Category Archives: Obviousness

Patent Challenger Loses with Unreasonably Broad Claim Construction

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In Trivascular, Inc., v. Samuels, [2015-1631) (February 5, 2015), the Federal Circuit affirmed a rare PTAB determination in an IPR that the claims of U.S. Patent No. 6,007,575 were not shown to be invalid. The claims were directed to stents with an inflatable cuff for securing the stent in a blood vessel.

TriVascular argued that the Board erred in construing “circumferential ridges” to mean a “raised strip disposed circumferentially about the outer surface of the inflatable cuff,” contending that it should have been construed to mean “an elevated part of the outer surface disposed about the inflatable cuff that can be either continuous or discontinuous.”  The Federal Circuit found that TriVascular’s proposed interpretation was unreasonably broad, and that find the Board’s reliance on the dictionary definition of ridge when considered in the context of the written description and plain language of the claims was proper.

TriVascular further argued that the Board should have applied prosecution history disclaimer, and found that Samuels had disclaimed the narrower construction that the ridges must be continuous.  The Federal Circuit said that the same general tenets that apply to prosecution history estoppel apply to prosecution history disclaimer.  Both doctrines require that the claims of a patent be interpreted in light of the proceedings in the PTO during the application process.  As applied to a disclaimer analysis, “the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention.”   Disclaimer “ensures that claims are interpreted by reference to those that have been cancelled or rejected, but the party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a “clear and unmistakable” disclaimer that would have been evident to one skilled in the art.

TriVascular argued that the disclaimer arose when Samuels amended the claims to recite “continuously circumferential ridges,” but the claims that were later allowed did not have this requirement, but instead had other limitations defining over the prior art.  However the Federal Circuit did not find this sufficient to work a clear and unmistakable disclaimer.

Regarding obviousness, the Federal Circuit noted that Although the KSR test is flexible, the Board must still be careful not to allow hindsight reconstruction of references without any explanation as to how or why the references would be combined to produce the claimed invention.  The Federal Circuit found that the Board’s findings that a skilled artisan would neither have had the motivation to combine nor a reasonable likelihood of success in combining the references were supported by substantial evidence, and supported the Board’s conclusion on nonobviousness.

Finally the Federal Circuit rejected Trivascular’s complaint that the final written decision was inconsistent with the Board’s institution decision.  The Federal Circuit commented that this misguided theme pervaded TriVascular’s briefs, and said that contrary to TriVascular’s assertions:

 the Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced its initial inclinations were wrong. To conclude otherwise would collapse these two very different analyses into one, which we decline to do.

The Federal Circuit added that TriVascular’s argument also fails to appreciate that there is a significant difference between a petitioner’s burden to establish a “reasonable likelihood of success” at institution, and actually proving invalidity by a preponderance of the evidence at trial.

But, Why?

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In Cutsforth, Inc. v. Motive Power, Inc., [2015-1316] the Federal Circuit vacated a PTAB decision that claims 1–24 of U.S. Patent No. 7,990,018 were invalid for obviousness because the Board did not adequately describe its reasoning for finding the claims obvious.

The Board’s final written decision included petitioner’s obviousness arguments, the Board stated no independent reasons for why the claims were obvious nor did it formally adopt petitioner’s arguments as its own reasoning.  The Federal Circuit said:

As we held in In re Sang-Su Lee, 277 F.3d 1338 (Fed. Cir. 2002), the Board must articulate its reasoning for making its decision. The Board must develop and explain the basis for its findings. This enables the reviewing court to conduct meaningful review of the proceedings. Broad, conclusory statements are not enough to satisfy the Board’s obligation to provide reasoned explanation for its decision. In re Sang-Su Lee, 277 F.3d at 1343–45. In a case of obviousness, the Board must explain why a person of ordinary skill in the art would modify the prior art references to create the claimed invention. See In re Kotzab, 217 F.3d at 1371; In re Rouffet, 149 F.3d 1350, 1359 (Fed. Cir. 1998).

 

 

The Federal Circuit found that the Board made broad, conclusory statements in its analysis to determine that the claims of the ’018 patent are obvious. It said that the majority of the Board’s Final Written Decision was spent summarizing the parties’ arguments and offered only conclusory analysis of its own.  This “leaves little explanation for why the Board found the claimed invention obvious.”

Merely reciting petitioner’s argument does not satisfy the Board’s responsibility to explain its own reasoning. The decision must explain why a person of ordinary skill in the art would find it obvious. The Board gives no such explanation.  The Federal Circuit concluded:

When the Board determines that modifications and combinations of the prior art render a claimed invention obvious, the Board must fully explain why a person of ordinary skill in the art would find such changes obvious.

Although the decision is non-prudential, the Board will likely provide a better explanation for the reasons for its obviousness determinations — if only by explicitly adopting petitioner’s arguments.

It is Obvious to Vary Result-Effective Variables

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In In re Urbanski, [2015-1272] (Fed. Cir. 2016), the Federal Circuit affirmed the PTAB’s affirmance of the rejection on obviousness grounds of claims to a method for making an enzymatic hydrolysate of a soy fiber.

The Federal Circuit agreed with the Board that Gross and Wong related to methods of enzymatic hydrolysis of dietary fibers, are readily combinable, and that they recognize that reaction time and degree of hydrolysis are result-effective variables that can be varied in order to adjust the properties of the hydrolyzed fiber in a predictable manner.  The Federal Circuit found that substantial evidence thus supports the Board’s finding that a person of ordinary skill would have expected that, by adjusting the reaction time, the degree of hydrolysis and the properties of the fiber would be altered.

The Federal Circuit said that the prima facie case had not been rebutted.  There was no evidence that the claimed ranges of degree of hydrolysis, water holding capacity, and free simple sugar content are “critical” or “produce a new and unexpected result” as compared to the prior art.  The Federal Circuit also noted that there is also no evidence that the “variables interacted in an unpredictable or unexpected way,” which could render the claims nonobvious.

Urbanski argued that modifying the Gross process by shortening the hydrolysis time, as taught by Wong would make the Gross process inoperative for its intended purpose.  The Federal Circuit recognized that teaching away is applicable to cases involving mechanical devices or apparatus claims, but that on the record before it, the Board properly found that one of ordinary skill would have been motivated to pursue the desirable properties taught by Wong, even at the expense of foregoing the benefit taught by Gross.  Nothing in the prior art teaches that the proposed modification would have resulted in an “inoperable” process or a dietary fiber product with undesirable properties.

The Federal Circuit agreed that the claimed invention was obvious.

 

Teaching Away Must Be Apparent from the Art as a Whole, and not Just Isolated Examples

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In Merck & Cie v. Gnosis S.P.A., [20140-1779] (Fed. Cir. 2015) the Federal Circuit affirmed a PTAB decision in an IPR that the claims were invalid for obviousness, rejected patent owner Merck’s arguments that the prior art taught away form the claimed method, and that objective indicia of non-obviousness further support the patentability of the claims of U.S. Patent No. 6,011,040 relating to methods of using folates to lower levels of homocysteine in the human body.

The Federal Circuit said that if all elements of the claims are found in a combination of prior art references, as is the case here, the fact finder should further consider whether a person of ordinary skill in the art would be motivated to combine those references, and whether in making that combination, a person of ordinary skill would have a reasonable expectation of success, and found that the Board’s finding of a motivation to combine the prior art to arrive at the claimed method was supported by substantial evidence.

The Federal Circuit rejected Merck’s argument that the prior art taught away from the combination, stating that Merck was citing isolated prior art disclosures, and that viewing the prior art as a whole.  The Federal Circuit also rejected Merck’s argument that there was no showing that a person of ordinary skill would have a reasonable expectation of success, stating that KSR does not require an explicit statement of a reasonable expectation of success in every case.  The Federal Circuit said the Board impliedly found a reasonable expectation of success, and declined to overturn the Board’s decision for failure to state expressly that a person of ordinary skill would have had a reasonable expectation of success.

With respect to objective indicia of non-obviousness, the Federal Circuit noted that even when present, however, objective indicia “do not necessarily control the obviousness determination.”  The Federal Circuit found that the Board properly considered Merck’s evidence regarding objective indicia of nonobviousness, but found that the nexus between the merits of the invention and the evidence of commercial success, licensing, copying, and industry praise was weak.  Thus, the Board’s finding that this evidence of commercial success should be afforded little weight was supported by substantial evidence.

 

 

 

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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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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.