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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.

A Change in Language from IPR Petition to Written Decision May Not Result in A Change in Theory of Motivation to Combine

| September 25, 2019

Arthrex, Inc. v. Smith & Nephew, Corp.

August 21, 2019

Dyk, Chen, Opinion written by Stoll

Summary

            The CAFC affirmed the Board’s decision that claims 10 and 11 of Patent ‘541 were obvious over Gordon in view of West and that the IPR proceeding was constitutional.  The CAFC held that minor variations in wording, from the IPR Petition to the written Final Decision, do not violate the Administrative Procedure Act (APA).  Further, the CAFC rejected Arthrex’s argument to reconsider evidence that was contrary to the Board’s decision since there was sufficient evidence to support the Board’s findings of obviousness by the preponderance of evidence standard. 

Details

Arthrex’s Patent No. 8,821,541 (hereinafter “Patent ’541”) is directed towards a surgical suture anchor that reattaches soft tissue to bone.  A feature of the suture anchor of Patent ‘541 is that the “fully threaded suture anchor’ includes ‘an eyelet shield that is molded into the distal part of the biodegradable suture anchor’”, wherein the eyelet shield is an integrated rigid support that strengthen the suture to the soft tissue. Id. at 2 and 3.  The specification discloses that “because the support is molded into the anchor structure (as opposed to being a separate component), it ‘provides greater security to prevent pull-out of the suture.’ Id at col 5 ll. 52-56.” Id. at 3.  Figure 5 of Patent ‘541 illustrates an embodiment of the suture anchor (component 1), wherein component 9 is the eyelet shield (integral rigid support) and component 3 is the body wherein helical threading is formed.

Claims 10 and 11 of Patent ‘541 are herein enclosed (emphasis added to the claim terms at issue in the dispute)

10. A suture anchor assembly comprising:

an anchor body including a longitudinal axis, a proximal end, a distal end, and a central passage extending along the longitudinal axis from an opening at the proximal end of the anchor body through a portion of a length of the anchor body, wherein the opening is a first suture opening, the anchor body including a second suture opening disposed distal of the first suture opening, and a third suture opening disposed distal of the second suture opening, wherein a helical thread defines a perimeter at least around the proximal end of the anchor body;

a rigid support extending across the central passage, the rigid support having a first portion and a second portion spaced from the first portion, the first portion branching from a first wall portion of the anchor body and the second portion branching from a second wall portion of the anchor body, wherein the third suture opening is disposed distal of the rigid support;

at least one suture strand having a suture length threaded into the central passage, supported by the rigid support, and threaded past the proximal end of the anchor body, wherein at least a portion of the at least one suture strand is disposed in the central passage between the rigid support and the opening at the proximal end, and the at least one suture strand is disposed in the first suture opening, the second suture opening, and the third suture opening; and

a driver including a shaft having a shaft length, wherein the shaft engages the anchor body, and the suture length of the at least one suture strand is greater than the shaft length of the shaft.

11. A suture anchor assembly comprising:

an anchor body including a distal end, a proximal end having an opening, a central longitudinal axis, a first wall portion, a second wall portion spaced opposite to the first wall portion, and a suture passage beginning at the proximal end of the anchor body, wherein the suture passage extends about the central longitudinal axis, and the suture passage extends from the opening located at the proximal end of the anchor body and at least partially along a length of the anchor body, wherein the opening is a first suture opening that is encircled by a perimeter of the anchor body, a second suture opening extends through a portion of the anchor body, and a third suture opening extends through the anchor body, wherein the third suture opening is disposed distal of the second suture opening;

a rigid support integral with the anchor body to define a single-piece component, wherein the rigid support extends across the suture passage and has a first portion and a second portion spaced from the first portion, the first portion branching from the first wall portion of the anchor body and the second portion branching from the second wall portion of the anchor body, and the rigid support is spaced axially away from the opening at the proximal end along the central longitudinal axis; and

at least one suture strand threaded into the suture passage, supported by the rigid support, and having ends that extend past the proximal end of the anchor body, and the at least one suture strand is disposed in the first suture opening, the second suture opening, and the third suture opening.

Smith & Nephew (hereinafter “Smith”) initiated an inter partes review of claims 10 and 11 of Patent ‘541.  Smith alleged that claims 10 and 11 of Patent ‘541 were invalid as obvious over Gordon (U.S. Patent Application Publication No. 2006/0271060) in view of West (U.S. Patent No. 7,322,978) and alleged that claim 11 was anticipated by Curtis (U.S. Patent No. 5,464,427) (The discussion regarding Curtis (U.S. Patent No. 5,464,427) is not herein included).  Smith argued that Gordon disclosed all the features claimed except for the rigid support.  Gordon disclosed “a bone anchor in which a suture loops about a pulley 182 positioned within the anchor body. Figure 23 illustrates the pully 182 held in place in holes 184a, b.”  Id. at 5 and 6. 

Figure 23 of Gordon

Smith acknowledged that the pulley of Gordon was not “integral with the anchor body to define a single-piece component”, a feature recited in claim 11 of Patent ‘541.  Smith cited West to allege obviousness of this feature.  West also disclosed a bone anchor wherein one or more pins are fixed within the bore of the anchor body.  In West, “to manufacture the bone anchor, ‘anchor body 12 and posts 23 can be cast and formed in a die.  Alternatively anchor body 12 can be cast or formed and post 23a and 23b inserted later.’”  Id. at 7.

Figure 1 of West

Smith argued that it would have been obvious to a skilled artisan to form the bone anchor of Gordon by the casting process of West to thereby create a rigid support integral with the anchor body to define a single piece component, as recited in claim 11 of Patent ‘541.  Smith’s expert testified that the casting process of West would “minimize the materials used in the anchor, thus facilitating regulatory approval, and would reduce the likelihood of the pulley separating from the anchor body.”  Id. at 7.  Smith asserted that the casting process of West was well-known in the art and that such a manufacturing process “would have been a simple design choice.”  Id. at 7.  Arthrex argued that a skilled artisan would not have been motivated to modify Gordon in view of West.  The Board agreed with Smith that the claims were unpatentable.  Arthrex filed an appeal. 

Arthrex appealed the Board’s decision that Smith proved unpatentability of claims 10 and 11 in view of Gordon and West, on both a procedurally and a substantively basis, and the constitutionality of the IPR proceeding.  The CAFC found that Arthrex’s procedural rights were not violated; that the Decision by the Board was supported by substantial evidence and the application of IPR to Patent ‘541 was constitutional. 

IPR proceedings are formal administrative adjudications subject to the procedural requirements of the APA. See, e.g., Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1298 (Fed. Cir. 2016); Belden, 805 F.3d at 1080. One of these requirements is that “‘an agency may not change theories in midstream without giving respondents reasonable notice of the change’ and ‘the opportunity to present argument under the new theory.’” Belden, 805 F.3d at 1080 (quoting Rodale Press, Inc. v. FTC, 407 F.2d 1252, 1256–57 (D.C. Cir. 1968)); see also 5 U.S.C. § 554(b)(3). Nor may the Board craft new grounds of unpatentability not advanced by the petitioner. See In re NuVasive, Inc., 841 F.3d 966, 971–72 (Fed. Cir. 2016); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016).

Id. at 9. 

Arthrex argued that the Board’s decision relied on a new theory of motivation to combine.  Arthrex argued that the new theory violated their procedural rights by depriving them an opportunity to respond to said new theory.  Arthrex argued that the Board’s reasoning differed from the Smith Petition by describing the casting method of West as “preferred.”  The CAFC held that while the language used by the Board did differ from the Petition, said deviation did not introduce a new issue or theory as to the reason for combining Gordon and West.  West disclosed “an ‘anchor body 12 and posts 23 can be cast and formed in a die. Alternatively anchor body 12 can be cast or formed and posts 23a and 23b inserted later’.”  Id. at 10.  The Smith Petition asserted that “a person of ordinary skill would have had ‘several reasons’ to combine West and Gordon, including that the casting process disclosed by West was a ‘well-known technique [whose use] would have been a simple design choice’.” (emphasis added) Id. at 10.  In the written decision by the Board, the Board characterized West as disclosing two manufacturing methods, wherein the casting method was the “primary” and “preferred” method, and thus, a skilled artisan would have “applied West’s casting method to Gordon because choosing the ‘preferred option’ presented by West ‘would have been an obvious choice of the designer’.” Id. at 11.   The CAFC noted that while the Board’s language of “preferred” differed from the language of the Petition, i.e. “well-known”, “accepted” and “simple”, the Board nonetheless relied upon the same disclosure of West as the Petition, the same proposed combination of the references and ruled on the same theory of obviousness, as presented in the Petition.  “[t]he mere fact that the Board did not use the exact language of the petition in the final written decision does not mean it changed theories in a manner inconsistent with the APA and our case law…. the Board had cited the same disclosure as the petition and the parties had disputed the meaning of that disclosure throughout the trial. Id. As a result, the petition provided the patent owner with notice and an opportunity to address the portions of the reference relied on by the Board, and we found no APA violation.”  Id. at 11.

Next, Arthrex argued that even if the Board’s decision was procedurally proper, an error was made by finding Smith had established a motivation to combine the cited art by a preponderance of the evidence.  The CAFC held that there was sufficient substantial evidence to support the Board’s finding that a skilled artisan would be motivated to use the casting method of West to form the anchor of Gordon.  First, the Board noted West’s disclosure of two methods of making a rigid support.  Second, the wording by West suggested that casting was the preferred method.  Third, Smith’s experts testified that the casting method would likely produce a stronger anchor, which in turn would be more likely to be granted regulatory approval.  Also, casting would decrease manufacturing cost, produce an anchor that is less likely to interfere with x-rays and would reduce stress concentrations on the anchor.  The CAFC agreed with Arthrex that there was some evidence that contradicts the Board’s decision, such as Arthrex’s expert’s testimony.  However, “the presence of evidence supporting the opposite outcome does not preclude substantial evidence from supporting the Board’s fact finding. See, e.g., Falkner v. Inglis, 448 F.3d 1357, 1364 (Fed. Cir. 2006)”.  Id. at 14.  The CAFC refused to “reweight the evidence.” Id. at 14. 

Lastly, the CAFC addressed Arthrex’s argument that an IPR is unconstitutional when applied retroactively to a pre-AIA patent.  Since this argument was first presented on appeal, the CAFC could have chosen not to address it.  However, exercising its discretion, the CAFC held that an IPR proceeding against Patent ‘541 was constitutional.  Patent ‘541 was filed prior to the passage of the AIA, but was issued almost three years after the passage of the AIA and almost two years after the first IPR proceedings, on September 2, 2014.  “As the Supreme Court has explained, ‘the legal regime governing a particular patent ‘depend[s] on the law as it stood at the emanation of the patent, together with such changes as have since been made.’” Eldred v. Ashcroft, 537 U.S. 186, 203 (2003) (quoting McClurg v. Kingsland, 42 U.S. 202, 206 (1843)). Accordingly, application of IPR to Arthrex’s patent cannot be characterized as retroactive.” Id. at 18.  The CAFC further explained that even if Patent ‘541 issued prior to the AIA, an IPR would have been constitutional.  “[t]he difference between IPRs and the district court and Patent Office proceedings that existed prior to the AIA are not so significant as to ‘create a constitutional issue’ when IPR is applied to pre-AIA patents.”  Id. at 18. 

Takeaway

• Slight changes in language does not create a new theory of motivation to combine.
• However, a new theory of motivation to combine may exist when:
  •  the Board creates a new theory of obviousness by mixing arguments from two different grounds of obviousness presented in a Petition.
    • In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1372–73, 1377 (Fed. Cir. 2016).
  • the claim construction by the Board varies significantly from the uncontested construction announced in an institution decision.
    • SAS Institute v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016).
  •  the Board relies upon a portion of the prior art, as an essential part of its obviousness finding, that is different from the portions of the prior art cited in the Petition.
    • In re NuVasive, Inc., 841 F.3d 966, 971 (Fed. Cir. 2016).

Examples and procedures in the specification may provide necessary objective boundaries for a term of degree in the claims

| September 18, 2019

Guangdong Alison Hi-Tech Co., v. ITC, Aspen Aerogels, Inc. (intervenor)

August 27, 2019

Wallach, Hughes, and Stoll (Opinion author).

Summary

The ALJ at ITC held, later affirmed by the Commission, that the claims of U.S. Patent No. 7,078,359 were not invalid due to indefinites and anticipation and were infringed by Alison’s importation of the accused products. The Federal Circuit affirmed the validity determination.

Details

The ‘359 patent, titled “Aerogel Composite with Fibrous Batting,” is directed to an improvement in aerogel composite products. Specifically, the ‘359 patent specifically discloses an aerogel composite that uses a lofty batting to reinforce the aerogel in a way that maintains or improves the thermal properties of the aerogel while providing a highly flexible, drapeable form. The ‘359 patent is an improvement over prior aerogel composites, which suffer from low flexibility, low durability, and degraded thermal performance. Independent claim 1 of the ‘359 patent is:

1. A composite article to serve as a flexible, durable, light-weight insulation product, said article comprising a lofty fibrous batting sheet and a continuous aerogel through said batting.

Regarding the indefinites, the ALJ and the Commission rejected the Alison’ indefinite argument arguing that the phrase “lofty fibrous batting” in claim 1 is indefinite. The Federal circuit affirmed based on the “reasonable certainty” indefiniteness standard. Specifically, as set forth in Nautilus, Inc. v. Biosig Instruments, Inc., a patent’s claims are definite if 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. A patentee need not define his invention with mathematical precision in order to comply with the definiteness requirement. Patents with claims involving terms of degree must provide objective boundaries for those of skill in the art in the context of the invention. Intrinsic evidence such as the claims, figures, written description, or prosecution history of a patent can provide the necessary objective boundaries. In this case, the Federal Circuit acknowledges that the phrase “lofty … batting” is a term of degree. However, the Federal Circuit held that the written description of the ‘359 patent provides objective boundaries for the term. The ‘359 patent specification first expressly defines “lofty … batting” as “a fibrous material that shows the properties of bulk and some resilience (with or without full bulk recovery).” The specification explains that “bulk” refers to the air or openness created by the web of fibers in a lofty batting. It further explains that a batting is “sufficiently resilient” if it “can be compressed to remove the air (bulk) yet spring back to substantially its original size and shape.” Furthermore, the specification details functional characteristics of a “lofty … batting.” Furthermore, the specification provides specific examples of commercial products that can qualify as a lofty batting, and a detailed discussion of seven examples of aerogel composites manufactured in accordance with the claimed invention, along with corresponding test results. Furthermore, during the prosecution, in the Statement of Reasons for allowance, the examiner distinguished the prior art based on the phrase “lofty fibrous batting.” Thus, the Federal Circuit categorize this case in the same class as previous cases like Sonix and Enzo, where examples and procedures in the written description provided sufficient guidance and points of comparison to render claim terms not indefinite.

The Federal Circuit also specifically rejected several Alison’ arguments in support of its indefiniteness challenge. First, Alison argued that the ‘359 patent provides no objective boundary between “some resilience,” which would infringe, and “little to no resilience,” which would not. In other words, in Alison’ view, the ‘359 patent fails to disclose precisely how much resilience is enough to satisfy the claim. The Federal Circuit dismissed this argument by holding that Alison was seeking a level of numerical precision beyond that required when using a term of degree. Next, Alison argued that the  ‘359 patent offers two independent approaches, a thermal properties’ approach and a compressibility and resilience approach, to assess loftiness, without indicating which approach to use. The Federal Circuit dismissed this argument by holding that Alison has not provided any evidence that the different methods of measurement described in the ‘359 patent lead to different results. Lastly, Alison argued that the Commission’s indefiniteness analysis is irreconcilable contradiction with its claim construction. The ALJ provided a single reason for holding the claim term not indefinite because the specification states that “a lofty batting is sufficiently resilient if after compression for a few seconds it will return to at least 70% of its original thickness.” Yet, in construing the term, the ALJ declined to limit “lofty … batting” to this specific example of “resilience” in the specification, namely, “it will return to at least 70% of its original thickness.” The Federal Circuit dismissed this argument by holding that examples in the specification may be used to inform those skilled in the art of the scope of the invention with reasonable certainty, thus demonstrating that the term is not indefinite, without being directly construed into the claim.

Regarding the anticipation, Alison uses the same reference Ramamurthi, which was considered by the patent examiner during prosecution and later by the Board in denying Alison’s IPR petition. One of Alison’s argument is that Ramamurthi recites “glass wool” as a preferred fiber, which should be synonymous with the “fiber glass” expressly identified as a lofty batting by the ‘359 patent. However, the Commission rejected Alison’s anticipation argument based on Aspen’s detailed expert testimony, which demonstrated that “fiberglass” and “glass wool” each describe broad categories of materials that are not inherently “lofty.” the Federal Circuit held that the Commission’s determination is supported by substantial evidence, and rejected to reweight the evidence.

In conclusion, the Federal Circuit affirmed that the claims of the ‘359 patent are valid.

Take away

1. In drafting specification, the drafter should provide some detailed examples of the invention, which can provide sufficient guidance and points of comparison to render certain claims terms definite.
2. In defining claims terms in the specification, numerical precision is not necessarily needed to satisfy the definiteness requirement.

No obviousness where hindsight argument relied upon “cherry-picked” data

| September 11, 2019

Sanofi-Aventis et al. v. Dr. Reddy’s Laboratories et al.

August 14, 2019

Lourie, Moore, Taranto.  Opinion by Lourie

Summary

            The CAFC upheld the nonobviousness of claims where the lead compound was known, but no cited art would have motivated the skilled artisan to arrive at the claimed compound. The claimed compound was a specific modification of the lead compound, and no analogous modification was found in the art.  The CAFC rejected “cherry-picked” data which formed a “convoluted” obviousness argument, and stated that there is no per se rule that a compound is obvious where there is only a small change from a lead compound.

Details

Technical background

Sanofi owns U.S. Patent Nos. 5,847,170 and 8,927,592, which claim cabazitaxel (commercially known as Jevtana) and methods of use thereof.  This drug is used to treat drug-resistant prostate cancers.  Cabazitaxel is only the third taxane drug to obtain FDA approval, since the first being in 1992.  Cabazitaxel is similar to docetaxel (approved in 1996) as shown below:

Rather than hydroxyl groups at the C7 and C10 positions, Cabazitaxel has methoxy groups. 

Procedural background

The Defendants filed an ANDA alleging that the ‘592 and ‘170 patents are invalid as being obvious.  While the district court case arising out of the ANDA litigation was pending, the PTAB instituted an IPR of the ‘592 patent.  The PTAB found some claims 1-5 and 7-30 of the ‘592 patent unpatentable as being obvious and denied Sanofi’s motion to amend.  Sanofi appealed the denial of the motion to amend (this has been remanded to PTAB in another CAFC case from earlier in 2019), but did not appeal the invalidity decision with respect to claims 7, 11, 14-16 and 26.  Sanofi filed a statutory disclaimer with respect to these claims. 

Back at the district court, even though the statutory disclaimer had been filed and the district court was notified, the court held that a case or controversy still existed with respect to the disclaimed claims, and held that they were obvious.   The court also held that claims 1 and 2 of the ‘170 patent were not invalid as being obvious.  Sanofi appealed the district court’s conclusion that a case or controversy exists with respect to the claims of the ‘592 patent, and some of the defendants appealed the district court’s decision regarding the lack of obviousness of claims 1 and 2 of the ‘170 patent.[1]

District Court

The defendants argued that cabazitaxel would have been obvious in view of docetaxel as a lead compound.  The district court based its conclusion of non-obviousness on seven witnesses and 17 prior art references.  The court found that a person skilled in the art would have been motivated to use docetaxel as a lead compound, but would not have been motivated to replace the C7 and C10 hydroxyl groups with methoxy groups to arrive at cabazitaxel. 

The defendants alleged that it would have been obvious to modify docetaxel by increasing lipophilicity, in order to interfere with a protein called Pgp, which is involved in drug resistance.  The defendants cited to two references, Hait and Lampidis.

In Hait, the authors studied phenothiazines, not taxanes.  They showed that by increasing lipophilicity, the cancer cell would be more sensitive to the drug.  However, this related to a different class of drugs, which are structurally very different from taxanes.  Also, Hait only disclosed hypothetical binding models with respect to Pgp.

In Lampidis, the authors found that increasing the lipophilicity of a positively charged dye caused accumulation in drug resistant cells.  But, Lampidis also never disclosed taxanes.  Further, taxanes do not have a positive charge, unlike the dye of Lampidis.

Next, the district court considered a reference (Commercon) that identified the C2’, C3’, C7, C9 and C10 positions of paclitaxel as “flexible” and suitable for modification, in combination several other references regarding the activity of taxane analogs. Cumulatively, the district court found that the defendants had “cherry-picked” data from the references.  The district court was persuaded by Sanofi’s expert who explained that taxane modifications had been considered at positions C2, C4, C5, C7, C8, C9, C10, C11, C12, C13, C14, C2’ and C3’, but that it would not have been obvious to modify just C7 and C10 to be methoxy groups. 

            The district court also found secondary considerations.  Despite significant efforts by others, cabazitaxel was only the third taxane to get FDA approval.   Furthermore, Jevtana achieved significant commercial success.

CAFC

            At the CAFC, the defendants argued that that the district court erred, and that one skilled in the art (1) would have been motivated to modify docetaxel to decrease Pgp-related drug resistance, (2) knew that this could be done by increasing lipophilicity at the C7 and C10 positions, and (3) knew that the methoxy substitutions were the most conservative modifications. 

            However, the CAFC agreed with Sanofi that this obviousness theory is based on hindsight and said that it is “convoluted.”  First, the CAFC indicated that Hait and Lampidis would not have provided a reason to make docetaxel more lipophilic, for the same reasons as the district court.  But, even if there was a reason to make docetaxel more lipophilic, the cited art was highly varied in its suggested modifications of the lead compound.  No single reference taught any type of simultaneous change at the C7 and C10 positions, and certainly not methoxy substitutions.

            As to the Commercon reference, the defendants argued that C7, C9 and C10 are taught to be flexible, but that C3’ and C2’ were “crucial.”  However, the text of the reference itself stated that C3’ is flexible and C2’ can be modified under certain conditions. 

            Finally, the defendants argued that even though no reference shows only the C7 and C10 methoxy substitutions, this would have been obvious because they are known to be small, conservative changes that increase lipophilicity.  They pointed to a methylthiomethoxy substitution as also suggesting a methoxy substitution.  The CAFC refuted this as hindsight, since there was no evidence that these two types of substitutions would behave similarly.

            The defendants also argued that where there are a small number of changes to try, it is obvious to make a single change to a lead compound, particularly where the change is known to have desirable properties. Again, there was no showing of beneficial properties from methoxy substitutions of C7 and C10 in a taxane.  The CAFC also stated that small changes are not prima facie obvious.

            Finally, the CAFC found no clear error with the secondary considerations and affirmed the district court analysis of non-obviousness of the claims. 

Takeaway

-If an obviousness argument relies on data that can be fairly characterized as “cherry picked,” odds are it is an unsuccessful hindsight argument.

-There is no per se rule that a “small change” from a lead compound results in a conclusion of obviousness.

[1] This decision also includes an extensive discussion of why the district court did not have authority to hold that there is a case or controversy regarding disclaimed claims.  Discussion of that issue is omitted here.

Don’t raise issues for the first time before the CAFC unless it falls into one of the limited exceptions: the CAFC affirms the stylized letter “H” mark to be confusingly similar

| September 3, 2019

Hylete LLC v. Hybrid Athletics, LLC

August 1, 2019

Moore, Reyna, Wallach (Opinion by Reyna)

Summary

            On appeal, Hylete LLC (“Hylete”) argued, for the first time, that the Board erred in its analysis by failing to compare its stylized “H” mark with “composite common law mark” of the Hybrid Athletics, LLC (“Hybrid”), comprising of the stylized letter “H” appearing above the phrase “Hybrid Athletics” and several dots underneath.  By not presenting the argument during the opposition proceedings or at the request for reconsideration, the CAFC held that Hylete waived its argument, and upheld the decision of the Board.

Details

            Hylete LLC applied to register a design mark for a stylized letter “H” in International Class 25 for “[a]thletic apparel, namely, shirts, pants, shorts, jackets, footwear, hats and caps.”  Upon examination, the mark was approved for publication, and the mark published for opposition in the Trademark Official Gazette on June 18, 2013.  After filing an extension of time to oppose, on October 16, 2013, Hybrid Athletics, LLC filed a Notice of Opposition on the grounds of likelihood of confusion with its mark under Section 2(d) of the Lanham Act.  Hylete and Hybrid’s marks are as shown below:

Hybrid pleaded ownership in Application No. 86/000,809 for its design mark of a stylized “H” in connection with “conducting fitness classes; health club services, namely, providing instruction and equipment in the field of physical exercise; personal fitness training services and consultancy; physical fitness instruction” in International Class 41.  Hybrid also pleaded common law rights arising from its use of the mark on “athletic apparel, including shirts, hats, shorts and socks” since August 1, 2008.  The following images were submitted by Hybrid as evidence to show the use of the mark on athletic apparel:

All of the images showed the stylized “H” mark appearing above the phrase “Hybrid Athletics” and several dots underneath the phrase.

            Hylete’s argument before the Board focused on the two stylized “H” designs having a different appearance, with each mark having its own distinct commercial impression.  On December 15, 2016, the Board issued a final decision, sustaining Hybrid’s opposition, concluding that Hylete’s mark is likely to cause confusion with Hybrid’s mark.  Hylete filed a request for reconsideration of the Board’s final decision, including an argument that “[t]here was no record evidence demonstrating that consumers would view [Hylete’s] mark as a stylized H” as a part of its commercial impression argument.  The Board found that this argument is contrary to Hylete’s own characterization of the mark in its brief, as well as the testimony of its CEO, which admitted that both logos were Hs.  The Board rejected Hylete’s argument and denied the request for rehearing.  Hylete appealed the decision of the Board to the CAFC.

            On appeal, Hylete argued that the Board erred in its analysis by failing to compare Hylete’s stylized “H” mark with Hybrid’s “composite common law mark,” comprising of the stylized letter “H” appearing above the phrase “Hybrid Athletics” and several dots underneath, as shown below:

In its appeal brief, Hylete stated as follows: “this appeal may be summarized into a single question: is Hylete’s mark sufficiently similar to [Hybrid’s] composite common law mark to be likely to cause confusion on the part of the ordinary consumer as to the source of the clothing items sold under those marks?”

            In response, Hybrid stated that the “composite common law mark” arguments were never raised before the Board and are therefore waived.

            The CAFC considers arguments made for the first time on appeal under the following limited circumstances:

1. When new legislation is passed while an appeal is pending;
2. When there is a change in the jurisprudence of the reviewing court or the Supreme Court after consideration of the case by the lower court;
3. Even if the parties did not argue and the court below did not decide, when appellate court applies the correct law, if an issue is properly before the court; and
4. Where a party appeared pro se.

Hylete did not dispute that the argument was not raised before the Board.  Instead, Hylete contended that the argument has not been waived, because the Board “sua sponte” raised the issue of Hybrid’s common law rights in its final decision.  The CAFC disagreed, stating that Hylete’s failure to raise the argument in the request for reconsideration negates its contention. 

            As Hylete could have raised the issue of Hybrid’s “composite common law mark” in the opposition proceedings or in the request for reconsideration, but did not do so, and as none of the exceptional circumstances in which the CAFC considers arguments made for the first time on appeals applies, the CAFC held that the issues raised by Hylete on appeal have been waived.

            As the only issues Hylete raised on appeal concerned Hybrid’s “composite common law mark,” the CAFC affirmed the decision of the Board.

Takeaway

• Raise all possible arguments prior to appeal.
• It seems that the record before the Board lacked evidence that the letter H is conceptually weak or diluted in the context of the goods or in general – perhaps more evidence before the Board would have helped Hylete in this case.  At the same time, perhaps presenting such evidence is not desirable to Hylete, as that would be an admission that its own mark is weak.

Arguments of “as a whole”, “high level of abstraction,” “novelty/nonobviousness,” “physicality” and “machine-or-transformation test” for subject matter eligibility were successful at the PTAB and the district court, but not at the Federal Circuit

| August 30, 2019

Solutran, Inc. v. Elavon, Inc. (Fed. Cir. 2019) (Case Nos. 2019-1345, 2019-1460)

July 30, 2019

Chen, Hughes, and Stoll, Circuit Judges. Court opinion by Chen.

Summary

The Federal Circuit reversed the district court’s denial of summary judgment of ineligibility regarding a patented claims titled “system and method for processing checks and check transactions,” by concluding that the asserted claims are not directed to patent-eligible subject matter under § 101 because, under the Alice two-step framework, the claims recited the abstract idea of using data from a check to credit a merchant’s account before scanning the check, and because the claims do not contain an inventive concept sufficient to transform this abstract idea into a patent-eligible application.

Details

I. background

1. The Patent

Solutran, Inc. (Solutran) owns U.S. Patent No. 8,311,945 (’945 patent), titled “System and method for processing checks and check transactions.” The proffered benefits include “improved funds availability” for merchants and allegedly “reliev[ing merchants] of the task, cost, and risk of scanning and destroying the paper checks themselves, relying instead on a secure, high-volume scanning operation to obtain digital images of the checks.” ’945 patent at col. 3, ll. 46–62.

Claim 1, the representative claim of the ’945 patent, recites as follows:

1. A method for processing paper checks, comprising:

            a) electronically receiving a data file containing data captured at a merchant’s point of purchase, said data including an amount of a transaction associated with MICR [(Magnetic Ink Character Recognition)] information for each paper check, and said data file not including images of said checks;

            b) after step a), crediting an account for the merchant;

            c) after step b), receiving said paper checks and scanning said checks with a digital image scanner thereby creating digital images of said checks and, for each said check, associating said digital image with said check’s MICR information; and

            d) comparing by a computer said digital images, with said data in the data file to find matches.

2. The Alice Two-Step Framework under 35 U.S.C. § 101

To determine whether a patent claims ineligible subject matter, the U.S. Supreme Court has established a two-step 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 Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208, 217 (2014). 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.

3. The Patent Trial and Appeal Board (PTAB)

Two months after the Supreme Court issued the decision in Alice, the PTAB issued an institution decision granting a petition of a covered business method (CBM) review by U.S. Bancorp as to the § 103 challenge (obviousness) but denying a petition as to the § 101 challenge (lack of subject matter eligibility), concluding that claim 1 of the ’945 patent was not directed to an abstract idea. U.S. Bancorp v. Solutran, Inc., No. CBM2014-00076, 2014 WL 3943913 (P.T.A.B. Aug. 7, 2014). The PTAB reasoned that “the basic, core concept of independent claim 1 is a method of processing paper checks, which is more akin to a physical process than an abstract idea.” Id. at *8. It is noted that the CBM post-grant review certificate was issued under 35 U.S.C. § 328(b) on February 14, 2018, reflecting the final results of CBM2014-00076 determining that claims 1-6 are found patentable.

3. The District Court

Solutran sued U.S. Bancorp and its affiliate Elavon, Inc. (collectively, U.S. Bank) in the United States District Court for the District of Minnesota, alleging infringement of claims 1-5 of the ’945 patent. U.S. Bank moved for summary judgment that the ’945 patent was invalid because the claims were directed to the “abstract idea of delaying and outsourcing the scanning of paper checks.”

On February 23, 2018, the district court entered summary judgment for Solutran finding that the ‘945 patent was patent eligible under 35 U.S.C. § 101 for following reasons:

· Step One: The district court found the previous CBM review of the ’945 patent by the PTAB persuasive, concluding that that the ’945 patent is directed to an improved technique for processing and transporting physical checks, rather than just handling data that had been scanned from the checks.

· Step Two: The district court concluded, in the alternative, that the asserted claims also recited an inventive concept under step two of Alice. The district court accepted Solutran’s assertion that “Claim 1’s elements describe a new combination of steps, in an ordered sequence, that was never found before in the prior art and has been found to be a nonobvious improvement over the prior art by both the USPTO examiner and the PTAB’s three-judge panel.” The district court also concluded that the claim passes the machine-or-transformation test because “the physical paper check is transformed into a different state or thing, namely into a digital image.”

U.S. Bank appeals, inter alia, the § 101 ruling. Solutran cross-appeals on the issue of willful infringement.

II. The Federal Circuit

The Federal Circuit reversed the summary judgment in favor of Solutran on the issue of the subject matter eligibility, concluding that, contrary to the views of the PTAB and the district court, the claims are not directed to patent-eligible subject matter under § 101 because the claims of the ’945 patent recite the abstract idea of using data from a check to credit a merchant’s account before scanning the check, and because the claims do not contain an inventive concept sufficient to transform this abstract idea into a patent-eligible application. The Federal Circuit thus did not review U.S. Bank’s alternative § 103 argument or Solutran’s cross-appeal relating to a potential willful infringement claim.

The unanimous court opinion by Circuit Judge Chen discussed each step of the two-step framework in detail.

1. Step One

The Federal Circuit concluded that the claims are directed to the abstract idea of crediting a merchant’s account as early as possible while electronically processing a check.

Comparison with Precedents

The Federal Circuit has a precedent as to the determination of “abstract idea” that the court finds it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases, instead of establishing a definitive rule to determine what constitutes an “abstract idea.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016).

The court opinion argued that “[a]side from the timing of the account crediting step, the ’945 patent claims recite elements similar to those in Content Extraction & Transmission LLC v. Wells Fargo Bank, National Ass’n, 776 F.3d 1343 (Fed. Cir. 2014)” where the Federal Circuit held that a method of extracting and then processing information from hard copy documents, including paper checks, was drawn to the abstract idea of collecting data, recognizing certain data within the collected data set, and storing that recognized data in a memory. As for the account crediting step, the court opinion stated that “[c]rediting a merchant’s account as early as possible while electronically processing a check is a concept similar to those determined to be abstract by the Supreme Court in Bilski v. Kappos, 561 U.S. 593 (2010) and Alice.”

In sum, the court opinion concluded that the claims at issue are similar to those claims already found to be directed to an abstract idea in previous cases.

As A Whole

Solutran argued that the claims “as a whole” are not directed to an abstract idea. The court opinion countered by pointing out that “[t]he only advance recited in the asserted claims is crediting the merchant’s account before the paper check is scanned,” and concluded that this is an abstract idea.

The court opinion distinguished this case from previous cases where claims were held patent-eligible by noting that this is not “a situation where the claims “are directed to a specific improvement to the way computers operate” and therefore not directed to an abstract idea, as in cases such as Enfish,” nor is it “a situation where the claims are “limited to rules with specific characteristics” to create a technical effect and therefore not directed to an abstract idea, as in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016).” The court opinion further stated that “[t]o the contrary, the claims are written at a distinctly high level of generality.”

High Level of Abstraction

The court opinion disagreed with Solutran that U.S. Bank “improperly construe[d] Claim 1 to ‘a high level of abstraction.’” While conceding that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas,” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70, 71 (2012),  the court opinion stressed “where, as here, the abstract idea tracks the claim language and accurately captures what the patent asserts to be the “focus of the claimed advance over the prior art,” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016), characterizing the claim as being directed to an abstract idea is appropriate.”

Physicality of The Paper Checks Being Processed and Transported

The court opinion concluded that “the physicality of the paper checks being processed and transported is not by itself enough to exempt the claims from being directed to an abstract idea” by citing a precedent that “the abstract idea exception does not turn solely on whether the claimed invention comprises physical versus mental steps,” In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161 (Fed. Cir. 2018),

2. Step Two

The court opinion disagreed with the district court’s holding that the ’945 patent claims “contain a sufficiently transformative inventive concept so as to be patent eligible.”

As A Whole

The court opinion stated that “[e]ven when viewed as a whole, these claims “do not, for example, purport to improve the functioning of the computer itself” or “effect an improvement in any other technology or technical field” and that “[t]o the contrary, as the claims in [Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)] did, the claims of the ’945 patent “simply instruct the practitioner to implement the abstract idea with routine, conventional activity.”” The court opinion further found any remaining elements in the claims, including use of a scanner and computer and “routine data-gathering steps” (i.e., receipt of the data file), as “hav[ing] been deemed insufficient by this court in the past to constitute an inventive concept” in the past precedents. Content Extraction, 776 F.3d at 1349 (conventional use of computers and scanners); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (routine data- gathering steps).

Novelty/Nonobviousness

In rejecting Solutran’s argument that these claims are patent-eligible because they are allegedly novel and nonobvious, the court opinion reiterated the precedent that “merely reciting an abstract idea by itself in a claim—even if the idea is novel and non-obvious—is not enough to save it from ineligibility.” See, e.g., Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.” (emphasis in original)).”

Machine-or-Transformation Test

In rejecting Solutran’s argument that its claims passed the machine-or-transformation test—i.e., “transformation and reduction of an article ‘to a different state or thing,’” the court opinion stated “[w]hile the Supreme Court has explained that the machine-or-trans- formation test can provide a “useful clue” in the second step of Alice, passing the test alone is insufficient to overcome Solutran’s above-described failings under step two. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[I]n Mayo, the Supreme Court emphasized that satisfying the machine-or-transformation test, by itself, is not sufficient to render a claim patent-eligible, as not all transformations or machine implementations infuse an otherwise ineligible claim with an ‘inventive concept.’”).”

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 U.S. Patent and Trademark Office, which follows the 2019 Revised Patent Subject Matter Eligibility Guidance on January 7, 2019, 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. The courts’ approach may give wider latitude to turn an issue of the subject matter eligibility in either direction for its less clarity of the standard.

· Physicality of subjects recited in a claim, novelty/nonobviousness of the claim, and  passing of the machine-or-transformation test may not be enough to exempt the claim from being directed to an abstract idea.

“Built Tough”: Ford’s Design Patents Survive Creative Attacks by Accused Infringers

| August 21, 2019

Automotive Body Parts Association v. Ford Global Technologies, LLC

July 23, 2019

Before Hughes, Schall, and Stoll

Summary

The Federal Circuit is asked to decide two questions: what types of functionality invalidate a design patent, and whether the same rules of patent exhaustion and repair rights that apply to utility patents ought to also be applied to design patents. On the former, the Federal Circuit decides that “mechanical or utilitarian” functionality, rather than “aesthetic functionality”, invalidates a design patent. On the latter, however unique design patents are from utility patents, the Federal Circuit declines to apply the well-established rules of patent exhaustion and right to repairs differently between design and utility patents.

Details

Ford Motor Company introduced the F-150 pickup trucks in the 1970’s, and the trucks have become a mainstay of Ford’s lineup. The trucks’ popularity has endured, as the model is now in its thirteenth generation, with Ford claiming to have sold more than 1 million F-150 trucks in 2018.

Ford Global Technologies, LLC (“Ford”) is a subsidiary of Ford Motor Company, and manages the parent company’s intellectual property. Ford’s large patent portfolio includes numerous design patents covering different design elements of Ford vehicles.  Among those design patents are U.S. Design Patent Nos. D489,299 and D501,685.

The D’299 patent is directed to an “exterior vehicle hood” having the following design:

The D’685 patent is directed to a “vehicle head lamp” having the following design:

The patented designs are found on the eleventh generation F-150 trucks, which were in production from 2004 to 2008:

Automotive Body Parts Association (“Automotive Body”) is an association of companies that distribute automotive body parts. The member companies serve predominantly the collision repair industry, selling replacement auto parts to collision repair shops or directly to vehicle owners.

Ford began asserting the D’299 and D’685 patents against Automotive Body in 2005, when Ford initiated a patent infringement action in the International Trade Commission. The ITC action was ultimately settled, followed by a few years of relative quiet until 2013, when tension grew after a member of Automotive Body began selling replacement parts covered by Ford’s two design patents.

In 2013, Automotive Body, together with the member company, initiated a declaratory judgment action in a district court, seeking to have the D’299 and D’685 patents declared invalid, or if valid, unenforceable. Automotive Body moved the district court for summary judgment of invalidity and unenforceability, but was denied. Automotive Body’s appeal of that denial of summary judgment leads us to this decision by the Federal Circuit.

Automotive Body’s arguments on appeal mirror those made in the district court.

• Invalidity

Automotive Body makes two main invalidity arguments. First, the designs of Ford’s two patents are “dictated by function”, and second, the two designs are not a “matter of concern”.  

The “dictated by function” argument involves a basic design patent concept: if an article has to be designed a certain way for the article to function, then the design cannot be the subject of a design patent.

Design patents protect only “new, original and ornamental design[s] for an article of manufacture”. 35 U.S.C. 171(a). To be “ornamental”, a particular design must not be essential to the use of the article.

Automotive Body argues, rather creatively, that the designs of Ford’s headlamp and hood are functionally dictated not only by the physical fit on a F-150 truck, but also by the aesthetics of the surrounding body parts. Automotive Body’s position is that these commercial requirements for aesthetic continuity, driven by customer preferences, render Ford’s designs functional.

The Federal Circuit disagrees:

We hold that, even in this context of a consumer preference for a particular design to match other parts of a whole, the aesthetic appeal of a design to consumers is inadequate to render that design functional…If customers prefer the “peculiar or distinctive appearance” of Ford’s designs over that of other designs that perform the same mechanical or utilitarian functions, that is exactly the type of market advantage “manifestly contemplate[d]” by Congress in the laws authorizing design patents.

In other words, functionality that invalidates a design should be “mechanical or utilitarian”, and not aesthetical.

Particularly damaging to Automotive Body’s argument is Ford’s abundant evidence of “performance parts”, that is, alternative headlamp and hood designs that would also fit the F-150 trucks. As the Federal Circuit explains, “the existence of ‘several ways to achieve the function of an article of manufacture,’ though not dispositive, increases the likelihood that a design serves a primarily ornamental purpose.”

To bolster its functionality argument, Automotive Body attempts to borrow the doctrine of “aesthetic functionality” from trademark law.

Under that doctrine, trademark protection is unavailable to features that serve an aesthetic function that is independent and distinct from the function of source identification. For example, “John Deere green”, the color, may invoke an immediate association with John Deere, the brand, but the color itself also serves the significant nontrademark function of color-matching many farm equipment.  As such, the color is not entitled to trademark protection.[1]

The Federal Circuit quickly disposes of Automotive Body’s “aesthetic functionality” argument, finding that the doctrine rooted in trademark law does not apply to patent law. The competitive considerations driving the “aesthetic functionality” doctrine of trademark law do not apply to the anticompetitive effects of design patents.

Automotive Body’s second invalidity argument is that the designs of Ford’s two patents are not a “matter of concern”.

The “matter of concern” argument involves the straightforward concept that, if no one cares about a particular design, then that design is not deserving of patent protection. Automotive Body argues that Ford’s patented headlamp and hood designs are not a “matter of concern”, because an F-150 owner in need of a replacement headlamp or hood would assess the replacement part simply for their aesthetic compatibility with the truck.

The Federal Circuit finds two faults with Automotive Body’s arguments. First, that an F-150 owner would assess the aesthetic of a headlamp or hood design means that, by definition, the designs are a matter of concern. Second, Automotive Body errs in temporally limiting the “matter of concern” inquiry to when a consumer is purchasing a replacement part. The proper inquiry is “whether at some point in the life of the article an occasion (or occasions) arises when the appearance of the article becomes a ‘matter of concern’”.

• Unenforceability

Automotive Body’s unenforceability arguments are also two-fold.

First, Automotive Body argues that under the doctrine of patent exhaustion, the authorized sale of an F-150 truck exhausts all design patents embodied in the truck. This exhaustion therefore permits the use of Ford’s designs on replacement parts intended for use with the truck.

The Federal Circuit disagrees that the doctrine of patent exhaustion should be so broadly applied.

The doctrine of patent exhaustion is triggered only if the sale is authorized, and conveys only with the article sold. Since Ford has not authorized Automotive Body’s sales of replacement headlamps and hood, and Automotive Body is not a purchaser of Ford’s F-150 trucks, the Federal Circuit easily concludes that Automotive Body cannot rely on patent exhaustion as a defense.

Automotive Body’s second argument is that an authorized sale of the F-150 truck also conveys to the owner the right to repair, so that the owner of the F-150 truck would be permitted to replace the headlamps or hood on the truck.

Here also, the Federal Circuit disagrees with Automotive Body’s broad application of the right to repair.  

The right to repair allows an owner to repair the patented headlamps or hood on the truck, but does not allow the owner to make new copies of the patented designs.

A common premise of Automotive Body’s unenforceability arguments is their broad interpretation of the term “article of manufacture” as used in the statute. From Automotive Body’s perspective, the term includes not only the patented component, but also the larger product incorporating that component. By this interpretation, the sale of either the patented headlamps or hood, or the truck containing the patented headlamps or hood would totally exhaust Ford’s rights in the design patents.

The Federal Circuit rejects Automotive Body’s broad interpretation:

In our view, the breadth of the term “article of manufacture” simply means that Ford could properly have claimed its designs as applied to the entire F-150 or as applied to the hood and headlamp… Unfortunately for ABPA, Ford did not do so; the designs for Ford’s hood and headlamp are covered by distinct patents, and to make and use those designs without Ford’s authorization is to infringe.

Had Ford’s design patents covered the whole F-150 truck, the sale of the truck would have exhausted Ford’s rights in those patents. But, as it were, Ford’s patents cover only the designs of the headlamps and the hood, and not the design for the truck as a whole. As such, while the authorized sale of an F-150 truck permits the owner to use and repair the headlamps and the hood, the sale leaves untouched Ford’s ability to prevent the owner from making new copies of those designs.

It is not uncommon for aftermarket suppliers, especially those who supply parts intended to restore a vehicle to its original condition and aesthetics, to promise identity or near identity between its products and the OEM parts. This promise, however, would effectively be an admission that the products infringe any design patents covering the part. In this respect, this Federal Circuit decision may signal a tough road ahead for aftermarket suppliers.

Takeaway

• Use design patents not only to protect a product as a whole, but also to protect the smallest sellable component of the product.

[1] Interestingly, a district court recently determined that trademark protection extended to the combination of “John Deere green” and “John Deere yellow” as a color scheme.

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