A Patent of Few Words and a Defendant with a Few Parts cannot avoid a Trier of Fact
| February 22, 2019
Centrak, Inc. v. Sonitor Tech., Inc.
February 14, 2019
Before Reyna, Taranto and Chen. Opinion by Chen.
Summary:
The CAFC reversed and remanded a Motion of Summary Judgment finding that the District Court errored in focusing on the length of a written description and dismissing a plausible theory for direct infringement based on the final assembly being done by the defendant within a customer’s system.
Details
- Background
CenTrak, Inc. sued Sonitor Technologies, Inc. for alleged infringement of U.S. Patent No. 8,604,909 (’909 patent), which claims systems for locating and identifying portable devices using ultrasonic base stations. The district court granted Sonitor’s MSJ that the relevant claims are invalid for lack of written description and are not directly infringed because Sonitor does not individually provide for all the aspects of the claims.
The claims are directed to ultrasonic base stations which can be mounted in various fixed locations in a facility, such as rooms in a hospital, and the portable devices can be attached to people or assets that move between rooms. Each portable device is configured to detect the ultrasonic location codes from the nearby ultrasonic base stations and “transmit an output signal including a portable device ID representative of the portable device and the detected ultrasonic location code.” While the portable devices receive location codes from ultrasonic base stations via ultrasound, they might transmit location and device information via RF to an RF base station.
The asserted claims generally recite: (1) ultrasonic (US) base stations; (2) portable devices (tags); (3) a server; (4) radio frequency (RF) base stations; and (5) a backbone network that connects the server with the RF base stations.
All the claims of the ’909 patent are directed to “ultrasonic” components. However, the specification focuses on infrared (IR) or RF components. Only two sentences of the ’909 patent’s specification discuss ultrasonic technology:
Although IR base stations 106 are described, it is contemplated that the base stations 106 may also be configured to transmit a corresponding BS-ID by an ultrasonic signal, such that base stations 106 may represent ultrasonic base stations. Accordingly, portable devices 108 may be configured to include an ultrasonic receiver to receive the BS-ID from an ultrasonic base station.
In regard to lack of written description, Sonitor argued that the two sentences in the specification dedicated to ultrasound, did not show that the inventors had possession of an ultrasound-based RTL system.
Regarding invalidity, the district court ruled that while the specification “contemplated” ultrasound, “[m]ere contemplation . . . is not sufficient to meet the written description requirement.
In regard to infringement, the accused Sonitor Sense system includes three pieces of hardware sold by Sonitor: RF “gateways,” ultrasonic location transmitters, and portable locator tags. Sonitor also provides software for installation on a customer’s server hardware.
Sonitor’s main non-infringement argument was that Sonitor does not make, use, or sell certain elements recited in the claims, including the required backbone network, Wi-Fi access points, or server hardware.
CenTrak argues that the resulting system infringes the ’909 patent when the components Sonitor sells are integrated with a customer’s existing network and server hardware. CenTrak asserted only direct infringement. Since, Sonitor does not sell all of the hardware necessary to practice the asserted claims, so, on appeal, CenTrak only pursued a theory under 35 U.S.C. § 271(a) that Sonitor “makes” infringing systems when it installs and configures the Sonitor Sense system. In short, the crux of CenTrak’s assertion is that there is direct infringement when the party assembles components into the claimed assembly (i.e. the party “makes” the patented invention, even when someone else supplies most of the components).
The district court granted summary judgment of non-infringement. It held that a defendant must be the actor who assembles the entire claimed system to be liable for direct infringement, and CenTrak had not submitted proof that Sonitor personnel had made an infringing assembly.
CenTrak appealed both MSJ grants.
2. Opinion
In regard to invalidity, the CAFC held that, the district court leaned too heavily on the fact that the specification devoted relatively less attention to the ultra-sonic embodiment compared to the infrared embodiment. Quoting their ScriptPro LLC v. Innovation Associates, Inc., 833 F.3d 1336, 1341 (Fed. Cir. 2016), they reiterated that “a specification’s focus on one particular embodiment or purpose cannot limit the described invention where that specification expressly contemplates other embodiments or purposes.”
The Court explained that the real question is the level of detail the ’909 patent’s specification must contain, beyond disclosing that ultrasonic signals can be used, to adequately convey to a skilled artisan that the inventors possessed an ultrasonic embodiment. Citing their Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) en banc: “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” They further noted per Ariad that the issue of whether a claimed invention satisfies the written description requirement is a question of fact.
The opinion details that the parties disputed the complexity and predictability of ultrasonic RTL systems, and the district court erred at the summary judgment stage by not sufficiently crediting testimony from CenTrak’s expert that the differences between IR and ultrasound, when used to transmit small amounts of data over short distances, are incidental to carrying out the claimed invention. The Court specifically noted the testimony from CenTrak’s expert that those details were not particularly complex or unpredictable, and Sonitor does not explain why a person of ordinary skill in the art would need to see such details in the specification to find that the named inventors actually invented the claimed system.
Hence, the Court concluded that:
…there is a material dispute of fact as to whether the named inventors actually possessed an ultrasonic RTL system at the time they filed their patent application or whether they were “leaving it to the . . . industry to complete an unfinished invention.”…
Here, as in ScriptPro, the fact that the bulk of the specification discusses a system with infrared components does not necessarily mean that the inventors did not also constructively reduce to practice a system with ultrasonic components … “the written description requirement does not demand either examples or an actual reduction to practice; a constructive reduction to practice” may be sufficient if it “identifies the claimed invention” and does so “in a definite way.” Ariad, 598 F.3d at 1352.
In regard to direct infringement, the Court noted that it is undisputed that Sonitor does not provide certain claimed elements in the accused systems, such as a backbone network, Wi-Fi access points, or server hardware. Moreover, the district court analyzed the evidence CenTrak offered and concluded that no reasonable jury could find that Sonitor “made” the claimed invention by performing installations relying on Centillion Data Systems, LLC v. Qwest Communications International, Inc., 631 F.3d 1279 (Fed. Cir. 2011) for the proposition that to “make” a system, a single entity must assemble the entire system itself.
The CAFC found that Centillion does not rule out CenTrak’s infringement theory. In this case, Cen-Trak argued that the final, missing elements are the configuration that allows the location transmitters to work with the network and the location codes that are entered into the Sonitor server. According to CenTrak, admissible evidence that Sonitor is the “final assembler” raises a triable issue of fact on infringement even though Sonitor does not “make” each of the claimed components of the accused systems.
The Court further held that under Lifetime Industries, Inc. v. Trim-Lok, Inc., 869 F.3d 1372 (Fed. Cir. 2017), and Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1311 (Fed. Cir. 2005), a final assembler can be liable for making an infringing combination—assuming the evidence supports such a finding—even if it does not make each individual component element.
3. Decision
The CAFC found that the District Court errored in both: (1) finding a lack of written description as it relied too heavily on the briefness of the ‘909 patents comments on ultrasonic RTL systems rather than the amount of knowledge needed for a skilled artisan to consider; and (2) finding that there was no dispute of fact as to whether Sonitor was a “final assembler” by virtue of performing the final system installation for its customers. The Court therefore reversed and remanded.
Take away
- The measure of a sufficient written description is not in its length. Rather, the test is to the amount of disclosure necessary for a skilled artisan to discern that the inventor in fact possessed the invention.
- A case for direct infringement can be made even where the defendant does not “make all the parts” if there is sufficient evidence that the accused infringer is a “final assembler” in terms of actuating the combination of elements to infringe.
Tags: 35 U.S.C. §112 > direct infringement > summary judgment > written description
Creative Strategies of Attack
| February 19, 2019
Mylan Pharmaceuticals Inc., Breckenridge Pharmaceutical, Inc., Alembic Pharmaceuticals Ltd., v. Research Corporation Technologies, Inc.
February 1, 2019
Before Lourie, Bryson, and Wallach. Opinion by Lourie.
Summary
Creative strategies of attack can be made on a patent even when the challenger is apparently precluded by statute. In particular, this decision highlights that parties who would have been time barred in filing an inter partes review (IPR) petition, in this case, Mylan Pharmaceuticals, Breckenridge Pharmaceutical and Alembic Pharmaceuticals, can be joined in an IPR and then appeal an adverse decision, even though the original petitioner (Argentum) would lack Article III standing for an appeal in federal courts.
On the merits, this decision reiterates that all facts need to be considered in making a final obviousness determination, including establishing a motivation to modify a compound.
Background
The appellants (Mylan, Breckenridge and Alembic) appeal the final decision of the Patent Trial and Appeal Board (PTAB) in an IPR concluding that claims 1-13 of Reissue 38,551 are not unpatentable. The IPR was based on a petition filed by Argentum Pharmaceuticals who is not an appellant in the appeal. Upon institution of the IPR, the appellants (Mylan, Breckenridge and Alembic) filed their own petitions with concurrent motions for joinder. Each of these appellants had been sued for infringement of the ‘551 reissue in 2013, more than a year before the petitions were filed. Note that 35 USC 315(b) states:
An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).(Emphasis added)
The PTAB permitted joinder. Subsequently, the PTAB rendered its decision on the merits concluding that each challenged claim had not been shown to be unpatentable. Mylan, Breckenridge and Alembic appealed the decision. Argentum, on the other hand, did not join the appeal as Argentum lacked standing under Article III of the Constitution (Argentum did not have any injury and therefore lacked entry into the federal appellate court system).
Discussion
Standing
RCT argues that the appellants lack standing because RCT had brought an infringement action against each appellant more than a year before the IPR petitions were filed. RTC argues that although the appellants were permitted to join, the initial petitioner’s IPR (filed by Argentum) was limited to an agency matter, and therefore there would be no Article III standing. The appellants, on the other hand, point out that they have an express, statutory right to appeal. The CAFC agreed. To reach this conclusion, the CAFC looked to the text of 35 USC 315(c) stating that a party may be joined. Then section 319 provides that “a party” may appeal.
Merits
The PTAB had accepted a certain compound (identified as compound 3l) as a lead compound, and concluded that the petitioners failed to establish motivation to modify that compound. The CAFC agreed that the appellants had failed to meet their burden to establish a motivation to modify. From the decision, it does seem like the arguments of obviousness were a stretch.
In this regard, the appellants first focused on a methoxyamino group in compound 3l as being uncommon and having potential synthetic and stability problems as a basis for a POSITA to have been motivated to modify in a certain way, and that the proposed modified compound would have been expected to have excellent potency.
The evidence presented by RCT, however, showed that compound 3l was actually stable and that the record was devoid of evidence of potential stability issues. In addition, RCT argued that the appellants did not provide any evidence that “only methylene would result in a more pharmaceutically common and acceptable compound and resolve the potential stability and synthesis concerns presented by the methoxyamino moiety.”
In conclusion, the CAFC concluded that the PTAB had appropriately considered all facts before making a final obviousness determination.
Although not in the decision, an examination of the history of the patent in suit is interesting. First, it is always interesting when a reissue is involved. Reissue is used to correct errors in a patent when the patent is considered defective or inoperative. The original patent issued as USP 5,773,475 on June 30, 1998. The reissue application was filed on the basis that the original patent was inoperative because priority to a provisional application was not perfected. This step was taken apparently due to some ambiguity when the American Inventors Protection Act of 1999 was enacted. This became an issue because the non-provisional application was filed a little over one year from the provisional filing date because the one year anniversary fell on a Saturday. The non-provisional application was filed on the succeeding Monday. 35 USC 119(e) (3) was amended to clarify that if the anniversary date fell on a Saturday, Sunday or Federal holiday, the filing on the next succeeding business day would be considered timely.
In addition, it is interesting to note that an ex parte reexamination was filed on April 9, 2018 as another attack on the reissue patent. The ex parte reexamination resulted in cancellation of claims 1-7, confirmation of patentability of claims 8-13, and a determination that newly added claims 14-28 are patentable. The same rejections appear to have been addressed in the ex parte reexamination as in the IPR proceeding. Note that the IPR was filed November 25, 2015, and then the ex parte reexamination was filed April 29, 2016. The PTAB had issued an order staying the ex parte reexamination proceeding until the PTAB had issued its final written decision in the IPR.
The reissue patent was also granted 5 years of patent term extension. The reissue patent covers the drug lacosamide which is used to treat epilepsy.
Takeaway
Creativity and knowledge of the laws can open the way to challenge patents even when it does not seem possible.
It all begins with Claim Construction
| February 15, 2019
Duncan Parking v. IPS Group
January 31, 2019
Before Lourie, Dyk, and Taranto. Decision by Lourie.
Summary:
The trial judge construed the claims and subsequently granted summary judgment in favor of Defendant Duncan that the accused parking meters do not infringe U.S. Patent No. 8,595,054 owned by Plaintiff IPS. On appeal the CAFC determined that the trial judge had misconstrued the claims, vacated the summary judgment of non-infringement, and remanded the case to the trial judge for reconsideration of the infringement issue in light of the proper claim construction.
Details:
Claim 1 of the ‘054 patent recites:
- A parking meter device that is receivable within a housing base of a single space parking meter, the parking meter device including:
a timer;
a payment facilitating arrangement operable in cooperation with a non-cash payment medium for effecting payment of a monetary amount for a parking period;
a display configured to visually provide a balance remaining of the parking period;
a power management facility that supplies power to the timer, payment facilitating arrangement, and display;
a wireless communications subsystem configured to receive information relating to the non-cash payment medium in respect of the payment facilitating arrangement;
a keypad sensor that receives input comprising manipulation by the user;
a coin slot into which coins are inserted for delivery to the coin sensor and then to a coin receptacle; and
a lower portion and an upper portion;
wherein the keypad sensor operates the parking meter and determines parking time amount for purchase in accordance with the received input from the user;
wherein the display provides the amount of time purchased in response to the received input from the user;
wherein the upper portion of the parking meter device includes a solar panel that charges the power management facility;
wherein the lower portion of the parking meter device is configured to have a shape and dimensions such that the lower portion is receivable within the housing base of the single space parking meter; and
wherein the upper portion of the parking meter device is covered by a cover that is configured to accommodate the upper portion and that is engageable with the housing base of the single space parking meter such that the payment facilitating arrangement is accessible by the user for user manipulation effecting the payment of the monetary amount for the parking period when the lower portion of the parking meter device is received within the housing base and the upper portion is covered by the cover.
10 – parking meter device
34 – housing
36 – cover
41 – window
Duncan’s accused parking meter is shown below.
The trial judge court construed “receivable within” as “capable of being contained inside,” and applied this construction to require that the “entire lower portion” of the infringing product be “receivable within the housing base.” The trial judge granted summary judgment of non-infringement because it found that the keypad of the accused meter extends through an opening in the lower portion of the housing and, as a result, the lower portion of Duncan’s meter is not “receivable within” its housing base.
On appeal IPS argued that the trial judge had
- construed the claim term “receivable within,” in the claim limitation “a lower portion [of the parking meter device] . . . receivable within the housing base” too narrowly, requiring that the entire lower portion of the parking meter device be contained inside the parking meter housing;
- erroneously construed claim 1 to exclude a potential unclaimed “middle portion” of the device between the upper and lower portions; and
- excluded the preferred embodiment from the scope of claim.
On the latter point, IPS explained that the card slot and the coin slot (both parts of the device itself) cannot be part of the upper portion of the device because the upper portion must be covered by the cover panel. But they also cannot be a part of the lower portion of the device because they are not “receivable within” the housing base as per the district court’s claim construction. Instead, they are accessible through openings in the housing. Thus, either the coin slot and card slot comprise a “middle portion” not defined by the ‘054 claims or the ‘054 specification, or the trial judge’s construction of “receivable within” is too narrow.
DPT replied
- that the plain meaning of “within” is “inside,” and IPS choose not to modify the term with the words “generally” or “substantially”;
- that the trial judge’s claim construction does not actually exclude the preferred embodiment because the coin slot is still inside the housing base; while the coin slot of the preferred embodiment is accessible through an opening in the housing, it does not actually protrude through that opening; and
- that prosecution history estoppel bars IPS from asserting that claim 1 includes parking meter devices that are not entirely contained within a housing.
The CAFC touched on familiar issues, commenting on the trial judge’s approach to claim construction and then addressing the parties’ argument.
The Trial Judge’s Approach:
The trial judge construed the term “receivable within” as “capable of being contained inside,” but upon applying the claim construction in its infringement analysis added a requirement that the “entire” lower portion of the device must be contained within the housing, id. at 8, effectively altering the construction to “capable of being contained entirely inside.”
Dictionaries:
A reasonable meaning of the term “receivable within” in the context of the ’054 patent is “capable of being contained inside.” Receive, The New Oxford American Dictionary (2d ed. 2005) (defining “receive” as “to act as a receptacle for” and “receptacle” as “an object or space used to contain something”).
The suffix “-able” implies that the lower portion of the device is capable of being contained within the housing base. But this definition contains no limitation to “completely” or “entirely” contained, nor is there any evidence that persons of skill in the art would understand it to be so limited. Indeed, Duncan touted its accused meter because it “fits within” existing parking meter housings.
The ‘054 Specification:
The only use of the term “receivable” in the ‘054 specification does not imply any limitation to devices “entirely” contained by the housing (“The parking meter device in accordance with the invention may be receivable in a conventional single space parking meter housing, such as that supplied by Duncan Industries, POM or Mackay.”).
The trial judge’s claim construction did indeed exclude the preferred embodiment. The specification defines the coin slot as a part of the lower portion, even though it is not located “within” the housing base but is instead accessible through an opening. Whether the coin slot “protrudes” or not is beside the point; it is a part of the lower portion of the parking meter device but is not “capable of being contained [entirely] within” the housing base as required by the trial judge’s claim construction.
The ‘054 Prosecution History:
Duncan argued that a narrow construction was warranted by the ‘054 prosecution history because IPS had disavowed parking meter devices not fully enclosed by a housing in its response to an office action. Thus Duncan contended that by differentiating the prior art on the basis that it discloses an embodiment exposed to the elements, rather than one enclosed within a housing, IPS disavowed parking meter devices not entirely enclosed within a housing. IPS’s statements fall far short of a claim scope disavowal. IPS distinguished the cited prior art—an actual parking meter, not an insertable device—on the basis that it discloses a “self-contained unit,” as opposed to the claimed device, which is “a retro-fit upgrade to existing parking meters.”
Conclusion:
Because the CAFC agreed with IPS that the district court’s claim construction of “receivable within” was erroneous, it vacated the trial judge’s grant of summary judgment of non-infringement of the ’054 patent and remanded the case to the trial judge for further proceedings.
Takeaways:
The scope of claims is determined on the basis of how they are written, not as how they might have been written.
Dictionaries are almost always important.
A claim construction that excludes a preferred embodiment in the specification from the claim scope is usually wrong.
Disavowal of claim scope in a prosecution history is rare.
Applicant should carefully review the PTO’s PTA especially when applicant filed corresponding applications in foreign patent offices
| February 4, 2019
Supernus Pharmaceuticals, Inc. et al. v. Iancu
January 23, 2019
Before Reyna, Dyk, and Schall. Opinion by Reyna.
Summary:
The Federal Circuit held that the PTO’s reduction of the patent term for a Supernus patent due to applicant delay (of filing an information disclosure statement after filing an RCE) is not correct because there is nothing Supernus could have done during the period of time from the filing of an RCE and the receiving of a communication from a foreign patent office to conclude the prosecution of the application.
Details:
Patent Term Adjustment (PTA) statute of 1999: 35 U.S.C. §154(b)
- §154(b)(1)(A)-(C): delays caused by the PTO
- Type A delay: the PTO fails to provide a notification under 35 U.S.C. §132 or a Notice of Allowance within 14 months of filing date.
- Type B delay: the PTO fails to issue a patent after 3 years have passed between the filing date and the date of allowance.
- Type C delay: for delays that are excluded from Type B delay due to derivation proceedings, secrecy orders, or successful appeals.
- §154(b)(2): delays caused by applicants
Supernus Pharmaceuticals, Inc. is the owner and assignee of U.S. Patent 8,747,897 (“the ’897 patent”), and United Therapeutics Corp. is the exclusive licensee of the ’897 patent.
Relevant timelines:
- 4/27/06: Supernus filed U.S. application and international application claiming priority from the U.S. application (international application gave rise to EP application).
- 8/20/10: the PTO issued a final OA.
- 2/22/11: Supernus filed an RCE.
- 10/13/11: the EPO issued the EP application as EP patent.
- 8/21/12: the EPO notified Supernus’s European patent counsel that a Notice of Opposition was filed by Sandoz to the EP patent.
- 9/11/12: Supernus received a letter from its European patent counsel regarding the EPO notification.
- 11/29/12 (79 days later from 9/11/12 and 100 days from 8/21/12): Supernus filed a supplemental IDS citing the EPO notification.
- 9/10/13: the PTO issued a first OA responding to Supernus’s RCE.
- 1/10/14: Supernus filed a response.
- 2/4/14: the PTO issued a Notice of Allowance.
- 6/10/14: the U.S. application issued as the ’897 patent (PTA of 1,260 days).
PTO
The PTO attributed 2,321 days to the PTO delay (1,656 days for Type A delay and 665 days for Type B delay). The PTO reduced 2,321 days by 175 days to account for overlapping Type A and Type B delays and 886 days for applicant delay. Out of 886 days, 646 days were assessed for the 2/22/11 filing of the RCE and the 11/29/12 filing of the IDS.
PTA of 1,260 days = 2,321 days – 175 days – 886 days.
Supernus filed a request for Reconsideration of PTA because the deduction of 646 days was improper. The PTO rejected the request because citing Gilead, filing the IDS after filing of the RCE “interferes” with the PTO’s ability to process an application.
District Court
Supernus appealed to the U.S. District Court for the Eastern District of Virginia. The district court granted summary judgment in favor of the PTO because the PTO did not err in the PTA calculation for the ’897 patent.
Federal Circuit
First of all, the Federal Circuit held that Gilead did not apply in this case. In Gilead, the patent owner brought an action challenging the PTO’s assessment of a 57-day applicant delay in calculating PTA reduction based on Gilead’s delay during examination between its reply to a restriction requirement and its submission of a supplemental IDS (disclosing other co-pending Gilead patent applications). However, the Federal Circuit held that the issue in this case is whether the PTO may reduce PTA by a period that exceeds the “time during which the applicant failed to engage in reasonable efforts to conclude prosecution.” (35 U.S.C. §154(b)(2)(C)(i)). The Federal Circuit held that Gilead did not answer this issue.
Supernus conceded that it failed to engage in “reasonable efforts” for the last 100 days of the 646-day period. However, Supernus argued that there was nothing Supernus could have done during the 2/22/11 filing of the RCE and the 8/21/12 receiving of the EPO communication.
The Federal Circuit agreed with Supernus’s arguments. The Federal Circuit held that there was no action Supernus could have done to advance prosecution of the patent during the 546-day period because the EPO communication did not exist yet. The Federal Circuit held that the PTO’s interpretation of the statute “would unfairly penalize applicants, fail to incentive applicants not to delay, and fail to protect applicants’ full patent terms.”
Finally, the Federal Circuit held that the PTO’s additional 546-day assessment is contrary to the plain meaning of the statute because “the 646-day total reduction is not equal to a period of time during which Supernus failed to engage in reasonable efforts to conclude the prosecution of the ’897 patent (35 U.S.C. §154(b)(2)(C)(i)). In addition, the Federal Circuit held that the PTO’s decision is not consistent with the intent of Congress because Congress intended that the PTA statute not adversely impact applicants who could have done nothing to advance the prosecution.
Therefore, the Federal Circuit held that the district court erred in granting summary judgment in favor of the PTO.
Takeaway:
Applicant should carefully review the PTO’s PTA especially when applicant filed corresponding applications in foreign patent offices and submitted IDSs to the PTO citing communications from foreign patent offices.
Applicant should advise foreign patent counsels to forward the communications from foreign patent offices as soon as possible for a timely filing of IDSs.
