Legislative History Does Not Replace Statute as Legal Standard in Determining Whether a Patent is Eligible For Covered Business Method (CBM) Review

Bill Schertler | December 27, 2016

Unwired Planet, LLC v. Google

November 21, 2016

Before Reyna, Plager and Hughes. Opinion by Reyna.

Summary:

Google petitioned for CBM review of claims 25-29 of U.S. Patent No. 7,203,752 (the “’752 patent”) directed to a system and method for restricting access to a wireless device’s location information.  The Patent Trial and Appeal Board (“the Board”) instituted review of all challenged claims, and, as a threshold matter, reviewed whether the ‘752 patent is a CBM patent, and therefore the subject of CBM review.  The Board instituted the CBM review on several grounds, including lack of written description, obviousness, and the ground that claims 25-29 are not patent eligible under 35 U.S.C. §101.  The Board upheld only the ground that the claims are not patent eligible under 35 U.S.C. §101.

Unwired Planet, LLC (“Unwired”) appealed the Board’s decision arguing, inter alia, that the Board erred in applying a standard that is broader than the AIA contemplates to determine whether the ’752 patent was a CBM patent.  The CAFC reversed and remanded, holding that the Board relied on an incorrect definition of covered business method in evaluating the challenged patent.


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A Patent Owner in an IPR is entitled to an opportunity to respond to asserted facts

Andrew Melick | December 16, 2016

In Re: NuVasive, Inc.

November 9, 2016

Before Moore, Wallach and Taranto.  Opinion by Taranto.

Summary:

Medtronic filed two petitions for inter partes review (IPR) against U.S. Patent 8,187,334 to a spinal fusion implant owned by NuVasive. The claims of the ‘334 patent recite two size requirements: that the length of the implant is greater than 40 mm and that the length to width ratio is 2.5. In both petitions, Medtronic cited the combination of two references for teaching the size limitations. In the patent owner responses, NuVasive addressed the combination of references as in Medtronic’s petition. However, in Medtronic’s reply, Medtronic changed its reliance to just one of the cited references for teaching both of the size limitations citing a different portion of the reference. The PTAB ultimately relied on Medtronic’s changed position in its final decision. In one IPR, the CAFC held that NuVasive had an opportunity to respond because Medtronic’s petition was at least minimally sufficient to provide notice. However, in the second IPR, NuVasive was not given proper notice to respond.


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Evidence showing conversion of units to find anticipation

Yoshiya Nakamura | December 9, 2016

REG Synthetic Fuels, LLC. v. Neste Oil Oyj

November 8, 2016

Before Prost, Taranto and Chen.  Opinion by Chen.

Summary

REG Synthetic Fuels, LLC (REG) owns U.S. Patent No. 8,231,804 (’804 patent).  Neste Oil Oyj (Neste) requested inter partes review against claims 1–5 and 8 of the ’804 patent, which were directed to a composition comprising paraffins (hydrocarbons) useful as heat-insulation material in a house.  PTAB found that claim 1 was anticipated by cited references including Craig.  CAFC affirmed.  The key feature of claim 1 was the limitation: “comprising at least 75 wt% (weight percent) even-carbon-number paraffins.”  Craig disclosed the production of hydrocarbon compositions and the hydrocarbon amounts therein defined by a different unit, “peak area percentages” measured by a mass spectral analysis.  Neste relied upon their expert’s calculation using three different conversion factors to calculate corresponding wt.% from the peak area %.  CAFC held that Neste’s expert’s calculation established by a preponderance of evidence that the claimed composition read on the prior art compositions.

Details

Claim 1 representative of the ’804 patent:

  1.  A phase change material composition comprising at least 75 wt% even carbon number paraffins, wherein the paraffins are produced by hydrogenation/ hydrogenolysis of naturally occurring fatty acids and esters.

A key feature in claim 1 was the limitation with “at least 75 wt% even carbon number paraffins,” as CAFC agreed with the PTO’s interpretation that the preamble part (the phase change material) and the wherein-clause (the product-by-process limitation) are not limiting.  The main issue in this appeal was whether Craig taught the limitation of “at least 75 wt% even carbon number paraffins.”

Craig disclosed hydrocarbon products obtained from naturally occurring feedstocks, and the results of quantitative analysis of the products.  The critical disclosure was Table 9 (reproduced below in part).  The table showed “peak area percentages” of each even-carbon-number paraffin such as C16, C18, or C20 in the hydrocarbon products.  However, Craig did not disclose corresponding weight percentages.  Nor did it disclose how to calculate weight percentages from weight percentages.

 

 

 

 

As evidence, Neste’s expert (Dr. Klein) submitted data showing conversion of peak area percentages to weight percentages.  As shown in Table 2 (reproduced from the opinion), the peak area percentages of each hydrocarbon were calculated using three relative response factors, i.e., “Hsu,” “Gorocs,” and “Chaurasia.”

REG argued that the conversion of peak area percentages into weight percentages is “not straightforward” and Craig did “not provide enough information to accurately convert the GC-MS peak area percentages to weight percentages using relative response factors.”  However, REG’s expert (Dr. Lamb) agreed that the peak area percentages could be converted to weight percentages by using relative response factors, and other references cited in Dr. Lamb’s opinion in fact disclosed two of the factors (Gorocs and Chaurasia).

table-2

 

 

 

 

 

 

REG’s arguments relied mostly upon the complex nature of the biological feedstocks and their own expert’s opinion that the resulting product is a very complex mixture which affects the phase change characteristic.  REG argued that Craig disclosed a distillation process to separate the obtained mixture into fractions and such additional process would result in “structural and functional differences in the products.”  However, REG did not submit any evidence or data showing the asserted differences.  PTAB rejected the REG’s arguments because there was no credible evidence or disclosure in the specification supporting their arguments.  Particularly, as noted by PTAB, claim 1 did not exclude distilled products.

Turning to the issue as to whether the peak area percentages disclosed in Craig read on the claimed weight percentages, CAFC noted, as PTAB held, that claim 1 was anticipated since “a person of ordinary skill in the art could readily convert the disclosed peak area percentages into their corresponding weight percentages, and the sum of the converted peak area percentages of Craig met the claim requirement that the overall weight percentage of even-carbon-number paraffins be at least 75 wt%.”  It was specifically noted that each of the calculated weight percentages for “Canola Premium” met the claimed range and “82.31 wt%” was “more than 7% higher than” the claimed l limit, 75 wt%.

CAFC agreed with the PTAB’s view that “it unlikely that any correction required by the experimental conditions would result in a weight percentage of less than the 75 wt%” because Table 2 showed that the different weight percentages obtained by using the different relative response factors “were very small.”

CAFC added that “this is not an inherency issue, however, because the challenged limitation is not missing from Craig” as Neste’s expert “simply converted one unit of measurement (area percent) into another unit of measurement (weight percent) by using relative response factors from the prior art.”

Take Away

According to this decision, conversion of units or parameters one another is not an inherency issue, but all about evidence.  This is one example showing that IPRs help the Patent Office find better interpretation of prior art, which may not easily be examined without expert’s opinions from each party.  In addition, the preponderance of evidence standard is available to fill a gap between cited prior art and patented claims in IPRs.  Good reasons to use IPRs.

Full Opinion

Last month on §101: You Win Some (Amdocs), You Lose Some (FairWarning; Synopsys)

Cindy Chen | November 21, 2016

Amdocs (Israel) Limited v. Openet Telecom, Inc.

November 1, 2016

Before Newman, Plager, and Reyna. Opinion by Plager. Dissenting opinion by Reyna.

Summary

A trio of Federal Circuit decisions on patent eligible subject matter in the past month offers additional guidance on how to survive scrutiny under 35 U.S.C. §101. The focus will be on Amdocs (Israel) Limited v. Openet Telecom, Inc., in which the Federal Circuit found eligibility, but for the sake of comparison, the Federal Circuit’s decisions in FairWarning IP, LLC v. Iatric Systems, Inc. and Synopsys, Inc. v. Mentor Graphics Corporation, in which the Federal Circuit reached the opposite conclusion, will be briefly summarized.


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