What Do a Resealable Cartridge for Low Pressure Liquid Chromatography and a Soda-Pop Bottle and Cap Have In Common?

Adele Critchley | September 23, 2014

Scientific Plastic Products, Inc., v. Biotage AB.

September 10, 2014

Panel:  Newman, Moore and Wallach.  Opinion by Newman. Dissent by Moore.

Summary

The CAFC affirmed the Patent Trial and Appeal Board’s decision that all claims of the three disputed patents held by Scientific Plastic Products, Inc. (SPP) would have been obvious.

The CAFC held that the cited references, King and Strassheimer, both of which related to the sealing of a beverage container, were available as prior art against the claimed resealable cartridge for low pressure liquid chromatography (LPLC).

The CAFC held that although the cited reference Yamada failed to explicitly disclose a leakage problem, by “providing for the presence of an O-ring,” Yamada implicitly acknowledged that there is the potential for a leak. Further, the CAFC concluded that the inventors, in the patents in question, identified that the potential for leaks is a “known problem.”

Accordingly, the CAFC found adequate reason for one of ordinary skill in the art to turn to King or Strassheimer to improve the sealing arrangement set forth in Yamada.

Details

SPP is the owner of three U.S. Patents relating to a resealable cartridge for low pressure liquid chromatography (LPLC): No. 7,138,061 (the ‘061 patent), No. 7,381,327 (the ‘327 patent), and No. 7,410,571 (the ‘571 patent). The ‘061 patent claims a method of performing LPLC using the cartridge, the ‘571 patent claims the cartridge, and the ‘327 patent claims a modified cartridge.

Initially, SPP filed suit against Biotage AV (Biotage) for patent infringement, and Biotage responded by requesting inter partes reexamination of the three patents. The Patent Examiner rejected all claims of the three patents on the grounds of obviousness, and the Patent Trial and Appeal Board (the Board) affirmed the rejections and cancelled all claims. The CAFC affirmed the Board’s decision.

The primary issue on reexamination concerned the obviousness of combining the LPLC cartridge taught in the Yamada reference with the pressure-resistant caps taught in either King or Strassheimer.

The two main issues under contention were, (i) whether King and Strassheimer were available as prior art, and (ii) whether there was adequate reason for combining Yamada with King or Strassheimer.

Regarding the first issue, the CAFC set forth that the criteria for determining whether prior art is analogous when a reference does not fall within the field of invention, is whether the reference is “still reasonably pertinent to the particular problem with which the inventor is involved.”

SPP argued that the needs identified in the specification are unique to flash chromatography, and that a chemist in a laboratory would not look to soda-pop bottle caps to solve problems with flash chromatography cartridges.

However, the CAFC held that an analogous art inquiry does not exclude references which are not considered “within the field of the inventor’s endeavor,” if a person of ordinary skill would reasonably look to that reference in order to solve the problem confronting them. Specifically, when a problem is not unique to the specific field in question, it is not improper for a person of ordinary skill to consult a different field in order to solve the problem.

It was found that the central purpose of the SPP inventors was to form “an LPLC cartridge that ‘would allow a user to easily vary and access the cartridge’s contents without destroying its ability to be sealed and function under LPLC pressures,” and so a person of ordinary skill seeking such a cartridge would look to sealing arrangements for other pressurized systems. King and Strassheimer address the problem of providing a fluid tight seal at elevated pressures between a container and a cap, and so it was held that this was sufficiently close to the problem addressed by the claimed invention to render these references available as prior art.

The dissent asserted that the Board failed to resolve the level of skill in the art, despite both parties contesting this factual issue throughout the proceedings, and concluded that a question of analogous art cannot be answered without first determining who the person of ordinary skill is.

Regarding the second issue, the CAFC upheld the Board’s conclusion that the “known problem of leakage in threaded connections of plastic LPLC cartridges under pressure indentified in the [patents] provided a reason for one of ordinary skill in the art to have turned to King or Strassheimer to improve the sealing arrangement set forth in Yamada.”

The patents at issue disclose: “The operating pressure is sufficiently high that these cartridges, which have relatively large diameter bodies, leak at the seams. Threaded connections are thus not used to form the body when the body is made of polymers” (see ‘061 patent, Column 1, lines 16 to 19). Based on this disclosure, the Board found that the inventors identified that the potential for leaks is a “known problem.”

SPP argued that the obviousness allegation was improperly based on hindsight, since the Board had relied on their own description in arriving at the conclusion. SPP pointed out that the statement in the patents that “threaded connections are not used” was actually incorrect, as evidenced by Yamada. SPP argued that a person of ordinary skill would not have perceived any need to improve the cartridge of Yamada, as Yamada does not explicitly disclose a leakage problem. The dissent agreed that Yamada does not disclose a leakage problem.

The CAFC rejected SPP’s argument. The CAFC upheld the Board’s conclusion that “by providing for the presence of an O-ring, Yamada implicitly acknowledges that there is a potential leakage issue between the cap and column body of the plastic cartridge.” The CAFC concluded that there is substantial evidence supporting the Board’s finding that there was a known concern of leakage.

However, the dissent found that the record did not contain substantial evidence, because no testimony or other evidence of a known leakage problem was ever submitted during inter partes reexamination from either side.

Take-away

 Be cautious when drafting a specification to make clear whether a problem with the prior art is a known problem or a problem that has been identified by the inventors.

Different fields may provide analogous art when the technical problems with which the inventors are faced with overlap, despite the problems concerning the end-product being distinct.

Full Opinion

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