When to Apply Printed Matter Doctrine to Communications and Program Code
| May 15, 2024
Case Name: IOENGINE v. INGENICO
Date of Decision: May 3, 2024
Panel: : Lourie, Chen, and Stoll
Summary:
The Federal Circuit reversed the Board’s preclusion of patentable weight to the limitations involving “encrypted communications” and “program code” under the printed matter doctrine. The court determined that neither “encrypted communications” nor “program code” constitute “printed matter” because these terms do not recite the communicative content or informational content of the “encrypted communications” and “program code.”
Procedural History:
This is a consolidated appeal of several Final Written Decisions in several inter partes reviews (IPRs) in which the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (the Board) found numerous claims in U.S. Patent Nos. 8,539,047, 9,059,969, and 9,774,703 unpatentable. Most of the Board’s unpatentability determinations were affirmed. However, the Federal Circuit reversed the Board’s unpatentability of a subset of the claims due to an error in the Board’s application of the printed matter doctrine.
Decision:
Representative claims 4 and 7 of the ‘969 patent (and claims 1 and 2 from which they depend) are as follows:
1. A portable device configured to communicate with a terminal comprising a processor, an input component, an output component, a network communication interface, and a memory configured to store executable program code, including first program code which, when executed by the terminal processor, is configured to present an interactive user interface on the terminal output component, and second program code which, when executed by the terminal processor, is configured to provide a communications node on the terminal to facilitate communications to the portable device and to a communications network node through the terminal network communication interface, the portable device comprising:
(a) an external communication interface configured to enable the transmission of communications between the portable device and the terminal;
(b) a processor; and
(c) a memory having executable program code stored thereon, including:
(1) third program code which, when executed by the portable device processor, is configured to provide a communications node on the portable device to coordinate with the communications node on the terminal and establish a communications link between the portable device and the terminal, and facilitate communications to the terminal and to a communications network node through the terminal network communication interface; and
(2) fourth program code which is configured to be executed by the portable device processor in response to a communication received by the portable device resulting from user interaction with the interactive user interface;
wherein the portable device is configured to facilitate communications through the communication node on the terminal and the terminal network interface to a communications network node.
2. The portable device according to claim 1, wherein the fourth program code which, when executed by the portable device processor, is configured to cause a communication to be transmitted to the communication network node.
4. The portable device according to claim 2, wherein the communication caused to be transmitted to the communication network node facilitates the transmission of encrypted communications from the communication network node to the terminal.
7. The portable device according to claim 2, wherein the communication network node comprises a database and the communication caused to be transmitted to the communication network node facilitates the download of program code on the communication network node to the terminal.
The Board held that certain claims were anticipated by one of the cited references because no patentable weight was given to limitations that recite “encrypted communication” and “program code” (illustrative claims 4 and 7 reproduced above) under the printed matter doctrine.
The Federal Circuit reversed the Board’s determination of unpatentability of such claims because the Board erred in applying the printed matter doctrine to “encrypted communication” and “program code.”
Refresher on The Printed Matter Doctrine:
- “printed matter” is not patentable subject matter, and limitations that recite “printed matter” are not given patentable weight
- while this doctrine started out with literally “printed” material (information printed on paper), it has evolved over time to encompass “conveyance of information using any medium,” and “any information claimed for its communicative content”
- the printed matter doctrine prohibits patenting printed matter unless it is “functionally related” to its “substrate” (“substate” includes the structural elements of the claim)
- To determine the existence of a functional relationship, the court considers whether the printed matter merely informs people of the claimed information, or whether it instead interacts with the other elements of the claim to create a new functionality in a claimed device or to cause a specific action in a claimed process.
The Federal Circuit applied a two-step test to determine whether a limitation should be accorded patentable weight under the printed matter doctrine.
Step 1: determine whether the limitation in question is directed toward printed matter. The focus is on whether the limitation is claiming certain informational content or “matter claimed for what it communicates.”
Examples of “printed matter” provided by the court include: an FDA label providing dosage instructions for using a medical product; a label instructing a patient to take a drug with food; instructions on how to perform a DNA test; and numbers printed on a wristband.
Only if the limitation in question is determined to be “printed matter,” then Step 2 asks “whether the printed matter nevertheless should be given patentable weight … if the claimed informational content has a functional or structural relation to the substrate.”
Here, claims 4 and 7 are illustrative of the issue regarding application of the printed matter doctrine. Claim 4 depends from claim 2 which causes a communication to be transmitted from the portable device to a communication network node. Claim 4 recites “wherein the communication caused to be transmitted to the communication network node facilitates the transmission of encrypted communications from the communication network node to the terminal.” The Board held that the “encrypted communications” in claim 4 claimed only the communicative content (i.e., “printed matter”) whose transmission is being facilitated and there is “no functional relationship of the encrypted data to the communication carrying it.”
However, the Federal Circuit disagreed. The court clarified that “printed matter is matter that is claimed for its communicative content – i.e., the content specifically being communicated.”
The fact that there is a communication itself is not content; content is what the communication actually says. Nor is the form of a communication, such as whether the communication is encrypted, considered to be content. Printed matter encompasses what is communicated – the content or information being communicated – rather than the act of a communication itself.
With regard to claim 7, the Board likewise applied the printed matter doctrine to decline giving patentable weight to the “program code” limitation. Claim 7 also depends from claim 2 and recites that “the communication caused to be transmitted to the communication network node facilitates the download of program code on the communication network node to the [portable device’s] terminal.” The Board held that the “program code” is printed matter “because it claims the content of the information that is downloaded” and that downloaded code has no functional relationship with the portable device or the portable device’s terminal.
Again, the Federal Circuit disagreed. The court found that the “program code” is not being claimed for its communicative content. No informational content contained within the “program code” is being claimed. Nothing is recited about the contents of the claimed “program code.”
Takeaways:
For application of the printed matter doctrine to preclude patentable weight for a limitation containing the printed matter, the focus is on whether the claim reciting, or relies on, the communicative content of that “printed matter” – “the content specifically being communicated.” This case draws a clear distinction between “communication” or “program code” versus the communicative content or information being communicated or conveyed in that “communication” or “program code.”
Software Patents Demand Specific, Technologically Grounded Claims
| May 3, 2024
AI Visualize, Inc. vs. Nuance Communications, Inc. and Mach7 Technologies, Inc.
Decided: April 4, 2024
Before: MOORE, Chief Judge, REYNA, and HUGHES, Circuit Judges.
Summary
The Federal Circuit upheld a district court decision that dismissed AI Visualize’s patent infringement lawsuit against Nuance Communications and Mach7 Technologies. The court agreed with the lower court’s finding that the patents claimed patent-ineligible subject matter under 35 U.S.C. § 101, focusing on abstract ideas without enough inventive concept to warrant patent protection.
Background
AI Visualize asserted that Nuance Communications and Mach7 Technologies had infringed on its patents related to the visualization of medical scans through a web-based portal. The patents at issue include four patents: U.S. Patent Nos. 8,701,167; 9,106,609; 9,438,667; and 10,930,397. All these patents share a common specification that describes systems and methods aimed at improving the access and visualization of volumetric medical data, such as that obtained from MRI and CT scans, through a web-based portal. The patented technology demonstrates a centralized system that processes medical scan data and visualizes it remotely, allowing efficient transmission of three-dimensional views over low-bandwidth connections, thus facilitating better diagnostic capabilities across diverse medical environments.
The central dispute revolved around whether the patented methods and systems constituted an abstract idea under the Alice two-step framework. Nuance and Mach7 argued that the patent claims failed to transform this abstract idea into a patent-eligible application due to lack of an inventive concept. The district court agreed, finding that the patents were directed to the basic concept of manipulating and displaying data, a task it considered routine and conventional in the field.
Claim 1 of the ‘609 patent, representing the first group of claims, was central to this dispute.
1. A system for viewing at a client device at a remote location a series of three-dimensional virtual views over the Internet of a volume visualization dataset contained on at least one centralized database comprising:
at least one transmitter for accepting volume visualization dataset from remote location and transmitting it securely to the centralized database;
at least one central data storage medium containing the volume visualization dataset;
a plurality of servers in communication with the at least one centralized database and capable of processing the volume visualization dataset to create virtual views based on client request;
a resource manager device for load balancing the plurality of servers;
a security device controlling the plurality of communications between a client device, and the server; including resource manager and central storage medium;
at least one physically secured site for housing the centralized database, plurality of servers, at least a resource manager, and at least a security device;
a web application adapted to satisfy a user’s request for the three-dimensional virtual views by: a) accepting at a remote location at least one user request for a series of virtual views of the volume visualization dataset, the series of views comprising a plurality of separate view frames, the remote location having a local data storage medium for storing frames of views of the volume visualization dataset, b) determining if any frame of the requested views of the volume visualization dataset is stored on the local data storage medium, c) transmitting from the remote location to at least one of the servers a request for any frame of the requested views not stored on the local data storage medium, d) at at least one of the servers, creating the requested frames of the requested views from the volume visualization dataset in the central storage medium, e) transmitting the created frames of the requested views from at least one of the servers to the client device, f) receiving the requested views from the at least one server, and displaying to the user at the remote location the requested series of three-dimensional virtual views of the volume visualization dataset by sequentially displaying frames transmitted from at least one of the servers along with any frames of the requested series of views stored on the local data storage medium.
Discussion
The Federal Circuit’s analysis focused on whether the district court was correct in its application of the Alice two-step test for patent eligibility. This two-step framework is critical for determining whether a patent’s claims involve patent-eligible subject matter under Section 101.
In the first step of the Alice analysis, the court examines whether the claims at issue are directed to an abstract idea. For AI Visualize’s patents, the Federal Circuit assessed whether the system and method for visualizing medical scans, as claimed, merely recited an abstract concept without applying or using it in a uniquely technological manner.
The court found that the patents were primarily directed to the abstract idea of manipulating and displaying data, specifically the storage, retrieval, and graphical representation of medical imaging data. The court referenced their conclusion in Hawk Tech. Sys., LLC v. Castle Retail, LLC, 60 F.4th 1349 (Fed. Cir. 2023), noting that “converting information from one format to another . . . is an abstract idea.”
Having determined that the claims were directed to an abstract idea, the court then proceeded to step two of the Alice test, which involves determining whether the claim elements, either individually or as an ordered combination, add something significantly more to the abstract idea to transform the claim into patent-eligible subject matter. This “something more” must be an inventive concept that is not merely an instruction to implement or apply the abstract idea on a generic computer or using generic technology.
In reviewing AI Visualize’s claims, the court concluded that the methods described for processing and visualizing medical data did not involve an inventive concept sufficient to warrant patent protection. The claims were found to involve routine and conventional computer functions that are generic enough to be performed on any computer network. This included the creation of virtual views from medical data, transmitting these views over low-bandwidth networks, and enabling remote access via a web portal—none of which constituted a technological improvement over existing practices.
AI Visualize cites several sections of the specification to argue that creating virtual views offers a technical solution to a technical problem. This includes a section that explains how dynamic and static virtual views are formed by selecting related image frames from a volume visualization dataset. However, the court declined to consider details from the specification that are not specifically claimed.
Moreover, the court noted that the claimed invention did not solve a technical problem in an innovative way but rather applied a known solution (data manipulation and visualization) to a practice long prevalent in the field of computer systems.
The decision reaffirms the strict standards imposed by the Federal Circuit for patent eligibility under Section 101, emphasizing that a patent’s claims must do more than simply apply an abstract idea using conventional and well-understood applications. They must demonstrate a specific, inventive concept that enhances the technological process in a non-obvious way. This ruling highlights the challenges patent applicants face in securing protection for software-based innovations, particularly those that could be viewed as abstract ideas without clear, specific, and technologically rooted implementations.
Takeaway
- The decision reinforces the importance of demonstrating a specific, technologically rooted inventive concept in patent claims, particularly in fields involving software and data manipulation.
- Patents that broadly claim the performance of “abstract ideas” such as data retrieval and display without a clearly defined inventive mechanism are likely to face challenges under 35 U.S.C. § 101.
- It is essential to provide detailed technical descriptions in patent applications and include technological specificity in the patent claims to effectively present the unique contributions.
Tags: abstract idea > Data Manipulation > Mayo/Alice Test > patent eligibility
Result-Effective-Ugh…a Bridge Too Far?
| April 25, 2024
Pfizer Inc. v. Sanofi Pasteur Inc.
Decided: March 5, 2024
Result-Effective Variable; Obviousness
Before LOURIE, BRYSON, and STARK, Circuit Judge. Opinion drafted by LOURIE.
Summary:
Pfizer appealed to the Federal Circuit following rulings from five inter partes review proceedings petitioned by Sanofi challenging all claims of Pfizer’s U.S. Patent No. 9492559 (‘559 Patent). The ‘559 Patent claims immunogenic compositions comprising glycoconjugates of various Streptococcus pneumoniae serotypes for use in pneumococcal vaccines. Independent claim 1 is as follows (emphasize added):
- An immunogenic composition comprising a Streptococcus pneumoniae serotype 22F glycoconjugate, wherein the glycoconjugate has a molecular weight of between 1000 kDa and 12,500 kDa and comprises an isolated capsular polysaccharide from S. pneumoniae serotype 22F and a carrier protein, and wherein a ratio (w/w) of the polysaccharide to the carrier protein is between 0.4 and 2.
The Board instituted review based on each petition and issued final written decisions which, taken together, found all claims unpatentable. Pfizer raised four challenges on appeal. The first, which will be the only challenge discussed herein, alleged that the Board erred in determining that the ‘559 Patent was obvious based on prior art references PCT Patent Application Publication 2007/071711 (“GSK-711”) and U.S. Patent Application Publication 2011/0195086 (“Merck-086”).
The Board recognized that neither GSK-711 nor Merck-086 disclosed any molecular weight for a S. pneumoniae serotype 22F glycoconjugate, as required by claim 1 of the ’559 Patent, but nevertheless concluded that, based on the evidence of record, glycoconjugate molecular weight is a result-effective variable that a person of ordinary skill in the art would have been motivated to optimize to provide a conjugate having improved stability and good immune response. It is here that Pfizer argued the Board erred, because it is undisputed that the prior art does not disclose any molecular weight for the claimed serotype 22F glycoconjugate, there could be no presumption of obviousness. The CAFC disagreed.
The CAFC begin by stating that “the determination whether or not a claimed parameter is a result-effective variable is merely one aspect of a broader routine optimization analysis.”
The CAFC followed that “an overlap between a claimed range and a prior art range creates a presumption of obviousness that can be rebutted with evidence that the given parameter was not recognized as result-effective. See Genentech, Inc. v. Hospira, Inc., 946 F.3d 1333, 1341 (Fed. Cir. 2020) (citing E.I. DuPont, 904 F.3d at 1006); In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012).” However, they emphasized that this “does not mean that the determination whether or not a variable is result-effective is only appropriate when there is such an overlap.” Rather 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.” In re Antonie, 559 F.2d 618, 620 (CCPA 1977).”
Thus, the CAFC concluded that the Board did not err in considering, as part of its obviousness analysis, whether or not the claimed molecular weight of a S. pneumoniae serotype 22F glycoconjugate was a result-effective variable, dispute the cited references being silent thereon.
It was ultimately concluded that “substantial evidence supports the Board’s conclusion that the molecular weight recited in claim 1 would have been obvious over the references.” Such evidence included the fact that GSK-711 gave the molecular weights for fourteen other S. pneumoniae serotype glycoconjugates, and that Expert Testimony showed that, at the time of the invention, conjugation techniques and conditions were routine such that a person of ordinary skill in the art would have understood the claimed molecular weight to be “typical of immunogenic conjugates.”
Comments:
An argument against a Result-Effective Variable assertion may be weakened, even when the prior art is silent on said variable, if a PHOSITA can bridge the gaps in the teaching with a reasonable success based on the evidence overall. Thus, it may be necessary to demonstrate more than simply the variable not being recognized by the reference. That is, one may also have to show there is no reasonable expectation of success in said variable
Written Description Compliance Requires Lack of Different Inventions Achieved by Claimed and Disclosed Ranges
| April 19, 2024
RAI STRATEGIC HOLDINGS, INC. v. PHILIP MORRIS PRODUCTS S.A
Decided: February 9, 2024
Chen, Stoll, and Cunningham. Opinion by Stoll.
Summary
The CAFC addressed a question of written description compliance where a numerical range set forth in a patent claim is narrower than and encompassed by a disclosed range in the specification. The CAFC found that the written description requirement is met under fact-specific circumstances where substantial evidence indicates that a skilled artisan would see no different inventions resulting from the claimed range and the disclosed range.
Details
RAI appealed a final written decision by the Patent Trial and Appeal Board in a post-grant review (PGR) finding certain claims of RAI’s U.S. Patent No. 10,492,542 (“the ’542 patent”) unpatentable. RAI challenged, among other issues,[1] the Board’s finding that claims 10 and 27 of the ’542 patent lack adequate written description under 35 U.S.C. § 112.
The ’542 patent relates to electrically powered “smoking articles” which, as in e-cigarettes, use an electrical heating element to heat tobacco or like substance to form an inhalable vapor or aerosol. Claims 10 and 27—added by preliminary amendment in the underlying application which is a continuation from a former application having no such claims in the original filing—specify that the heating element has a certain range of length, which is not disclosed verbatim in the specification.
The written description requirement is a question of fact subject to substantial evidence review. The CAFC prefaced the written description analysis with the general threshold for compliance: the disclosure must “reasonably convey[ to a skilled artisan] that the inventor had possession of the claimed subject matter as of the filing date.” The CAFC then discussed precedents finding written description support, or lack thereof, for claimed ranges that are narrower than ranges described in specifications.
Courts finding adequate written description: Wertheim, Blaser, Kolmes[2]
In Wertheim, the parameter at issue was “solids content of the concentrated coffee extract.” The claimed range “between 35% and 60%” was found adequately supported by the specification disclosing a broader range of “25% to 60%” along with specific examples where the parameter was either “36% or 50%.” The Wertheim court held that presence of a clear indication that “the broad described range pertains to a different invention than the narrower (and subsumed) claimed range” (emphasis added) would negate adequacy of written description, whereas absence of such indication would support written description compliance.
Two subsequent courts followed Wertheim. InBlaser, the claimed range of temperature for heating a reaction blend for acylation, “80º to 200º C.” was found adequately supported by the disclosure of a broader range of “between 60º and 200º C.” In Kolmes, the claimed range of wrapping rate for cut-resistant yarn, “8–12 turns per inch,” was found adequately supported by the disclosure of a broader range of “4–12 turns per inch, with 8 turns per inch being preferred.”
Courts finding no adequate written description: Baird, Indivior[3]
Baird involved a patent application which included claims copied from an issued patent for an interference proceeding, i.e., the applicant was not the original author of the copied claims. The parameter at issue was a quench bath temperature in production of stretch-orienting polypropylene. The claimed range was “from about 40[º F] to … about 60 [º F].” While this range was explained in the issued patent as having certain criticality, the applicant’s specification disclosed a broader range of “between 32º F and 176º F,” while silent on the narrower range. Finding lack of adequate support, the Baird court reasoned that the copied claim pertained to a “different” invention from that disclosed in the specification.
In Indivior, the parameter at issue was a concentration of certain polymers in thin film formulation. Disputed claims recited two numerical ranges: (A) “about 40 wt % to about 60 wt %” and (B) “about 48.2 wt % to about 58.6 wt %.” The specification disclosed broader ranges—or lower bounds without express upper bounds—of “at least 25” and “at least 50,” as well as specific instances of “48.2” and “58.6” gleaned from data tables. The specification also stated that the parameter may be at “any desired level.” The claimed range (A) failed the written description requirement because the specification did not literally recite the range or the endpoints, while the “any desired level” statement obscured the scope of the invention. The claimed range (B) also failed the written description requirement because, although the endpoints were disclosed at least implicitly, it was unclear that the specification described the range bound by these endpoints.
Application to Claims 10 and 27 of the ’542 patent
After summarizing the precedents, the CAFC turned to the claims at issue. Claims 10 and 27 both recite that a heating member used in the smoking device has “a length of about 75% to about 85% of a length of the disposable aerosol forming substance.” The specification describes four progressively narrow, nested ranges for the parameter: “about 75% to about 125%,” “about 80% to about 120%,” “about 85% to about 115%,” and “about 90% to about 110%.” The Board’s finding of no written description was driven by the fact that the upper endpoint “85%” of the claimed range does not have a corresponding upper endpoint in any of the disclosed ranges.
The CAFC found that the written description requirement is met. To reach the conclusion, the CAFC centered its analysis on “different invention” test set forth in Wertheim, restating that “[t]he specification need not expressly recite the claimed range to provide written description support.” The factual inquiry looked to specific factors, including:
- Express disclosure in the specification: Although the claimed range itself is not literally disclosed, both of its endpoints are identified as part of the disclosed ranges.
- Predictability and complexity of the invention: Since the smoking device invention relates to a relatively predictable, electro-mechanical field, and the claim language is simple, the level of clarity or details required to satisfy the written description requirement is low.
- Lack of indication that the claimed parameter affects the invention: The specification nowhere indicates that “operability, effectiveness, or any other parameter” of the invention is impacted by changing the claimed parameter.
Based thereon, the CAFC found no “different invention” arising from the claimed range than that disclosed in the specification.
The CAFC distinguished Indivior and Baird relied upon by the Board. Unlike Indivior, the ’542 patent discloses the endpoints and contains no inconsistent statements regarding the range (e.g., that “any desired level” may work); plus the predictability of the electro-mechanical invention is higher than the chemical invention set forth in the Indivior claims. Also, unlike Baird where the claimed range was shown to have criticality over the boarder disclosed range, no evidence was presented in the present case that the broader disclosed range operates differently than the claimed range.
Additionally, the CAFC dismissed an expert testimony offered by Phillip Morris pointing to different center points of the disclosed range (100%) and the claimed range (80%). The expert evidence was not enough to overcome the intrinsic evidence and the case law supporting adequacy of the written description.
Takeaways
This case exemplifies one way in which a court may apply case-by-case analysis of written description compliance. Where the claimed range is narrower than and subsumed in the disclosed range, the “different invention” test may not only examine the express disclosure and the nature of the technology, but also may consider whether varying the parameter inside and outside the claimed range would make any difference.
While the test could be useful in establishing written description support—given that a patent specification typically describes numerical ranges in connection with one general inventive concept—caution should be used in asserting lack of different inventions emanating from different numerical ranges; such admission might be used by an opponent to support obviousness of the claimed range. The dilemma may be avoided, for example, by drafting an original disclosure to describe both commonalities and differences across broad and narrow ranges as well as specific values of a key parameter.
[1] RAI’s other argument challenged the Board’s obviousness finding of other claims of the ’542 patent, which was affirmed by the CAFC on appeal.
[2] In re Wertheim,541 F.2d 257 (C.C.P.A. 1976), In re Blaser, 556 F.2d 534 (C.C.P.A. 1977), and Kolmes v. World Fibers Corp., 107 F.3d 1534 (Fed. Cir. 1997).
[3] In re Baird,348 F.2d 974 (C.C.P.A. 1965), and Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A., 18 F.4th 1323 (Fed. Cir. 2021).
Depends On How You Slice It: CAFC reverses PTAB on Weber v. Provisur IPR ruling
| April 5, 2024
Weber, Inc. v. Provisur Tech. Inc.
Decided: February 8, 2024
Before Reyna, Hughes and Stark. Authored by Reyna
Summary: The Court reversed the PTAB’s finding that Weber’s instruction manuals did not qualify as printed publications under 35 USC §102. The Court also reversed key claim construction taken by the PTAB in upholding Provisur’s patents.
Background:
Provisur sued Weber for patent infringement on two patents, USP 10,639,812 (“’812 patent”) and 10,625,436 (“’436 patent”) relate to high-speed mechanical slicers used in food-processing plants. Weber countered by filing IPR proceedings against both patents at the USPTO Patent Trial and Appeal Board (PTAB). The PTAB found both the ‘812 and the ‘436 patentable. During the PTAB proceeding, Weber had attempted to use their own instruction manual for the slicer they sold as a prior art publication under 35 U.S.C. §102. The Board found that the instruction manual was not a “printed publication” under §102 on the basis that the manuals were controlled in their circulation to only customers or potential customers by a strict copyright and confidentiality clause.
Further, the PTAB had construed three terms from the slicer components, (1) the “food article loading apparatus”; (2) the “food article feed apparatus”; and (3) the “food article stop gate” in a manner that maintained the patents’ validity while excluding the disclosures in Weber’s manuals.
Weber appealed the Board’s finding that their instruction manual was not a printed publication under §102 and the claim construction of the three terms.
Decision:
(a) Weber’s Instruction Manual as a “Printed Publication”
The Board had relied upon the CAFC’s prior holding in Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009), in finding that Weber’s manuals were not “printed publications.” In Cordis, the references in question were two academic monographs describing an inventor’s work that were only distributed to a handful colleagues and two companies potentially interested in the technology.
The CAFC was quick to distinguish the current case from Cordis. First, the CAFC noted that the statutory phrase “printed publication” from § 102 has been defined to mean a reference that was “sufficiently accessible to the public interested in the art,” citing In re Klopfenstein, 380 F.3d 1345, 1348 (Fed. Cir. 2004) and that “public accessibility” was based on the relevant public being able to “locate the reference by reasonable diligence,” citing Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1376 (Fed. Cir. 2021). Next, the Court found that Weber’s operating manuals were created for dissemination to the interested public to provide instructions for Weber’s slicer. The Court stated the Weber manuals were in “stark contrast” to the confidential monographs in Cordis which were subject to “academic confidentiality norms.” The Court went on to describe that the evidence provided by employees of Weber, stating that the manuals were readily provided to potential buyers, clearly indicated that the manuals did in fact qualify as “printed publications” under §102.
The Court also found the Board’s reliance on the copyright and confidentiality of Weber’s manuals to be misplaced. The Board had keyed in on the copyright language restricting the reproduction or transfer of the manuals and Weber’s “terms and conditions” stating that documents related to a sale of a slicer “remain the property of” Weber. The CAFC was not convinced that these statements made the manuals confidential to the point of not being a “printed publication”, stating:
Weber’s assertion of copyright ownership does not negate its own ability to make the reference publicly accessible. Cf. Correge v. Murphy, 705 F.2d 1326, 1328–30 (Fed. Cir. 1983) (“A mere assertion of ownership cannot convert what was in fact a public disclosure and offer to sell to numerous potential customers into a non-disclosure.”). The intellectual property rights clause from Weber’s terms and conditions covering sales, likewise, has no dispositive bearing on Weber’s public dissemination of operating manuals to owners after a sale has been consummated.
The Court reversed the PTAB’s finding that Weber’s instruction manuals were not “printed publications” within the meaning of 35 U.S.C. §102.
(b) Claim Construction – “disposed over” and “stop gate”
The Court next addressed the PTAB’s claim construction as to the term “disposed over” as used in the claims. The Board had construed the term “disposed over” to require that the “feed apparatus and its conveyor belts and grippers are ‘positioned above and in vertical and lateral alignment with’ the food article loading apparatus and its lift tray assembly.” The Court rejected this interpretation asserting that it reads elements into the claim which are not present. The Court noted that the specification and prosecution history did not impart any limited meaning to the term “disposed over” and therefore there was no basis for including the additional aspect that the feed apparatus and loading apparatus were in alignment. Citing Cyntec Co. v. Chilisin Elecs. Corp., 84 F.4th 979, 986 (Fed. Cir. 2023), the Court held that “Had the patent drafter intended to limit the claims” to address the alignment of the conveyor belts and lift tray assembly between the apparatuses, “narrower language could have been used in the claim.”
Running Provisur through the figurative slicer, the Court noted that Provisur did not dispute that Weber’s manuals satisfy the limitation under Weber’s proposed construction (i.e. that alignment is not required between the feed and loading apparatus). Hence, they concluded that their review of the Board’s claim construction is dispositive of the issue and that the Weber manuals do disclose the “disposed over” limitation.
As to the “stop gate” term in the claims, Weber asserted that the Board erred in determining that the “product bed conveyer” disclosed in Weber’s operating manuals (as shown in Figures 10 and 227 thereof), does not disclose the “stop gate” limitation.
After analyzing the figures, the Court only commented that given these disclosures of the Weber manuals there was no substantial evidentiary support for the Board’s finding. Thus, the Court again reversed on the “stop gate” determinations.
Take aways:
- The Court clarifies the meaning of “printed publication” in 35 U.S.C. §102 by further defining the line between documents primarily intended to be confidential, such as the monographs in Cordis, and those primarily intended to be disseminated to the interested public, such as Weber’s manuals.
- By reversing the PTAB’s claim interpretation that had read a required alignment of parts into the claim where no such requirement was present, the Court also reiterates the standing law of claim construction that claim terms have their ordinary meaning unless intrinsic evidence demonstrates otherwise.
THE DOMESTIC INDUSTRY REQUIREMENT FOR AN ITC COMPLAINT CAN BE SATISFIED BASED ON A SUBSET OF A PRODUCT IF THE IP INVOLVES ONLY THAT SUBSET
| March 22, 2024
Roku, Inc. v. ITC
Decided: January 19, 2024
Before Dyk, Hughes, and Stoll. Opinion by Hughes.
Summary:
Universal Electronics, Inc. (“Universal”) filed a complaint against Roku in the International Trade Commission (ITC) for importing certain TV products that infringe U.S. Patent No. 10,593,196. The issues on appeal include whether the final determination of the ITC is proper in finding that (1) Universal had ownership rights to assert the ‘196 patent in the complaint; (2) Universal satisfied the economic prong of the domestic industry requirement under 19 U.S.C. § 1337(a)(3)(C) to bring a complaint at the ITC; and (3) Roku failed to demonstrate that the ‘196 patent was obvious over the prior art. The CAFC affirmed the ITC’s findings.
Details:
The ‘196 patent is to a device for allowing communication between various devices such as smart TVs and DVD players that may use different communication protocols such as wired connections (e.g., HDMI) or wireless communication (Wi-Fi or Bluetooth) that may be incompatible with each other. The ‘196 patent discloses a universal control engine (referred to as a “first media device” in the claims) that can scan various target devices (referred to as “second media devices” in the claims). The first media device receives wireless signals from various devices such as a remote control or an app on a tablet computer and can transmit commands using wired or IR signals to controllable devices such as TVs, DVRs or a DVD player.
Claim 1 is provided:
1. [pre] A first media device, comprising:
[a] a processing device;
[b] a high-definition multimedia interface communications port, coupled to the processing device, for communicatively connecting the first media device to a second media device;
[c] a transmitter, coupled to the processing device, for communicatively coupling the first media device to a remote control device; and
[d] a memory device, coupled to the processing device, having stored thereon processor executable instruction;
[e] wherein the instructions, when executed by the processing device,
[i] cause the first media device to be configured to transmit a first command directly to the second media device, via use of the high-definition multimedia communications port, to control an operational function of the second media device when a first data provided to the first media device indicates that the second media device will be responsive to the first command, and
[ii] cause the first media device to be configured to transmit a second data to a remote control device, via use of the transmitter, for use in configuring the remote control device to transmit a second command directly to the second media device, via use of a communicative connection between the remote control device and the second media device, to control the operational function of the second media device when the first data provided to the first media device indicates that the second media device will be unresponsive to the first command.
1. Ownership Issue
After filing its complaint, Universal filed a petition for correction of inventorship to add an inventor (Mr. Barnett) to the patent. Roku had filed a motion for summary determination before the ALJ that Universal lacked standing to assert the ‘196 patent because at the time Universal filed its complaint, it did not own all rights to the ‘196 patent. Roku argued that a 2004 agreement between Mr. Barnett and Universal did not constitute an assignment of rights.
The ALJ agreed stating that the 2004 agreement was a “mere promise to assign rights in the future, not an immediate transfer of expectant rights,” and thus, the 2004 agreement “did not automatically assign any of Mr. Barnett’s rights to the Provisional Applications of the ‘196 patent that eventually issued from the priority chain.”
The Commission reversed stating that there was a separate agreement in 2012 in which Mr. Barnett assigned all his rights to a series of provisional applications including the provisional which led to the ‘196 patent. The language of the assignment states that Mr. Barnett “hereby sell[s] and assign[s] … [his] entire right, title, and interest in and to the invention,” including “all divisions and continuations thereof, including the subject-matter of any and all claims which may be obtained in every such patent.” The Commission further found that Mr. Barnett did not contribute any new or inventive matter to the ‘196 patent after filing the provisional applications. The Commission found that the 2012 agreement constituted a “present conveyance” of Mr. Barnett’s rights in the ‘196 patent. The CAFC agreed with the Commission that the agreement constitutes a “present conveyance,” and thus, Universal had ownership rights to assert the ‘196 patent.
2. Domestic Industry Requirement – Economic Prong
To bring complaint at the ITC under Section 337, the complainant must possess a domestic industry in the United States. Domestic industry can be satisfied by showing “substantial investment in [a patent’s] exploitation, including engineering, research and development, or licensing.” 19 U.S.C. § 1337(a)(3)(C).
The Commission found that Universal had substantial investments in domestic engineering and R&D related to a platform called QuickSet which is incorporated into multiple smart TVs. The Commission found that the QuickSet platform involves software and software updates that result in practice of the asserted claims when implemented on the Samsung DI products and that Universal’s asserted expenditures are attributable to its domestic investments in R&D and engineering. The Commission further found that Universal’s investments go directly to the functionality necessary to practice many claimed elements of the ‘196 patent. The CAFC held that the Commission’s findings are supported by substantial evidence.
Roku attempted to frame the argument with regard to the TV as a whole rather than the QuickSet technology that is installed on those TVs to argue that Universal has not satisfied the domestic industry requirement. However, the CAFC stated that the domestic industry requirement “does not require expenditures in whole products themselves, but rather, sufficiently substantial investment in the exploitation of the intellectual property.” The CAFC further stated “a complainant can satisfy the economic prong of the domestic industry requirement based on expenditures related to a subset of a product, if the patent(s) at issue only involve that subset.” The CAFC held that the IP at issue in this case is practiced by QuickSet and the related QuickSet technologies, which is a subset of the entire TV.
3. Obviousness
Roku argued obviousness of the claims based on prior art references Chardon and Mishra. The parties agreed that Chardon disclosed all of the limitations of claim 1 except for limitation 1[e][ii]. Roku cited Mishra for teaching this feature. The ALJ found that Universal had presented evidence of secondary considerations showing that QuickSet satisfied a long-felt but unmet need that outweighed Roku’s obviousness case. The Commission went further regarding non-obviousness finding that the combination of Chardon and Mishra does not disclose a system that automatically configures two different control devices to transmit commands over different pathways. The Commission further found that Roku failed to present clear and convincing evidence of a motivation to combine the references.
On appeal, Roku merely argued that the Commission erred by accepting Universal’s evidence of secondary considerations. Roku argued that the Commission erred in finding a nexus between the secondary considerations of non-obviousness and the claims because some of the news articles presented by Universal discuss features in addition to QuickSet. The CAFC held that this argument is meritless because Roku did not dispute that QuickSet is discussed in the references that the Commission relied on.
The CAFC further stated that Roku did not challenge the actual findings that the combination of Chardon and Mishra does not disclose limitation 1[e], i.e., allowing for a choice between different second media devices. Thus, the Commission’s obviousness determination was affirmed.
Comments
When filing a patent infringement suit, make sure inventorship and ownership are clear, and make any necessary corrections before filing suit. When filing a complaint at the ITC, keep in mind that the domestic industry requirement does not require showing expenditures on whole products if the patent at issue only involves a subset of the product.
Inventor declaration not related to what is claimed or discussed in the patent would not help the patent to survive from patent eligibility attack in the pleading stage
| March 8, 2024
INTERNATIONAL BUSINESS MACHINES CORPORATION v. ZILLOW GROUP, INC., ZILLOW, INC.
Decided: January 9, 2024
Hughes (author), Prost, and Stoll
Summary:
The Federal Circuit affirmed the district court’s decision holding that the claims of two IBM’s patents are directed to patent ineligible subject matter under §101, and properly granting Zillow’s motion to dismiss under FRCP 12(b)(6).
Details:
IBM appealed a decision from the Western District of Washington, where the district court granted Zillow’s motion to dismiss under FRCP 12(b)(6). The district court held that all patent claims asserted against Zillow by IBM were directed to ineligible subject matter under 35 U.S.C. §101.
At issue in this appeal were IBM’s two patents – U.S. Patent Nos. 6,778,193 and 6,785,676.
The ’193 patent
The ’193 patent is directed to a “graphical user interface for a customer self-service system that performs resource search and selection.”
This patent is directed to improving how search results are displayed to a user by providing three visual workspaces: (1) a user begins by entering their search query into a “Context Selection Workspace”; (2) a user can further specify the details of their search in a “Detail Specification Workspace”; and (3) a user can view the results of their search in a “Results Display Workspace.”
Independent claim 1 is a representative claim:
1. A graphical user interface for a customer self service system that performs resource search and selection comprising:
a first visual workspace comprising entry field enabling entry of a query for a resource and, one or more selectable graphical user context elements, each element representing a context associated with the current user state and having context attributes and attribute values associated therewith;
a second visual workspace for visualizing the set of resources that the customer self service system has determined to match the user’s query, said system indicating a degree of fit of said determined resources with said query;
a third visual workspace for enabling said user to select and modify context attribute values to enable increased specificity and accuracy of a query’s search parameters, said third visual workspace further enabling said user to specify resource selection parameters and relevant resource evaluation criteria utilized by a search mechanism in said system, said degree of fit indication based on said user’s context, and said associated resource selection parameters and relevant resource evaluation criteria; and,
a mechanism enabling said user to navigate among said first, second and third visual workspaces to thereby identify and improve selection logic and response sets fitted to said query.
The ’676 patent
The ’676 patent is directed to enhancing how search results are displayed to users by disclosing a four-step process of annotating resource results obtained in a customer self service system that performs resource search and selection.”
Independent claim 14 is a representative claim:
14. A method for annotating resource results obtained in a customer self service system that performs resource search and selection, said method comprising the steps of:
a) receiving a resource response set of results obtained in response to a current user query;
b) receiving a user context vector associated with said current user query, said user context vector comprising data associating an interaction state with said user and including context that is a function of the user;
c) applying an ordering and annotation function for mapping the user context vector with the resource response set to generate an annotated response set having one or more annotations; and,
d) controlling the presentation of the resource response set to the user according to said annotations, wherein the ordering and annotation function is executed interactively at the time of each user query.
The District Court
Initially, IBM sued Zillow in the Western District of Washington for allegedly infringing five patents. The claims for two patents were dismissed, and Zillow filed a motion to dismiss under FRCP 12(b)(6) for the remaining three patents.
As for the ’676 patent, the district court found that the claims were merely directed to offering a user ‘the most beneficial and meaningful way’ to view the results of a query… and not advancing computer capabilities per se.”
The district court noted that four steps could be performed with a pen and paper, and that the claims were merely result-oriented.
Therefore, the district court found the asserted claims of the ’676 patent ineligible under §101.
As for the ’193 patent, the district court found that the claims were directed to the abstract idea of “more precisely tailoring the outcome of a query by guiding users (via icons, pull-down menus, dialogue boxes, and the like) to make choices about specific context variables, rather than requiring them to formulate and enter detailed search criteria.”
The district court did not find user context icons, separate workstations, and iterative navigation to be inventive concepts and held that they were well-understood, routine, or conventional at the time of the invention.
Therefore, the district court similarly found the asserted claims of the ’193 patent ineligible under §101.
The CAFC
The CAFC reviewed de novo.
As for the ’193 patent, the CAFC agreed with the district court that the claims do nothing more than improving a user’s experience while using a computer application.
Here, the CAFC noted that IBM failed to explain how the claims do anything more than identify, analyze, and present certain data to a user and that the claims did not disclose any technical improvement to how computer applications are used.
Furthermore, the CAFC agreed with the district court that IBM’s allegations of inventiveness “do[] not . . . concern the computer’s or graphical user interface’s capability or functionality, [but] relate[] merely to the user’s experience and satisfaction with the search process and results.”
Finally, the CAFC noted that the inventor declaration (“one of the key innovative aspects of the invention of the ’193 patent was not just the multiple visual workspaces alone, but how these various visual workspaces build upon each other and interact with each other,” as well as “the use of one visual workspace to affect the others in a closed-loop feedback system.”) did not cite the patent at all, and that neither the claims nor the specification include any such information. Therefore, the CAFC held that simply including allegations of inventiveness in a complaint with the inventor declaration did not make the complaint survive at the pleading stage.
Accordingly, the CAFC affirmed the district court’s decision holding that the ’193 patent is directed to ineligible subject matter under §101 and granting Zillow’s motion to dismiss as to the ’193 patent.
As for the ’676 patent, the CAFC agreed with the district court that the claims are directed to an abstract idea of displaying and organizing information because the representative claims use results-oriented language without mentioning any specific mechanism to perform the claimed steps.
In addition, the CAFC agreed with the district court that IBM failed to plausibly allege any inventive concept that would render the abstract claims patent-eligible.
IBM argued that the district court erred by failing to consider a supposed claim construction dispute regarding the term “user context vector”.
However, the CAFC noted that Zillow adapted IBM’s construction and did not propose an alternate construction. Therefore, the CAFC found that there was no claim construction dispute for the district court to resolve.
Accordingly, the CAFC affirmed the district court’s decision holding that the ’676 patent claimed ineligible subject matter under §101 and granting Zillow’s motion to dismiss as to the ’676 patent.
Dissenting opinion by Stoll
Stoll would vacate the district court’s holding of ineligibility of the claims of the ’676 patent because the majority, like the district court, did not meaningfully address IBM’s proposed construction of “user context vector.”
Takeaway:
- Conclusionary allegations of inventiveness in the inventor declaration would not help the patent to survive from patent eligibility attack in the pleading stage.
- The inventor declaration should be closely tied to the claims and the specification to help the patent to survive from patent eligibility attack.
Tags: 35 U.S.C. § 101 > declaration > Motion to Dismiss > patent eligible subject matter
The Twists and Turns of Claim Construction Issues in an IPR
| February 2, 2024
Parkervision v. Vidal
Decided: December 20, 2023
Summary:
Although patent owner ParkerVision’s claim construction was adopted in multiple district court litigations, it was not adopted by the PTAB in the IPR of the same patent. The Federal Circuit, reviewing claim construction de novo, affirmed the Board’s final decision. ParkerVision introduced the claim construction issue in its patent owner response, arguing that the claimed “storage element” should be construed as “an element of an energy transfer system that stores non-negligible amounts of energy from an input EM signal” and that the cited prior art did not teach the claimed “storage element” because its allegedly corresponding capacitors were not part of any energy transfer system. Intel filed a reply asserting that the interpretation of a “storage element” does not require it to be part of an energy transfer system. The Board and the Federal Circuit agreed. ParkerVision did not further argue in its patent owner response that the cited prior art’s capacitors failed the requirement that it store “non-negligible” amounts of energy from the input EM signal. ParkerVision included in its sur-reply that the cited prior art’s capacitors stored only a negligible amount of energy because “non-negligible” must be measured relative to the available energy of the input EM signal. The Board granted Intel’s motion to strike this part of ParkerVision’s sur-reply. The court affirmed, noting that there was no abuse of discretion when the Board refused to consider a new theory of patentability raised for the first time in a sur-reply.
Procedural History:
Intel petitioned for inter partes review (IPR) of claim 3 of Parkervision’s USP 7,110,444 (the ‘444 patent). There are related district court litigations involving the ‘444 patent and other related patents, which adopted a claim construction of a “storage element” aligned with Parkervision’s proposed claim construction. The Patent Trial and Appeal Board (the Board) adopted Intel’s claim construction of a “storage element” and issued a final decision that the ‘444 patent was obvious over cited prior art. Parkervision appealed. In issuing its final decision, the Board recognized that several district court cases involving the ‘444 patent adopted claim constructions inconsistent with Intel’s proposed construction. See, ParkerVision, Inc. v. Intel Corp., Nos. 6:20-cv-108-ADA, 6:20-cv-562-ADA (W.D. Tex.); ParkerVision, Inc. v. Hisense Co., Nos. 6:20-cv-870-ADA, 6:21-cv-562-ADA (W.D. Tex.); ParkerVision, Inc. v. TCL Indus. Holdings Co., No. 6:20-cv-945-ADA (W.D. Tex.); ParkerVision, Inc. v. LG Elecs. Inc., No. 6:21-cv-520-ADA (W.D. Tex.).
Decision:
Claim 3 of the ‘444 patent is as follows:
A wireless modem apparatus, comprising:
a receiver for frequency down-converting an input signal including,
a first frequency down-conversion module to down-convert the input signal, wherein said first frequency down-conversion module down-converts said input signal according to a first control signal and outputs a first down-converted signal;
a second frequency down-conversion module to down-convert said input signal, wherein said second frequency down-conversion module down-converts said input signal according to a second control signal and outputs a second down-converted signal; and
a subtractor module that subtracts said second down-converted signal from said first down-con-verted signal and outputs a down-converted signal;
wherein said first and said second frequency down-conversion modules each comprise a switch and a storage element.
The ‘444 patent relates to wireless local area networks (WLANs) that use frequency translation technology. In a two-device network using frequency translation, the first device receives a low-frequency baseband signal (audible voice signal) and up-converts it to a high-frequency electromagnetic (EM) signal before wireless transmission to the second device. The second device receives the EM signal, down-converts it back to a low-frequency baseband signal, and outputs an audible signal. The ‘444 patent is directed to down-converting EM signals using down-converter modules that include a switch and a storage element (also called a storage module).
The main issue in this case is the claim construction for a “storage element.”
ParkerVision contends that a “storage element” is an element of an energy transfer system that stores non-negligible amounts of energy from an input EM signal. A magistrate judge’s claim construction order in ParkerVision v. LG and a special master’s recommendation in ParkerVision v. Hisense and in ParkerVision v. TCL adopted ParkerVision’s proposed claim construction.
Intel contends that a “storage element” is “an element of a system that stores non-negligible amounts of energy from an input EM signal” – which does not require that the element be part of an energy transfer system. The Board adopted Intel’s claim construction. The Federal Circuit agreed. This is dispositive in the obviousness holding because ParkerVision’s patent owner response in the IPR focused exclusively on the prior art’s lack of an energy transfer system.
The ‘444 patent incorporated by reference USP 6,061,551 (the ‘551 patent) which provided the following disclosure critical to the meaning of a “storage element”:
1 FIG. 82A illustrates an exemplary energy transfer system 8202 for down-converting an input EM signal 8204. 2 The energy transfer system 8202 includes a switching module 8206 and a storage module illustrated as a storage capacitance 8208. 3 The terms storage module and storage capacitance, as used herein, are distinguishable from the terms holding module and holding capacitance, respectively. 4 Holding modules and holding capacitances, as used above, identify systems that store negligible amounts of energy from an under-sampled input EM signal with the intent of “holding” a voltage value. 5 Storage modules and storage capacitances, on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal.
(bracketed numbers identifying referenced sentences)
This is deemed “lexicographic” because “as used herein” in sentence #3 refers to the use of these terms (contained throughout the drawings and specification) in general, and not to specific embodiments, and “refer to” in sentence #5 links “storage modules” (parties agreed this is synonymous with “storage element”) to “systems that store non-negligible amounts of energy from an input EM signal.”
ParkerVision’s argued that the ‘551 paragraph was addressing examples in which storage modules are used in energy transfer systems in which holding modules, by contrast, are used in under-sampling systems. The court dismissed this because the comparative nature of the paragraph does not prevent it from being definitional. And, the court refused to incorporate an entire “energy transfer system” into the claim just because a single component (storage element) can be a part of such a system. The court also stated that the district court claim constructions by the magistrate judge and special masters do not alter its conclusion that the Board arrived at the correct construction.
Another, procedural, issue on appeal is whether (1) the Board erred in relying on Intel’s reply (raising this claim construction issue that “storage element” is not limited to being part of an “energy transfer system”) and (2) the Board erred in striking parts of ParkerVision’s sur-reply.
First, ParkerVision asserted that the Board erred in relying on Intel’s arguments allegedly raised for the first time in Intel’s reply. The presumed contention is that the Board deprived ParkerVision of its procedural rights under the Administrative Procedure Act (APA) and failed to comply with the USPTO’s rule that a reply “may only respond to arguments raised in the … patent owner response…” 37 C.F.R. § 42.23(b). The court reviews the Board’s compliance with the APA de novo, and the Board’s determination that a party violated USPTO rules for abuse of discretion. Under the APA, the Board must:
“timely inform[]” the patent owner of “the matters of fact and law asserted,” 5 U.S.C. § 554(b)(3), must provide “all interested parties opportunity for the submission and consideration of facts [and] arguments . . . [and] hearing and decision on notice,” id. § 554(c), and must allow “a party . . . to submit rebuttal evidence . . . as may be required for a full and true disclosure of the facts,” id. § 556(d).
Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016).
Neither petitioner nor patent owner expressly proposed any pre-institution claim construction. Post-institution, ParkerVision first proposed a new claim construction position in its patent owner response wherein “storage element” was construed as “an element of an energy transfer system that stores non-negligible amounts of energy from an input electromagnetic signal.” The APA required the Board to give Intel “adequate notice and an opportunity to respond under the new construction” proffered in ParkerVision’s patent owner response. As in Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374 (Fed. Cir. 2023), the court held that “where a patent owner in an IPR first proposes a claim construction in a patent owner response, a petitioner must be given the opportunity in its reply to argue and present evidence of anticipation or obviousness under the new construction….” Id. at 1384. Intel did just that. Intel’s reply countered that ParkerVision’s non-obviousness position that the cited prior art did not disclose the claimed “storage element” because it was not in an energy transfer system is misplaced because that term is not restricted to be an element of an energy transfer system.
Pursuant to the APA, the Board may not change theories mid-stream without giving the parties reasonable notice of its change. The Board’s adopting of Intel’s claim construction did not “change theories midstream without giving the parties reasonable notice of its change.” “Once ParkerVision introduced a claim construction argument into the proceeding through its patent owner response, Intel was entitled in its reply to respond to that argument and explain why that construction should not be adopted.” And, ParkerVision had an opportunity to respond to Intel’s proposed construction by filing its sur-reply, which continued to press for its own claim construction.
However, with regard to patentability (non-obviousness), ParkerVision added in its sur-reply, for the first time, that the cited prior art’s capacitors stored only a negligible amount of energy because “non-negligible” must be measured relative to the available energy of the input EM signal. This part of ParkerVision’s sur-reply was stricken by the Board. ParkerVision’s patent owner response asserted that the cited prior art capacitors must store non-negligible amounts of energy, but did not assert that the reference failed to meet that requirement (instead, merely arguing the capacitors are not part of an energy transfer system). Accordingly, its sur-reply offered a new theory of patentability. There is no abuse of discretion in declining to consider a new theory of patentability raised for the first time in sur-reply.
ParkerVision further asserted that its sur-reply arguments addressed allegedly new arguments in Intel’s reply. But, the Board noted:
[I]f [ParkerVision] believed [Intel’s] Reply raised an issue that was inappropriate for a reply brief or that [ParkerVision] needed a greater opportunity to respond beyond that provided by our Rules (e.g., to include new argument and evidence in its Sur-reply), it was incumbent upon [ParkerVision] to contact [the Board] and request authorization for an exception to the Rules. [ParkerVision] did not do so. [ParkerVision] did not request that its Sur-reply be permitted to include arguments and evidence that would otherwise be impermissible in a sur-reply.
The court faulted ParkerVision for not availing itself of the available procedural mechanisms. For these reasons, the court found no abuse of discretion in the Board’s exclusion of part of ParkerVision’s sur-reply.
Takeaways:
The existence of district court claim construction positions do not guarantee the same claim constructions being adopted by the Board. And, the Federal Circuit reviews claim construction issues de novo.
For the patent owner’s sur-reply, be wary of potentially “new” patentability positions being advanced that were not originally raised in the patent owner response. If any such “new” patentability positions are taken, be cognizant of the procedural mechanism to contact the Board and request authorization for an exception to the Rules to include arguments and/or evidence that may otherwise be impermissible in a sur-reply.
Claim Construction Should Be Well-Grounded in Both Intrinsic and Extrinsic Evidence
| January 15, 2024
ACTELION PHARMACEUTICALS LTD v. MYLAN PHARMACEUTICALS INC.
Decided: November 6, 2023
Before REYNA, STOLL, and STARK, Circuit Judges.
Summary
The Federal Circuit ruled that the patent claim term “a pH of 13 or higher” could not be interpreted solely based on the patent’s intrinsic evidence. The court remanded the case to the district court, instructing it to consider extrinsic evidence to determine the proper construction of this claim limitation.
Background
The case of Actelion Pharmaceuticals Ltd v. Mylan Pharmaceuticals Inc. involves a dispute over patent infringement related to epoprostenol, a drug used for treating hypertension. Actelion Pharmaceuticals, the patent holder, owns two patents of the drug: U.S. Patent Nos. 8318802 and 8598227. These patents disclose a pharmaceutical breakthrough in stabilizing epoprostenol using a high pH solution, which is otherwise unstable and difficult to handle in medical applications.
Mylan Pharmaceuticals, aiming to enter the market with a generic version of epoprostenol, filed an Abbreviated New Drug Application (ANDA). In this process, Mylan certified under Paragraph IV that the patents held by Actelion were either invalid or would not be infringed by Mylan’s manufacture, use, or sale of the generic drug. In response, Actelion asserted these patents against Mylan, claiming infringement.
The key issue in the dispute revolves around the interpretation of the phrase “a pH of 13 or higher” in the patent claims. This particular claim is crucial because the stability of epoprostenol is significantly impacted by the pH level of its solution. Actelion’s patents suggest that the epoprostenol bulk solutions should preferably have a pH adjusted to about 12.5 to 13.5 to achieve the desired stability. However, in the claims, Actelion’s patents only set the limitation as “a pH 13 or higher” as shown in claim 11 of the ’802 patent, a representative of the asserted claims:
11. A lyophilisate formed from a bulk solution comprising:
(a) epoprostenol or a salt thereof;
(b) arginine;
(c) sodium hydroxide; and
(d) water,
wherein the bulk solution has a pH of 13 or higher, and wherein said lyophilisate is capable of being reconstituted for intravenous administration with an intravenous fluid.
The dispute centered on the interpretation of the pH value specified in the patent claims. Actelion contended that the claim should encompass pH values that effectively round up to 13, including values like 12.5. Conversely, Mylan argued for a narrower interpretation, asserting that the claim should only cover pH values strictly at 13 or higher, thus excluding anything below this threshold, such as 12.5.
This interpretation was critical in determining whether Mylan’s generic version of epoprostenol would infringe upon Actelion’s patents. The district court initially adopted Actelion’s interpretation, which led to a stipulated judgment of infringement against Mylan.
Discussion
The Federal Circuit’s analysis began with a de novo review of the district court’s decision. The central question was whether the district court’s adoption of Actelion’s interpretation, which included pH values that could round up to 13 (such as 12.5), was appropriate. This broader interpretation affected the scope of the patent and the potential infringement by Mylan’s generic version of the drug. In scientific and technical contexts, the practice of rounding pH levels, such as rounding 12.5 to 13, depends on the specific requirements of the situation and the level of precision needed. pH is a logarithmic scale used to specify the acidity or basicity of an aqueous solution, and even small changes can represent significant differences in acidity or basicity.
Mylan Pharmaceuticals argued for a narrower interpretation of the term. They insisted that “a pH of 13” sets a definitive lower limit, suggesting that any pH value below 13, even those marginally lower like 12.995, would not fall within the scope of the patent. Mylan suggested that if a margin of error was considered necessary for a pH of 13, it should be minimal, encompassing a range only from 12.995 to 13.004. This interpretation was grounded in the belief that precision was implicit in the claim term, as the absence of approximation language like “about” in the claim suggested an exact value.
In contrast, Actelion Pharmaceuticals argued for a broader interpretation. They argued that the term should include values that round up to 13, thus potentially including values such as 12.5. Actelion’s argument was based on the principle that a numerical value in a patent claim includes rounding, dictated by the inventor’s selection of significant figures, unless the intrinsic record explicitly indicates a different intention. Actelion maintained that rounding was a common practice in scientific measurements and that the absence of specific approximation language did not necessarily dictate a precise value.
One of the key findings of the Federal Circuit was the inadequacy of intrinsic evidence to resolve the dispute conclusively. Intrinsic evidence, which includes the original patent claim language, specification, and prosecution history, is generally the primary resource for interpreting patent claims. However, in this case, these sources did not clearly define the precision of the pH value in question. The specification stated that, “the pH of the bulk solution is preferably adjusted to about 12.5-13.5, most preferably 13.” This language suggested that while the inventor recognized a preferred range (about 12.5-13.5), they specifically highlighted a most preferred value (13). The Federal Circuit also noted that the specification uses both “13” and “13.0” and various degrees of precision for pH values generally throughout the specification. Moreover, the prosecution history shows that the Examiner drew a distinction between the stability of a composition with a pH of 13 and that of 12. However, such distinction does not clarify the narrower issue of whether a pH of 13 could encompass values that round to 13, in particular 12.5.
The specifications and prosecution history left ambiguous whether the term referred exclusively to a pH of 13.0 or could include values that round up to 13. Recognizing this ambiguity, the Federal Circuit emphasized the need for extrinsic evidence to properly interpret the term. This approach is aligned with the Supreme Court’s guidance in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., which acknowledged the importance of considering such evidence in certain contexts of patent claim interpretation. The Federal Circuit decided to vacate the district court’s ruling and remand the case for further consideration of extrinsic evidence.
Takeaway
- Precise and specific wording in patent claims is crucial, especially in technical fields, as it defines the scope and protection of the invention.
- Although intrinsic evidence (claim language, specifications, and prosecution history) is primary in patent interpretation, it may not always be sufficient. In cases where intrinsic evidence is ambiguous or lacks clarity, extrinsic evidence such as expert testimonies, scientific literature, and other technical documents becomes crucial for a comprehensive understanding of the claim.
FUNCTIONAL CLAIMS REQUIRE MORE THAN JUST TRIAL-AND-ERROR INSTRUCTIONS FOR SATISFYING THE ENABLEMENT REQUIREMENT
| January 5, 2024
Baxalta Inc. v. Genentech, Inc.
Decided: September 20, 2023
Moore, Clevenger and Chen. Opinion by Moore
Summary:
Baxalta sued Genentech alleging that Genentech’s Hemlibra product infringes US Patent No. 7,033,590 (the ‘590 patent). Genentech moved for summary judgment of invalidity of the claims for lack of enablement. The district court granted summary judgment of invalidity. Upon appeal to the CAFC, the CAFC affirmed invalidity for lack of enablement citing the recent Supreme Court case Amgen v. Sanofi.
Details:
Baxalta’s patent is to a treatment for Hemophilia A. Blood clots are formed by a series of enzymatic activations known as the coagulation cascade. In a step of the cascade, enzyme activated Factor VIII (Factor VIIIa) complexes with enzyme activated Factor IX (Factor IXa) to activate Factor X. Hemophilia A causes the activity of Factor VIII to be functionally absent which impedes the coagulation cascade and the body’s ability to form blood clots. Traditional treatment includes administering Factor VIII intravenously. But this treatment does not work for about 20-30% of patients.
The ‘590 patent provides an alternative treatment. The treatment includes antibodies that bind to Factor IX/IXa to increase the procoagulant activity of Factor IXa which allows Factor IXa to activate Factor X in the absence of Factor VIII/VIIIa. Claim 1 of the ‘590 patent is provided:
1. An isolated antibody or antibody fragment thereof that binds Factor IX or Factor IXa and increases the procoagulant activity of Factor IXa.
The ‘590 patent describes that the inventors performed four hybridoma fusion experiments using a prior art method. And using routine techniques, the inventors screened the candidate antibodies from the four fusion experiments to determine whether the antibodies bind to Factor IX/IXa and increase procoagulant activity as claimed. Only 1.6% of the thousands of screened antibodies increased the procoagulant activity of Factor IXa. The ‘590 patent discloses the amino acid sequences of eleven antibodies that bind to Factor IX/IXa and increase the procoagulant activity of Factor IXa.
Citing Amgen Inc. v. Sanofi, 598 U.S. 594 (2023), the CAFC stated that “the specification must enable the full scope of the invention as defined by its claims, allowing for a reasonable amount of experimentation. Citing additional cases, the CAFC stated “in other words, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.”
Baxalta argued that one of ordinary skill in the art can obtain the full scope of the claimed antibodies without undue experimentation because the patent describes the routine hybridoma-and-screening process. However, the CAFC stated that the facts of this case are indistinguishable from the Amgen case in which the patent at issue provided two methods for determining antibodies within the scope of the claims. In Amgen, the Supreme Court stated that the two disclosed methods were “little more than two research assignments,” and thus, the claims fail the enablement requirement.
The CAFC described the claims in this case as covering all antibodies that (1) bind to Factor IX/IXa; and (2) increase the procoagulant activity of Factor IXa, and that “there are millions of potential candidate antibodies.” The specification only discloses amino acid sequences for eleven antibodies within the scope of the claims. Regarding the method for obtaining the claimed antibodies, the specification describes the following steps:
(1) immunize mice with human Factor IX/IXa;
(2) form hybridomas from the antibody-secreting spleen cells of those mice;
(3) test those antibodies to determine whether they bind to Factor IX/IXa; and
(4) test those antibodies that bind to Factor IX/IXa to determine whether any increase procoagulant activity.
The CAFC stated that similar to Amgen, this process “simply directs skilled artisans to engage in the same iterative, trial-and-error process the inventors followed to discover the eleven antibodies they elected to disclose.”
The Supreme Court in Amgen also stated that the methods for determining antibodies within the scope of the claims might be sufficient to enable the claims if the specification discloses “a quality common to every functional embodiment.” However, no such common quality was found in the ‘590 patent that would allow a skilled artisan to predict which antibodies will perform the claimed functions. Thus, the CAFC concluded that the disclosed instructions for obtaining claimed antibodies, without more, “is not enough to enable the broad functional genus claims at issue here.”
Baxalta further argued that its process disclosed in the ‘590 patent does not require trial-and-error because the process predictably and reliably generates new claimed antibodies every time it is performed. The CAFC stated that even if a skilled artisan will generate at least one claimed antibody each time they follow the disclosed process, “this does not take the process out of the realm of the trial-and-error approaches rejected in Amgen.” “Under Amgen, such random trial-and-error discovery, without more, constitutes unreasonable experimentation that falls outside the bounds required by § 112(a).”
Baxalta also argued that the district court’s enablement determination is inconsistent with In re Wands. The CAFC disagreed stating that the facts of this case are more analogous to the facts in Amgen, and the Amgen case did not disturb prior enablement case law including In re Wands and its factors.
Comments
When claiming a product functionally, make sure your specification includes something more than just trial-and-error instructions. The CAFC suggested in this case that the enablement requirement may be satisfied if the patent discloses a common structural or other feature delineating products that satisfy the claims from products that will not. The CAFC also suggested that a description about why the actual disclosed products perform the claimed functions or why other products do not perform the claimed function would be helpful for satisfying the enablement requirement.
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