1155] (July 28, 2015), the Federal Circuit revered the district court grant of JMOL, restoring the jury verdict that three patents on systems and methods for marking interface plates used in the testing of circuit boards were not invalid for obviousness.

The Federal Circuit reasoned that by finding the claims nonobvious, the jury presumably found that the disputed prior art is not analogous and therefore not within the scope of the prior art, and concluded that substantial evidence supports the jury’s presumed finding.  The Federal Circuit explained whether a reference is analogous art depends upon whether it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve.

The Federal Circuit agreed that the asserted prior art — rock carvings, engraved signage, and Prussian Blue — was is not part of the field of circuit board testers and test figures, which meant that the art was only prior art if it was reasonably pertinent to the particular problem solved by the inventor.  The Federal Circuit said that although familiar items may have obvious uses beyond their primary purposes, a reference is only reasonably pertinent when it “logically would have commended itself to an inventor’s attention in considering his problem.”

The jury heard testimony that a person of ordinary skill in the art would not have thought about rock carvings, engraved signage, or Prussian Blue in considering how to mark interface plates, and was entitled to weigh this testimony, find that an ordinarily skilled artisan would not find that the disputed prior art “logically would have commended itself to an inventor’s attention,” and thus find the disputed prior art not analogous.

The Federal Circuit said that:

[a]n alleged infringer should not be able to transform all systems and methods within the common knowledge into analogous prior art simply by stating that anyone would have known of such a system or method. The question is not whether simple concepts such as rock carvings, engraved signage, or Prussian Blue dye are within the knowledge of lay people or even within the knowledge of a person of ordinary skill in the art. Rather, the question is whether an inventor would look to this particular art to solve the particular problem at hand.

 Even if the prior art were analogous, the Federal Circuit went on to find that a  reasonable jury could have concluded that QXQ did not prove by clear and convincing evidence that the differences between the prior art and the claimed invention were insignificant.

The Federal Circuit concluded that the jury’s presumed findings regarding the scope and content of the prior art, differences between the claimed invention and the stipulated prior art, and objective considerations of nonobviousness were supported by substantial evidence, and from these a reasonable jury could have concluded that the subject matter as a whole would not have been obvious at the time of the invention. Thus, the district court erred by granting judgment as a matter of law.