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WHEN IS PRIOR ART ANALOGOUS?

| November 29, 2019

Airbus v. Firepass

November 8, 2019

Lourie, Moore, and Stoll

Summary:

To determine whether a reference is “analogous prior art,” one must first ask whether the reference is from the same “field of endeavor” as claimed invention.  If not, one must ask whether the reference is “reasonably pertinent” to the particular problem addressed by the claimed invention. 

As phrased by the CAFC here, a reference is “reasonably pertinent” if

an ordinarily skilled artisan would reasonably have consulted in seeking a solution to the problem that the inventor was attempting to solve, [so that] the reasonably pertinent inquiry is inextricably tied to the knowledge and perspective of a person of ordinary skill in the art at the time of the invention.

Thus, one should consider (i) in which areas one skilled in the art would reasonably look, and (ii) what that skilled person would reasonably search for, in trying to address the problem faced by the inventor. Accordingly, courts or examiners should consider evidence cited by the parties or the applicant that demonstrates “the knowledge and perspective of a person of ordinary skill in the art at the time of the invention.”

            If a reference fails both the “field of endeavor” and the “reasonably pertinent” tests, it is not analogous prior art and not available for an obviousness rejection. 

Background:

Challenger Airbus filed an inter partes reexamination against a patent owned by Firepass.  The examiner rejected the claims at issue here as being obvious over the Kotliar reference in view of other prior art.  The examiner also rejected other claims, not in issue here, as being obvious over Kotliar in view of four prior references (Gustafsson, the 1167 Report, Luria, and Carhart). 

The claimed invention is an enclosed fire prevention and suppression system (for instance, computer rooms, military vehicles, or spacecraft), which extinguishes fire with an atmosphere of breathable air.  The inventor found that a low-oxygen atmosphere (16.2% or slightly lower), maintained at normal pressure, would inhibit fire and yet be breathable by humans.  Normal pressure is maintained by added nitrogen gas. 

The patent contains the following independent claim that was added during the reexamination:

A system for providing breathable fire-preventive and fire suppressive atmosphere in enclosed human-occupied spaces, said system comprising:

an enclosing structure having an internal environment therein containing a gas mixture which is lower in oxygen content than air outside said structure, and an entry communicating with said internal environment;

an oxygen-extraction device having a filter, an inlet taking in an intake gas mixture and first and second outlets, said oxygen-extraction device being a nitrogen generator, said first outlet transmitting a first gas mixture having a higher oxygen content than the intake gas mixture and said second outlet transmitting a second gas mixture having a lower oxygen content than the intake gas mixture;

said second outlet communicating with said internal environment and transmitting said second mixture into said internal environment so that said second mixture mixes with the atmosphere in said internal environment;

said first outlet transmitting said first mixture to a location where it does not mix with said atmosphere in said internal environment;

said internal environment selectively communicating with the outside atmosphere and emitting excessive internal gas mixture into the outside atmosphere;

said intake gas mixture being ambient air taken in from the external atmosphere outside said internal environment with a reduced humidity; and

a computer control for regulating the oxygen con-tent in said internal environment.

The Board of Appeals reversed the examiner’s rejection, finding that Kotliar is not analogous prior art. The Board stated that the examiner had not articulated a “rational underpinning that sufficiently links the problem [addressed by the claimed invention] of fire suppression/prevention confronting the inventor” to the disclosure of Kotliar, “which is directed to human therapy, wellness, and physical training.” Significantly, the Board did not consider Airbus’ argument that “breathable fire suppressive environments [were] well-known in the art,” stating that the four references, relied on by Airbus, were not used by the examiner for the rejection of the claims in issue here.

Discussion:

The CAFC began its analysis by citing the “field of endeavor” and the “reasonably pertinent” tests mentioned above. 

With respect to “field of endeavor,” the CAFC agreed with the Board.  The Court explained that the disclosure of the references is the primary focus, but that courts and examiners must also consider each reference’s disclosure in view of the “the reality of the circumstances” and “weigh those circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.”

Here, the Board found that the “field of endeavor” for the patent to be “devices and methods for fire prevention/suppression,” citing the preamble of the claim, the title and specification of the patent.  Kotliar, on the other hand, concerns “human therapy, wellness, and physical training,” based on its title and specification.  The Board concluded that Kotliar was outside the field of endeavor of the claimed invention, particularly in view of the fact that Kotliar never mentions “fire.” 

The CAFC found that the Board’s conclusion is supported by substantial evidence.

Airbus argued that the Board should have considered the four references—Gustafsson, the 1167 Report, Luria, and Carhart—to which show that “a POSA would have known and appreciated that the breathable hypoxic air produced by Kotliar is fire-preventative and fire-suppressive, even though Kotliar does not state this” (emphasis in original). The CAFC disagreed, stating that Board’s failure to consider these references, if error, was harmless error.  The CAFC explained that

a reference that is expressly directed to exercise equipment and fails to mention the word “fire” even a single time—falls within the field of fire prevention and suppression. Such a conclusion would not only defy the plain text of Kotliar, it would also defy “common sense” and the “reality of the circumstances” that a factfinder must consider in determining the field of endeavor.

            The CAFC, however, came to the opposite conclusion with respect to the “reasonably pertinent” test.  As with the “field of endeavor” test, the Board had failed to consider the four references.  The CAFC found that this was a mistake.

In determining whether a reference is “reasonably pertinent” to the particular problem addressed by the claimed invention, for assessing whether a reference is analogous prior art, the court or the examiner should consider (i) in which areas one skilled in the art would reasonably look, and (ii) what that skilled person would reasonably search for, in trying to address the problem faced by the inventor. A court or examiner should therefore consider evidence cited by the parties or the applicant that demonstrates “the knowledge and perspective of a person of ordinary skill in the art at the time of the invention.”

Here, the four references are relevant to the question of whether one skilled in the art of fire prevention and suppression would have reasonably consulted references relating to normal pressure, low-oxygen atmospheres to address the problem of preventing and suppressing fires in enclosed environments. As stated above, the four references—Gustafsson, the 1167 Report, Luria, and Carhart—to which show that “a POSA would have known and appreciated that the breathable hypoxic air produced by Kotliar is fire-preventative and fire-suppressive, even though Kotliar does not state this” (emphasis in original). These references, the CAFC stated, could therefore lead a court or an examiner to conclude that one skilled in the field of fire prevention and suppression would have looked to Kotliar for its disclosure of a hypoxic room, even though Kotliar itself is outside the field of endeavor.

The CAFC therefore vacated the Board’s decision and remanded the case for the Board to consider whether Kotliar is analogous prior art in view of the four references.

Takeaway:

            In resolving the “reasonably pertinent” test, courts and examiners must look at all the evidence of record.

Preamble Reciting a Travel Trailer is a Structural Limitation – Avoiding Assertions of Intended Use

| November 26, 2019

In Re: David Fought, Martin Clanton.

November 4, 2019

Newman, Moore and Chen

Summary

            This decision provides an excellent example of when a limitation in a preamble is given patentable weight. The decision also illustrates arguments which will not be successful. The Federal Circuit held that not only was the preamble limiting, but also held that a “travel trailer” is considered a specific type of recreation vehicle having structural distinctions.

Background

The patent application contains two independent claims:

1. A travel trailer having a first and second compartment therein separated by a wall assembly which is movable so as to alter the relative dimensions of the first and second compartments without altering the exterior appearance of the travel trailer.

2. A travel trailer having a front wall, rear wall, and two side walls with a first and a second compartment therein, those compartments being separated by a wall assembly, the wall assembly having a forward wall and at least one side member,

the side member being located adjacent to and movable in parallel with respect to a side wall of the trailer, and

the wall assembly being moved along the longitudinal length of the trailer by drive means positioned between the side member and the side wall. (Emphasis added)

The examiner rejected claim 1 as anticipated by a reference describing a conventional truck trailer such as a refrigerated trailer, and rejected claim 2 as anticipated over another reference describing a bulkhead for shipping compartments. The applicants appealed the rejections by (1) arguing that the claims do not have a preamble, (2) arguing that a travel trailer is a type of recreational vehicle, as supported by extrinsic evidence, and (3) arguing that the Examiner erred by rejecting the claims without addressing the level of ordinary skill.

Discussion

            The CAFC reviewed the Board’s legal conclusions (involving claim construction) de novo and reviewed the factual findings (involving the extrinsic evidence) for substantial evidence.

            The effect of a preamble is treated as a claim construction issue. The CAFC was not persuaded by the argument that the claims do not have a preamble because a traditional transitional phrase such as “comprising” was not used. The CAFC explained that although a traditional transitional phrase was not used, the word “having” performs the role of a transitional phrase. As such, this argument was not persuasive.

            The next argument, however, was found persuasive. In particular, the CAFC has repeatedly held that a preamble is limiting when it serves as antecedent basis for a term appearing in the body of the claim. See, e.g., C.W. Zumbiel Co., 702 F.3d at 1385; Bell Commc’ns Re-search, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 620–21 (Fed. Cir. 1995); Electro Sci. Indus., Inc. v. Dynamic De-tails, Inc., 307 F.3d 1343, 1348 (Fed. Cir. 2002); Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015). As seen in claims 1 and 2 above, each claim refers back to the preamble.

            With respect to the meaning of “travel trailer”, the PTAB quoted relevant portions of the extrinsic evidence:

“Recreational vehicles” or “RVs,” as referred to herein, can be motorized or towed, but in general have a living area which provides shelter from the weather as well as personal conveniences for the user, such as bathroom(s), bedroom(s), kitchen, dining room, and/or family room. Each of these rooms typically forms a separate compartment within the vehicle . . . . A towed recreational vehicle is generally referred to as a “travel trailer.”

Probably the single most-popular class of towable RV is the Travel Trailer. Spanning 13 to 35 feet long, travel trailers are designed to be towed by cars, vans, and pickup trucks with only the addition of a frame or bumper mounted hitch. Single axles are common, but dual and even triple axles may be found on larger units to carry the load.

            In regard to the meaning of “travel trailer”, the extrinsic evidence shows that “travel trailer” connotes a specific structure of towability which is not an intended use. In addition, the extrinsic evidence shows that recreational vehicles and travel trailers have living space rather than cargo space, which also is not an intended use. As such, “travel trailer” is a specific type of recreational vehicle and the term is a structural limitation.

            The CAFC thus concludes:

“There is no dispute that if “travel trailer” is a limitation, Dietrich and McDougal, which disclose cargo trailers and shipping compartments, do not anticipate. Just as one would not confuse a house with a warehouse, no one would confuse a travel trailer with a truck trailer.”

            The argument that the PTAB erred for failing to explicitly state the level of ordinary skill was a loser:

“Unless the patentee places the level of ordinary skill in the art in dispute and explains with particularity how the dispute would alter the outcome, neither the Board nor the examiner need articulate the level of ordinary skill in the art. We assume a proper determination of the level of ordinary skill in the art as required by Phillips.”

Takeaways

• The preamble is limiting when it serves as antecedent basis for a term appearing in the body of the claim.
• A term in the preamble can be construed as a structural limitation and not merely a statement of intended use when the evidence supports such meaning.

Is a claim limitation functional or merely an intended use?

| November 21, 2019

Quest USA Corp. v. PopSockets LLC (Patent Trial and Appeal Board)

August 12, 2019

Zado, Kaiser and Margolies (Administrative Patent Judges)

Summary:

 This case is a Final Written Decision by the Patent Trial and Appeal Board of an inter partes review (“IPR”) filed by Quest USA Corp (“Petitioner”) against U.S. Patent No. 8,560,031 owned by PopSockets LLC (“Patent Owner”). One issue in the IPR was whether a limitation in claim 9 of the ‘031 patent is a functional limitation that should be given patentable weight or whether the limitation is just an intended use that is not given patentable weight. The noted limitation is a securing element “for attaching the socket to the back of the portable media player.” As part of its finding that the claims are anticipated, the PTAB held that the noted limitation is an intended use and that Grinfas is inherently capable of satisfying the noted limitation.

Details:

The ‘031 patent is to an “Extending Socket for Portable Media Player” and describes extending sockets for attaching to the back of a portable media player or media player case. The extending sockets can be used for, e.g., storing headphone cords and preventing cords from tangling. Figure 3A from the ‘031 patent is provided:

Claims 9-11, 16 and 17 of the ‘031 patent are at issue in this IPR. Claim 9 is provided below, and the limitation relevant to this summary is highlighted:

9. A socket for attaching to a portable media player or to a portable media player case, comprising:

[a] a securing element for attaching the socket to the back of the portable media player or portable media player case; and

[b] an accordion forming a tapered shape connected to the securing element, the accordion capable of extending outward generally along its [axis] from the portable media player and retracting back toward the portable media player by collapsing generally along its axis; and

[c] a foot disposed at the distal end of the accordion.

Petitioner asserted that claims 9-11, 16 and 17 are anticipated by Grinfas (UK Patent Application GB 2 316 263 A). Grinfas discloses a collapsible sound conduit for attaching to a cellular telephone. The idea of Grinfas is to provide a spaced distance between the telephone and a user’s head to reduce radiation exposure. Figures 2, 3 and 4A of Grinfas are provided below:

Grinfas discloses using an adhesive pad or straps to attach the collapsible sound conduit to the asserted media player. Patent Owner did not dispute that Grinfas discloses “a securing element” for attaching the socket to the earpiece of a telephone. However, Patent Owner, attempting to characterize the limitation as functional, argued that Grinfas does not disclose a securing element “for attaching the socket to the back of the portable media player” as recited in claim 9.

The PTAB stated that the issue is whether the noted limitation recites “1) functional language that must be given patentable weight, or 2) an intended use that is not limiting.” The PTAB also provided these two legal principles:

(1) “Where all structural elements of a claim exist in a prior art product, and that prior art product is capable of satisfying all functional or intended use limitations, the claimed invention is nothing more than an unpatentable new use for an old product.” Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 654 (Fed. Cir. 2011).

(2) “[A] prior art reference may anticipate or render obvious an apparatus claim—depending on the claim language—if the reference discloses an apparatus that is reasonably capable of operating so as to meet the claim limitations, even if it does not meet the claim limitations in all modes of operation.” ParkerVision, 903 F.3d at 1361.

Petitioner argued that the “for attaching” language merely recites an intended use and is not entitled to patentable weight and that the structures disclosed in Grinfas are inherently capable of attaching to the back of a phone or phone case. The PTAB agreed with Petitioner that Grinfas is inherently capable of performing the function of attaching the asserted socket to the back of the portable media player. They relied on expert testimony that stated that the adhesive pad described in Grinfas has an adhesive that would stick to either side of the telephone, and that the straps could be used to fasten the sound conduit to either side of a telephone.

Patent Owner did not dispute that Grinfas’s securing elements are inherently capable of attaching the collapsible sound conduit to the back of a telephone. Patent Owner argued that Grinfas does not actually disclose the function of attaching to the back of a phone, and that the expert failed to provide evidence that the claimed function is necessarily present in Grinfas. The PTAB stated that Petitioner is not required to show the claimed function is actually performed or must be performed.

Patent Owner further argued that the “for attaching the socket to the back” limitation is entitled to patentable weight “because … this language recites a fundamental characteristic without which the invention would be of little use.” However, the PTAB looked at the specification and the prosecution history and concluded that the limitation does not recite a fundamental characteristic without which the invention would be of little use. The PTAB said that the specification did not describe a securing structure as being specific for attaching to the back, as opposed to some other portion, of a portable media player or case. The PTAB further stated that the specification indicates that the invention would be useful when attached to the media player generally, but does not specify attachment to the back as a requirement.

Thus, the PTAB concluded that Grinfas discloses a securing element inherently capable of being attached to the back of a portable media player, and that Grinfas discloses the securing element limitation of claim 9. The PTAB also found that Grinfas discloses all other limitations of claim 9 and that Grinfas anticipates all of the disputed claims.

Comments

The opinion pointed out that there is a risk in choosing to define an element functionally in an apparatus claim. A functional claim limitation in an apparatus claim may be considered as an intended use, and the prior art will satisfy the limitation if it is reasonably capable of performing the function.

The ‘031 patent also included a method claim (claim 16). The method claim recited attaching the socket to a portable media player; selectively extending the socket; and selectively retracting the socket. However, the method claim did not recite attaching the socket to the “back” of the portable media player.

It appears from the PTAB decision that the patent owner may have had a chance to avoid anticipation if they could actually show that the function “recites a fundamental characteristic without which the invention would be of little use.” The decision appears to give weight to the patent owner’s argument that if the function “recites a fundamental characteristic without which the invention would be of little use,” then the prior art must actually disclose performing the function.

Definitely Consisting Essentially Of: Basic and Novel Properties Must Be Definite Under 35 U.S.C. §112

| November 15, 2019

HZNP Medicines, LLC, Horizon Pharma USA, Inc. v. Actavis Laboratories UT, Inc.

October 15, 2019

Before: Prost, Reyna and Newman; Opinion by:  Reyna; Dissent-in-part by:  Newman

Summary:  Horizon appealed a claim construction that the term “consisting essentially of” was indefinite. The district court evaluated the basic and novel properties under the Nautilus definiteness standard and found that the properties set forth in Horizon’s specification where indefinite. Horizon maintained this was legal error.  The CAFC found that having used the phrase “consisting essentially of,” Horizon thereby incorporated unlisted ingredients or steps that do not materially affect the basic and novel properties of the invention.  They asserted that a drafter cannot later escape the definiteness requirement by arguing that the basic and novel properties of the invention are in the specification, not the claims.  Newman dissents, noting that no precedent has held that “consisting essentially of” composition claims are invalid unless they include the properties of the composition in the claims and that the majority’s ruling “sows conflict and confusion.”

Details: 

1. Background

HZNP Medicines, LLC, Horizon Pharma USA, Inc (“Horizon”) owns a series of patents directed to a methods and compositions for treating osteoarthritis.  Actavis Laboratories UT, Inc (“Actavis”) sought to manufacture a generic version.  Horizon sued Actavis for infringement in the District of New Jersey.  Most of Horizon’s claims were removed by Summary Judgment on multiple issues.  One claim survived to trial and was found valid and infringed.  The CAFC taking up the appeal and cross-appeal on a number of issues (induced infringement, obviousness of a modified chemical formula and indefiniteness) affirmed the District Court. 

This paper focuses on the ruling that Horizon claims using the “consisting essentially of” transitional phrase where invalid based on the basic and novel properties being indefinite under 35 U.S.C. §112.

• The CAFC’s Decision

Several of the claims in the Horizon patents recited  a formulation “consisting essentially of” various ingredients.  Claim 49 of the ’838 patent was used as the example.

49. A topical formulation consisting essentially of:

1–2% w/w diclofenac sodium;

40–50% w/w DMSO;

23–29% w/w ethanol;

10–12% w/w propylene glycol;

hydroxypropyl cellulose; and

water to make 100% w/w, wherein the topical formulation has a viscosity of 500–5000 centipoise.

The claims had been found invalid by the District Court under Summary Judgement following a Markman hearing.  The parties’ dispute focused on the basic and novel properties of the claims.  The CAFC agreed with the District Court that these properties are implicated by virtue of the phrase “consisting essentially of,” which allows unlisted ingredients to be added to the formulation so long as they do not materially affect the basic and novel properties.

The district court held that the specification of the patents identified five basic and novel properties: (1) better drying time; (2) higher viscosity; (3) increased transdermal flux; (4) greater pharmacokinetic absorption; and (5) favorable stability.  Further, the district court reviewed the characteristics and found that at least “better drying time” was indefinite because the specifications provided two separate manners of determining drying time which were inconsistent.  Based thereon, they concluded that the basic and novel properties of the claimed invention were indefinite under Nautilus. 

The CAFC evaluated whether the Nautilus definiteness standard applies to the basic and novel properties of an invention.  Horizon had argued that the Nautilus definiteness standard focuses on the claims and therefore does not apply to the basic and novel properties of the invention. The majority found this argument to be “misguided” and asserted that by using the phrase “consisting essentially of” in the claims, the inventor in this case incorporated into the scope of the claims an evaluation of the basic and novel properties.

The use of “consisting essentially of” implicates not only the items listed after the phrase, but also those steps (in a process claim) or ingredients (in a composition claim) that do not materially affect the basic and novel properties of the invention. Having used the phrase “consisting essentially of,” and thereby incorporated unlisted ingredients or steps that do not materially affect the basic and novel properties of the invention, a drafter cannot later escape the definiteness requirement by arguing that the basic and novel properties of the invention are in the specification, not the claims.

They supported this position by noting that a patentee can reap the benefit of claiming unnamed ingredients and steps by employing the phrase “consisting essentially of” so long as the basic and novel properties of the invention are definite.

In evaluating the district courts finding of indefiniteness, the CAFC maintained that two questions arise when claims use the phrase “consisting essentially of.” The first focusing on definiteness: “what are the basic and novel properties of the invention?”  The second, focusing on infringement: “does a particular unlisted ingredient materially affect those basic and novel properties?”   The definiteness inquiry focuses on whether a person of ordinary skill in the art (“POSITA”) is reasonably certain about the scope of the invention.  If the POSITA cannot as-certain the bounds of the basic and novel properties of the invention, then there is no basis upon which to ground the analysis of whether an unlisted ingredient has a material effect on the basic and novel properties.  Keeping with this logic, the CAFC maintained that to determine if an unlisted ingredient materially alters the basic and novel properties of an invention, the Nautilus definiteness standard requires that the basic and novel properties be known and definite.

Hence, the CAFC concluded that the district court did not err in considering the definiteness of the basic and novel properties during claim construction.

The majority then looked to the specific finding of indefiniteness by the district court regarding the basic and novel property of “better drying time.”   They noted that the  specification discloses results from two tests: an in vivo test and an in vitro test.  The district court had found that the two different methods for evaluating “better drying time” do not provide consistent results at consistent times. Accordingly, CAFC affirmed the district court’s conclusion that the basic and novel property of “better drying rate” was indefinite, and consequently, that the term “consisting essentially of” was likewise indefinite.

In sum, we hold that the district court did not err in: (a) defining the basic and novel properties of the formulation patents; (b) applying the Nautilus definiteness standard to the basic and novel properties of the formulation patents; and (c) concluding that the phrase “consisting essentially of” was indefinite based on its finding that the basic and novel property of “better drying time” was indefinite on this record.

However, they noted that the Nautilus standard was not to be applied in an overly stringent manner.

To be clear, we do not hold today that so long as there is any ambiguity in the patent’s description of the basic and novel properties of its invention, no matter how marginal, the phrase “consisting essentially of” would be considered indefinite. Nor are we requiring that the patent owner draft claims to an untenable level of specificity. We conclude only that, on these particular facts, the district court did not err in determining that the phrase “consisting essentially of” was indefinite in light of the indefinite scope of the invention’s basic and novel property of a “better drying time.”

Judge Newman’s Dissent

Judge Newman dissented.  She asserted that the majority holding that “By using the phrase ‘consisting essentially of’ in the claims, the inventor in this case incorporated into the scope of the claims an evaluation of the basic and novel properties”  is not correct as a matter of claim construction, it is not the law of patenting novel compositions, and it is not the correct application of section 112(b).

First, she noted that there is no precedent that when the properties of a composition are described in the specification, the usage “consisting essentially of” the ingredients of the composition invalidates the claims when the properties are not repeated in the claims.

            Second, in regard to the specifics of “drying time” for the case at hand, she noted that whatever the significance of drying time as an advantage of the claimed composition, recitation and measurement of this property in the specification does not convert the composition claims into invalidating indefiniteness because the ingredients are listed in the claims as “consisting essentially of.”

The role of the claims is to state the subject matter for which patent rights are sought.  The usage “consisting essentially of” states the essential ingredients of the claimed composition. There are no fuzzy concepts, no ambiguous usages in the listed ingredients. There is no issue in this case of the effect of other ingredients…

Noting that there was no evidence that a POSITA would not understand the components of the composition claims with reasonable certainty, Newman concluded that since in the current case there are no other components asserted to be present, no “unnamed ingredients and steps” that even adopting the construction taken by the majority the claims are not subject to invalidity for indefiniteness.

Takeaways: 

            Added caution must be taken by patent prosecutors when electing to use the transitional phrase “consisting essentially of”.  The specification needs to be clear as to what the basic and novel properties are and how they are determinable. 

            When using “consisting essentially of” incorporating the properties that are considered to be basic and novel into the claim language may help prevent ambiguity.

Presenting multiple arguments in prosecution risks prosecution history estoppel on each of them

| November 8, 2019

Amgen Inc. v. Coherus BioSciences Inc.

July 29, 2019

Before Reyna, Hughes, and Stoll. Opinion by Stoll.

Summary

The CAFC affirmed a district court decision holding that Amgen had failed to state a claim and dismissed Amgen’s suit against Coherus for patent infringement under the doctrine of equivalents, in view of Amgen’s clear and unmistakable disclaimer of claim scope during prosecution.

Details

Amgen Inc. and Amgen Manufacturing Ltd. (“Amgen”) sued Coherus BioSciences Inc. for infringement of U.S. Patent No. 8,273,707 (the ‘707 patent). The patent relates to methods of purifying proteins using hydrophobic interaction chromatography (“HIC”), in which a buffered salt solution containing the desired protein is poured into a HIC column and the proteins are bound to a column matrix while the impurities are washed out. However, only a limited amount of protein can bind to the matrix. If too much protein is loaded on the column, some of the protein will be lost to the solution phase before elution.

Conventionally, a higher salt concentration in a buffer solution is provided to increase the dynamic capacity of the HIC column, but the higher salt concentration causes protein instability. Amgen’s ‘707 patent discloses a process that increases the dynamic capacity of a HIC column by providing combinations of salts instead of using a single salt.

According to the ‘707 patent, any one of the three combinations of salts – citrate and sulfate, citrate and acetate, or sulfate and acetate – allows for a decreased concentration of at least one of the salts to achieve a greater dynamic capacity without compromising the quality of the protein separation.

During prosecution, the Examiner rejected the claims as being obvious in view of U.S. Patent No. 5,231,178 (“Holtz”). In reply to the Examiner’s rejection, Amgen argued that:

(1) The pending claims recite a particular combination of salts. No combinations of salts are taught nor suggested in Holtz;

(2) No particular combinations of salts recited in the pending claims are taught or suggested in Holtz; and

(3) Holtz does not teach dynamic capacity at all.

Amgen also attached a declaration from the inventor. The declaration stated that the use of the three salt combinations leads to substantial increases in the dynamic capacity of a HIC column and “[use] of this particular combination of salts greatly improves the cost-effectiveness of commercial manufacturing by reducing the number of cycles required for each harvest and reducing the processing time for each harvest.”

The Examiner again rejected Amgen’s argument and took the position that the prior art does disclose salts used in a method of purification and that adjustment of conditions was within the skill of an ordinary artisan.  This time, in response to the Examiner’s position, Amgen replied that Holtz does not disclose any combination of salts and does not mention the dynamic capacity of a HIC column. In particular, Amgen stated that it was a “lengthy development path” when choosing a working salt combination and that merely adding a second salt would not have been expected to result in the invention. The Examiner allowed the claims.

In 2016, Coherus sought FDA approval to market a biosimilar version of Amgen’s pegfilgrastim product. In 2017, Amgen sued Coherus for infringing the ‘707 patent under the doctrine of equivalents because Coherus’s process did not match any of the three explicitly recited salt combinations in the ‘707 patent. Coherus moved to dismiss Amgen’s complaint for failure to state a claim.

The district court agreed to dismiss the complaint. The district court noted that during prosecution, Amgen had distinguished Holtz by repeatedly arguing that Holtz did not disclose “one of the particular, recited combinations of salts” in the two responses and in the declaration. The district court held that “[t]he prosecution history, namely, the patentee’s correspondence in response to two office actions and a final rejection, shows a clear and unmistakable surrender of claim scope by the patentee.”  In addition, the district court held that “by disclosing but not claiming the salt combination used by Coherus, Amgen had dedicated that particular combination to the public.”

Amgen appealed.

The CAFC affirmed the district Court’s dismissal and found that the “prosecution history estoppel has barred Amgen from succeeding on its infringement claim under the doctrine of equivalents.”

In the appeal, Amgen argued that it only had distinguished Holtz by stating that Holtz does not disclose increasing any dynamic capacity or mention any salt combination. Amgen also argued that the prosecution history should not apply here because the last response filed prior to allowance did not make the argument that Holtz failed to disclose the particular salt combinations.

Regarding Amgen’s first point – that during prosecution, only dynamic capacity had been used to distinguish Holtz – the CAFC noted the three grounds on which Amgen has relied for distinguishing Holtz, and the fact that Amgen had quoted the declaration in support of the particular combination of salts recited in the claims.  The CAFC explained that “separate arguments create separate estoppels as long as the prior art was not distinguished based on the combination of these various grounds.”

The CAFC also disagreed with Amgen’s second point (that prosecution history estoppel should not apply because of their last response), commenting that “there is no requirement that argument-based estoppel apply only to arguments made in the most recent submission before allowance…  We see nothing in Amgen’s final submission that disavows the clear and unmistakable surrender of unclaimed salt combinations made in Amgen’s response.”

The CAFC held that the prosecution history estoppel applied and affirmed the District Court’s order dismissing Amgen’s complaint for failure to state a claim. The CAFC did not discuss whether Amgen dedicated unclaimed salt combinations to the public.

Takeaway

• Prosecution history estoppel can be triggered, not only by narrowing amendments, but also by arguments, even without any amendments.
• Presenting multiple arguments does not eliminate the risk of triggering estoppel for each of them.
• When writing an argument, avoid using expressions that are not recited in the claims (when discussing the claimed invention) or the cited documents (when discussing the state of the art).

The CAFC’s Holding that Claims are Directed to a Natural Law of Vibration and, thus, Ineligible Highlights the Shaky Nature of 35 U.S.C. 101 Evaluations

| November 1, 2019

American Axle & Manufacturing, Inc. v. Neapco Holdings, LLC

October 9, 2019

Opinion by:  Dyke, Moore and Taranto (October 3, 2019).

Dissent by:  Moore.

Summary: 

            American Axle & Manufacturing, Inc. (AAM) sued Neapco Holdings, LLC (Neapco) for alleged infringement of U.S. Patent 7,774,911  for a method of manufacturing driveline propeller shafts for automotive vehicles.  On appeal, the Federal Circuit upheld the District Court of Delaware’s holding of invalidity under 35 U.S.C. 101.   The Federal Circuit explained that the claims of the patent were directed to the desired “result” to be achieved and not to the “means” for achieving the desired result, and, thus, held that the claims failed to recite a practical way of applying underlying natural law (e.g., Hooke’s law related to vibration and damping), but were instead drafted in a results-oriented manner that improperly amounted to encompassing the natural law.

Details: 

1. Background

            The case relates to U.S. Patent 7,774,911 of American Axle & Manufacturing, Inc. (AAM) which relates to a method for manufacturing driveline propeller shafts (“propshafts”) with liners that are designed to attenuate vibrations transmitted through a shaft assembly.   Propshafts are employed in automotive vehicles to transmit rotary power in a driveline.  During use, propshafts are subject to excitation or vibration sources that can cause them to vibrate in three modes: bending mode, torsion mode, and shell mode.

            The CAFC focused on independent claims 1 and 22 as being “representative” claims, noting that AAM “did not argue before the district court that the dependent claims change the outcome of the eligibility analysis.”

    As explained by the CAFC, “[i]t was known in the prior art to alter the mass and stiffness of liners to alter their frequencies to produce dampening,” and  “[a]ccording to the ’911 patent’s specification, prior art liners, weights, and dampers that were designed to individually attenuate each of the three propshaft vibration modes — bending, shell, and torsion — already existed.” The court further explained that in the ‘911 patent “these prior art damping methods were assertedly not suitable for attenuating two vibration modes simultaneously,” i.e., “shell mode vibration [and] bending mode vibration,” but “[n]either the claims nor the specification [of the ‘911 patent] describes how to achieve such tuning.”

            The District Court concluded that the claims were directed to laws of nature: Hooke’s law and friction damping.  And, the District Court held that the claims were ineligible under 35 U.S.C. 101.  AAM appealed.

• The CAFC’s Decision

            Under 35 U.S.C. 101, “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” may be eligible to obtain a patent, with the exception long recognized by the Supreme Court that “laws of nature, natural phenomena, and abstract ideas are not patentable.”

            Under the Supreme Court’s Mayo and Alice test, a 101 analysis follows a two-step process.  First, the court asks whether the claims are directed to a law of nature, natural phenomenon, or abstract idea.  Second, if the claims are so directed, the court asks whether the claims embody some “inventive concept” – i.e., “whether the claims contain an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” 

            At step-one, the CAFC explained that to determine what the claims are directed to, the court focuses on the “claimed advance.”  In that regard, the CAFC noted that the ‘911 patent discloses a method of manufacturing a driveline propshaft containing a liner designed such that its frequencies attenuate two modes of vibration simultaneously.   The CAFC also noted that AAM “agrees that the selection of frequencies for the liners to damp the vibrations of the propshaft at least in part involves an application of Hooke’s law, which is a natural law that mathematically relates mass and/or stiffness of an object to the frequency that it vibrates.  However, the CAFC also noted that “[a]t the same time, the patent claims do not describe a specific method for applying Hooke’s law in this context.”

            The CAFC also noted that “even the patent specification recites only a nonexclusive list of variables that can be altered to change the frequencies,” but the CAFC emphasized that “the claims do not instruct how the variables would need to be changed to produce the multiple frequencies required to achieve a dual-damping result, or to tune a liner to dampen bending mode vibrations.”

            The CAFC explained that “the claims general instruction to tune a liner amounts to no more than a directive to use one’s knowledge of Hooke’s law, and possibly other natural laws, to engage in an ad hoc trial-and-error process … until a desired result is achieved.”

            The CAFC explained that the “distinction between results and means is fundamental to the step 1 eligibility analysis, including law-of-nature cases.”  The court emphasized that “claims failed to recite a practical way of applying an underlying idea and instead were drafted in such a results-oriented way that they amounted to encompassing the [natural law] no matter how implemented.

            At step-two, the CAFC stated that “nothing in the claims qualifies as an ‘inventive concept’ to transform the claims into patent eligible matter.”  The CAFC explained that “this direction to engage in a conventional, unbounded trial-and-error process does not make a patent eligible invention, even if the desired result … would be new and unconventional.”  As the claims “describe a desired result but do not instruct how the liner is tuned to accomplish that result,” the CAFC affirmed that the claims are not eligible under step two.

NOTE:  In response to Judge Moore’s dissent, the CAFC explained that the dissent “suggests that the failure of the claims to designate how to achieve the desired result is exclusively an issue of enablement.”  However, the CAFC expressed that “section 101 serves a different function than enablement” and asserted that “to shift the patent-eligibility inquiry entirely to later statutory sections risks creating greater legal uncertainty, while assuming that those sections can do work that they are not equipped to do.”

• Judge Moore’s Dissent

            Judge Moore strongly dissented against the majority’s opinion.  Judge Moore argued, for example, that:

1. “The majority’s decision expands § 101 well beyond its statutory gate-keeping function and the role of this appellate court well beyond its authority.”
2. “The majority’s concern with the claims at issue has nothing to do with a natural law and its preemption and everything to do with concern that the claims are not enabled. Respectfully, there is a clear and explicit statutory section for enablement, § 112. We cannot convert § 101 into a panacea for every concern we have over an invention’s patentability.”
3. “Section 101 is monstrous enough, it cannot be that now you need not even identify the precise natural law which the claims are purportedly directed to.” “The majority holds that they are directed to some unarticulated number of possible natural laws apparently smushed together and thus ineligible under § 101.”
4. “The majority’s validity goulash is troubling and inconsistent with the patent statute and precedent. The majority worries about result-oriented claiming; I am worried about result-oriented judicial action.”

Takeaways:  

1. When drafting claims, be mindful to avoid drafting a “result-oriented” claim that merely recites a desired “result” of a natural law or natural phenomenon without including specific steps or details setting establishing “how” the results are achieved.
2. When drafting claims, be mindful that although under 35 U.S.C. 112 supportive details satisfying enablement are only required to be within the written specification, under 35 U.S.C. 101 supportive details satisfying eligibility must be within the claims themselves.

What’s a tool? What is functionality? Network monitoring claim held patent-eligible in split opinion

| October 29, 2019

SRI International, Inc., v. Cisco Systems, Inc.

March 20, 2019

Before Lourie, O’Malley, and Stoll. Opinion by Stoll. Dissenting opinion by Lourie.

Summary

The CAFC affirmed a district court decision holding that claims related to network security monitoring are patent-eligible. In the 2-1 opinion, the CAFC held that all of the asserted claims are patent eligible under §101 as not “directed to” an abstract idea under the first step of the Alice test, because the claims focus on an improvement in the functionality of computers and computer network technology.  

The CAFC also affirmed the district court’s construction of the claim term “network traffic data,” summary judgment of no anticipation, and award of ongoing royalties but willful infringement and attorneys’ fees issues were vacated and remanded.   

This presentation only addresses the issue of patent eligibility.

Details

SRI International, Inc. (“SRI”) sued Cisco Systems, Inc. (“Cisco”) for infringement of U.S. Patent Nos. 6,711,615 (‘615 patent) and 6,484,203 (‘203 patent). The ‘615 patent is a continuation of the ‘203 patent. The patents relate to network security by using network monitors to analyze the data on the network and generating and integrating reports of suspicious activity. 

SRI proposed claim 1 of the ‘615 patent as representative claim while Cisco proposed claim 1 of the ‘203 patent. The CAFC noted that the claims are substantially similar, the difference in the list of categories of data not being material to any issue on appeal, and adopted claim 1 of ‘615 patent as the representative claim. 

Claim 1 of the ‘615 patent:

1. A computer-automated method of hierarchical event monitoring and analysis within an enterprise network comprising:

deploying a plurality of network monitors in the enterprise network;

detecting, by the network monitors, suspicious network activity based on analysis of network traffic data selected from one or more of the following categories: {network packet data transfer commands, network packet data transfer errors, network packet data volume, network connection requests, network connection denials, error codes included in a network packet, network connection acknowledgements, and network packets indicative of well-known network-service protocols};

generating, by the monitors, reports of said suspicious activity; and

automatically receiving and integrating the reports of suspicious activity, by one or more hierarchical monitors.

As a preliminary matter, the CAFC noted that SRI spent considerable investment on network intrusion detection and developed the Event Monitoring Enabling Response or Anomalous Live Disturbances (“EMERALD”) project prior to the filing of the patents. In addition, the CAFC also noted that the Defense Advanced Research Projects Agency of the Department of Defense, which helped fund the project, called it a “gem in the world of cyber defense” and “‘a quantum leap improvement over’ previous technology.”

As to the issue of patent eligibility, the District Court held that the claims do more than merely recite the performance of a known business practice on the Internet and are better understood as being necessarily rooted in computer technology in order to solve a specific problem in the realm of computer networks.  The CAFC agreed.

The CAFC explained that by the recitation of detecting an activity, receiving and integrating the reports, the claim does more than just the normal, expected operation of a conventional computer network. The CAFC specifically described the technological improvement as “a network defense system that monitors network traffic in real-time to automatically detect large-scale attacks,” with reference to Enfish, LLC v. Microsoft Corp.  

In addition, the CAFC noted that the specification provided an explanation of both the technological problem – the network becomes more valuable when the technology become more interoperable and integrated but also makes it more vulnerable to attack – and the technological solution, by providing “a framework for the recognition of more global threats to interdomain connectivity, including coordinated attempts to infiltrate or destroy connectivity across an entire network enterprise.” Unfortunately, here, the CAFC simply cited the specification of the SRI patent but did not provide any details regarding how the specification presents the technological solution in relation to the claim language.

When arguing that the claims are directed to an abstract idea, Cisco had raised three main arguments, which the CAFC addressed in turn:

1.  the claims are “directed to generic steps required to collect and analyze data,” therefore, “the claims are analogous to those in Electric Power Group, LLC v. Alstom S.A.” in which the claims were simply using the computers as tools. Thus, “the claims are directed to an abstract idea”;

2.  “the invention does not involve an improvement to computer functionality itself”; and

3.  the claims correspond generally to what people can “go through in their minds”.

Regarding Cisco’s first argument, the CAFC disagreed with Cisco’s view that the SRI patent claims are similar to the claims in Electric Power Group,[i] because the claimed invention in Electric Power Group was only “using computers as tools to solve a power grid problem.” The CAFC emphasized that the claims are similar to the claims in DDR Holdings, LLC v. Hotels.com, which were “directed to more than merely requiring a computer network operating in is normal, expected manner.” 

Next, in rejecting Cisco’s second argument, the CAFC asserted that the representative claim is not about “automating a conventional idea on a computer” but “improv[ing] the technical functioning of the computer and computer networks by reciting a specific technique for improving computer network security.” 

The CAFC also rejected Cisco’s third argument that the claims recite a mental process, by countering that “the human mind is not equipped to detect suspicious activity by using network monitors and analyzing network packets.”

In conclusion, the CAFC held that the claims at issue are not “directed to” an abstract idea under step one of Alice, because the claims are not just using the computer as a tool to analyze data from multiple sources to detect suspicious activity. Instead, the claims define using network monitors to detect suspicious network activity based on analysis of network traffic data, generating reports of that suspicious activity, and integrating those reports using hierarchical monitors to identify hackers and potential intruders. Thus, the claims provide an improvement in the functionality of computers and computer networks, and, therefore, the claims are patent eligible.

            Dissent

            Dissenting Judge Lourie thought that the claims of the SRI patent were similar to the claims in Electric Power Group because, in his view, the SRI claims “recite nothing more than deploying network monitors, detecting suspicious network activity, and generating and handling reports.” Judge Lourie noted that in Electric Power Group, the claims that were held patent-ineligible recited “receiving data,” “detecting and analyzing events in real time,” “displaying the event analysis results and diagnoses of events,” “accumulating and updating measurements,” and “deriving a composite indicator of reliability.”

Further, he pointed out that the portions of the SRI specification to which the majority refers “only recites results, not means for accomplishing them,” and that the SRI claims as written “do not recite a specific way of enabling a computer to monitor network activity.” Since he considered that the SRI claims do not provide any specifics as to how the steps are performed and show no improvement to computer technology, he would have held that the claims were directed to an abstract idea. 

Takeaway

As this decision shows, there is much uncertainty regarding whether a claim would be treated as patent-eligible or not under the Alice test. It seems that a different set of judges might have easily sided with Judge Lourie’s analysis and invalidated the claims.

In the meantime, the explanations and details given in the patent description regarding the technical problem solved by the invention, instead of referring to generic computer or network components, helped these claims survive the patent-eligibility challenge.  

[i] Claim 12 of U.S. Patent 8,401,701 at issue in Electric Power Group, LLC v. Alstom S.A.:

12. A method of detecting events on an interconnected electric power grid in real time over a wide area and automatically analyzing the events on the interconnected electric power grid, the method comprising:

receiving a plurality of data streams, each of the data streams comprising sub-second, time stamped synchronized phasor measurements wherein the measurements in each stream are collected in real time at geographically distinct points over the wide area of the interconnected electric power grid, the wide area comprising at least two elements from among control areas, transmission companies, utilities, regional reliability coordinators, and reliability jurisdictions;

receiving data from other power system data sources, the other power system data sources comprising at least one of transmission maps, power plant locations, EMS/SCADA systems;

receiving data from a plurality of non-grid data sources;

detecting and analyzing events in real-time from the plurality of data streams from the wide area based on at least one of limits, sensitivities and rates of change for one or more measurements from the data streams and dynamic stability metrics derived from analysis of the measurements from the data streams including at least one of frequency instability, voltages, power flows, phase angles, damping, and oscillation modes, derived from the phasor measurements and the other power system data sources in which the metrics are indicative of events, grid stress, and/or grid instability, over the wide area;

displaying the event analysis results and diagnoses of events and associated ones of the metrics from different categories of data and the derived metrics in visuals, tables, charts, or combinations thereof, the data comprising at least one of monitoring data, tracking data, historical data, prediction data, and summary data;

displaying concurrent visualization of measurements from the data streams and the dynamic stability metrics directed to the wide area of the interconnected electric power grid;

accumulating and updating the measurements from the data streams and the dynamic stability metrics, grid data, and non-grid data in real time as to wide area and local area portions of the interconnected electric power grid; and

deriving a composite indicator of reliability that is an indicator of power grid vulnerability and is derived from a combination of one or more real time measurements or computations of measurements from the data streams and the dynamic stability metrics covering the wide area as well as non-power grid data received from the non-grid data source.

[1] Claim 12 of U.S. Patent 8,401,701 at issue in Electric Power Group, LLC v. Alstom S.A.:

12. A method of detecting events on an interconnected electric power grid in real time over a wide area and automatically analyzing the events on the interconnected electric power grid, the method comprising:

receiving a plurality of data streams, each of the data streams comprising sub-second, time stamped synchronized phasor measurements wherein the measurements in each stream are collected in real time at geographically distinct points over the wide area of the interconnected electric power grid, the wide area comprising at least two elements from among control areas, transmission companies, utilities, regional reliability coordinators, and reliability jurisdictions;

receiving data from other power system data sources, the other power system data sources comprising at least one of transmission maps, power plant locations, EMS/SCADA systems;

receiving data from a plurality of non-grid data sources;

detecting and analyzing events in real-time from the plurality of data streams from the wide area based on at least one of limits, sensitivities and rates of change for one or more measurements from the data streams and dynamic stability metrics derived from analysis of the measurements from the data streams including at least one of frequency instability, voltages, power flows, phase angles, damping, and oscillation modes, derived from the phasor measurements and the other power system data sources in which the metrics are indicative of events, grid stress, and/or grid instability, over the wide area;

displaying the event analysis results and diagnoses of events and associated ones of the metrics from different categories of data and the derived metrics in visuals, tables, charts, or combinations thereof, the data comprising at least one of monitoring data, tracking data, historical data, prediction data, and summary data;

displaying concurrent visualization of measurements from the data streams and the dynamic stability metrics directed to the wide area of the interconnected electric power grid;

accumulating and updating the measurements from the data streams and the dynamic stability metrics, grid data, and non-grid data in real time as to wide area and local area portions of the interconnected electric power grid; and

deriving a composite indicator of reliability that is an indicator of power grid vulnerability and is derived from a combination of one or more real time measurements or computations of measurements from the data streams and the dynamic stability metrics covering the wide area as well as non-power grid data received from the non-grid data source.

The limitations of a “wherein” clause

| October 15, 2019

Allergan Sales, LLC v. Sandoz, Inc., No. 2018-2207

August 29, 2019

Prost, Newman and Wallach.  Opinion by Wallach

Summary

Appellees (Allergan hereon in) sued Appellants (Sandoz hereon in) asserting that their Abbreviated New Drug Application (ANDA) for a generic version of Allergan’s ophthalmic drug (Combigan®) infringed on their U.S. Patent Nos. 9,770,453: 9,907,801: 9,907,802. The District Court found limiting a number of “wherein” clauses in the Patents’ and granted Allergan’s motion for Preliminary Injection. Sandoz appealed. CAFC affirmed.

As an exemplary claim, independent claim 1 of the ‘453 patent is as follows:

A method of treating a patient with glaucoma or ocular hypertension comprising topically administering twice daily to an affected eye a single composition comprising 0.2% w/v brimonidine tartrate and 0.68% w/v timolol maleate,

wherein the method is as effective as the administration of 0.2% w/v brimonidine tartrate monotherapy three times per day and

wherein the method reduces the incidence of one o[r] more adverse events selected from the group consisting of conjunctival hyperemia, oral dryness, eye pruritus, allergic conjunctivitis, foreign body sensation, conjunctival folliculosis, and somnolence when compared to the administration of 0.2% w/v brimonidine tartrate monotherapy three times daily.

The specifications contained a clinical study, referred to as Example II, and it is the results thereof that are reflected in “the disputed “wherein” clauses (i.e., the efficacy and safety of the claimed combination).

Allergan argued that the “wherein” clauses were limiting, whereas Sandoz argued that the “wherein” clauses were not. Specifically, Sandoz argued that the “wherein” clauses “merely state the intended results” and so are not “material to patentability.” Sandoz argued that the only positive limitation in the claim[s] is the administering step. Sandoz relied upon previous cases to argue that “…whereby [or wherein] clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.”); Bristol–Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001).

The District Court and CAFC disagreed. The courts looked to the specification, and to the prosecution history wherein the Applicant had relied upon the results of administering the combination drug to assert patentability over the prior art. It was also noted that the Examiner had explicitly relied upon the “wherein” clauses in his explanation as to why the claims were novel and non-obvious over the prior art in the Notice of Allowance. 

The courts differentiated this case from the previous case argued by Sandoz in that, “In Bristol–Myers we expressly noted that the disputed claim terms “w[ere] voluntarily made after the examiner had already indicated . . . the claims were allowable” and such “unsolicited assertions of patentability made during prosecution do not create a material claim limitation.”

Accordingly, “the District Court “f[ound] that the ‘wherein’ clauses are limiting because they are material to patentability and express the inventive aspect of the claimed invention” and the CAFC affirmed.

Take-away

“The specification is always highly relevant to the claim construction analysis and is, in fact, the single best guide to the meaning of a disputed term.” Prosecution history and the Examiner’s express rational for allowance are also highly relevant.

WHEN FIGURES IN A DESIGN PATENT DO NOT CLEARLY SHOW AN ARTICLE OF MANUFACTURE FOR THE ORNAMENTAL DESIGN, THE TITLE AND CLAIM LANGUAGE CAN LIMIT THE SCOPE OF THE DESIGN PATENT

| October 7, 2019

Curver Luxembourg, SARL, v. Home Expressions Inc.

September 12, 2019

Chen (author), Hughes, and Stoll

Summary:

The Federal Circuit affirmed the district court’s grant of a defendant’s motion to dismiss a complaint for failure to state a plausible claim of design patent infringement because when all of the drawings in a design patent at issue do not describe an article of manufacture for the ornamental design, the title, claim language, figure descriptions specifying an article of manufacture, which was amended during the prosecution of the patent based on the Examiner’s proposed amendment, can limit the scope of a design patent.

Details:

The ‘946 Patent

            Curver Luxembourg, SARL (Curver) is the assignee of U.S. Design Patent No. D677,946 (‘946 patent) with a title “Pattern for a Chair” and claiming an “ornamental design for a pattern for a chair.”  The ‘946 patent claims an overlapping “Y” design, as shown below.  However, none of the figures illustrate a design being applied to a chair.

Prosecution    

            Curver originally applied for a patent directed to a pattern for “furniture,” and the original title was “FURNITURE (PART OF-).”  The original claim recited a “design for a furniture part.” 

            However, during the prosecution, the Examiner allowed the claim but objected to the title because it was too vague to constitute an article of manufacture (in Ex Parte Quayle Action).  The Examiner suggested amending the title to read “Pattern for a Chair,” and Curver accepted the Examiner’s suggestion by replacing the title with “Pattern for a Chair” and amending the claim term “furniture part” with “pattern for a chair.”  Curver did not amend the figures to illustrate a chair.  The Examiner accepted Curver’s amendments and allowed the application. 

District Court

            Home Expressions makes and sells baskets with a similar overlapping “Y” design disclosed in the ‘946 patent.

            Curver sued Home Expressions accusing its basket products of infringing the ‘946 patent.  Home Expressions filed a motion to discuss Curver’s complaint under Rule 12(b)(6) for failing to set forth a plausible claim of infringement.

            Using a two-step analysis, the district court construed the scope of the ‘946 patent to be limited to the design pattern illustrated in the figures as applied to a chair and found that an ordinary observer would not purchase Home Expressions’s basket with “Y” design believing that the purchase was for “Y” design applied to a chair.

            Therefore, the district court granted the Rule 12(b)(6) motion.

CAFC

            The CAFC held that to define the scope of a design patent, the court traditionally focused on the figures illustrated in the patent.  However, when all of the drawings fail to describe an article of manufacture for the ornamental design, the CAFC held that claim language specifying an article of manufacture can limit the scope of a design patent. 

            In addition, the CAFC uses §1.153(a) to held that “the design be tied to a particular article, but this regulation permits claim language, not just illustration along, to identify that article.”

The title of the design must designate the particular article. No description, other than a reference to the drawing, is ordinarily required. The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described.

            The CAFC held that the prosecution history shows that Curver amended the title, claim, figure descriptions to recite “pattern for a chair” in order to satisfy the article of manufacture requirement necessary to secure its design patent.  Therefore, the CAFC held that the scope of the ‘946 patent should be limited by those amendments.

            Therefore, the CAFC affirmed the district court’s grant of Home Expressions’s motion to dismiss the complaint for failure to state a plausible claim of design patent infringement.         

Takeaway:

• When figures in a design patent do not clearly show an article of manufacture for the ornamental design, the title and claim language can limit the scope of the design patent.

• Applicant should review the Examiner’s proposed amendments carefully before placing the application in condition for allowance.

• Applicant should be careful when crafting the title and claim language.

A Good Fry: Patent on Oil Quality Sensing Technology for Deep Fryers Survives Inter Partes Review

| October 4, 2019

Henny Penny Corporation v. Frymaster LLC

September 12, 2019

Before Lourie, Chen, and Stoll (Opinion by Lourie)

Summary

In an appeal from an inter partes review, the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision to uphold the validity of a patent relating to oil quality sensing technology for deep fryers. The Board found, and the Federal Circuit agreed, that the disadvantages of pursuing the challenger’s proposed modification of the prior art weighed against obviousness, in the absence of some articulated rationale as to why a person of ordinary skill in the art would have pursued that modification. In addition, the Federal Circuit reiterated that as a matter of procedure, the scope of an inter partes review is limited to the theories of unpatentability presented in the original petition.   

Details

Fries are among the most common deep-fried foods, and McDonald’s fries may still be the most popular and highest-consumed worldwide. But, there would be no McDonald’s fries without a deep fryer and a good pot of oil, and Frymaster LLC (“Frymaster”) is the maker of some of McDonald’s deep fryers.

During deep frying, chemical and thermal interactions between the hot frying oil and the submerged food cause the food to cook. These interactions degrade the quality of the oil. In particular, chemical reactions during frying generate new compounds, including total polar materials (TPM), that can change the oil’s physical properties and electrical conductivity.

Frymaster’s fryers are equipped with integrated oil quality sensors (OQS), which monitor oil quality by measuring the oil’s electrical conductivity as an indicator of the TPM levels in the oil. This sensor technology is embodied in Frymaster’s U.S. Patent No. 8,497,691 (“691 patent”).

The 691 patent describes an oil quality sensor that is integrated directly into the circulation of cooking oil in a deep fryer, and is capable of taking measurements at the deep fryer’s operational temperatures of 150-180°C, i.e., without cooling the hot oil. 

Claim 1 of the 691 patent is representative:

1. A system for measuring the state of degradation of cooking oils or fats in a deep fryer comprising:

at least one fryer pot;

a conduit fluidly connected to said at least one fryer pot for transporting cooking oil from said at least one fryer pot and returning the cooking oil back to said at least one fryer pot;

a means for re-circulating said cooking oil to and from said fryer pot; and

a sensor external to said at least on[e] fryer pot and disposed in fluid communication with said conduit to measure an electrical property that is indicative of total polar materials of said cooking oil as the cooking oil flows past said sensor and is returned to said at least one fryer pot;

wherein said conduit comprises a drain pipe that transports oil from said at least one fryer pot and a return pipe that returns oil to said at least one fryer pot,

wherein said return pipe or said drain pipe comprises two portions and said sensor is disposed in an adapter installed between said two portions, and

wherein said adapter has two opposite ends wherein one of said two ends is connected to one of said two portions and the other of said two ends is connected to the other of said two portions.

Figure 2 of the 691 patent illustrates the structure of Frymaster’s system: 

Henny Penny Corporation (HPC) is a competitor of Frymaster, and initiated an inter partes review of the 691 patent.

In its petition, HPC challenged claim 1 of the 691 patent as being obvious over Kauffman (U.S. Patent No. 5,071,527) in view of Iwaguchi (JP2005-55198). 

Kauffman taught a system for “complete analysis of used oils, lubricants, and fluids”. The system included an integrated electrode positioned between drain and return lines connected to a fluid reservoir. The electrode measured conductivity and current to monitor antioxidant depletion, oxidation initiator buildup, product buildup, and/or liquid contamination. Kauffman’s system operated at 20-400°C. However, Kauffman did not teach monitoring TPMs.

Iwaguchi taught monitoring TPMs to gauge quality of oil in deep fryers. However, Iwaguchi cooled the oil to 40-80°C before taking measurements. If the oil temperature was outside the disclosed range, Iwaguchi’s system would register an error. Specifically, oil was diverted from the frying pot to a heat dissipator where the oil was cooled to the appropriate temperature, and then to a detection vessel where a TPM detector measured the electrical properties of the oil to detect TPMs. Iwaguchi taught that cooling relieved heat stress on the detector, prevented degradation, and obviated the need for large conversion tables.

The parties’ dispute focused on the sensor feature of the 691 patent.

In the initial petition, HPC argued simply that a person of ordinary skill in the art would have found it obvious to modify Kauffman’s system to “include the processor and/or sensor as taught by Iwaguchi.”

In its patent owner’s response, Frymaster disputed HPC’s proposed modification. Frymaster argued that Iwaguchi’s “temperature sensitive” detector would be inoperable in an “integrated” system such as that taught in Kauffman, unless Kauffman’s system was further modified to add an oil diversion and cooling loop. However, such an addition would have been complex, inefficient, and undesirable to those skilled in the art.

In its reply, HPC changed course and argued that it was unnecessary to swap the electrode in Kauffman’s system for Iwaguchi’s detector. HPC argued that Kauffman’s electrode was capable of monitoring TPMs by measuring conductivity, and that Iwaguchi was relevant only for teaching the general desirability of using TPMs to assess oil quality.

However, whereas HPC’s theory of obviousness in its original petition was based on a modification of the physical structure of Kauffman’s system, HPC’s reply proposed changing only the oil quality parameter being measured. During the oral hearing before the Board, HPC’s counsel even admitted to this shift in HPC’s theory of obviousness.

In its final written decision, the Board determined, as a threshold matter of procedure, that HPC impermissibly presented a new theory of obviousness in its reply, and that the patentability of the 691 patent would be assessed only against the grounds asserted in HPC’s original petition.

The Board’s final written decision thus addressed only whether the person skilled in the art would have been motivated to “include”—that is, integrate—Iwaguchi’s detector into Kauffman’s system. The Board found no such motivation.

The Board’s reasoning largely mirrored Frymaster’s arguments. Kauffman’s system did not include a cooling mechanism that would have allowed Iwaguchi’s temperature-sensitive detector to work. Integrating Iwaguchi’s detector into Kauffman’s system would therefore necessitate the addition of the cooling mechanism. The Board agreed that the disadvantages of such additional construction outweighed the “uncertain benefits” of TPM measurements over the other indicia of oil quality already being monitored in Kauffman. 

On appeal, HPC raised two issues: first, the Board construed the scope of HPC’s original petition overly narrowly; and second, the Board erred in its conclusion of nonobviousness.[1]

The Federal Circuit sided with the Board on both issues.

On the first issue, the Federal Circuit did a straightforward comparison of HPC’s petition and reply. In the petition, HPC proposed a physical substitution of Iwaguchi’s detector for Kauffman’s electrode. In the reply, HPC proposed using conductivity measured by Kauffman’s electrode as a basis for calculating TPMs. The apparent differences between the two theories of obviousness, together with the “telling” confirmation of HPC’s counsel during oral hearing that the original petition espoused a physical modification, made it easy for the Federal Circuit to agree with the Board’s decision to disregard HPC’s alternative theory raised in its reply.

The Federal Circuit reiterated the importance of a complete petition:

It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.

On the second issue of obviousness, HPC argued that the Board placed undue weight on the disadvantages of incorporating Iwaguchi’s TPM detector into Kauffman’s system.

Here, the Federal Circuit reiterated “the longstanding principle that the prior art must be considered for all its teachings, not selectively.” While “[t]he fact that the motivating benefit comes at the expense of another benefit…should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another”, “the benefits, both lost and gained, should be weighed against one another.”

The Federal Circuit adopted the Board’s findings on the undesirability of HPC’s proposed modification of Kauffman, agreeing that the “tradeoffs [would] yield an unappetizing combination, especially because Kauffman already teaches a sensor that measures other indicia of oil quality.”

At first glance, the nonobviousness analysis in this decision seems to involve weighing the disadvantages and advantages of the proposed modification. However, looking at the history of this case, I think the problem with HPC’s arguments was more fundamentally that they never identified a satisfactory motivation to make the proposed modification. HPC’s original petition argued that the motivation for integrating Iwaguchi’s detector into Kauffman’s system was to “accurately” determine oil quality. This “accuracy” argument failed because it was questionable whether Iwaguchi’s detector would even work at the operating temperature of a deep fryer. Further, HPC did not argue that the proposed modification was a simple substitution of one known sensor for another with the predictable result of measuring TPMs. And when Kauffman argued that the substitution was far from simple, HPC failed to counter with adequate reasons why the person skilled in the art would have pursued the complex modification.

Takeaway

• The petition for a post grant review defines the scope of the proceeding. Avoid being overly generic in a petition for post grant review. It may not be possible to fill in the details later.
• Context matters. If an Examiner is selectively citing to isolated disclosures in a prior art out of context, consider whether the context of the prior art would lead away from the claimed invention.
• The MPEP is clear that the disadvantages of a proposed combination of the prior art do not necessarily negate the motivation to combine (see, e.g., MPEP 2143(V)). The disadvantages should preferably nullify the Examiner’s reasons for the modification.  

[1] On the issue of obviousness, HPC also objected to the Board’s analysis of Frymaster’s proffered evidence of industry praise as secondary considerations. This objection is not addressed here.

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