Monthly Archives: September 2018

(Prior) Art Masterpieces

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“Prior art” is virtually anything before the inventor invention (pre-AIA) or filing date (post-AIA), and there are some amazing examples of the extent patent challengers, and even patent examiners will go in the pursuit of prior art.

One of the most well know instances is from Sakraida v. Ag Pro, 425 U.S. 273 (1976), where the Supreme Court invalidated U.S. Patent No. 3,223,070, entitled “Dairy  Establishment,” covering a water flush system to remove cow manure from the floor of a dairy barn, citing the Legends of Hercules from Witt, Classic Mythology (1883).  The Supreme Court noted in a footnote that Heracles cleansed the stables of Augeas, King of Elis, in a single day.

 

 

 

 

Another instance is in Karl Kroyer’s Netherlands application for a patent on his Method of Raising Sunken or Stranded Vessels.  Mr. Kroyer successfully raised the sunken freighter Al Kuwaita from the bottom of Kuwait harbor by pumping 27 million expanded polystyrene balls to raise the sunken freighter.  He then filed patent applications in Denmark, Great Britain, and the Netherlands.  Things were going well until the Netherlands patent examiner found a Donald Duck cartoon in which Huey, Dewey, and Louie helped to raise Scrooge McDuck’s yacht by filling it with ping pong balls.

 

 

Apparently, patent examiner’s spend a lot of time reading comics, comics played an important part in the examination of Great Britain patent application 2117179 on an Entry System for Pets, which the Examiner rejected over a Beano comic strip:

When they are not reading comics, examiners are apparently watching movies because an examiner relied on the movie Borat to reject Patent Application 2009/0216171:

 

It not just patent examiners who rely upon movies, in defending a suit brought by Apple on its iPad patents, Samsung pointed to tablet devices used by the astronauts in Stanley Kubrick’s 1968 classic 2001 Space Odyssey:

“Capable of” Construction (Rather than “Configured to” Construction) Dooms Apparatus, but Not Method Claims

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In Parkervision, Inc. v. Qualcomm Incorporated, [2017-2012, 2017-2013, 2017-2014, 2017-2074] (September 13, 2018), the Federal Circuit affirmed the PTAB’s determination in related inter partes review proceedings, The certain apparatus claims of U.S. Patent No. 6,091,940, generally related to telecommunications devices,  were unpatentable as obvious under 35 U.S.C. § 103(a), and that certain method claims were not unpatentable.

The Federal Circuit rejected the argument that the Board erred by basing its
patentability decisions on theories and evidence regarding the phrase “plurality of harmonics” that Qualcomm did not present in its petitions.  The case came down to whether the claim language required the production of the “plurality of harmonics,” or simply the capability of producing the “plurality of harmonics” —  The Federal Circuit found the claim language merely required the capability of producing the plurality of harmonics, which was met by the prior art that was similarly capable.

The method claims presented a different story —  while Qualcomm was only required to identify a prior art reference that discloses an apparatus “capable of” performing
the recited functions to prove that the apparatus claims would have been obvious, more was required with respect to the method claims. Specifically, Qualcomm needed to present evidence and argument that a person of ordinary skill would have been motivated to operate the prior art in a manner that satisfied the “plurality of harmonics”
limitation, which Qualcomm failed to do.

Do Over — Different Evidence and Different Evidentiary Standard Allow IPR to Reach Different Conclusion of Validity than ITC

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in Nobel Biocare Services AG v. Instradent USA, Inc., [2017-2256] (September 13, 2018), the Federal Circuit affirmed the PTAB’s determination that claims 1-5 and 19 of U. S. Patent No. 8,714,977,directed to dental implants, were anticipated.

The undisputed critical date of the ‘977 patent was May 23, 2003, and Instradent alleged that the claims were anticipated by an ABT “Product Catalog” with the date
“March 2003” on the cover.  The ITC, applying a clear and convincing evidentiary standard, had previously determined that the claims were not anticipated, and the Federal Circuit affirmed.

Meanwhile, Instradent petitioned for IPR.  While the Board adopted the same claim construction as the ITC, and considered the same evidence presented to the ITC, the Board also considered new evidence not considered by the ITC, including the declarations and deposition testimony of Hantman and Chakir that the catalog was available to the industry in March 2003.  The Board determined that a preponderance of the evidence establishes that the ABT Catalog qualifies as a prior art printed publication under 35 U.S.C. § 102(b).

On appeal, the parties disputed whether the ABT Catalog qualifies
as a “printed publication” under § 102(b).  The Federal Circuit said that whether a reference qualifies as a “printed publication” is a legal conclusion based on underlying factual findings, including The parties dispute whether the ABT Catalog qualifies
as a “printed publication” under pre-AIA § 102(b). Whether a reference qualifies as a “printed publication” is a legal conclusion based on underlying factual findings, including whether a reference was publicly accessible. Public accessibility has been called the touchstone in determining whether a reference constitutes a “printed publication.”  A reference will be considered publicly accessible if it was 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 it was not bound by its prior affirmance of the ITC’s holding that there was insufficient evidence to find pre-critical date public accessibility, observing that the evidentiary standard in IPRs, “preponderance of the evidence” is different from the higher standard applicable in ITC proceedings.  The Federal Circuit further noted that the Board also had more evidence on this issue than what was before the ITC.  Finally the Federal Circuit said that under the substantial evidence standard, the inconsistent conclusions from the evidence does not prevent an administrative agency’s finding from being supported by substantial evidence.

The Federal Circuit agreed with Instradent that substantial evidence supported the Board’s finding that the ABT Catalog was publicly accessible prior to the critical date. The Board credited Chakir and Hantman’s testimony that Chakir obtained a copy of the ABT Catalog at the March 2003 IDS Conference and that Hantman retained that copy in
his records thereafter. Furthermore, Hantman’s declaration included excerpts of his copy of the ABT Catalog taken from his files. The Board found that Hantman’s copy of the ABT Catalog and the copy offered as prior art by Instradent in the IPR had identical pages except for some handwriting on the cover of Hantman’s copy.

The Federal Circuit noted that corroboration is required of any witness whose testimony alone is asserted to invalidate a patent, regardless of his or her level of interest.  Corroborating evidence may include documentary or testimonial evidence, and circumstantial evidence can be sufficient corroboration.  The Federal Circuit listed eight factors to be considered in evaluating corroboration:

(1) the relationship between the corroborating witness and the alleged prior user,
(2) the time period between the event and trial,
(3) the interest of the corroborating witness in the subject matter in suit,
(4) contradiction or impeachment of the witness’ testimony,
(5) the extent and details of the corroborating testimony,
(6) the witness’ familiarity with the subject matter of the patented invention and the prior use,
(7) probability that a prior use could occur considering the state of the art at the time,
(8) impact of the invention on the industry, and the commercial value of its practice.

Applying a “rule of reason” analysis to the corroboration requirement, which “involves an assessment of the totality of the circumstances including an evaluation of all pertinent evidence, the Federal Circuit held the corroboration to be sufficient, noting “there are no hard and fast rules as to what constitutes sufficient corroboration, and each case must be decided on its own facts.”

The Federal Circuit rejected the challenges to the claim construction, and affirmed the Board.

 

 

Blocking Patent Can Explain Long-Felt But Unmet Need, Reducing Importance of Objective Indicia of Nonobviousness

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In Acorda therapeutics, Inc. v. Roxane Laboratories, Inc., [2017-2078, 2017-2134] (September 10, 2018), the Federal Circuit affirmed the judgment that the asserted claims of U.S. Patent Nos. 8,007,826; No. 8,663,685; No. 8,354,437; and No. 8,440,703, were invalid, and dismissed the cross-appeal regarding U.S. Patent No. 5,540,938, which expired while the appeal was pending, as moot.  The patents all relate to improvement of the gait of persons with multiple sclerosis.

Acorda made three arguments on appeal against the determination of obviousness:
First, that the district court erred in finding that a person of skill would have had a
motivation to combine the prior art to arrive at the Acorda invention and a reasonable expectation of success in doing so. Second, that the district court erred in findng that the limitations relating to pharmacokinetics are inherent in the claimed invention and therefore obvious. Third, that the court improperly applied a categorical rule that a blocking patent negates any findings in favor of Acorda on the objective indicia of commercial success, failure of others, and long felt but unmet need.

Regarding the motivation to combine, Acorda argued that the prior art teaches away from the invention, but the Federal Circuit found that the prior art supported a motivation to combine with a reasonable expectation of success, and that the district did not clearly err in finding that a person of skill would look to the claimed lower doses rather than
higher ones.  Regarding Accorda’s arguments against the inherency of the pharmokinetic limitations, the Federal Circuit said that the court invoked the principle that an obvious formulation cannot become nonobvious simply by administering it to a patient and claiming the resulting serum concentrations, and concluded that the pharmacokinetic limitation could not alter the obviousness analysis.   The Federal Circuit found that the Acorda had not pointed to any evidence to contradict the district court’s assumption.

Finally, regarding the argument that the district court improperly applied a categorical rule that the existence of a blocking negated objective evidence of non-obviousness, the Federal Circuit explained that a blocking patent can diminish the possible rewards from a non-owner’s or non-licensee’s investment activity aimed at an invention whose commercial exploitation would be infringing, therefore reducing incentives for
innovations in the blocked space by non-owners and nonlicensees of the blocking patent. The Federal Circuit said that such a blocking patent therefore can be evidence that can discount the significance of evidence that nobody but the blocking patent’s
owners or licensees arrived at, developed, and marketed the invention covered by the later patent at issue in litigation. However, the the magnitude of the diminution in incentive in any context—in particular, whether it was great enough to have actually deterred activity that otherwise would have occurred—is “a fact-specific inquiry.”  The Federal Circuit concluded that in a particular case, a court may ultimately be left, for its evaluation, with the solid premise of diminished incentives, plus some evidence  (possibly weak or ambiguous) about the significance of the deterrence, together with a background sense of the general realities in the area at issue that can affect the
weight to be given to the evidence in the specific case.  Against this background, the Federal Circuit examined the district court’s consideration of objective indicia.  The Federal Circuit found no clear error in the district court’s discounting evidence of long-felt, unmet need, in view of the evidence of blocking.

Just Because Seldom was Heard a Discouraging Word Did Not Mean The Invention Was Obvious

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In Orexo AB v. Actavis Elizabeth LLC [2017-1333](September 10, 2018), the Federal Circuit reversed the district court’s determination that the challenged claims of U.S. Patent No. 8,940,330 were invalid for obviousness.

The invention related to pills for treating opiod addition, that were less susceptible to misuse, where the active ingredient, buprenorphine, was adhered to carrier particles of citric acid.  The district court relied upon a patent disclosing the use of citric acid to reduce the pH of an orally dissolvable film.  However the Federal Circuit found taht the claimed structure was achieved solely upon the hindsight knowledge of the
structure and benefits described in the ’330 Patent.

Orexo argued that citric acid is nowhere used or listed or suggested as a carrier particle in the prior art, and at oral argument Actavis conceded that no reference teaches using citric acid as a carrier particle, or that citric acid should be used as a carrier particle.  The district court finding that a person of ordinary skill in the art would not have excluded citric acid, was not the same as a teaching or suggestion to use citric acid. The Federal Circuit observed that the mere fact that the prior art could be so modified would not have made the modification obvious unless the prior art suggested the desirability of the modification. The Federal Circuit said that the record does not contain clear and convincing evidence of a teaching or suggestion to use citric acid particles as a carrier for this opioid product in substitution therapy, or that the actual beneficial results would be obtained.

In response to the district court’s observation that “there is nothing in the prior art which would have discouraged a person of ordinary skill from following the path set out in the various references,” the Federal Circuit said that “no reference or combination of references proposes the path of the ’330 Patent.”

The district court erred in discounting objective indicia of nonobviousness, and concluded that obviousness had not been established by clear and convincing evidence.

Expert Testimony Critical to Determining Meaning of Prior Art to a PHOSITA

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In IXI IP, LLC v. Samsung Electronics Co.. Ltd., [2017-1665] (September 10, 2018), the Federal Circuit affirmed the PTAB’s determination that the challenged claims of U.S. Patent No. 7,039,033 were unpatentable.  The ’033 patent is directed to a system that accesses information from a wide area network (WAN), such as the Internet, and local wireless devices in response to short-range radio signals.

The Federal Circuit noted that issues relating to a motivation to combine prior art references and a reasonable expectation of success are both questions of fact, reviewed for substantial evidence.  Substantial evidence is “such relevant evidence as a
reasonable mind might accept as adequate to support a conclusion.”

The single issue on appeal is whether a PHOSITA would read the prior art as implicitly
describing an implementation in which the JINI LUS, which identifies services provided on the network, is located on the gateway device, i.e., the cellphone.  Samsung acknowledged that the reference does not expressly state that the JINI LUS is located on a mobile phone, but nonetheless, contended, and the Board agreed, that a PHOSITA would read the reference to understand that JINI LUS may be located on the cellphone.

After examining the evidence, the Federal Circuit held that the Board’s determination
that a POSITA reading the reference would understand that the cellphone is the master of the ad-hoc network and contains the LUS is reasonable and was supported by substantial evidence.  The determination of how a PHOSITA would understand the references was based on the weighing expert testimony from both parties, with Samsung’s expert being credited by the Board.

Federal Circuit Affirms Board’s Determination of No Interference in CRISPR-Cas9 Technology

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In Regents of the University of California v. Broad Institute, Inc., [2017-1907](September 10, 2018), the Federal Circuit affirmed the PTAB’s determination that there was no interference-in-fact between the University of California’s Application No. 13/842,859, and the claims of twelve patents and one application owned by the Broad Institute,
Inc., Massachusetts Institute of Technology, and the President and Fellows of Harvard College.  The involved claims relate to the use of a CRISPR-Cas9 system for the targeted cutting of DNA molecules.

The Board applies a two-way test to determine whether the claims are patentably distinct, asking whether “the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa.” 37 C.F.R. § 41.203(a). If the two-way test is not met, no interference-in-fact exists.

This Federal Circuit said that the case turns in its entirety on the substantial evidence
standard. It noted that the Board found a person of ordinary skill in the art would not have had a reasonable expectation of success in applying the CRISPR-Cas9 system in
eukaryotic cells. Given the mixture of evidence in the record, the Federal Circuit found that substantial evidence supports the Board’s finding that there was not a reasonable
expectation of success, and affirmed.

UC argued that the Board: (1) improperly adopted a rigid test for obviousness that required the prior art contain specific instructions, and (2) erred in dismissing evidence of simultaneous invention as irrelevant. However the Federal Circuit found no error in the Board’s analysis. After a detailed review of the evidence, the Federal Circuit concluded that in light of the record evidence, which includes expert testimony, contemporaneous statements made by skilled artisans, statements by the UC inventors themselves, and prior art failures, the Board’s fact finding as to a lack of reasonable expectation of success is supported by substantial evidence.  The Federal Circuit said that the Board did not adopt a test requiring there be specific instructions in the art in order to make a finding of a reasonable expectation of success, and thus found no error in the Board’s analysis.

On the issue of simultaneous invention, the Federal Circuit acknowledged that simultaneous invention may serve as evidence of obviousness when considered in light of all of the circumstances.  First, it is evidence of the level of skill in the art, and second it constitutes objective evidence that persons of ordinary skill in the art understood the problem and a solution to that problem. However in the context of interferences, evidence of simultaneous invention cannot alone show obviousness, otherwise any claims involved in an interference would be unpatentable for  obviousness. Thus, the Federal Circuit instructed, the weight of evidence of simultaneous invention must, therefore, be carefully considered in light of all the circumstances.  Noting that the Board explained that each case must be decided in its particular context, including the characteristics of the science or technology, its state of advance, the nature of the known choices, the specificity or generality of the prior art, and the predictability of results in the area of interest, the Federal Circuit found no error in the Board’s analysis.

 

Petitioner Bears the Ultimate Burden of Persuasion With Respect to Real Party in Interest

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In Worlds Inc. v. Bungie, Inc., [2017-1481, 2017-1546, 2017-1583](September 7, 2018), the Federal Circuit vacated the Final Written Decision in three inter partes reviews because the Board erred in its real party in interest analysis, and remanded.  The appeal involved three related patents: U.S. Patent Nos. 7,945,856, 8,082,501, and 8,145,998, relating to the computer-generated display of avatars in a virtual world, including methods and systems to determine which particular avatars are displayed
in a given situation.

Worlds sued Activision on the patents, and while the suit was pending indicated that it was going to add products developed by Bungie, but distributed by Activision to the suit.  Bungie filed the three petitions for IPR challenging Worlds’ patents more than a year after Activition was served with the Complaint, and Bungie did not name Activision as a real party in interest.

The Federal Circuit pointedly observed that absent from the Board’s analysis of the real-party-in-interest issue is any clear statement of what, if any, burden framework the Board used to analyze the evidence presented in these IPRs, including an identification of which party the Board viewed as bearing the burden of persuasion.   The Federal Circuit largely agreed with the burden framework used in Atlanta Gas Light. The Federal Circuit said that the IPR petitioner bears the burden of persuasion to demonstrate
that its petitions are not time-barred under § 315(b) based on a complaint served on a real party in interest more than a year earlier, and the petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner.  The patent owner must produce some evidence to support its argument that a particular third party should be named a real party in interest. The Federal Circuit rejected the Board’s practice of creating a “presumption” that the petitioner’s initial
identification of the real parties in interest is correct.  While the patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest.  A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.

The Federal Circuit then turned to the question of who should bear the burden of persuasion, noting a complete absence of any statement as to which party should bear the burden of persuasion.  The Federal Circuit could not discern whether the Board placed the burden on Worlds, the patent owner, to persuade the Board that Bungie failed to list a real party in interest that would render the petitions time barred under § 315(b), which would have been improper.  Moreover, the Federal Circuit was concerned that the Board may have relied on attorney argument as evidence that Activision was not controlling or funding these IPRs.

In light of these concerns, the Federal Circuit found it appropriate to remand the case to the Board for further consideration of the real-party-in-interest issue.

 

Posted in IPR

Clearly Defining A Term Without Providing Any Way to Determine When it has Been “Optimized” as Claimed Dooms Claims Under 112

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In Intellectual Ventures I LLC v. T-Mobile USA, Inc., [2017-2434, 2017-2435](September 4, 2018), the Federal Circuit affirmed the district court’s determination that the claims of U.S. Patent No. 6,640,248 were indefinite, and vacated and remanded summary judgment of non-infringement because of erroneous claim construction.

At issue was the term “Application-Aware Resource Allocator.”  The district court  adopted T-Mobile’s construction of “application-aware resource allocator” as requiring that when allocating bandwidth, the application-aware resource allocator must take into account information obtained from the application layer 7. However the Federal Circuit determined that  application awareness requires only that the resource allocator allocate resources based on application type, which can be discerned using information obtained from any of network layer 3, transport layer 4, or application layer 7.  The plain language of the claims, the specification, and the prosecution history all support this
construction. The Federal Circuit rejected T-Mobile’s arguments about disavowal, noting disavowal is an “exacting” standard under which it must be established that the
patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term through expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope, and the statements in the prosecution history did not meet this exacting standard.

On the definiteness issue, the Federal Circuit found that the district court did not erroneously fail to consider the structure after determining that the function was indefinite.  The Federal Circuit concluded that the claim requirement of optimizing QoS requirements was entirely subjective and user-defined. The Federal Circuit pointed out that the ’248 patent analogizes QoS to “a continuum, defined by what network performance characteristic is most important to a particular user” and characterizes it as “a relative term, finding different meanings for different users.” The patent concluded that ultimately,“the end-user experience is the final arbiter of QoS.”  Thus while specification clearly defines that the QoS relates to the end-user experience, it fails to provide one of ordinary skill in the art with any way to determine whether QoS has
been optimized.