A Patent Owner in an IPR is entitled to an opportunity to respond to asserted facts
| December 16, 2016
In Re: NuVasive, Inc.
November 9, 2016
Before Moore, Wallach and Taranto. Opinion by Taranto.
Summary:
Medtronic filed two petitions for inter partes review (IPR) against U.S. Patent 8,187,334 to a spinal fusion implant owned by NuVasive. The claims of the ‘334 patent recite two size requirements: that the length of the implant is greater than 40 mm and that the length to width ratio is 2.5. In both petitions, Medtronic cited the combination of two references for teaching the size limitations. In the patent owner responses, NuVasive addressed the combination of references as in Medtronic’s petition. However, in Medtronic’s reply, Medtronic changed its reliance to just one of the cited references for teaching both of the size limitations citing a different portion of the reference. The PTAB ultimately relied on Medtronic’s changed position in its final decision. In one IPR, the CAFC held that NuVasive had an opportunity to respond because Medtronic’s petition was at least minimally sufficient to provide notice. However, in the second IPR, NuVasive was not given proper notice to respond.
Evidence showing conversion of units to find anticipation
| December 9, 2016
REG Synthetic Fuels, LLC. v. Neste Oil Oyj
November 8, 2016
Before Prost, Taranto and Chen. Opinion by Chen.
Summary
REG Synthetic Fuels, LLC (REG) owns U.S. Patent No. 8,231,804 (’804 patent). Neste Oil Oyj (Neste) requested inter partes review against claims 1–5 and 8 of the ’804 patent, which were directed to a composition comprising paraffins (hydrocarbons) useful as heat-insulation material in a house. PTAB found that claim 1 was anticipated by cited references including Craig. CAFC affirmed. The key feature of claim 1 was the limitation: “comprising at least 75 wt% (weight percent) even-carbon-number paraffins.” Craig disclosed the production of hydrocarbon compositions and the hydrocarbon amounts therein defined by a different unit, “peak area percentages” measured by a mass spectral analysis. Neste relied upon their expert’s calculation using three different conversion factors to calculate corresponding wt.% from the peak area %. CAFC held that Neste’s expert’s calculation established by a preponderance of evidence that the claimed composition read on the prior art compositions.
Details
Claim 1 representative of the ’804 patent:
- A phase change material composition comprising at least 75 wt% even carbon number paraffins, wherein the paraffins are produced by hydrogenation/ hydrogenolysis of naturally occurring fatty acids and esters.
A key feature in claim 1 was the limitation with “at least 75 wt% even carbon number paraffins,” as CAFC agreed with the PTO’s interpretation that the preamble part (the phase change material) and the wherein-clause (the product-by-process limitation) are not limiting. The main issue in this appeal was whether Craig taught the limitation of “at least 75 wt% even carbon number paraffins.”
Craig disclosed hydrocarbon products obtained from naturally occurring feedstocks, and the results of quantitative analysis of the products. The critical disclosure was Table 9 (reproduced below in part). The table showed “peak area percentages” of each even-carbon-number paraffin such as C16, C18, or C20 in the hydrocarbon products. However, Craig did not disclose corresponding weight percentages. Nor did it disclose how to calculate weight percentages from weight percentages.
As evidence, Neste’s expert (Dr. Klein) submitted data showing conversion of peak area percentages to weight percentages. As shown in Table 2 (reproduced from the opinion), the peak area percentages of each hydrocarbon were calculated using three relative response factors, i.e., “Hsu,” “Gorocs,” and “Chaurasia.”
REG argued that the conversion of peak area percentages into weight percentages is “not straightforward” and Craig did “not provide enough information to accurately convert the GC-MS peak area percentages to weight percentages using relative response factors.” However, REG’s expert (Dr. Lamb) agreed that the peak area percentages could be converted to weight percentages by using relative response factors, and other references cited in Dr. Lamb’s opinion in fact disclosed two of the factors (Gorocs and Chaurasia).
REG’s arguments relied mostly upon the complex nature of the biological feedstocks and their own expert’s opinion that the resulting product is a very complex mixture which affects the phase change characteristic. REG argued that Craig disclosed a distillation process to separate the obtained mixture into fractions and such additional process would result in “structural and functional differences in the products.” However, REG did not submit any evidence or data showing the asserted differences. PTAB rejected the REG’s arguments because there was no credible evidence or disclosure in the specification supporting their arguments. Particularly, as noted by PTAB, claim 1 did not exclude distilled products.
Turning to the issue as to whether the peak area percentages disclosed in Craig read on the claimed weight percentages, CAFC noted, as PTAB held, that claim 1 was anticipated since “a person of ordinary skill in the art could readily convert the disclosed peak area percentages into their corresponding weight percentages, and the sum of the converted peak area percentages of Craig met the claim requirement that the overall weight percentage of even-carbon-number paraffins be at least 75 wt%.” It was specifically noted that each of the calculated weight percentages for “Canola Premium” met the claimed range and “82.31 wt%” was “more than 7% higher than” the claimed l limit, 75 wt%.
CAFC agreed with the PTAB’s view that “it unlikely that any correction required by the experimental conditions would result in a weight percentage of less than the 75 wt%” because Table 2 showed that the different weight percentages obtained by using the different relative response factors “were very small.”
CAFC added that “this is not an inherency issue, however, because the challenged limitation is not missing from Craig” as Neste’s expert “simply converted one unit of measurement (area percent) into another unit of measurement (weight percent) by using relative response factors from the prior art.”
Take Away
According to this decision, conversion of units or parameters one another is not an inherency issue, but all about evidence. This is one example showing that IPRs help the Patent Office find better interpretation of prior art, which may not easily be examined without expert’s opinions from each party. In addition, the preponderance of evidence standard is available to fill a gap between cited prior art and patented claims in IPRs. Good reasons to use IPRs.
Tags: anticipation > conversion of units or parameters > IPR > preponderance of evidence
Last month on §101: You Win Some (Amdocs), You Lose Some (FairWarning; Synopsys)
| November 21, 2016
Amdocs (Israel) Limited v. Openet Telecom, Inc.
November 1, 2016
Before Newman, Plager, and Reyna. Opinion by Plager. Dissenting opinion by Reyna.
Summary
A trio of Federal Circuit decisions on patent eligible subject matter in the past month offers additional guidance on how to survive scrutiny under 35 U.S.C. §101. The focus will be on Amdocs (Israel) Limited v. Openet Telecom, Inc., in which the Federal Circuit found eligibility, but for the sake of comparison, the Federal Circuit’s decisions in FairWarning IP, LLC v. Iatric Systems, Inc. and Synopsys, Inc. v. Mentor Graphics Corporation, in which the Federal Circuit reached the opposite conclusion, will be briefly summarized.
CAFC reiterates criteria for disavowal of broad claim scope based on patent’s disclosure and prosecution history.
| November 2, 2016
Poly-America, L.P. v. API Industries, Inc.
October 14, 2016
Before Prost, Reyna, and Hughes. Opinion by Reyna
Summary
Infringement of Poly-America’s patent hinged on construction of “short seal” in claim 10. Based on the specification and prosecution history, the district court adopted the accused infringer’s proposed construction, which incorporated structure described in the specification but not explicitly recited in the claim. The CAFC affirmed, finding clear and unequivocal statements in the specification and prosecution history “that the inventor intended to limit the claimed invention to a trash bag with ‘short seals’ at its upper corners that extend inwardly to narrow the bag’s upper opening,” and thus disavowed a broader interpretation.
Jury or Judge? CAFC struggles with the results of the Apple vs Samsung trial.
| October 28, 2016
Apple v. Samsung
Case Nos. 2015-1171, 2015-1195, 2015-1994
October 7, 2016
Before: En banc
Opinion for the court filed by Circuit Judge MOORE, in which NEWMAN, LOURIE, O’MALLEY, WALLACH, CHEN, and STOLL, Circuit Judges, join. Concurring in the result without opinion Circuit Judge HUGHES.
Dissenting Opinion filed by Chief Judge PROST.
Dissenting Opinion filed by Circuit Judge DYK.
Dissenting Opinion filed by Circuit Judge REYNA.
Summary
The Court sat en banc amid controversy for doing so without any additional briefing from the parties or amici curiae. The majority held that the previous CAFC three judge panel (“the panel”) had overstepped in reversing the District Court. Focusing on the substantial evidence standard of a JMOL (Judgment as a Matter of Law) needed to justify overruling the decision of a fact finder at the District Court level in the 9th Circuit, the majority overruled the prior panel and reinstated the District Court decision. The dissents opposed- warning that the majority’s ruling would be seen as precedent interfering in the Supreme Court established obviousness standards set down in the Graham and KSR decisions.
Priority document can inherently support subject matter first disclosed in later application
| October 27, 2016
Yeda Research and Development Co. Ltd. v. Abbott GmbH & Co. KG
September 20, 2016
Before Reyna, Wallach and Hughes. Opinion by Reyna
Summary:
In a case arising out of an interference, validity of the patent in question turned on the question of whether structural features of a protein, which were newly added in the U.S. application, were inherently supported by the priority document. Here, it was found that the priority document did inherently support the claimed protein, and any structural features thereof, even if it did not disclose the specific claimed structural features. This is because there was only one protein that could possibly be described by the priority document.
Details:
Abbott is the owner of U.S. Patent No. 5,344,915, which claims priority to German applications P39 15 072 and P29 22 089. The ‘915 patent discloses a protein called TBP-II, which neutralizes TNF-α, a key protein in immunological diseases. The key claim is as follows:
1. A purified and isolated TNFα-binding protein which has a molecular weight of about 42,000 daltons and has at the N terminus the amino acid sequence
Xaa Thr Pro Tyr Ala Pro Glu Pro Gly Set Thr Cys Arg Leu Arg Glu
where Xaa is hydrogen, a phenylalanine residue (Phe) or the amino acid sequences Ala Phe, Val Ala Phe, Gln Val Ala Phe, Ala Gln Val Ala Phe, Pro Ala Gln Val Ala Phe or Leu Pro Ala Gln Val Ala Phe.
Meanwhile, the German priority documents to which the ‘915 patent claims priority do not disclose the complete N-terminus sequence. These Germans priority documents disclosed a partial N-terminus sequence, as well as how the protein is obtained from its biological source, and several physical properties of the protein.
This case arises out of an interference between Abbott’s ‘915 patent and Yeda’s application in 1996. In 2000, the Board assigned Abbott the filing date of the ‘915 patent, not the date of the German priority applications. The Board concluded that the patent was invalidated by an intervening prior art reference (Engelmann). Engelmann disclosed the TBP-II protein and distinguished it from a similar protein, TBP-I. In 2008, Abbott appealed to district court, which indicated that one of the German priority document inherently discloses the TBP-II protein, and sufficiently supports the ‘915 patent. In 2010, the Board held that the other German priority document sufficiently discloses the TBP-II protein. Yeda then appealed to district court, which agreed with the Board, and then appealed to the CAFC.
Since Engelmann would be invalidating prior art, the question of validity of the ‘915 patent turns on whether the German priority documents provide written description support. Yeda first argued that the Board applied the wrong standard. Specifically, Yeda argued that for the priority document to support the ‘915 claims, the skilled artisan would have to understand that the partial sequence of the priority document includes the amino acids recited in the ‘915 claim. On the other hand, Abbott argued that the priority document only needs to sufficiently describe the TBP-II protein itself, and the partial sequence disclosure can be coupled with other characteristics.
The CAFC agreed with Abbott and held that the German priority document inherently supports the ‘915 claims. Citing to Kennecott v. Kyocera, 835 F.2d 1419 (Fed. Cir. 1987), the CAFC indicated that when a “specification describes an invention that has certain undisclosed yet inherent properties, that specification serves as an adequate written description to support a subsequent patent application that explicitly recites the invention’s inherent properties.” It was not disputed that TBP-II is the only protein with the partial sequence and characteristics described in the priority document. The CAFC distinguished over two cases cited by Yeda (Hyatt v. Boone, 146 F.3d 1348 (Fed. Cir. 1998) and In re Wallach, 378 F.3d 1330 (Fed. Cir. 2004)), indicating that unlike in those cases, here, it is undisputed that the invention of the earlier application is exactly the same as the invention of the later patent. Thus, the priority document sufficiently supports the claims reciting the full N-terminal sequence.
Yeda then argued that the prosecution history precludes reliance on inherent disclosure. Specifically, Yeda argued that in “the context of priority determinations, the allegedly inherent limitation cannot be material to the patentability of the invention,” relying on Hitzeman v. Rutter, 243 F.3d 1345 (Fed. Cir. 2011). Yeda argued that since Abbott relied on the amino acids in question to distinguish over Engelmann, they are material to patentability. In prosecution, the Examiner relied on cited art showing a protein with the same source, weight and function as that claimed. In response, Abbott pointed to Engelmann to show that TBP-I and TBP-II are different. Abbott also relied on Engelmann to show that TBP-II has five different amino acids than TBP-I, and that these were included in the claimed sequence. However, three out of the five TBP-II-unique amino acids disclosed in Engelmann were in fact also disclosed in the priority document. Thus, the sequence of the priority document alone was sufficient to distinguish over the art on its own. Therefore, Yeda’s argument fails.
Lastly, Yeda argued that the district court was incorrect in holding that the Board’s decision was supported by substantial evidence. However, the CAFC again reiterated that the priority document disclosed nine of the 15 amino acids of the claimed N-terminus sequence and various biological characteristics. Furthermore, it was undisputed that no other known protein besides TBP-II has this structure and characteristics. Thus, the CAFC concluded that the Board’s decision was supported by substantial evidence.
Take away
In many cases, adding a new disclosure to a US application, beyond what is disclosed in a priority application, can result in a breaking of the chain of priority. But here, because the priority document inherently disclosed the subject matter first disclosed in the US application—and only that subject matter—the claims had written description support as of the priority date. However, the outcome would have likely been different if the description of the protein in the priority document was later found to correspond multiple proteins, such as stereoisomers having different functions.
Abbott was saved by the fact that they disclosed not only the partial sequence of the protein, but also how it is obtained from its biological source, and several physical properties of the protein. Thus, in emerging technologies, it is best to try to claim the subject matter as completely as possible to insulate the applicant from written description problems in the future, and to provide the flexibility to claim the subject matter in terms newly added in a later application.
The term “processing system” does not render the claims indefinite
| October 14, 2016
Cox Communications, Inc., et al. v. Sprint Communication Company LP, et. al.
September 23, 2016
Before Prost, Newman, and Bryson. Opinion by Prost. Concurring opinion by Newman
Summary:
The District Court for the District of Delaware granted a summary judgment of invalidity, finding that the claim term “processing system” renders the asserted patents indefinite under 35 U.S.C. 112, ¶ 2. On appeal, the United States Court of Appeals for the Federal Circuit (“the CAFC”) reversed, finding that the term “processing system” does not render the claims indefinite, because the scope of the claims can be understood, and the meaning would not discernably change, even if the word “processing system” were removed from the claims. The CAFC held that reading the claims in light of the specification and the prosecution history, the term “processing system” does not prevent a person of ordinary skill in the art from understanding the scope of the invention with reasonable certainty.
デラウェア州地裁は、クレーム中の「processing system」という用語は不明瞭であるとして、特許法第112条第2段落に基づき、主張特許は無効であるというサマリージャッジメントを下した。控訴審において、連邦巡回控訴裁判所（CAFC）は、クレームより「processing system」という語を削除したとしても、クレーム範囲を理解することができるため、「processing system」という用語はクレームを不明瞭していないとして、地裁の判断を覆した。また、CAFCは、明細書と中間手続の内容をクレームと照らし合わせると、「processing system」という用語が、当業者の発明範囲についての理解を妨げることはないと結論付けた。
AUTOMATED PROCESSES ARE NOT INELIGIBLE SIMPLY BECAUSE THEY ARE PERFORMED ON A GENERAL PURPOSE COMPUTER
| October 4, 2016
McRO, Inc. v. Bandai Namco Games America Inc. et al.
September 13, 2016
Before Reyna, Taranto, and Stoll. Opinion by Reyna.
Summary:
McRO appealed a grant of judgment on the pleadings under FRCP 12(c) that the asserted claims of 6,307,576 (“the ’576 patent”) and 6,611,278 (“the ’278 patent”) are invalid under §101 by the District Court for the Central District of California. The District Court held that the asserted claims are directed to patent-ineligible subject matter and are therefore invalid under under §101. However, the Federal Circuit reversed the decision and held that the claims are not directed to an abstract idea and recite subject matter as a patentable process under §101 because an “order combination of claimed steps using unconventional rules” is not directed to an abstract idea and is therefore patent-eligible subject matter under §101.
Tags: §101 > automated process > judgment on the pleadings under FRCP 12(c) > preemption > technological improvement
It is arbitrary and capricious for PTAB to deny a motion to amend a patent claims alleging that patentee failed to address whether each newly added feature in each proposed claim was independently known in the prior art.
| September 20, 2016
Veritas Techs. v. Veeam Software
August 30, 2016
Before Lourie, O’Malley and Taranto. Opinion by Taranto.
Summary
U.S. Patent No. 7,024,527 is owned by Veritas Technologies LLC. In October 2013, Veeam Software Corp. filed a petition for an inter partes review of several claims of the ’527 patent. The Board instituted the review in April 2014.
After institution, the patent owner (Veritas) filed a conditional motion to amend, seeking to add new claims if the Board ultimately concluded that the challenged existing claims are unpatentable. In the final decision of April 2015, the Board rejected all of the challenged claims for obviousness over the prior art.
The Board denied the motion to amend without making an evidentiary determination of patentability of the proposed new claims. It concluded that Veritas (and its expert declarant) had failed to address whether each newly added feature in each proposed claim, as distinct from the claimed combination of features, was independently known in the prior art.
CAFC vacated the Board’s denial of Veritas’s motion to amend because the Board was arbitrary and capricious in its sole ground for denying the motion. CAFC remanded for the Board to consider the patentability of the proposed claims, which have the narrower claim scope.
当事者系レビューにおいて、特許権者は、争われているクレームが無効とされたときに備えて、クレームを追加する補正の申立をした。米国特許庁審判部は、争われたクレーム全てを無効にしたが、特許権者の補正の申立も認めなかった。その理由は、特許権者が、新クレームで追加される個々の構成要件が公知であったかどうかを述べていなかったというものであった。CAFCは、証拠に照らして、追加されるクレームの特許性を論ずることなく、そのような理由で補正の申立を認めないことは、恣意的であり、裁量権を逸脱していると判決した。
Surviving Alice with a Non-Conventional and Non-Generic Arrangement
| September 16, 2016
Bascom Global Internet Services, Inc. v. AT&T Mobility LLC
June 26, 2016
Before Newman, O’Malley, and Chen. Opinion by Chen.
Summary
This is the third case, besides DDR and Enfish, where the Federal Circuit found a software related claim patent eligible under 35 USC §101. In doing so, the Federal Circuit provided another example of how step two of the Alice/Mayo two-part test is to be applied. In particular, by focusing on the specificity of claimed features, it can be argued that the claims recite a “non-conventional and non-generic arrangement” that is patent eligible.
