Beware of an Interpretation of a Reference that is Based Upon a Hypothetical Embodiment
| October 27, 2017
Merck Sharp & Dohme B.V. v. Warner Chlilcott Company, LLC
October 19, 2017
Before Dyk, Linn, and Hughes. Opinion by Hughes.
Summary:
The CAFC reversed the finding by the District Court of Delaware that U.S. Patent
No. 5,989,581 was invalid as being obvious in view of International Patent Application
WO 97/02015 (hereinafter PCT ‘015). In reviewing the findings by the District Court, the CAFC highlighted the breadth of the disclosure of PCT ‘015, the teaching away by PCT ‘015 of a one compartment ring system and noted that the finding was based upon impermissible hindsight.
Details:
Merck appeals the District Court of Delaware’s determination that claims 4 and 11 of U.S. Patent No. 5,989,581 (hereinafter ‘581) are invalid as obvious in view of International Patent Application WO 97/02015 (hereinafter PCT ‘015). The commercial embodiment of ‘581 is the NuvaRing®, which is a ring shaped drug-delivery device. Warner argues that ‘581 is invalid but concedes that its generic product would infringe ‘581 if the claims were valid. Id. at 2.
The ‘581 patent achieves a stable release of both progestin, etonogestrel (ETO), and estrogen, ethinyl estradiol (EE), in a single compartment ring system. The ‘581 patent overcomes the problems in the prior art by providing a ring made of a polymer that is supersaturated with ETO. Claims 4 and 11 of ‘581 require a single compartment ring system comprising both progestin and estrogen.
1. A drug delivery system comprising at least one compartment which comprises
a thermoplastic polymer core . . . said core comprising a mixture of a steroidal progestogenic compound and a steroidal estrogenic compound in a ratio by weight that allows a direct release of both said progestogenic compound and said estrogenic compound in physiologically required amounts,
said progestogenic compound being initially dissolved in said polymer core material in a degree of supersaturation of 1 to about 6 times of the amount by weight necessary for obtaining saturation concentration of said progestogenic compound in said polymer core material at 25° C,
said estrogenic compound being dissolved in said polymer core material in a concentration lower than that of said progestogenic compound . . . .
4. A drug delivery system according to claim 1, wherein the amount of progestogenic compound dissolved in the thermoplastic core material is 2 to 5 times the amount necessary for obtaining saturation concentration.
5. A drug delivery system in a substantially ring-shaped form and suitable for vaginal administration comprising at least one compartment which comprises
a thermoplastic polymer core . . . said core comprising a mixture of a progestogenic steroidal compound and an estrogenic steroidal compound in a ratio by weight of 10 parts of the progestogenic compound to 1.5–5 parts of the estrogenic compound. . . .
11. A drug delivery system according to claim 5, wherein the core material comprises 0.55 to 0.8% by weight of etonogestrel and 0.12 to 0.18% by weight of ethinyl estradiol.
Warner argued that claims 4 and 11 of ‘581 are anticipated by or rendered obvious by PCT ‘015, which discloses a ring shaped drug delivery device releasing progestin, etonogestrel (ETO), and estrogen, ethinyl estradiol (EE). However, the device of PCT ‘015 is a two compartment ring system. PCT ‘015 explicitly criticizes one compartment ring systems, stating that such systems “show suboptimum release patterns for the difference substances…” Id. at 5.
The District Court found that the ‘581 patent is obvious in view of PCT ‘015. The judgment of the District Court was based upon the finding that PCT ‘015 discloses:
- A two-compartment ring;
- The second compartment is loaded with both ETO and EE;
- The concentration of ETO is higher than EE ; and
- The second compartment comprises 97% of the ring.
The District Court held that it would have been obvious to a skilled artisan at the time of invention “to modify the two-compartment ring so that pharmaceutically required amounts of both ETO and EE are delivered from one compartment.” Id. at 7.
Law regarding Obviousness
- “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
- Even if all elements of the claim were known, we still must resolve whether a person of ordinary skill in the art would have found it obvious to combine these elements or modify them in a way that meets the claim.
- It is improper to combine references “like separate pieces of a simple jigsaw puzzle” without “explain[ing] what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place these pieces together.” InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1349 (Fed. Cir. 2014).
Id. at 6.
The CAFC noted that “PCT ‘015 does not actually disclose a ring with a second compartment that comprises 97% of the ring, and includes a higher concentration of ETO than EE in the second compartment.” Id. at 7. Rather, PCT ‘015 discloses a “broad range of values for the relative size of each compartment as well as concentrations of each compound.” Id. at 7. The CAFC highlighted the breadth of the disclosure of PCT ‘015 by illustrating that “the second compartment can occupy anywhere from 3% to 97% of the ring. Elsewhere, PCT ’015 explains that ‘the second compartment is loaded with 0.05-3% w/w” of ETO and “0.05-5% w/w’ of EE.” Id. at 7.
To arrive at the hypothetical ring that the district court relied on for obviousness, the person of ordinary skill must make the second compartment 97% of the total ring, which is outside of the usual or preferred range disclosed in
PCT ’015. And the person of ordinary skill must also pick a concentration of ETO from the high end of the disclosed range, but conversely select a concentration of EE from the low end of the range. Nothing in PCT ’015 suggests picking these values out of the innumerable possible combinations of ETO concentrations, EE concentrations, and compartment length ratios. Instead, the only way to arrive at the hypothetical ring is by using the ’581 patent as a roadmap to piece together various elements of PCT ’015. That represents an improper reliance on hindsight.
(emphasis added) Id. at 7 and 8. Further, it was noted that the PCT ‘015 was critical of an one compartment ring system, which the CAFC stated establishes that the District Court’s judgment was based upon impermissible hindsight. A “person of ordinary skill in the art would pursue ‘identified, predictable solutions,’ not designs that were seemingly inoperable.” Id. at 8.
Claim 11 recites a one compartment ring system having specific concentrations of each ETO and EE. Warner had argued that “it would have been obvious to calculate the relative concentrations for each compound based on those release rates.” Id. at 9. The CAFC held that this argument is unpersuasive because the disclosure of dosage rate in PCT ‘015 is based upon a two compartment ring system. Warner’s argument and the District Court judgment would require a skilled artisan to calculate the relative concentrations for a two compartment ring, and apply those concentrations to a single compartment, despite PCT ‘015 stating that a single compartment system is difficult to control while a two compartment system achieves consistent release rates. Id. at 9.
The CAFC reverses the District Court’s judgment of invalidity and remanded the case.
Take away:
- One should review an obviousness rejection to determine if it is based upon a hypothetical embodiment of the cited reference.
- One should review the breadth of the disclosure of a cited reference. The breadth of the disclosure of a cited reference may provide arguments of non-obviousness.
Ambiguity in specific definition of claim terms
| October 25, 2017
ORGANIK KIMYA AS, v. ROHM AND HAAS COMPANY
October 11, 2017
Before Prost, Newman, and Taranto. Opinion by Newman.
Summary:
In the inter partes review (“IPR”) proceedings, the Patent Trial and Appeal Board (“PTAB”) made claim interpretation about claimed “swelling agent” by relying on patentee’s specific definition provided in the specification and decided that the alleged prior arts fail to disclose such “swelling agent.” Appellant, Organik Kimya AS argues that the specific definition includes ambiguity due to open-ended definition and the claims cannot be reasonably interpreted to exclude those prior arts. The court affirmed the decision of PTAB. The specification contained many definitions of technical terms. Careful wording would be more desired in drafting functional definition for claim terms, which provides specific meaning different from ordinary and customary one.
When is Evidence of Written Description Too Late?
| October 24, 2017
Amgen v. Sanofi
October 5, 2017
Before Prost, Taranto and Hughes. Opinion by Judge Prost.
Procedural History:
The two patents-in-suit disclose and claim a set of antibodies. The following claim is representative:
An isolated monoclonal antibody,
wherein, when bound to PCSK9, the monoclonal antibody binds to at least one of the following residues: S153, I154, P155, R194, D238, A239, I369, S372, D374, C375, T377, C378, F379, V380, or S381 of SEQ ID NO:3, and
wherein the monoclonal antibody blocks binding of PCSK9 to LDL[-]R.
The technical background of the invention involves statins that are administered to patients to reduce high levels of LDL-C in the blood. When these statins do not work, doctors sometimes administer PCSF9 inhibitor as well – PCSK9 being a naturally occurring protein that binds to and destroys liver cell LDL-receptors that take LDL-C from the blood.
The claim recites a genus of antibodies that bind to PCSK9 at the recited residue sites, thereby preventing PCSK9 from interfering with LDL-C removal from the blood.
The specification, common to both patents, discloses “85 antibodies that blocked interaction between the PCSK9 . . . and the LDLR [at] greater than 90%,” It also discloses the three-dimensional structures, obtained via x-ray crystallography, of two antibodies known to bind to residues recited in the claims—21B12 (Repatha) and 31H4.
Appellant/Defendant Sanofi markets an antibody named Praluent® alirocumab. Appellee/Patentee sued Sanofi for patent infringement. Sanofi replied, inter alia, that the claims did not comply with the written description and enablement requirements.
In a jury trial, the judge excluded from the evidentiary record all post-priority-date information that Sanofi proffered to show that the written description and enablement requirements were not met. Specifically, Sanofi’s proffered evidence that included its own later-developed Praluent product that was developed after the priority date of Amgen’s patents.
Ultimately, the jury issued a verdict that the patents were valid and infringed.
The CAFC reversed the trial judge’s exclusionary ruling and vacated the jury’s verdict. It first set forth the legal background, specifically, that a patentee must convey in its disclosure that it “had possession of the claimed subject matter as of the filing date” and that to provide this “precise definition” for a claim to a genus, a patentee must disclose “a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” (Emphasis added).
Here, Sanofi’s evidence regarding Praluent was relevant to the material issue of whether the two patents disclosed a representative number of species within the claimed genus. The CAFC therefore held that the trial judge erred in excluding Sanofi’s evidence and ordered a new trial on written description. It also ordered a new trial on enablement for the same reasons.
The CAFC summarized the legal basis for its holding: evidence that explains the state of the art after the priority date is not relevant to written description. On the other hand, where a patent claims a genus, it must disclose “a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Accordingly, evidence showing that a claimed genus does not disclose a representative number of species may include evidence of species that fall within the claimed genus but are not disclosed by the patent, and evidence of such species is likely to postdate the priority date.
Take Away
The lesson is that the purpose for which post-priority date evidence is proffered determines whether it is admissible.
The Federal Circuit finally provided guidance on patent venue rules and struck down Judge Gilstrap’s patent venue rules
| October 23, 2017
In Re: Cray Inc.
September 21, 2017
Before Lourie, Reyna, and Stoll. Opinion by Lourie.
Summary:
Cray petitioned for a writ of mandamus directing reversal of the order of the U.S. District Court for the Eastern District of Texas denying its motion to transfer venue and directing the district court to transfer the case to the Western District of Wisconsin. The Federal Circuit found that the EX of TX misinterpreted the scope and effect of the precedent in determining that Cray maintained “a regular and established place of business” in the ED of TX within the meaning of §1400(b). Therefore, the Federal Circuit held that the ED of TX’s decision to refuse transfer of the case was an abuse of discretion and granted Cray’s petition.
Tags: patent venue > regular and established place of business > section 1400(b) > writ of mandamus
The Board Stretches the Broadest Reasonable Interpretation Standard to Broadest Possible Interpretation
| October 20, 2017
In re Smith International, Inc.
September 26, 2017
Before Lourie, Reyna, Hughes. Opinion by Lourie.
Procedural History:
Smith International (“Smith”) owns U.S. Patent No. 6,732,817 (the ‘817 patent) directed to a downhole drilling tool for oil and gas operations. In 2012, Smith’s corporate parents, Schlumberger Holdings Corp. and Schlumberger N.V., sued Baker Hughes Inc. (“Baker Hughes”) in the United States District Court for the Southern District of Texas for, inter alia, infringement of the ’817 patent. Baker Hughes requested ex parte reexamination of claims 28–37, 39–46, 49, and 50 of the ’817 patent. The PTO granted the request for ex parte reexamination, which is the subject of appeal in this case.
In the reexamination, the Examiner finally rejected claims 28–36, 39, 40, 42, 79–80, 93–98, and 100 as anticipated by International Publication No. WO 00/31371 (“Eddison”). The Examiner rejected claims 43–46, and 49 as obvious over Eddison in view of U.S. Patent 6,059,051 (“Jewkes”), and claims 28, 40, 41, 43, 50, 80, 81, 93, and 99 as obvious over Eddison, European Publication No. EP 0 246 789 (“Wardley”), and Jewkes. Smith appealed to the Patent Trial and Appeal Board (“Board”), and the Board affirmed all of the examiner’s rejections. The Court of Appeal for the Federal Circuit (“CAFC”) reversed the Board.
Details:
This case primarily concerns what the word “body” means in the context of the ’817 patent.
Representative claim 28 is set forth below.
28. An expandable downhole tool for use in a drilling assembly positioned within a wellbore having an original diameter borehole and an enlarged diameter borehole, comprising:
a body; and
at least one non-pivotable, moveable arm having at least one borehole engaging pad adapted to accommodate cutting structures or wear structures or a combination thereof and having angled surfaces that engage said body to prevent said arm from vibrating in said second position;
wherein said at least one arm is moveable between a first position defining a collapsed diameter, and a second position defining an expanded diameter approximately equal to said enlarged diameter borehole.
Fig. 4 of the ‘817 patent is reproduced below to show, inter alia, the “body” (tool body 510) and the “moveable arm” (moveable tool arm 520).
Reexamination
During reexamination, using the broadest reasonable interpretation standard, the Examiner construed the term “body” broadly to correspond to the “body” 18, “mandrel” 16 and “cam sleeve” 28 of Eddison. Eddison discloses a drilling tool having a “mandrel 16” that “extends through the body 18” and “provides mounting for a cam sleeve 28,” which “cooperates with the extendable members 30 in the form of cutters 30 mounted in respective body ports 32.” See Fig. 1 of Eddison reproduced below.
Relying on the broad construction of “body”, the Examiner found that Eddison teaches “at least one non-pivotable, moveable arm…having angled surfaces that engage said body” in claim 28 and corresponding elements in other independent claims.
The Board
On appeal to the Board, the Board affirmed the Examiner’s interpretation of the word “body” as a broad term that may encompass other components such as “mandrel” and “cam sleeve”. The Board reasoned that the term “body” is a generic term that by itself provides no structural specificity. The Board also reasoned that although “the specification describes the body as a discrete element separate from other elements,” the specification neither defines the term “body” nor precludes the Examiner’s broad reading of it.
The Board rejected Smith’s argument that one of ordinary skill in the art would understand the term “body” as a distinct element from other components. Based on the Board’s interpretation of the term “body,” the board affirmed the Examiner’s anticipation and obviousness rejections based on Eddison.
CAFC
On appeal to the CAFC, Smith challenged the Board’s construction of the term “body” and the anticipation and obviousness determinations. Smith argued that the Board’s interpretation of the term “body” was unreasonable and inconsistent with the specification. More specifically, Smith argued that the Board’s interpretation of “body” as a generic term encompassing the drilling tool’s internal components was unreasonable because the specification consistently refers to and depicts the body of the drilling tool as a component distinct from other separately identified components, such as the “mandrel” or “piston” that reside inside the drilling tool. In light of the consistent description of the body, Smith urged that the term “body” should be interpreted as an “outer housing.”
The CAFC, using the expressions “strained interpretation” and “arbitrary inclusion of elements” to describe the Board’s construction, concluded that the Board’s construction of “body” was unreasonably broad.
The CAFC reasoned that the ‘817 specification does not use the term as a generic body. Instead, the ’817 patent separately identifies and describes various components of its drilling tool, such as the “body,” “moveable arms,” “mandrel,” “piston,” and “drive ring,” which do not support the Board’s broad reading of the claim term “body.” In this connection, the CAFC stated “There is no dispute that the ’817 patent specification consistently describes and refers to the body as a component distinct from others, such as the mandrel, piston, and drive ring. Therefore, the Board’s reasoning that because the specification does not ‘in and of itself proscribe the Examiner’s construction,’ the Examiner’s interpretation was reasonable, was erroneous.”
The CAFC addressed the Board’s reasoning in support of adopting the broad interpretation that “the patentee here did not act as a lexicographer, and that the specification neither defines nor precludes the examiner’s reading of the term ‘body’.” Using this reasoning, the Board found that nothing in the specification would disallow the examiner’s interpretation, rendering it “reasonable.” However, the CAFC responded “following such logic, any description short of an express definition or disclaimer in the specification would result in an adoption of a broadest possible interpretation of a claim term, irrespective of repeated and consistent descriptions in the specification that indicate otherwise. That is not properly giving the claim term its broadest reasonable interpretation in light of the specification.” [Emphasis added.]
Finally, the CAFC stated, “The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is ‘consistent with the specification.’”
Obviousness Found Even When the Burden to Prove Inherency Remains on Examiner
| October 18, 2017
SOUTHWIRE COMPANY v. CERRO WIRE LLC
September 8, 2017
Before Lourie, Moore and Hughes. Opinion by Lourie.
Summary
Southwire Co. (the patent owner) owns No. 7,557,301 (the ’301 patent). An inter parte reexamination is initiated by a third party requestor, Cerro wire LLC (the requester). All the claims of the ’301 patent are found obvious over prior art references under 35 U.S.C. § 103. It is decided in the reexamination that one of the combinations of cited references inherently discloses a claimed parameter at issue. CAFC affirms PTAB’s conclusion that the claims are unpatentable as obvious, while rejecting part of the reasoning that the claimed parameter is inherently disclosed in the cited references.
Japanese Summary
本件特許はケーブルのジャケットの材料に潤滑剤を含ませて製造することで、完成したケーブル表面のフリクションを減らし、ケーブルをビル内等に設置するのに必要な引っ張り力を減少させることができるケーブルの製造方法に関する。当事者系再審査請求において、特許クレームは先行技術文献から自明であると拒絶され、審判部もその結論を支持した。特許権者は、主要引用例（Summers）にクレームの数値限定（ケーブルを設置するために引っ張る力を少なくとも30％減少させる特性）が内在的に（inherently）開示されているから自明であるとした特許庁の認定を不服として、巡回区控訴裁判所（CAFC）に提訴した。
CAFCは、前記引用例はケーブル表面のフリクションや設置のための力を測定しておらず、開示されている製法が必然的に（necessarily）クレームの数値限定を達成できること示す事実・証拠がないため、クレームの数値限定が内在的に開示されているという特許庁の認定は間違いであると指摘し、内在的開示の存在を否定した。内在的な開示は認められないが、その一方で主要引用例には製造時に潤滑剤を混入してフリクションの小さいケーブルを製造し得るプロセス自体は教示されているので、先行技術を克服するためにはクレーム限定が予期せぬ結果であることを示さなければならないとし、本件では予期せぬ結果の証明がないことを理由に発明が自明であるとの結論を支持した。
特許クレームは先行技術の製法とほぼ同一に見えるが、特許権者が定義したパラメータ（ケーブルを設置するために必要な力の範囲）をクレームすることで特許になった製法である。このようなパラメータ特許でも、先行技術の製法で「必ず」同じ結果が得られることを特許庁が示さなければ内在的な開示を認定してはいけないことが示唆された。しかし、他方で、先行技術と製法が実質的に同じである点で自明性が仮定されるので、出願人はそのパラメータ限定が予期せぬ効果であること示す証明責任があることが示唆された。
A “Teaching Away” Argument Must be Commensurate in Scope with the Claims
| October 17, 2017
Idemitsu Kosan Co., Ltd. v. SFC Co. Ltd.
September 15, 2017
Before Prost, O’Malley and Chen. Opinion by O’Malley.
Summary:
This case is an appeal from an inter partes review of Idemitsu Kosan Co., Ltd’s (“Idemitsu”) U.S. Patent No. 8,334,648 (“the ‘648 patent”) brought by SFC Co. Ltd. (“SFC”). Idemitsu argued on appeal that the Patent Trial and Appeal Board (“PTAB”) did not explain why a skilled artisan would have been led to use the claimed combination of compounds from the teachings of the prior art reference Arakane given that Arakane limits its combination of compounds to combinations satisfying a special relationship. The CAFC agreed with the PTAB in holding that the Arakane reference teaches compounds (including the claimed compounds among others) that when combined, produce a light emitting layer, regardless of the special relationship. The CAFC further held that “evidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue.” In this case, the CAFC said that it is not particularly important that Arakane teaches that combinations of compounds not satisfying the special relationship result in poor performance because the claims at issue do not include limitations with respect to performance.
Details:
Idemitsu’s ‘648 patent is to an “Organic Electroluminescence Device and Organic Light Emitting Medium.” Claim 1 is provided below:
1. An electroluminescence device comprising a pair of electrodes and a layer of an organic light emitting medium disposed between the pair of electrodes, wherein the layer of an organic light emitting medium is present as a light emitting layer and comprises:
(A) an arylamine compound represented by formula V:
wherein X3 is a substituted or unsubstituted pyrene residue,
Ar5 and Ar6 each independently represent a substituted or unsubstituted monovalent aromatic group having 6 to 40 carbon atoms, and
p represents an integer of 1 to 4; and
(B) at least one compound selected from the group consisting of anthracene derivatives and spirofluorene derivatives, wherein
said anthracene derivatives are represented by formula I:
wherein A1 and A2 may be the same or different and each independently represent a substituted or unsubstituted monophenylanthryl group or a substituted or unsubstituted diphenylanthryl group, and L represents a single bond or a divalent bonding group, and by formula II:
wherein An represents a substituted or unsubstituted divalent anthracene residue, A3 and A4 may be the same or different and each independently represent a substituted or unsubstituted aryl group having 6 to 40 carbon atoms, at least one of A3 and A4 represents a substituted or unsubstituted monovalent condensed aromatic ring group or a substituted or unsubstituted aryl group having 10 or more carbon atoms; and
said spirofluorene derivatives are represented by formula III:
wherein Ar1 represents a substituted or unsubstituted spirofluorene residue, A5 to A8 each independently represent a substituted or unsubstituted aryl group having 6 to 40 carbon atoms;
provided that the organic light emitting medium does not include a styryl aryl compound.
SFC petitioned for an inter partes review (IPR) of the ‘648 patent. The Patent Trial and Appeal Board (“PTAB”) instituted review of the claims on the grounds of obviousness based on a single reference to Arakane (WO 02/052904). The Arakane reference is assigned to Idemitsu and teaches an organic electroluminescence device. Arakane discloses:
The present invention provides an organic electroluminescence device including a pair of electrodes and an organic light emitting medium layer interposed between the electrodes wherein the organic light emitting medium layer has a mixture layer containing (A) at least one hole transporting [“HT”] compound and (B) at least one electron transporting [“ET”] compound and the energy gap Eg1 of the [HT] compound and the energy gap Eg2 of the [ET] compound satisfy the relation Eg1<Eg2.
Among the HT compounds, Arakane discloses a compound corresponding to formula V of claim 1. And among ET compounds, Arakane discloses compounds corresponding to compounds of formulas I and II of claim 1, respectively.
The PTAB held the claims of the ‘648 patent to be obvious over Arakane. Specifically, the PTAB held that Arakane’s HT compound corresponds with the formula V compound of claim 1; that Arakane’s ET compounds correspond with compounds of formulas (I) and (II) of claim 1; and that Arakane teaches that a light emitting layer can be formed by combining an HT and ET compound. The PTAB stated that the claimed invention “is the combination of recited components in a light emitting layer” and that “Arakane’s disclosure would have informed an ordinary artisan that combining components (A) and (B) would produce a light emitting layer.” The PTAB further stated that the obviousness of the combination “does not depend on whether the resulting light emitting layer would satisfy Arakane’s energy gap relationship.”
Idemitsu argued on appeal that the PTAB made no finding with respect to the energy gap relationship taught in Arakane, i.e., that the energy gap of the HT compound must be less than the energy gap of the ET compound. The CAFC stated that the PTAB correctly found that Arakane suggests combinations of HT and ET compounds that produce a light emitting layer, regardless of their energy gap relation.
Idemitsu also argued that this was raised too late because it was not in SFC’s petition or in the PTAB’s institution decision. However, the CAFC stated that Idemitsu is the party that implicitly raised the argument by arguing that SFC failed to explain why a skilled artisan would have been led to use the combination of HT and ET compounds given that Arakane limits the combination of compounds to combinations satisfying the energy gap relationship. In its counterargument, SFC argued that Arakane does not teach away from the claimed combination despite the absence of demonstrating that the combination would possess the preferred energy gap relationship. The CAFC stated that SFC’s statements were “the by-product of one party necessarily getting the last word,” and thus the argument was not raised too late.
The CAFC also noted that Idemitsu provided no supporting evidence for its position that Arakane teaches away from non-energy gap HT/ET combinations, and that SFC was not required to rebut attorney argument with expert testimony.
The CAFC further stated that Idemitsu’s argument regarding “teaching away” is of questionable relevance. The CAFC explained that “evidence concerning whether the prior art teaches away from a given invention must relate to and be commensurate in scope with the ultimate claims at issue.” The CAFC also included the following passage from In re Zhang, 654 F. App’x 490 (Fed. Cir. 2016): “While a prior art reference may indicate that a particular combination is undesirable for its own purposes, the reference can nevertheless teach that combination if it remains suitable for the claimed invention.” The claims at issue do not include limitations with respect to performance characteristics. And Arakane teaches that the only drawback of not satisfying the energy gap relationship is poor performance. Thus, the CAFC concluded that it is of substantially reduced importance that the non-energy-gap HT/ET combinations result in poor performance.
Take Away
As a patent applicant or patent owner, when arguing that a reference teaches away from a claimed invention to demonstrate non-obviousness, you should try to explain why the reference teaches unsuitability of the claimed invention. Relying solely on a teaching of undesirability in the prior art may not be enough to demonstrate a teaching away from the claimed invention.
This case also emphasizes the importance of supporting arguments with expert declarations in inter partes reviews. Idemitsu did not provide evidence supporting a teaching away argument. Thus, SFC and the PTAB could rely solely on the text of the reference.
Tell Me Why: A conclusion of obviousness based on routine optimization must be supported by articulated reasoning
| October 16, 2017
In re Stepan Company
August 25, 2017
Before Lourie, Moore, and O’Malley. Opinion by Moore. Dissent by Lourie.
Summary
The Federal Circuit vacated a Patent Trial and Appeal Board panel’s finding of obviousness based on routine optimization, for failing to articulate some rational underpinning as to “why” routine optimization would have made the claimed invention obvious.
