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CAFC Finds Claim Limitations Missing in the Prior Art May Still Be Obvious with Common Sense

| July 13, 2020

B/E AEROSPACE, INC. v.  C&D ZODIAC, INC

June 26, 2020

Lourie, Reyna, and Hughes, Opinion by Reyna.

Summary:

On appeal from an inter partes review proceeding wherein the petitioner, C&D Zodiac, Inc. (“Zodiac”), successfully challenged two patents owned by B/E Aerospace, Inc. (“B/E”), U.S. Patent No. 9,073,641 (“the ’641 patent”) and U.S. Patent No. 9,440,742 (“the ’742 patent”) B/E asserted that the PTAB had failed to consider all the limitations of the claims.   The patents involved space-saving technologies for aircraft enclosures, such as lavatory enclosures, designed to “reduce or eliminate the gaps and volumes of space required between lavatory enclosures and adjacent structures.” 

The CAFC concluded that the Board’s final determination of obviousness by predictable result of a known element and common sense was correct and therefore affirmed the Board’s decision. 

Details:

Claim 1 of the ’641 patent was designated as representative of the challenged claims.  

The appeal focused on the “first recess” and “second recess” limitations, labeled as elements 34 and 100, respectively, in Figure 2 of the ‘641 patent reproduced below.

The IPR had only one instituted ground: that the challenged claims were obvious over the “Admitted Prior Art” and U.S. Patent No. 3,738,497 (“Betts”). The “Admitted Prior Art” included Figure 1.  Betts discloses an airplane passenger seat with tilting backrest.  Rather than a flat forward-facing wall, Betts discloses a contoured forward-facing wall to receive the tilted backrest.  The Court noted that the “lower portion 30” of Betts slants rearwardly to provide space for a seatback 12 and the top 32 of the storage space 16 also slants rearwardly to not interfere with the seatback 12.

The PTAB had ruled that the Bett’s contoured wall design met the “first recess” limitation and that skilled artisans (airplane interior designers) would have been motivated to modify the flat forwardfacing wall of the lavatory in the Admitted Prior Art with Betts’s contoured, forward-facing wall to preserve space in the cabin. 

While the cited art does not disclose the “second recess” to receive passenger seat supports, the Board agreed with Zodiac that creating a recess in the wall to receive the seat support was an obvious solution to a known problem and found that Zodiac “established a strong case of obviousness based on the Admitted Prior Art and Betts, coupled with common sense and the knowledge of a person of ordinary skill in the art.”

B/E’s appeal argued that the Board’s obviousness determination is erroneous because it improperly incorporated a second recess limitation not disclosed in the prior art.

Analysis

The CAFC determined that only the “second recess” limitation was at issue.  They found no error in the PTAB’s approaches to finding the “second recess” obvious.  First noting that the prior art yields a predictable result, the “second recess,” because a person of skill in the art would have applied a variation of the first recess and would have seen the benefit of doing so.  The Court noted the evidence provided by Zodiac’s expert and quoted the often cited KSR recitation: “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. . . . If a person of ordinary skill in the art can implement a predictable variation § 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

The Court further affirm the Board’s conclusion that the challenged claims would have been obvious because “it would have been a matter of common sense” to incorporate a second recess in the Admitted Prior Art/Betts combination.  B/E argued that the Board legally erred by relying on “an unsupported assertion of common sense” to “fill a hole in the evidence formed by a missing limitation in the prior art.”   The Court again cited KSR, noting that common sense teaches that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.  Id at 421.  (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”).  They found the PTAB’s “invocation of common sense was properly accompanied by reasoned analysis and evidentiary support” noting that the Board dedicated more than eight pages of analysis to the “second recess” limitation and relied on detailed expert testimony.

The Court noted their decision in Perfect Web Techs, Inc. v. InfoUSA, Inc., that “[c]ommon sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.”  587 F.3d 1324, 1328 (Fed. Cir. 2009).  They concluded that the Board properly adequately explained their reasoning that the missing claim limitation (the “second recess”) involves repetition of an existing element (the “first recess”) until success is achieved (reasoning that the logic of using a recess to receive the seat back applies equally to using another recess to receive the aft extending seat support).

The CAFC therefore affirmed the PTAB’s finding of the challenged claims unpatentable.

Take Aways

Patent holders need to be cautious in relying on simple limitations.  Such limitations may be considered obvious even if not clearly recited in the prior art.  Consideration of whether the use of common sense by a skilled artisan would result in the inclusion of the limitation needs to be taken into consideration.

Nexus for Secondary Considerations requires Coextensiveness between a product and the claimed invention

| June 26, 2020

Fox Factory, Inc. v. SRAM, LLC

May 18, 2020

Lourie, Mayer and Wallach. Opinion by Lourie.

Summary:

SRAM sued Fox Factory for infringing U.S. Patent 9,291,250 (the ‘250 patent) and the parent patent U.S. Patent 9,182,027 (the ‘027 patent) to bicycle chainrings having teeth that alternate between widened teeth that better fit a gap between outer plates of a chain and narrower  teeth to fit a gap between inner plates of a chain. Fox Factory filed IPRs against each patent. SRAM provided evidence of secondary considerations and argued that a greater than 80% gap-filling feature of the X-Sync chainring was crucial to its success for solving chain retention problem. The PTAB held that both patents are not unpatentable as obvious relying in part on secondary consideration evidence provided by SRAM. On appeal, the CAFC vacated the PTAB’s decision with regard to the ‘027 patent because the SRAM X-Sync chainring is not coextensive with the claims of the ‘027 patent that do not recite the greater than 80% gap-filling feature. However, the CAFC affirmed the PTAB’s decision for the ‘250 patent because the claims include the greater than 80% gap-filling feature.

Details:

The ’250 patent and the ‘027 patent are to bicycle chainrings. Some figures of the patents are provided below.

This chainring is designed to be a solitary chainring that does not need to switch between different size chainrings. Since it is a solitary chainring, the chainring can be designed to provide a tighter fit with the chain. A conventional chain has links that are alternatingly narrow and wide, but the conventional chainring has teeth that are all the same size. SRAM designed a chairing to have alternating teeth having widened teeth to fit the wide gaps and narrow teeth to fit the narrower gaps. SRAM’s product the X-Sync chainring that implements this design has been praised for its chain retention.

Claim 1 of the ‘250 patent is provided:

1. A bicycle chainring of a bicycle crankset for engagement with a drive chain, comprising:

a plurality of teeth extending from a periphery of the chainring wherein roots of the plurality of teeth are disposed adjacent the periphery of the chainring;

the plurality of teeth including a first group of teeth and a second group of teeth, each of the first group of teeth wider than each of the second group of teeth; and

at least some of the second group of teeth arranged alternatingly and adjacently between the first group of teeth,

wherein the drive chain is a roller drive chain including alternating outer and inner chain links defining outer and inner link spaces, respectively;

wherein each of the first group of teeth is sized and shaped to fit within one of the outer link spaces and each of the second group of teeth is sized and shaped to fit within one of the inner link spaces; and

wherein a maximum axial width about halfway between a root circle and a top land of the first group of teeth fills at least 80 percent of an axial distance defined by the outer link spaces.

In the IPR for the ‘250 patent, Fox Factory cited JP S56-42489 to Shimano and U.S. Patent 3,375,022 to Hattan. Shimano teaches a bicycle chainring with widened teeth to fit into the outer chain links of a conventional chain. Hattan describes that a chainring’s teeth should fill between 74.6% and 96% of the inner chain link space. Fox Factory argued that the claims would have been obvious because one of ordinary skill in the art would have seen the utility in designing a chainring with widened teeth to improve chain retention as taught by Shimano, and one of ordinary skill in the art would have looked to Hattan’s teaching with regard to the percentage of the link space that should be filled.

The PTAB held the claims to be non-obvious because of the axial fill limitation “at the midpoint of the teeth.” The PTAB found that Hattan taught the fill percentage at the bottom of the tooth instead of at the midpoint. The PTAB also found that SRAM’s evidence of secondary considerations rebutted Fox Factory’s arguments of obviousness.

On appeal, Fox Factory argued that the only difference between the prior art and the claimed invention is that the fill limitation is measured halfway up the tooth. Regarding secondary considerations, Fox Factory argued that a nexus between the claimed invention and the evidence of success of the X-Sync chainring was not demonstrated because the success is due to other various unclaimed aspects of the X-Sync chainring.

The CAFC stated that Fox Factory is correct that “a mere change in proportion … involves no more than mechanical skill, rather than the level of invention required by 35 U.S.C. § 103.” However, the CAFC stated that the PTAB “found that SRAM’s optimization of the X-Sync chainring’s teeth, as claimed in the ‘250 patent, displayed significant invention.” The CAFC pointed out that SRAM provided evidence that the success of the X-Sync chainring surprised skilled artisans, evidence of industry skepticism and subsequent praise, and evidence of a long-felt need to solve chain retention problems. The X-Sync chainring also won an award for “Innovation of the Year.” Based on the evidence, the CAFC stated that the PTAB did not err in concluding that the evidence of secondary considerations defeated the contention of routine optimization.

Fox Factory argued that the CAFC’s previous decision on the ‘027 patent requires vacatur in this case. In the appeal of the IPR for the ‘027 patent the CAFC stated that the PTAB misapplied the legal requirement of showing a nexus between evidence of secondary considerations and the obviousness of the claims of the patent. The CAFC stated that the patent owner must show that “the product from which the secondary considerations arose is coextensive with the claimed invention.” In the IPR for the ‘250 patent, SRAM argued that the greater than 80% gap-filling feature of the X-Sync chainring was crucial to its success. But the claims of the ‘027 patent do not include this greater than 80% gap filling feature. Thus, in the ‘027 appeal, the CAFC stated that no reasonable factfinder could decide that the X-Sync chainring was coextensive with a claim that did not include the greater than 80% gap filling feature, and vacated the decision of the PTAB.

In this case, the CAFC pointed out that the claims of the ‘250 patent include the greater than 80% gap filling feature, and thus, the X-Sync chainring is coextensive with the claims. The CAFC also stated that the unclaimed features relied on by Fox Factory as contributing to the success are to some extent incorporated into the 80% gap-filling feature. Thus, the CAFC found that substantial evidence supports the PTAB’s findings on secondary considerations and nexus, and the CAFC stated that they agree with the PTAB’s conclusion that the claims of the ‘250 patent would not have been obvious.

Comments

When arguing secondary considerations, make sure that there is nexus between the evidence and the claims. Specifically, you need to make sure that the product from which the secondary considerations arose is “coextensive” with the claimed invention. A product that falls within the scope of the claim is not necessarily coextensive with the claim.

This case is also a reminder to include claims having varying scope. In this case, SRAM’s claims survived because of the 80% gap-filling feature which was not included in the claims of the parent patent.

Federal Circuit Reverses the District Court’s Award of Attorneys’ Fees Due to the District Court’s Failure to Provide a Clear Explanation of the Supporting Reasons

| June 17, 2020

MUNCHKIN, Inc. v. LUV ‘N Care, Ltd.

June 9, 2020

Dyk, Taranto, and Chen (Opinion by Chen)

Summary

Munchkin, Inc. (Munchkin) sued Luv ‘N Care, Ltd. (LNC) in the District Court for the Central District of California based patent infringement, trademark infringement and trade dress infringement of its’ spill proof containers.  Before the District Court, Munchkin voluntarily dismissed all of its’ legal claims against LNC.  After dismissal of these claims, LNC filed a motion for attorneys’ fees, which was awarded to LNC by the District Court.  On appeal, the Federal Circuit reversed the award of attorneys’ fees, explaining that the District Court abused its’ discretion in awarding attorneys’ fees because LNC’s motion for attorneys’ fees and the District Court’s decision awarding such fees did not provide a clear explanation of the reasons supporting an award for the attorneys’ fees, noting that it is particularly important to provide a clear explanation of the reasons supporting an award for the attorneys’ fees whenthe claims are notfully litigated before the District Court.  

Background

1. Subject Matter at Issue

            The present case relates to spill-proof containers, and involves patent infringement, trademark infringement and trade dress infringement claims related to such spill-proof containers. 

Fig. 3 of U.S. Patent No. 8,739,993

• Procedural Background

This case is an appeal from the United States District Court for the Central District of California. 

Munchkin, Inc. (Munchkin) filed a lawsuit in the District Court against Luv n’ Care, Ltd. (LNC) for trademark infringement and unfair competition claims related to spill-proof drinking containers. A year later, the District Court granted Munchkin leave to amend the complaint to include new trademark infringement claims and trade dress infringement claims and new patent infringement claims based on U.S. Patent No. 8,739,993 (the ’993 patent).

During litigation, Munchkin voluntarily dismissed all of its non-patent claims with prejudice.  Then, in an inter partes review (IPR) before the Patent Trial and Appeal Board, Munchkin’s patent was held unpatentable.  Thereafter, Munchkin voluntarily dismissed its’ patent claims.

Thereafter, LNC filed a motion for attorneys’ fees under 35 U.S.C. § 285 and 15 U.S.C. § 1117(a), and the District Court granted attorneys’ fees to LNC finding the case to be “exceptional” based on LNC’s arguments.

Before the Federal Circuit, Munchkin appeals, arguing that the District Court’s determination that this was an “exceptional” case lacks a proper foundation because LNC’s motion insufficiently presented the required facts and analysis needed to establish that Munchkin’s patent, trademark, and trade dress infringement claims were so substantively meritless to render the case exceptional.

The Federal Circuit’s Decision

            The Legal Bases for Attorneys’ Fees

            Under 35 U.S.C. § 285 of the Patent Act, “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.”  Similarly, under 15 U.S.C. § 1117(a) of the Lanham Act pertaining to trademark and trade dress infringement, “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.”

            In Octane Fitness, 572 U.S. 545 (S. Ct. 2014), the U.S. Supreme Courtheld that an exceptional case is “one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” This analysis considers the case based on the totality of the circumstances, requiring a movant to show the case is exceptional by a preponderance of the evidence.

The Federal Circuit’s Review

            The Federal Circuit reviews the District Court’s determination that a case is exceptional for abuse of discretion.   As explained by the Federal Circuit, “[a] District Court abuses its discretion when it makes a clear error of judgment in weighing relevant factors or in basing its decision on an error of law or on clearly erroneous factual findings.”

            According to the Federal Circuit, “[w]hile we generally give great deference to a District Court’s exceptional-case determination, a District Court nonetheless must “provide a concise but clear explanation of its reasons for the fee award.”

            The Federal Circuit remarked that: “This case represents ‘an unusual basis for fees,’ in that the District Court’s exceptional-case determination rests on an examination of issues—trademark infringement, trade dress validity, and patent validity—that were not fully litigated before the court.”  The Federal Circuit further explained that: “when the bases of an attorneys’ fee motion rest on issues that had not been meaningfully considered by the District Court, as is the case here, ‘a fuller explanation of the court’s assessment of a litigant’s position may well be needed when a District Court focuses on a freshly considered issue than one that has already been fully litigated.’”  The Federal Circuit also noted that the patent, trademark, and trade dress claims were all new issues presented in the context of the motion for attorneys’ fees, but that LNC failed to make a detailed, fact-based analysis of Munchkin’s litigating positions to establish that the claims were all wholly lacking in merit.

1. The Patent Claims

            With respect to LNC’s patent claim, the Federal Circuit held that “neither LNC’s fee motion nor the District Court’s opinion comes close to supporting the conclusion that Munchkin acted unreasonably.”  The Federal Circuit also points out that the District Court had also adopted Munchkin’s claim interpretation, which “erected a serious hurdle to LNC’s invalidity challenge.”  The Federal Circuit added that the fact that the District Court had adopted Munchkin’s claim interpretation made “the need for a full and detailed explanation in this case for why Munchkin’s litigating position was exceptionally weak all the more imperative.”

            The Federal Circuit also criticized the District Court’s conclusion that Munchkin unreasonably maintained its’ patent infringement lawsuit once the Patent Board instituted the IPR on the bases that “(1) published statistics at the time indicated that the Patent Board cancels some of a patent’s instituted claims 85% of the time and cancels all of the instituted claims 68% of the time, (2) the Patent Board’s final decision found all of the ’993 patent’s claims unpatentable, and (3) this court summarily affirmed that decision.”  The Federal Circuit explained that the IPR statistics combined with the meritorious outcome are not enough, noting that “they tell us nothing about the substantive strength of Munchkin’s litigating position (considering both the governing law and the facts of the case).”

            The Federal Circuit also criticized the District Court’s superficial reference to prior art to a Playtex Twist ‘N Click cup product as purportedly evidencing weakness of the validity of the patent because such prior art was not discussed in detail and was not even formally part of the court record.  The Federal Circuit explained that LNC’s motion needed to go much further into the facts to meet its’ burden of proof.

            Accordingly, the Federal Circuit held that the District Court’s finding in relation to the patent claim was an abuse of discretion. (NOTE:  Here, the District Court had actually granted attorneys’ fees for both proceedings before the court and before the U.S.P.T.O.  Although the Federal Circuit dismissed the award of attorneys’ fees, the Federal Circuit expressed that it would not address whether 35 U.S.C. 285 permits recovery of attorneys’ fees related to proceedings before the U.S.P.T.O.)

• The Trademark Claims

            With respect to LNC’s trademark claim, the Federal Circuit held that an ultimate problem with the District Court’s finding that the trademark claims were “exceptional” under § 1117(a) is that it conflicts with the court’s earlier order granting Munchkin’s motion to amend the complaint to add the new trademark claim.  Accordingly, the Federal Circuit indicated that “Munchkin cannot be faulted for litigating a claim it was granted permission to pursue,” especially “[a]bsent misrepresentation to the court.”

            Furthermore, the Federal Circuit also noted that as with the patent claims, the District Court was required to make specific findings about the trademark infringement merits themselves, pertaining to a formal likelihood of confusion analysis.  Moreover, the Federal Circuit also emphasized that “Munchkin’s dismissal of its claims with prejudice also does not establish, by itself, a finding that the merits were so substantively weak as to render the claims exceptional,” noting that “[t]here are numerous reasons, including Munchkin’s asserted desire to streamline the litigation, to drop a claim, not just substantive weakness.”

Accordingly, the Federal Circuit held that the District Court’s finding in relation to the trademark claim was also an abuse of discretion.

• The Trade Dress Claims

            With respect to LNC’s trade dress claim, as with the patent and trademark claims, the Federal Circuit explained that “none of these barebones allegations justify a finding that Munchkin’s position that it owned a protectable, valid trade dress right was unreasonable.”  Moreover, the Federal Circuit also noted that, like the trademark claim, the District Court had allowed Munchkin to amend the complaint to add the new trade dress claim. 

            Accordingly, the Federal Circuit reversed the District Court’s granting of attorneys’ fees.

Takeaways

1. When seeking attorneys’ fees in patent, trademark and/or trade dress matters, it is important to make sure that motions for attorneys’ fees provide a clear explanation of the reasons supporting an award for the attorneys’ fees – i.e., the reasons must demonstrate the unreasonableness of opposing party’s conduct under the governing law and the facts of the case.
   

A Pencil Copying A Pencil Copying A Pencil: Patented Design Intentionally Resembling A No. 2 Pencil Not Infringed by Copycat

| June 3, 2020

Lanard Toys Limited v. Dolgencorp LLC

May 14, 2020

Before Lourie, Mayer, and Wallach (Opinion by Lourie)

Summary

Where a design patent claims an ornamental design that intentionally resembles a common object having a well-known appearance and well-known functional features, such as a No. 2 pencil, the smaller differences in the design take on greater significance in determining not only the scope, but also infringement, of the design patent. The theory of infringement of a design patent cannot be based solely on design elements that are already known in the prior art or that are functional.

Details

Lanard Toys Limited (“Lanard”) is perhaps better known for its long-lasting, massively produced lines of The Corps! action figures, which were marketed as the more affordable alternatives to the G.I. Joe action figures.

But (unfortunately) these action figures are not the toy at issue in Lanard’s dispute with Ja-Ru, Inc. (“Ja-Ru”), a fellow toymaker; Dolgencorp LLC, a distributor; and Toy “R” Us-Delaware, Inc., a toy retailer. 

Rather, the toy at issue is a chalk holder in the shape of an oversized, No. 2 pencil that can hold pieces of colored chalk for children to draw on sidewalks.

From 2011 to 2014, Dolgencorp distributed, and Toys “R” Us sold, Lanard’s “chalk pencils”. Then, in 2013, Ja-Ru began marketing its own chalk holder. Ja-Ru admitted during litigation that they had used Lanard’s chalk pencil as a reference for designing and developing their product. Beginning with the 2014 toy season, Dolgencorp and Toys “R” Us stopped ordering Lanard’s chalk pencils, and began offering Ja-Ru’s product instead.

Lanard owns U.S. Design Patent No. D671,167 (“D167 patent”), titled “chalk holder” and claims the “ornamental design for a chalk holder”.

Reproduced below (from left to right) are representative Figure 1 from the D167 patent, Lanard’s chalk pencil, and Ja-Ru’s chalk pencil:

Lanard sued Ja-Ru, Dolgencorp, and Toys “R” Us for design patent infringement.[1] When the parties cross-moved for summary judgment on the question of infringement, the district court sided with Ja-Ru, granting summary judgment that Ja-Ru’s product did not infringe Lanard’s D167 patent. Lanard appealed.

On appeal, Lanard challenges the district court’s claim construction, asserting that the district court erroneously eliminated design elements from the scope of the D167 patent. Second, Lanard challenged the district court’s infringement analysis as failing to comport with the “ordinary observer” test.

The Federal Circuit rejected both of Lanard’s challenges, and adopted the district court’s determinations basically without modification on every one of Lanard’s contentions

Claim construction

Design patents “typically are claimed as shown in drawings”.[2] Functional characteristics in a design may limit the scope of protection, as “the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.”[3]

Further, the construction of a design patent involves identifying “various features of the claimed design as they relate to the accused design and the prior art.”[4] Prior art may be especially important in revealing the functionally necessary design elements, where “[e]very piece of prior art identified by the parties that incorporates similar elements configures them in the exact same way.”[5] Those elements represent the “broader general design concepts” that are excluded from design patent protection.

Here, Lanard argues that the district court improperly eliminated elements of the claimed designed based on functionality or lack of novelty.

The Federal Circuit, to the contrary, finds no fault with the district court’s claim construction, going so far as to note approvingly that the district court “followed our claim construction directives to a tee.”

The Federal Circuit appreciates that the district court meticulously factored out the functional “general design concepts” in Lanard’s claimed design:

• the conical tapered piece for holding the chalk in place during use;
• the wide and elongated body for storing the chalk and for the user to grasp;
• the ferrule attaching the eraser to the body of the chalk holder; and
• the eraser.

The Federal Circuit agrees with the district court that the elements listed above are common to No. 2 pencils, and are indeed utilitarian concepts that are found in every piece of writing utensil-related prior art cited during prosecution.

The Federal Circuit also agrees with the district court’s identification of the protectable ornamental elements in the D167 patent:

• the size and angle of taper of the conical piece;
• the hexagonal shape of the body
• the specific grooves on the ferrule;
• the columnar shape of the eraser; and
• the precise proportions of the various design elements relative to each other.

Before the district court, Lanard argued that the prior art does not combine the elements of a pencil with a chalk holder. The district court found Lanard’s argument to be unavailing, and the Federal Circuit agrees wholeheartedly.

Lanard’s argument is analogous to arguing that the intended use of an invention in a utility patent distinguishes the invention over the prior art. Such an argument can be difficult to make for a utility patent, and even more so in the context of a design patent. And the district court concluded as much.

Lanard’s patented design, as shown in the drawings, deliberately mimics a No. 2 pencil. The drawings do not differentiate between a toy and an actual pencil. Further, Lanard’s argument contains an implicit admission that elements of the D167 patent were taken from well-known designs for pencils. If, as Lanard asserted, the intended function was the only difference between Lanard’s design and the prior art, then Lanard’s design would not be patentable. The district court based its infringement analysis on the assumption that the D167 patent was valid.

On a side note, I believe this case is distinguishable from the Federal Circuit’s recent decision in Curver Luxembourg, SARL v. Home Expressions Inc. (Fed. Cir. 2019) (case reviewed presented by Sung-Hoon Kim). In Curver,the Federal Circuit limited the scope of the claimed design (i.e., a pattern for a surface ornamentation) to the article of manufacture recited in the claim (i.e., a chair). However, the Federal Circuitalso noted that they were confronted with an atypical situation in Curver, because in most design patents, the drawings themselves depict a particular article of manufacture. Because the drawings in D167 patent identify the article of manufacture, Curver unlikely would have helped Lanard’s claim construction argument.

Infringement

The “ordinary observer” test for design patent infringement requires a comparison of the similarities in overall designs, not similarities of ornamental features in isolation. Under the “ordinary observer” test, courts may discount functional elements, but the analysis must focus on “how [the ornamental features] impact the overall design.”[6]

As in claim construction, the infringement analysis cannot ignore the prior art:

[T]he ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art. When the differences between the claimed and accused design are viewed in light of the prior art, the attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed design that different from the prior art. And when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer.[7]

In this case, the district court determined that as compared to Lanard’s claimed design, Ja-Ru’s chalk pencil had:

• a more rotund and more stunted body;
• a shorter, more gradually sloping, and ridged conical piece; and
• a ferrule with a different pattern.

The district court concluded that, based on those distinctions, an ordinary observer would not consider Ja-Ru’s chalk pencil to have the same design as claimed in the D167 patent.

On appeal, Lanard argues that the district court’s infringement analysis compared the designs on an element-by-element basis, rather than comparing their overall appearances. Lanard also argues that the district court focused on features that distinguished the claimed design over the prior art, so that the district court was in effect reverting to the now-defunct “point of novelty” test. The “point of novelty” test would have asked whether Ja-Ru had stolen the novel aspects of Lanard’s patented design that distinguished it from the prior art.

The Federal Circuit rejects both of Lanard’s arguments.

As the district court noted, and which the Federal Circuit agrees, the problem for Lanard is that the asserted design similarities between the claimed design and Ja-Ru’s product stem from aspects of the design that are either functional or well-established in the prior art.

Lanard wants the district court and the Federal Circuit to find infringement on the basis that Ja-Ru’s product and the claimed design share the overall appearance of a No. 2 pencil. But this is precisely the argument that Lanard should not make.

Any aspect of Lanard’s claimed design that relates to the function of a No. 2 pencil or the conventional, well-known appearance of a No. 2 pencil are not patentable, and as such, are excluded from the scope of the design patent during claim construction and cannot be the basis for establishing infringement.

Lanard’s argument is made weaker by the ubiquity of No. 2 pencils. The Federal Circuit agrees with the district court’s finding that, because of the crowdedness of the field of pencils or writing utensils in general, the ornamental features in Lanard’s claimed design which are not dictated by function and which are not in the prior art take on greater significance. Far from being inconsequential and minor, those ornamental distinctions would dominate an ordinary observer’s attention when evaluating the overall appearances of Ja-Ru’s product and Lanard’s claimed design. The Federal Circuit agrees with the district court that those ornamental distinctions are sufficient to preclude a finding of infringement.

What troubles the district court and the Federal Circuit especially is what they perceive to be an attempt by Lanard to monopolize the basic design concepts underlying a pencil. They believe that Lanard’s arguments, if accepted, would “exclude any chalk holder in the shape of a pencil and thus extend the scope of the D167 patent far beyond the statutorily protected ‘new, original and ornamental design’.”

Takeaway

•  In a crowded art, the devil and God are in the detail. The nuances in a design can take on greater significance where the article of manufacture embodying the design (or the article of manufacture that the design is intended to resemble) has a well-known appearance.
• While the scope of a design patent is limited to the drawings, courts during litigation have often relied on “verbal descriptions” of the claimed design to construe the claim. Be strategic about those verbal descriptions. For example, a quick review of the prior art cited during prosecution suggests that Lanard’s claimed design and the design of Ja-Ru’s chalk pencil may be closer to each other than to the cited prior art—in that case, Lanard might have offered a verbal description of the D167 patent drawings that downplayed the differences between those drawings and Ja-Ru’s chalk pencil, and still distinguished over the prior art.
• Drawings in a design patent application should reflect the intended function of the claimed design. A potential weakness in Lanard’s design patent may be that the drawings look too much like the article of manufacture (i.e., No. 2 pencil) that the claimed design is intended to resemble. If Lanard’s intention was to claim an oversized, toyish rendition of the No. 2 pencil, perhaps the patent drawings could have better emphasized the exaggerated proportions of the various chalk holder parts relative to each other.

[1] Lanard also alleged copyright and trade dress infringement, but this review will focus only on the design patent issues.

[2] Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008).

[3] Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1320 (Fed. Cir. 2016).

[4] Egyptian Goddess, 543 F.3d at 680.

[5] Richardson v. Stanley Works, Inc., 610 F.Supp.2d 1046, 1049 (D. Ariz. 2009), aff’d 597 F.3d 1288 (Fed. Cir. 2010).

[6] Richardson, 597 F.3d at 1295.

[7] Egyptian Goddess, 543 F.3d at 671.

The disclosure-dedication doctrine applies at limitation level, not at embodiment level

| May 27, 2020

Eagle Pharmaceutical Inc. v. Slayback Pharm LLC

May 8, 2020

O’Malley (Opinion author), Reyna, and Chen

Summary
The Federal Circuit affirmed the district court’s holding that the disclosure-dedication doctrine applies here to bar application of the doctrine of equivalents and, accordingly, the Slayback’s generic products do not infringe the Eagle’s four patents.
Details
Slayback filed new drug application (“NDA”) for a generic version of Eagle’s branded bendamustine product, BELRAPZO®. Bendamustine is used to treat chronic lymphocytic leukemia and indolent B-cell non-Hodgkin lymphoma. Eagle sued Slayback for infringing four patents in the District Court for the District of Delaware. Eagle’s four asserted patents share essentially the same written description. One of the four patents is U.S. Patent No. 9,572,796 (“the ’796 patent”), which has a representative claim 1 as shown below:

1. A non-aqueous liquid composition comprising: bendamustine, or a pharmaceutically acceptable salt thereof;
a pharmaceutically acceptable fluid comprising a mixture of polyethylene glycol and propylene glycol, wherein the ratio of polyethylene glycol to propylene glycol in the pharmaceutically acceptable fluid is from about 95:5 to about 50:50; and
a stabilizing amount of an antioxidant;
. . . .

In the district court, Slayback conceded that its generic product literally infringes all limitations of claim 1 except for the “pharmaceutically acceptable fluid” limitation. Slayback uses ethanol instead of propylene glycol (PG) in its generic product. Eagle argued that the ethanol in Slayback’s product is insubstantially different from the propylene PG in the claimed composition and, accordingly, Slayback’s product infringes under the doctrine of equivalents.
Slayback moved for a judgment of non-infringement on the pleadings under Federal Rule of Civil Procedure 12(c). Slayback argued that the disclosure-dedication doctrine barred Eagle’s claim of infringement under the doctrine of equivalents because the asserted patents disclose, but do not claim, ethanol as an alternative solvent to PG. Eagle counter-argued that the disclosure-dedication doctrine does not apply here because the asserted patents do not disclose ethanol as an alternative to PG for the claimed embodiment that contains an antioxidant. In fact, the specification only discloses ethanol when discussing unclaimed embodiments that contain chloride salt. Specifically, the asserted patents disclose three distinct “categories” of bendamustine formulations: (i) chloride salt formulations; (ii) antioxidant formulations; and (iii) dimethyl sulfoxide (“DMSO”) formulations. The specification only discloses ethanol as an alternative to PG when discussing the unclaimed chloride salt formulations; and it never discloses ethanol as an alternative to PG when discussing the claimed antioxidant formulations. Eagle also submitted an expert declaration from Dr. Mansoor Amiji in support of its opposition. Nevertheless, the district court held for Slayback because the asserted specification expressly and repeatedly identifies “ethanol” as an alternative “pharmaceutically acceptable fluid” to PG.
The federal circuit affirms the district court’s holding. The disclosure-dedication doctrine does not require the specification to disclose the allegedly dedicated subject matter in an embodiment that exactly matches the claimed embodiment. Instead, the disclosure-dedication doctrine requires only that the specification disclose the unclaimed matter as an alternative to the relevant claim limitation. That is, the disclosure-dedication doctrine requires disclosure of alternatives only at limitation level, not at embodiment level. In this case, the asserted patents disclose ethanol as an alternative to PG in the “pharmaceutically acceptable fluid” claim limitation. The specification repeatedly identifies—without qualification—ethanol as an alternative pharmaceutically acceptable fluid. Aside from the description of certain exemplary embodiments, nothing in the specification suggests that these repeated disclosures of ethanol are limited to certain formulations, or that they cannot extend to the claimed formulation.
Eagle also challenges the district court’s decision from the procedural grounds. Eagle argues that the district court erred by resolving that factual dispute at the pleading’s stage without drawing all reasonable inferences in Eagle’s favor. The federal circuit held that the district court has discretion to consider evidence outside the complaint for purposes of deciding whether to accept that evidence and convert the motion into one for summary judgment. In this case, the district court decided that Eagle was trying to fabricate a factual dispute and Slayback is entitled to judgment in its favor as a matter of law.

Take away

1. The disclosure-dedication doctrine applies at limitation level, not at embodiment level.
2. A patent drafter should be careful that the scopes of claims are consistent with the disclosure of specification to avoid inadvertent disclosure-dedication.

PETITION DENIED: AI MACHINE CANNOT BE LISTED AS AN INVENTOR

| May 21, 2020

In re Application of Application No. 16/524,350 (“Devices and Methods for Attracting Enhanced Attention”)

April 27, 2020

Robert W. Bahr (Deputy Commissioner for Patent Examination Policy)

Summary:

The PTO denied a petition to vacate a Notice to File Missing Parts of Nonprovisional Application because an AI machine cannot be listed as an inventor based on the relevant patent statutes, case laws from the Federal Circuit, and the relevant sections in the MPEP.  The PTO did not find the petitioner’s policy arguments persuasive. 

Details:

            This application was filed on July 29, 2019.  Its Application data sheet (ADS) included a single inventor with the given name “DABUS[1]” and the family name “Invention generated by artificial intelligence.”  The ADS identified the Applicant as the Assignee “Stephen L. Thaler.”  Also, a substitute statement (in lieu of declaration) executed by Mr. Thaler was submitted, and an assignment document executed by Mr. Thaler on behalf of both DABUS and himself was submitted.  Finally, an “Inventorship Statement,” which stated that the invention was conceived by “DABUS” and it should be named as the inventor, was also submitted.

            Afterward, the PTO issued a first Notice to File Missing Parts on August 8, 2019, which indicated that the ADS “does not identify each inventor by his or her legal name,” and an surcharge of $80 is due for late submission of the inventor’s oath or declaration.

            Mr. Thaler filed a petition on August 29, 2019, requesting supervisory review of the first Notice. 

            The PTO issued a second Notice to File Missing Parts on December 13, 2019.  The PTO dismissed the petition filed on August 29, 2019 in a decision issued on December 17, 2019.

            Mr. Thaler filed a second petition on January 20, 2020, requesting reconsideration of the decision issued on December 17, 2019.

Relevant Statutes cited by the PTO

            35 U.S.C. §100(f):

The term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.

            35 U.S.C. §100(g):

The terms “joint inventor” and “coinventor” mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.

            35 U.S.C. §101:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

            35 U.S.C. §115(a):

An application for patent that is filed under section 111 (a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application. Except as otherwise provided in this section, each individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application

            35 U.S.C. §115(b):

An oath or declaration under subsection (a) shall contain statements that … such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.

            35 U.S.C. §115(h)(1):

Any person making a statement required under this section may withdraw, replace, or otherwise correct the statement at any time.

The PTO’s reasoning

            Citing the above statutes, the PTO found that the patent statutes preclude the petitioner’s broad interpretation that an “inventor” could be construed to cover machines.  That is, the PTO asserted that such broad interpretation could contradict the plain reading of the patent statutes.

            The PTO also cited the case law from the Federal Circuit to dismiss the petitioner’s argument.  For example, in Univ. of Utah v. Max-Planck-Gesellschajt zur Forderung der Wissenschajten e. V (734 F.3d 1315 (Fed. Cir. 2013), the CAFC held that a state could not be an inventor.  In Beech Aircraft Corp. v. EDO Corp. (990 F.2d 1237 (Fed. Cir. 1993), the CAFC held that “only natural persons can be ‘inventor.’”

            Furthermore, the PTO cited the relevant sections in the MPEP to support their position.  The PTO indicated that the MPEP defines “conception” as “the complete performance of the mental part of the inventive act” and it is “the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.”  The PTO asserted that the use of terms such as “mental” and “mind” indicates that conception must be performed by a natural person.

            The PTO rejected the petitioner’s argument that the PTO should take into account the position adopted by the EPO and the UKIPO that DABUS created the invention, but DABUS cannot be named as the inventor.  The PTO indicated that the EPO and the UKIPO are interpreting and enforcing their own laws. 

            The PTO also rejected the petitioner’s argument that inventorship should not be a substantial condition for the grant of patents by arguing that “inventorship has long been a condition for patentability.”  The PTO rejected the notion that the granting of a patent for an invention that covers a machine does not mean that the patent statutes allow that machined to be listed as an inventor in another patent application.

            Finally, the petitioner provided some policy considerations to support his position: (1) this would incentivize innovation using AI systems, (2) would reduce the improper naming of persons as inventor who do not qualify as inventors, and (3) would inform the public of the actual inventors of an invention.  The PTO rejected the petitioner’s policy considerations by arguing that they do not overcome the plain language of the patent statutes. 

Takeaway:

• At this point, it appears that it is not possible to list an AI machine as an inventor in the U.S. patent applications.  The EPO reached a similar decision in December.  It is known that the Japanese Patent Act and the Korean Patent Act do not include an explicit definition of an inventor.  Also, the Chinese State Council called for “better IP protections to promote AI.”
• Congress needs to work on this issue because the patent system is in place to incentive innovation in technology, and eventually, increase investment for more jobs.
• A lack of patent protection for inventions developed by AI would decrease investment in the development and use of AI.
• However, there is a concern, among other things, that the PTO may not be able to deal with situations where AI created enormous amount of prior arts to be reviewed by the Examiners.
• Human programmer of AI or the one who defined the task of AI machine could be listed as the named inventor. 

[1] DABUS stands for “Device for Autonomous Bootstrapping of Unified Sentience.”  Mr. Thaler asserts that DABUS is a creativity machine programmed as a series of neural networks that have been trained with general information in the field of endeavor to independently create invention.  In addition, Mr. Thaler asserts that this machine was “not created to solve any particular problem and not trained on any special data relevant to the instant invention.”  Furthermore, Mr. Thaler asserts that this machine recognized “the novelty and salience of the instant invention.”

Patent Term Extension under 35 U.S.C. §156 is Limited to the FDA-Approved Active Ingredient and Salts or Esters thereof—but not Metabolites or Compounds Sharing an Active Moiety

| May 13, 2020

Biogen International GmbH v. Banner Life Sciences

April 21, 2020

Lourie, Moore, and Chen. Opinion by Lourie

Summary

            In a case focusing on the meaning of a “product” under 35 U.S.C. §156, the CAFC concluded that the scope of patent term extension is limited to the FDA-approved active ingredient and salts or ester thereof, and does not more broadly include metabolites or other compounds sharing an active moiety with the approved product.  Thus, the extension of Biogen’s ‘001 patent does not include some other products within the scope of the claims, such as the metabolite MMF.

Details

Background and District Court holding

Biogen is the owner of U.S. Patent No. 7,619,001, which claims a method of treating multiple sclerosis.  Claim 1 is as follows: 

A method of treating multiple sclerosis comprising administering, to a patient in need of treatment for multiple sclerosis, an amount of a pharmaceutical preparation effective for treating multiple sclerosis, the pharmaceutical preparation comprising

at least one excipient or at least one carrier or at least one combination thereof; and

dimethyl fumarate, methyl hydrogen fumarate, or a combination thereof.

Biogen also holds the New Drug Application (NDA) for dimethyl fumarate (DMF).  This was approved by the FDA in 2013 and is marketed as Tecfidera® “for the treatment of patients with relapsing forms of multiple sclerosis” at a dose of 480 mg.

            DMF is a double ester which, upon administration to the patient, metabolizes into monomethyl fumarate (MMF) (another name for the claimed “methyl hydrogen fumarate”).  Both DMF and MMF are illustrated below. 

The ‘001 patent is was originally set to expire on April 1, 2018, but was awarded 818 days of patent term extension to June 20, 2020 under 35 U.S.C. 156 (not to be confused with patent term adjustment under 35 U.S.C. 154).  This compensated Biogen for the FDA review period of Tecfidera.  The question presented to the CAFC is whether MMF is covered by the 818-day PTE extension along with DMF.

            In 2018, Banner filed a “paper NDA” under 21 U.S.C. 355(b)(2) to market a drug having MMF as the active ingredient.  Banner could rely on Biogen’s clinical data to show safety and efficacy, and only had to demonstrate bioequivalence.   Biogen then sued Banner for infringement. 

            In reply, Banner argued that the PTE under §156 was limited to uses including the approved product:  DMF and its salts or esters, and did not include MMF.  The relevant portions of §156 are presented below:

(a) The term of a patent which claims a product, a method of using a product, or a method of manufacturing a product shall be extended in accordance with this section from the original expiration date of the patent, which shall include any patent term adjustment granted under section 154(b),…

(b) Except as provided in subsection (d)(5)(F), the rights derived from any patent the term of which is extended under this section shall during the period during which the term of the patent is extended—….

(2) in the case of a patent which claims a method of using a product, be limited to any use claimed by the patent and approved for the product—

(A) before the expiration of the term of the patent—

(i) under any provision of law under which an applicable regulatory review occurred, and

(ii) under the provision of law under which any regulatory review described in paragraph (1), (4), or (5) of subsection (g) occurred, and

(B) on or after the expiration of the regulatory review period upon which the extension of the patent was based; and….

(f) For purposes of this section:

(1) The term “product” means:

(A) A drug product…..

(2) The term “drug product” means the active ingredient of—

(A) a new drug, antibiotic drug, or human biological product…including any salt or ester of the active ingredient, as a single entity or in combination with another active ingredient.

Meanwhile, Biogen argued that §156(b)(2) does not limit the PTE to uses of the approved product, but rather to all products within the scope of the claim.  Additionally, Biogen argued that “product” of §156 should be more broadly interpreted as any compound that shares the “active moiety” with the approved product.  The district court sided with Banner.

CAFC

            First, the CAFC noted that the purpose of §156 PTE is to compensate a patent owner for regulatory delays, and that this is limited to one patent per approved product.  The court also noted that §156 defines the scope of the product as “the active ingredient of…a new drug…including any salt or ester of the active ingredient.”

Biogen cited Pfizer Inc. v. Dr. Reddy’s Labs, Ltd. 359 F.3d 1361 (Fed. Cir. 2004) to support the position that that “product” under §156 should be interpreted more broadly, especially where “a later applicant’s patentably indistinct drug product…relies on the patentee’s clinical data.”  The CAFC did not accept this argument.  In Pfizer, the question was whether an extension for amlodipine included amlodipine maleate.  However, the CAFC concluded that amlodipine maleate in Pfizer was included under the extension because amlodipine maleate is a salt of the active ingredient (amlodipine), and not because these two compounds share an “active moiety.”  On the other hand, in this case, MMF is not a salt or ester of DMF.  Rather, MMF is a de-esterified form of DMF.  The CAFC’s comments regarding clinical data were provided in Pfizer merely to clarify the purpose of §156(f) and provide context.

The parties also cited to Glaxo Ops. UK Ltd. v. Quigg, 894 F.2d 392 (Fed. Cir. 1990).  However, the CAFC concluded that this case was not pertinent to the present issue.  Glaxo involved an approved product having cerufoxime as its active ingredient and a second approved product having cerufoxime axetil as its active ingredient, cerufoxime axetil being an ester of cerufoxime.  In Glaxo, the question was not whether cerufoxime axetil should be included in an extension for cerufoxime, but rather whether cerufoxime axetil was eligible for its own separate PTE.  Since this is not the issue in the present case, the CAFC side-stepped Glaxo.    

Additionally, Biogen cited to PhotoCure ASA v. Kappos, 603 F.3d 1372 (Fed. Cir. 2004).  In PhotoCure, the CAFC indicated that a new ester could be separately patentable.  However, the CAFC indicated that PhotoCure presented a similar situation as Glaxo:  a separate extension for a new ester.

Thus, the CAFC held that the definition of “product” according to §156 is the “active ingredient ….including any salt or ester of the active ingredient.”  This is not necessarily the same as “active moiety.”  As such, “product” only means the active ingredient designated on the FDA approved label, and changes resulting in a salt or ester.  However, “product” does not include metabolites of the active ingredient, or de-esterified forms thereof.  Here, MMF is a de-esterified metabolite of DMF, rather than a salt of DMF.

Next, Biogen argued that, unlike §156(b)(1), §156(b)(2) does not limit the extension to approved uses of the approved product, but only to approved uses of any approved product.  However, the CAFC dismissed this by holding that the approved product in this case is DMF, not MMF, and that it would not make sense for an extension to apply to a different product for which the NDA holder was never subjected to review.

Finally, Biogen argued that the Banner infringes under the doctrine of the equivalents.  However, the CAFC dismissed this argument on that basis that a product or process cannot logically infringe an extended claim under equivalents if it is statutorily not included in the §156 extension.

Take Away

Unlike patent term adjustment under §154, which covers the full scope of the patent, patent term extension under §156 is limited in scope to a product having the active ingredient granted regulatory approval by the FDA.  The “product” will be narrowly interpreted as the approved active ingredient, as well as salts and esters thereof.  As such, patent term extension under §156 is not so broad to cover metabolites and other compounds which share an active moiety with the approved drug.

Interestingly, this case was decided near in time to an important IPR involving the same drug.  In February, the PTAB sided with Biogen in a challenge to U.S. Patent No. 8,399,514 by Mylan Pharmaceuticals.  The ‘514 patent was very similar to the claims of the ‘001 patent, but recited oral administration and a specific dosage.  The PTAB indicated that the dosage was not obvious from the prior art and thus confirmed the validity of the valuable ‘514 patent.  The ‘514 patent is the last unexpired patent in the family covering Tecfidera, and is set to expire in 2028. 

Additionally, upon the CAFC’s decision, the FDA granted final approval on April 30 to Banner’s MMF-based drug, which will be marketed as Bafiertam ®.

The Federal Circuit declined to be bound by the 2019 Revised Patent Subject Matter Eligibility Guidance by the Patent Office, but affirmed the Board’s conclusion of the ineligibility, which relied on the Guidance

| May 7, 2020

In re Rudy

April 24, 2020

Prost, Chief Judge, O’Malley and Taranto. Court opinion by Prost.

Summary

The Federal Circuit declined to be bound by the 2019 Revised Patent Subject Matter Eligibility Guidance by the Patent Office, and instead followed the Supreme Court’s Alice/Mayo framework, and the Federal Circuit’s interpretation and application thereof. However, the Federal Circuit unanimously affirmed the Board’ affirmance of the Examiner’s rejection of claims 34, 35, 37, 38, 40, and 45–49 of the ’360 application as patent-ineligible under 35 U.S.C. § 101, which was fully relied on the Office Guidance.

Details

I. background

United States Patent Application No. 07/425,360 (“the ’360 application”), filed by Christopher Rudy on October 21, 1989 (before the signing of the 1994 Uruguay Round Agreements Act), is entitled “Eyeless, Knotless, Colorable and/or Translucent/Transparent Fishing Hooks with Associatable Apparatus and Methods.” After a lengthy prosecution of more than twenty years, including numerous amendments and petitions, four Board appeals, and a previous trip to the Federal Circuit where the obviousness of all claims then on appeal was affirmed (In re Rudy, 558 F. App’x. 1011 (Fed. Cir. 2014) (non-precedential)), claim 34, which the Board considered illustrative, reads as follows:

34. A method for fishing comprising steps of

(1) observing clarity of water to be fished to deter- mine whether the water is clear, stained, or muddy,

(2) measuring light transmittance at a depth in the water where a fishing hook is to be placed, and then

(3) selecting a colored or colorless quality of the fishing hook to be used by matching the observed water conditions ((1) and (2)) with a color or colorless quality which has been previously determined to be less attractive under said conditions than has undergone those pointed out by the following correlation for fish-attractive non-fluorescent colors:

The Patent Trial and Appeal Board (“Board”) affirmed the Examiner’s rejection of claims 34, 35, 37, 38, 40, and 45–49 of the ’360 application in the last Board appeal. The Board conducted its analysis under a dual framework for patent eligibility, purporting to apply both 1) “the two-step framework described in Mayo [Collaborative Ser- vices v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012)] and Alice [Corp. v. CLS Bank International, 573 U.S. 208 (2014)],” and 2) the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Office Guidance”), published by the United States Patent and Trademark Office (“Patent Office”). Specifically, the Board concluded “[u]nder the first step of the Alice/Mayo framework and Step 2A, Prong 1, of [the] Office Guidelines” that claim 34 is directed to the abstract idea of “select[ing] a colored or colorless quality of a fishing hook based on observed and measured water conditions, which is a concept performed in the human mind.” The Board went on to conclude that “[u]nder the second step in the Alice/Mayo framework, and Step 2B of the 2019 Revised Guidance, we determine that the claim limitations, taken individually or as an ordered combination, do not amount to significantly more than” the abstract idea.

Mr. Rudy timely appealed, challenging both the Board’s reliance on the Office Guidance, and the Board’s ultimate conclusion that the claims are not patent eligible.

II. The Federal Circuit

The Federal Circuit unanimously affirmed the Board’ affirmance of the Examiner’s rejection of claims 34, 35, 37, 38, 40, and 45–49 of the ’360 application.

1. Office Guidance vs. Case Law

Mr. Rudy contended that the Board “misapplied or refused to apply . . . case law” in its subject matter eligibility analysis and committed legal error by instead applying the Office Guidance “as if it were prevailing law.”

The Federal Circuit agreed with Mr. Rudy, stating: “[w]e are not[] bound by the Office Guidance, which cannot modify or supplant the Supreme Court’s law regarding patent eligibility, or our interpretation and application thereof.” Interestingly, the Federal cited a non-precedential opinion to support its position: “As we have previously explained:

While we greatly respect the PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance. And, especially regarding the issue of patent eligibility and the efforts of the courts to determine the distinction between claims directed to [judicial exceptions] and those directed to patent-eligible ap- plications of those [exceptions], we are mindful of the need for consistent application of our case law.

Cleveland Clinic Found. v. True Health Diagnostics LLC, 760 F. App’x. 1013, 1020 (Fed. Cir. 2019) (non-precedential). ”

In conclusion, the Federal Circuit declared: “[t]o the extent the Office Guidance contradicts or does not fully accord with our caselaw, it is our caselaw, and the Supreme Court precedent it is based upon, that must control.”

2. Subject Matter Eligibility of Rudy’s Case

The Federal Circuit concluded that although a portion of the Board’s analysis is framed as a recitation of the Office Guidance, the Board’s reasoning and conclusion for Rudy’s case are nevertheless fully in accord with the relevant caselaw in this particular case.

To determine whether a patent claim is ineligible subject matter, the U.S. Supreme Court has established a two-step Alice/Mayo framework. In Step One, courts must determine whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea. Alice, 573 U.S. at 208. In Step Two, if the claims are directed to an abstract idea, the courts must “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. To transform an abstract idea into a patent-eligible application, the claims must do “more than simply stat[e] the abstract idea while adding the words ‘apply it.’” Id. at 221. At each step, the claims are considered as a whole. See id. at 218 n.3, 225.

a. Step One

With respect to claim 34, the Federal Circuit concluded, as the Board did, that the claim is directed to the abstract idea of selecting a fishing hook based on observed water conditions. Specifically, the Federal Circuit compared claim 34 with Elec. Power Grp., and reasoned that claim 34 requires nothing more than collecting information (water clarity and light transmittance) and analyzing that information (by applying the chart included in the claim), which collectively amount to the abstract idea of selecting a fishing hook based on the observed water conditions. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016) (the Federal Circuit held in the computer context that “collecting information” and “analyzing” that information are within the realm of abstract ideas.).

The Federal Circuit disagreed with Mr. Rudy’s contention that claim 34’s preamble, “a method for fishing,” is a substantive claim limitation such that each claim requires actually attempting to catch a fish by placing the selected fishing hook in the water. The Federal Circuit reasoned that such an “additional limitation,” even if that were true, would not alter the conclusion because the character of claim 34 as a whole remains directed to an abstract idea.

The Federal Circuit also disagreed with Mr. Rudy’s contention that claim 34 is not directed to an abstract idea both because fishing “is a practical technological field . . . recognized by the PTO” and because he contends that observing light transmittance is unlikely to be performed mentally. Regarding the “practical technological field,” the Court reasoned that the undisputed fact that an applicant can obtain subject-matter eligible claims in the field of fishing is irrelevant to the fact that the claims currently before the Court are not eligible. Regarding the unlikeliness of the mental performance, the Court pointed our that the plain language of the claims encompasses such mental determination.

The Federal Circuit further rejected Mr. Rudy’s contention that, relying on the machine-or-transformation test, practicing claim 34 “acts upon or transforms fish” by transforming “freely swimming fish to hooked and landed fish” or by transforming a fishing hook “from one not having a target fish on it to one dressed with a fish when a successful strike ensues.” The Court declined to decide in this case whether the transformation from free fish to hooked fish is the type of transformation discussed in Bilski v. Kappos, 561 U.S. 593, 604 (2010) and its predecessor cases. Instead, the Court stated that claim 34 does not actually recite or require the purported transformation that Mr. Rudy relies upon because, as Mr. Rudy’s explained, “landing a fish is never a sure thing. Many an angler has gone fishing and returned empty handed.”

b. Step Two

In the Step Two Analysis, the Court concluded that claim 34 fails to recite an inventive concept at step two of the Alice/Mayo test, and is thus not patent eligible under 35 U.S.C. § 101 because the three elements of the claim (observing water clarity, measuring light transmittance, and selecting the color of the hook to be used), either individually or as an ordered combination, do not amount to “‘significantly more than a patent upon the ineligible concept itself.’” The argument in the Step Two Analysis appears somewhat cursory.

c. The Remaining Claims

The Federal Circuit concluded that claim 38, the only other independent claim on appeal, is not patent-eligible as well.

Claim 38 begins with a method that is substantively identical to claim 34, but includes a slightly different chart for selecting the fishing hook color, and further includes only one additional limitation, which recites: “wherein the fishing hook used is disintegrated from but is otherwise connectable to a fishing lure or other tackle and has a shaft portion, a bend portion connected to the shaft portion, and a barb or point at the terminus of the bend, and wherein the fishing hook used is made of a suitable material, which permits transmittance of light therethrough and is colored to colorless in nature.”

The Court stated that the slightly different substance of claim 38’s chart does not render it patent eligible because the substance of claim 34’s hook color chart was not the basis of the eligibility determination. The Court further stated that its step-one analysis of claim 34 is equally applicable to claim 38 because, as described above, this limitation does not change the fact that the character of the claim, as a whole, is directed to an abstract idea.

The Court also affirmed the Board’s conclusions that dependent claims 35, 37, and 40 are not patent eligible, as each recites the physical attributes of the connection between the fishing hook and the fishing lure in ways not meaningfully distinct from claim 38.

The Court further affirm the Board’s conclusions regarding claims 45–49, which differ from the previously discussed claims only in that they mandate a specific color of fishing hook, which neither changes the character of the claims as a whole, nor provides an inventive concept distinct from the abstract idea itself.

Takeaway

· The case demonstrates that courts still stick to the comparative approach in Alice step one, instead of defining or categorizing the “abstract idea.” This approach is notably in contrast with that of the Patent Office, which follows the Office Guidance, dividing Alice step one into two inquiries: (i) evaluate whether the claim recites a judicial exception; and (ii) evaluate whether the judicial exception is integrated into a practical application if the claim recites a judicial exception.

· To be on the safe side for the purpose of drafting a patent specification including claim(s), which is robust to an invalidity defense under  35 U.S.C. § 101, the Supreme Court’s law regarding patent eligibility, and the Federal Circuit’s interpretation and application thereof, not the Office Guidance, shall be relied on.

When there is competing evidence as to whether a prior art reference is a proper primary reference, an invalidity decision cannot be made as a matter of law at summary judgment

| April 29, 2020

Spigen Korea Co., Ltd. v. Ultraproof, Inc., et al.

April 17, 2020

Newman, Lourie, Reyna (Opinion by Reyna; Dissent by Lourie)

Summary

Spigen Korea Co., Ltd. (“Spigen”) sued Ultraproof, Inc. (“Ultraproof”) for infringement of its multiple patents directed to designs for cellular phone cases.  The district court held that as a matter of law, Spigen’s design patents were obvious over prior art references, and granted Ultraproof’s motion for summary judgment of invalidity.  However, based on the competing evidence presented by the parties, the United States Court of Appeals for the Federal Circuit (the “CAFC”) reversed and remanded, holding that a reasonable factfinder could conclude that a genuine dispute of material fact exists as to whether the primary reference was proper.

原告Spigen社は、自身の所有する複数の携帯電話ケースに関する意匠特許を被告Ultraproof社が侵害しているとして、提訴した。地裁は、原告の意匠特許は、先行技術文献により自明であるとして、裁判官は被告のサマリージャッジメントの申し立てを容認した。しかしながら、連邦控訴巡回裁判所（CAFC）は、双方の提示している証拠には「重要な事実についての真の争い（genuine dispute of material fact）」があるとして、地裁の判決を覆し、事件を差し戻した。

Details

            Spigen is the owner of U.S. Design Patent Nos. D771,607 (“the ’607 patent”), D775,620 (“the ’620 patent”), and D776,648 (“the ’648 patent”) (collectively the “Spigen Design Patents”), each of which claims a cellular phone case.  Figures 3-5 of the ’607 patent are as shown below:

The ’620 patent disclaims certain elements shown in the ’607 patent, and Figures 3-5 of the ’620 patent are shown below:

Finally, the ’648 patent disclaims most of the elements present in the ’620 patent and the ’607 patent, Figures 3-5 of which are shown below:

On February 13, 2017, Spigen sued Ultraproof for infringement of Spigen Design Patents in the United States District Court for the Central District of California.  Ultraproof filed a motion for summary judgment of invalidity of Spigen Design Patents, arguing that the Spigen Design Patents were obvious as a matter of law in view of a primary reference, U.S. Design Patent No. D729,218 (“the ’218 patent”) and a secondary reference, U.S. Design Patent No. D772,209 (“the ’209 patent”).  Spigen opposed the motion arguing that 1) the Spigen Design Patents were not rendered obvious by the primary and secondary reference as a matter of law; and 2) various underlying factual disputes precluded summary judgment.  The district court held that as a matter of law, the Spigen Design Patents were obvious over the ’218 patent and the ’209 patent, and granted summary judgment of invalidity in favor of Ultraproof.  Ultraproof then moved for attorneys’ fees, which the district court denied.  Spigen appealed the district court’s obviousness determination, and Ultraproof cross-appealed the denial of attorneys’ fees.

On appeal, Spigen presented several arguments as to why the district court’s grant of summary judgment should be reversed.  First, Spigen argued that there is a material factual dispute over whether the ’218 patent is a proper primary reference that precludes summary judgment.  The CAFC agreed.  The CAFC explained, citing Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1380-81 (Fed. Cir. 2009) (quoting Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996)) that the ultimate inquiry for obviousness “is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved,” which is a question of law based on underlying factual findings.  Whether a prior art design qualifies as a “primary reference” is an underlying factual issue.  The CAFC went on to explain that a “primary reference” is a single reference that creates “basically the same” visual impression, and for a design to be “basically the same,” the designs at issue cannot have “substantial differences in the[ir] overall visual appearance[s].”  Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1330 (Fed. Cir. 2012).  A trial court must deny summary judgment if based on the evidence before the court, a reasonable jury could find in favor of the non-moving party.  Here, the district court errored in finding that the ’218 patent was “basically the same” as the Spigen Design Patents despite there being “slight differences,” as a reasonable factfinder could find otherwise.

Spigen’s expert testified that the Spigen Design Patents and the ’218 patent are not “at all similar, let alone ‘basically the same.’”  Spigen’s expert noted that the ’218 patent has the following features that are different from the Spigen Design Patents:

• unusually broad front and rear chamfers and side surfaces
• substantially wider surface
• lack of any outer shell-like feature or parting lines
• lack of an aperture on its rear side
• presence of small triangular elements illustrated on its chamfers

In contrast, Ultraproof argued that the ’218 patent was “basically the same” because of the presence of the following features:

• a generally rectangular appearance with rounded corners
• a prominent rear chamfer and front chamfer
• elongated buttons corresponding to the location of the buttons of the underlying phone

Ultraproof stated that the only differences were the “circular cutout in the upper third of the back surface and the horizontal parting lines on the back and side surfaces.”

Based on the competing evidence in the record, the CAFC found that a reasonable factfinder could conclude that the ’218 patent and the Spigen Design Patents are not basically the same.  T

The CAFC determined that a genuine dispute of material fact exists as to whether the ’218 patent is a proper primary reference, and therefore, reversed the district court’s grant of summary judgment of invalidity and remanded the case for further proceedings.

Takeaway

When there is competing evidence in the record, the determination of whether a prior art reference creates “basically the same” visual impression, and therefore a proper primary reference, is a matter that cannot be decided at summary judgment.

A Patent Claim Is Not Indefinite If the Patent Informs the Relevant Skilled Artisan about the Invention’s Scope with Reasonable Certainty

| April 23, 2020

NEVRO CORP. v. BOSTON SCIENTIFIC

April 9, 2020

Before MOORE, TARANTO, and CHEN, Circuit Judges. MOORE, Circuit Judge

中文标题

权利要求的不确定性判定

中文摘要

内夫罗公司（Nevro）起诉波士顿科学公司和波士顿科学神经调节公司（合称波士顿科学）侵犯了内夫罗公司的七项专利。 内夫罗公司对地方法院的专利无效判决提出上诉。根据专利说明书及其申请历史，联邦巡回法院认定“paresthesia-free,” “configured to,” “means for generating,” 和 “therapy signal” 等术语并未使内夫罗公司的权利要求产生不确定性，因此撤销专利无效判决并发回重审。

小结

• 仅因其为功能用语或仅通过专利权利的诠释不能将功能性语言判定为不确定。
• 功能性语言的确定性重要体现在专利说明书中需要有解释或支持功能术语的相关结构，特别是侧重方法的专利申请，如果这些申请中存在着系统或设备的权利要求， 而这些系统或设备权利要求由方法的权利要求转化而来，对系统或设备的必要描述是需要的。¹
• 不确定性的判定标准存在于是否权利要求通过说明书和申请历史以合理的确定性向本领域技术人员告知了本发明的范围。

注¹：许多专利申请通常使用诸如“模块”（module）和“单元”（unit）的术语，并将方法权利要求转换为系统或设备的权利要求。但是，在说明书中如果没有相关的结构说明，由于不确定性，通常这些权利要求会被拒绝。因此，专利说明书中有必要对“模块”或“单元”进行必要的描述，例如电子、通讯及软件类的专利申请，可添加一些与通用处理器，集成芯片或现场可编程门阵列有关的描述，以定义“模块”或“单元”并描述相关功能。

Summary

       Nevro Corporation (Nevro) sued Boston Scientific Corporation and Boston Scientific Neuromodulation Corporation (collectively, Boston Scientific) for infringement of eighteen claims across seven patents. Nevro Corporation appealed the district court’s judgment of invalidity. The Federal Circuit found that the terms “paresthesia-free,” “configured to,” “means for generating,” and “therapy signal” are not rendering the asserted claims indefinite in view of the specifications and prosecution history, vacating and remanding the district court’s judgment of claim invalidity.

Background

       Nevro owns seven patents having method and system claims directed to high-frequency spinal cord stimulation therapy for inhibiting an individual pain. Nevro sued Boston Scientific in the Northern District of California for patent infringement related to U.S. Patent Nos. 8,359,102; 8,712,533; 8,768,472; 8,792,988; 9,327,125; 9,333,357; and 9,480,842.

       In a joint claim construction and summary judgment order, the district court held twelve claims invalid as indefinite. Though six asserted claims survived and were found definite, the district court granted Boston Scientific noninfringement. On appeal, the Federal Circuit concluded the district court erred in holding indefinite the claims reciting the terms “paresthesia-free,” “configured to,” and “means for generating.” The Federal Circuit also found the district court erred in its construction of the term “therapy signal,” though determined not indefinite by the district court. The Federal Circuit, therefore, vacated and remanded the district court’s judgment of invalidity of claims 7, 12, 35, 37 and 58 of the ’533 patent, claims 18, 34 and 55 of the ’125 patent, claims 5 and 34 of the ’357 patent and claims 1 and 22 of the ’842 patent.

Discussion

I. “paresthesia-free”

       Several of Nevro’s asserted claims relate to methods and systems comprising a means for generating therapy signals that are “paresthesia-free.” Claim 18 of the ’125 patent and Claim 1 of the ’472 patent recite as follow:

18.  A spinal cord modulation system for reducing or eliminating pain in a patient, the system comprising:

means for generating a paresthesia-free therapy signal with a signal frequency in a range from 1.5 kHz to 100 kHz; and 

means for delivering the therapy signal to the patient’s spinal cord at a vertebral level of from T9 to T12, wherein the means for delivering the therapy signal is at least partially implantable.

1.    A method for alleviating patient pain or discomfort, without relying on paresthesia or tingling to mask the patient’s sensation of the pain, comprising:

implanting a percutaneous lead in the patient’s epidural space, wherein the percutaneous lead includes at least one electrode, and wherein implanting the percutaneous lead includes positioning the at least one electrode proximate to a target location in the patient’s spinal cord region and outside the sacral region;

implanting a signal generator in the patient; electrically coupling the percutaneous lead to the signal generator; and

programming the signal generator to generate and deliver an electrical therapy signal to the spinal cord region, via the at least one electrode, wherein at least a portion of the electrical therapy signal is at a frequency in a frequency range of from about 2,500 Hz to about 100,000 Hz.

       The district court presented its findings based on extrinsic evidence that “[a]lthough the parameters that would result in a signal that does not create paresthesia may vary between patients, a skilled artisan would be able to quickly determine whether a signal creates paresthesia for any given patient.” While holding that the term “paresthesia-free” does not render the method claims indefinite, the district court held indefiniteness regarding the asserted system and device claims. The Federal Circuit disagreed the indefiniteness holdings because the test of indefiniteness should be simply based on whether a claim “inform[s] those skilled in the art about the scope of the invention with reasonable certainty.” The Federal Circuit states that the district court applied the wrong legal standard and the test for indefiniteness is not whether infringement of the claim must be determined on a case-by-case basis.

       The Federal Circuit states that “paresthesia-free,” a functional term defined by what it does rather than what it is, does not inherently render it indefinite. Furthermore, the Federal Circuit instructs that

i. functional language can “promote[] definiteness because it helps bound the scope of the claims by specifying the operations that the [claimed invention] must undertake.” Cox Commc’ns, 838 F.3d at 1232.

ii. the ambiguity inherent in functional terms may be resolved where the patent “provides a general guideline and examples sufficient to enable a person of ordinary skill in the art to determine the scope of the claims.”  Enzo Biochem. Inc. v. Applera Corp., 599 F.3d 1325, 1335 (Fed. Cir. 2010).

II. “configured to”

Nevro’s asserted claim 1 of the ’842 patent relates to a spinal cord modulation system, which recites:

1.  A spinal cord modulation system comprising: 

a signal generator configured to generate a therapy signal having a frequency of 10 kHz, an amplitude up to 6 mA, and pluses having a pulse width between 30 microseconds and 35 microseconds; and

an implantable signal delivery device electrically coupleable to the signal generator and configured to be implanted within a patient’s epidural space to deliver the therapy signal from the signal generator the patient’s spinal cord.

       The district court held indefiniteness because it determined that “configured to” is susceptible to meaning one of two constructions: “(1) the signal generator, as a matter of hardware and firmware, has the capacity to generate the described electrical signals (either without further programing or after further programming by the clinical programming software); or (2) the signal generator has been programmed by the clinical programmer to generate the described electrical signals.”

       The Federal Circuit pointed out that “the test [of indefiniteness] is not merely whether a claim is susceptible to differing interpretations” because “such a test would render nearly every claim term indefinite so long as a party could manufacture a plausible construction.” Further, the Federal Circuit states that the test for indefiniteness is whether the claims, viewed in light of the specification and prosecution history, “inform those skilled in the art about the scope of the invention with reasonable certainty.”  Nautilus, 572 U.S. at 910. (emphasis added).

       The specifications of the asserted patents and prosecution history, indeed, help Nevro win the argument on “configured” means. Nevro’s asserted patents not only recites that “the system is configured and programmed to,” but also Nevro agreed with the examiner that “configured” means “programmed” as opposed to “programmable.” The limitation specifies the interpretation of the term “configured” and leads to this favorable decision towards Nevro. The “programmed” and “programmable” may sound similar. However, “programmable” would be appliable to a general machine, since any general signal generator would have the capacity to generate the described signals. The term “programmed” sets out its specific settings of the signal generator and limits such broad interpretation.

III. “means for generating”

       Several asserted claims of the ‘125 patent recite “means for generating,” in which claim 18 recites as follow:

18.  A spinal cord modulation system for reducing or eliminating pain in a patient, the system comprising:

means for generating a paresthesia-free therapy signal with a signal frequency in a range from 1.5 kHz to 100 kHz; and

means for delivering the therapy signal to the patient’s spinal cord at a vertebral level of from T9 to T12, wherein the means for delivering the therapy signal is at least partially implantable.

       Nevro argued that the specification discloses a signal generator as the structure. The Federal Circuit agreed with Nevro and explained the difference comparing a general-purpose computer or processor. If the identified structure is a general-purpose computer or processor, it does require a specific algorithm. A signal or pulse generator is not considered as a general-purpose computer or processor, since it has the structure for the claimed “generating” function. Further, “the specification teaches how to configure the signal generators to generate and deliver the claimed signals using the recited parameters, clearly linking the structure to the recited function.” Hence, the Federal Circuit held that the district court erred in holding indefinite claims with the terms “means for generating.”

       The terms such as “module” and “unit” are commonly used in many patent applications to convert method claims to system or device claims in electronic applications. However, without structural description in the specification, such claims are usually rejected due to indefiniteness. Hence, some may add some description related to general-purpose processors, integrated chips, or field-programmable gate arrays to define the “module” or “unit” and describe the functions.

IV. “therapy signal”

       The Federal Circuit agreed that claims reciting a “therapy signal” are not indefinite, but held that the district court incorrectly construed the term. The Federal Circuit reiterated the context of the specification and prosecution history for understanding the words of a claim. It stated that “[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.”  Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). 

       Boston Scientific argued that the asserted claims reciting a “therapy signal” are indefinite because “two signals with the same set of characteristics (e.g., frequency, amplitude, and pulse width) may result in therapy in one patient and no therapy in another.”  The Federal Circuit noted that “the fact that a signal does not provide pain relief in all circumstances does not render the claims indefinite.” Geneva, 349 F.3d at 1384.

Takeaway

• Functional language won’t be held indefinite simply for that reason or simply by interpreted in the claims.
• It is of importance to describe a related structure to support the functional terms in the specification, especially for applications having system or device claims converted from method claims.
• The test for indefiniteness is whether the claims, viewed in light of the specification and prosecution history, “inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, 572 U.S. at 910.

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