Optimization Analysis Generally Requires Consideration of Whether a Person of Ordinary Skill in the Art Would have been Motivated, with a Reasonable Expectation of Success

Posted on March 5, 2024 by bwheelock

In Sanofi Pasteur Inc. v. Sanofi Pasteur Inc., [2019-1871, 2019-1873, 2019-1875, 2019-1876, 2019-2224] (Fed. Cir. 2024), the Federal Circuit affirmed the Board’s conclusions
that claims 1–45 of U.S. Patent 9,492,559 are unpatentable, and the Board’s denial of Pfizer’s motions add certain claims, and vacated the denial as to certain other claims.

The ‘559 patent is directed to immunogenic compositions comprising conjugated Streptococcus pneumoniae capsular saccharide antigens (i.e., glycoconjugates)
for use in pneumococcal vaccines. Across five IPR’s the validity of all the claims was challenged.

Pfizer first contends that the Board erred in applying the “result-effective variable doctrine,” arguing that it is only appropriate in circumstances where there is actual overlap between a range in the prior art and a claimed range. Since the asserted prior art did not disclose a particular molecular weight range, there could be no presumption of obviousness, and it was
error for the Board to consider whether that variable was result-effective.

The Federal Circuit disagreed, saying that the determination whether or not a claimed parameter is a result-effective variable is merely one aspect of a broader routine optimization analysis. That analysis is rooted in the decades-old legal principle that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”

The Federal Circuit said that a routine optimization analysis generally requires consideration whether a person of ordinary skill in the art would have been motivated, with a reasonable expectation of success, to bridge any gaps in the prior art to arrive at a claimed invention. Where that gap includes a parameter not necessarily disclosed in the prior art, it is not improper to consider whether or not it would have been recognized as result-effective. If so, then the optimization of that parameter is “normally obvious.” The Federal Circuit found substantial evidence supported the Board’s conclusion that the varlaibe (molecular weight) would have been obvious over the references.

The Federal Circuit rejected the suggestion that unpredictability of the art affected its analysis, nothing that it has previously explained that “a rule of law equating unpredictability to patentability . . . . cannot be the proper standard since the expectation of success need
only be reasonable, not absolute.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007)(“[O] bviousness cannot be avoided simply by a showing of some degree of unpredictability in the art so long as there was a reasonable probability of success”).

Federal Circuit Agrees that “The Invention” is the invention

Posted on March 5, 2024 by bwheelock

In Chewy, Inc. v. International Business Machines Corp., [2022-1756] (Fed. Cir. 2024), the Federal Circuit affirmed in part. reversed in part, and remanded the distirct court’s summary judgment of non-infringement of claims of U.S. Patent No. 7,072,849, and summary judgment that claims of U.S. Patent No. 7,076,443 were directed to ineligible subject matter.

Non-Infringement of U.S. Patent No. 7,072,849

Claim 1 of the ‘849 patent stated:

Infringement of the claims ‘849 patent turned on whether the claims to improvements in web-based advertising required “prefetching” an advertising object, even though these words are not set forth in the claim. The “Summary of Invention” said:

‘849 patent, 3:6-21. The “Description of the Preferred Embodiment: said:

‘849 patent, 33:16-27.

and:

‘849 patent, 34:38-44. The Federal Circuit concluded that in light of these “repeated descriptions of the present invention, a skilled artisan would understand the claimed invention requires pre-fetching of advertising objects,” citing Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007) (“When a patent . . . describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.”).

IBM tried to rely on Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121,
1136–37 (Fed. Cir. 2011), where the Federal Circuit explained that the use of the phrase “present invention” or “this invention” is not always limiting, such as where the references to a certain limitation as being the “invention’ were re not uniform, or where other portions of the intrinsic evidence do not support applying the limitation to the entire patent. However, the Federal Circuit said that these “narrow exceptions” referenced in Absolute Software were not applicable, because the ’849 patent uniformly referred to the pre-fetching of advertising objects as an aspect of the invention as a whole.

U.S. Patent No. 7,076,443 is Directed to Ineligible Subject Matter

The district court held at Alice step one the asserted claims were directed to the abstract idea of identifying advertisements based on search results. The Federal Circuit agreed, noting that it has held claims to targeted advertising were directed to an abstract idea at Alice step one. IBM argued its claims recited a specific solution to unique technical problems arising from advertising over a computer network. The Federal Circuit rejected this argument, noting that the claims were not directed to any challenges unique to computer networks, or specific improvements to the functionality of the computer itself. The claims merely recite the concept of identifying advertisements based on search results, without any specificity as to how this is accomplished. The Federal Circuit said that even accepting that the claimed invention improves the specificity and relevancy of online advertisements, this “is at most an improvement to the abstract concept of targeted advertising wherein a computer is merely used as a tool.”

Easter Lore and a Drafting Lesson

Posted on March 5, 2024 by bwheelock

You never know what tidbit you will pick up reading a patent. For example, U.S. Patent No. 6,325,691, on a Packaged Toy, is full of fun facts about the origins of Easter Traditions:

The Background of the Invention of a patent is fraught with peril for the patent drafter. First of all, you probably should use “the invention” in the heading. Define the Field of the Invention too broadly, and you invite the application of prior art that otherwise would be non-analogous. Say too much about the prior art, and you create admitted prior art. Criticize aspects of the prior art unrelated to the invention, and you may have disclaimed them. The ‘691 patent avoided most of these problems by simply recounting fun facts about Easter Traditions.

For example, did you know that in “Europe it was believed that eggs laid on Good Friday, if kept for a hundred years, would have their yolks turned into diamonds”? ‘691 Patent, Col. 1, ll. 15-17.

Did you know that the tradition of coloring Easter eggs came from the Crusades? ‘691 Patent, Col. 1, ll. 20-22.

What do you know about the history of the White House Egg Roll? It all started back on the lawn of the Capital, during the Andrew Johnson administration:

‘691 Patent, Col. 1, ll. 20-22. The ‘691 managed to avoid most of the problems that can arise from the Background Section. Happy accident, or cleverly hatched plan?

February 29, 2024 — No Leap Patents This Year

Posted on February 29, 2024 by bwheelock

Of course. today being a Thursday, no U.S. patents will issue today, A patent issuing on February 29 is a relatively rare thing. In fact, in the history of the U.S. Patent Office, only about 6787 patents have issued on February 29. Leap patents issued in 1820, 1848, 1876, 1916, 1944, 1972, and 2000. The last utility patent to issue on February 29 was U.S. Patent No. 6,032,181:

The last design patent to issue on February 29 was U.S. Patent No. D421277

There won’t be another February 29 U.S. patent until February 29, 2028.

The Attorney Knew the Applicant Abandoned Five Years Ago, But Neither He (Nor Morgan Fairchild) Knew if That is What Applicant Intended

Posted on February 27, 2024 by bwheelock

In Freshub, Inc. v. Amazon.com, Inc., [2022-1391, 2022-1425] (February 26, 2024), the Federal Circuit affirmed the jury verdict that Amazon did not infringe U.S. Patent No. 9,908,153, and the district court’s finding that it failed to prove inequitable conduct in reviving a patent application five years after it abandoned. The ’153 patent claims a voice-processing system that receives “user spoken words” and adds items to lists based on those words.

The district court found that, while the parties did not dispute the materiality of the representation that the application had been unintentionally abandoned, Amazon had not offered clear and convincing evidence that the representation was actually false—i.e., that Ikan had in fact intentionally abandoned the ’291 application. Id. at 9–10. The district court also found that, even if the representation had actually been false (i.e., even if Ikan had intentionally abandoned the application), Amazon had not offered clear and convincing evidence that the “single most reasonable inference” from the evidence, as required by Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011) (en banc), was that either Ikan or its attorney had specifically intended to deceive the PTO with the STATEMENT in the petition to revive the application in 2017.

To prevail on the defense of inequitable conduct, the accused infringer must prove that the applicant misrepresented or omitted material information with the specific intent to deceive the PTO. The proof must be by clear and convincing evidence. Amazon asserted that the false and material statement was the denial by Ikan’s counsel that Ikan abandoned the ’291 application intentionally during the 2012–17 non-response period. The district court also found, however, that Amazon did not prove, by clear and convincing evidence, that the statement was a misrepresentation made with the required deceptive intent.

The Federal Circuit noted that it cannot disturb the district court’s rejection of the inequitable-conduct defense unless we have the definite and firm conviction that the evidence required the district court to find that Amazon proved, clearly and convincingly, that the “single most reasonable inference” from the record, was that Ikan’s counsel, when making his 2017 statement to the PTO, in fact believed that Ikan had intentionally abandoned the ’291 application for the 2012–17 period of nonresponse to the PTO. The Federal Circuit did not so find.

The Federal Circuit noted that for various reasons, including the passage of time and the limited testimonial and documentary evidence available—the latter due in part to invocations of attorney-client privilege not challenged on appeal—the record of what actually occurred at relevant times was thin. On that record, the district court found that Amazon did not clearly and convincingly prove Ikan’s intentional abandonment.

The Federal Circuit said that counsel’s statement itself can weigh in the evidentiary calculus even when it is not backed up affirmatively with a more granular and concrete account of how the five-year non-response to the PTO occurred— an account that might detail, for example, whether communications from counsel in 2012 failed to reach or inform the relevant decisionmaker at Ikan and whether years of inattention to this particular matter ensued because the attention of the company and counsel was elsewhere. Of course, the absence of such an account, due to unavailability of witnesses or invocations of attorney-client privilege or other reasons, might well lead a factfinder to find false, or even knowingly false, the assertion that the abandonment was unintentional on Ikan’s part. The Federal Circuit said the evidence clearly shows that Ikan’s counsel knew that the application had been abandoned, as he testified, but whether he made his statement with deceptive intent depends on what he believed about the subject of his statement, namely, the intent behind the abandonment. The district court could find that counsel genuinely so believed, whether or not the belief was legally correct, and that counsel did not think that Ikan had the intent to abandon during the 2012–17 non-response period. The Federal Circuit said that finding was not clearly erroneous, in light of the facts, and the district court could therefore reasonably hold deceptive intent not proven under the governing legal standard.

Happy Birthday, George Washington

Posted on February 22, 2024 by bwheelock

In the good old days, George Washington’s birthday was holiday, making February a great month for school kids, because Abraham Lincoln’s birthday was also a holiday. Two days off in the bleakest month, coupled with cupcakes on Valentine’s Day, and it was a great month to be in grade school. In addition to being celebrated by generations of school children, Inventors have celebrated George Washington many times, including in these ten patents:

U.S. Patent No. D8377 protects a Medal honoring George Washington:

U.S. Patent No. D9138 also features George Washington:

U.S. Patent No. D9161 on a badge featuring George Washington:

U.S. Patent No. D9247 is on a hatchet centennial charm that features George Washington:

U.S. Patent No. D9310 on a fan design features both George and Marth Washington and their Mount Vernon estate:

U.S. Patent No. D9310 protects a statue of George Washington:

U.S. Patent No. D17839 protects a badge featuring Geroge Washington:

U.S. Patent No. D21,357 protects a spoon decorated with an image of George Washington.

U.S. Patent No. D21688 protects a badge featuring George Washington:

U.S. Patent No. D21835 on a spoon featuring George Washington:

Happy 292nd Birthday, George, and thanks for the days off!

Presidents Day 2024

Posted on February 19, 2024 by bwheelock

Presidents have had a lot to do with patents over the years. Presidents used to sign the patents, and George Washington signed the first patent issued by the U.S. Government on July 31, 1790:

Of course every patent nerd knows that Abraham Lincoln on May 22, 1849, Abraham Lincoln received Patent No. 6469 for a device to lift boats over shoals. He is the only president to have received a patent.

However, a number of presidents have been the subject of patents:

U.S Patent No. D41046, issued July 17, 1917, honors presidents Washington, Lincoln, and Wilson:

President Washington got another shout out a few years early, in U.S. Patent No. 537,666, which issued on April 16, 1895, on a toy bank featuring the future President and a cherry tree:

The presidents from Washington to Grant were featured in U.S. Patent No. D9138, which issued March 14, 1875, on a fan:

The presidents from Washington to Grant also shared the spotlight in U.S. Patent No. D8000 issued January 12, 1875:

On August 3, 1915, U.S. Patent No. 1148885 made the Presidents part of a patented puzzle:

The first 31 presidents made were celebrated in U.S. Patent No. 2,284,256 on a Card Game, issued May 26, 1942:

There are of course many other patents that mention one or more presidents, but those are for a future Presidents Day post.

VALEN-TECH II (More IP to Ensure your Happy Valentine’s Day)

Posted on February 14, 2024 by bwheelock

U.S. Patent No. 1,353,709 discloses a token “which may be presented as an expression of friendship or admiration.”

•U.S. Patent No. 2,726,397discloses an apron with interchangeable appliques, explaining “often such persons as housewives and hostesses desire to decorate articles of clothing, curtains, coverings and so forth with figures and designs of various shape and color.” Reportedly this was even more popular than the Valentine-themed vacuum cleaner.

U.S. Patent No. 3,016,178 discloses a box construction, such as Valentines Day boxes, which are intended to contain candy or other comestibles or flowers. This is one of many patents on heart-shaped boxes.

U.S. Patent No. 6,172,328 discloses methods for etching, cutting and/or altering, the surface of a flower, plant, cut foliage, allowing one to inscribe a Valentine’s Day greeting on the flowers themselves.

U.S. Patent No. 6,053,399 “relates to mailers and envelopes and, more particularly, to envelops and mailers for sending small sachets and photographs.”

U.S. Patent No. 5,160,087 discloses a drinking straw, designed to demonstrate the need for teamwork.

U.S. Patent No. 4993184 discloses a “heart-shaped, free standing, living plant comprises at least two living plants, a left plant and a right plant, formed into opposed lobes forming the heart configuration.”

Last, but not least, U.S. Patent No. 5727565, discloses a heart shaped “kissing shield comprised of a thin, flexible membrane and a frame or holder” to ensure that your Valentine’s Day is both safe and happy!

Inventorship Guidance for AI-Assisted Inventions

Posted on February 13, 2024 by bwheelock

On February 13, 2024, the USPTO published guidance for AI-assisted inventions in the Federal Register, outlining two basic points: First, inventors and joint inventors named on U.S. patents and patent applications must be natural person, and Second, AI-assisted inventions are not categorically unpatentable for improper inventorship. The guidance also reiterated the Pannu factors for identifying inventors of AI-assisted inventions. Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998)

The USPTO previously determined that inventorship is limited to natural persons, and this was affirmed in Thaler by the Eastern District of Virginia (Thaler v. Hirshfeld, 558 F.Supp.3d 238 (E.D. Va. 2021)) and the Court of Appeals for the Federal Circuit (Thaler v. Vidal, 43 F.4th 1207, 1213 (Fed. Cir. 2022), cert denied, 143 S. Ct. 1783 (2023)). Thus, AI cannot be named as an inventor or co-inventor. The Guidance recognizes that while an AI system may not be named an inventor or joint inventor in a patent or patent application, an AI system— like other tools—may perform acts that, if performed by a human, could constitute inventorship under our laws, but the patent statute limits inventorship to natural persons.

While AI systems and other nonnatural persons cannot be listed as inventors on patent applications or patents, the use of an AI system by a natural person does not preclude a
that natural person from qualifying as an inventor (or joint inventors) if that natural person significantly contributed to the claimed invention. The Federal Circuit has made clear that conception is the touchstone of inventorship. Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir.
1994). Conception is the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice. Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).

There is no requirement for a named inventor to contribute to every claim in an application or patent; a contribution to a single claim is sufficient. However, each claim must have been
invented by at least one named inventor. In other words, a natural person must have significantly contributed to each claim in a patent application or patent. In the event of a single person using an AI system to create an invention, that single person must make a significant contribution to every claim in the patent or patent application.

The Guidelines identify these factors for when a natural person is an inventor of an AI-assisted invention:

Use of an AI system in creating an AI-assisted invention does not negate the person’s use of contributions as an inventor.
A significant contribution could be shown by the way the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system.
A person who takes the output of an AI system and makes a significant contribution to the output to create an invention may be a proper inventor.
A natural person who develops an essential building block from which the claimed invention is derived may be considered to have provided a significant contribution to the conception of the claimed invention.
A natural person who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor, if that is a significant contribution to the invention created with the AI system.

The Guidelines identify these factors for when a natural person is not inventor of an AI-assisted invention:

Merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception.
A natural person who only presents a problem to an AI system may not be a proper inventor or joint inventor of an invention identified from the output of the AI system.
A natural person who merely recognizes and appreciates the output of an AI system as an invention, is not necessarily an inventor.
A person simply owning or overseeing an AI system that is used in the creation of an invention, without providing a significant contribution to the conception of the invention, does not make that person an inventor.

Mardi Gras 2024

Posted on February 13, 2024 by bwheelock

More examples of how the patent system improves everything — including Mardi Gras. U.S. Patent No. D645226 protects an Edible Cookie Mask, and get that last snack in before Lent begins: