Arbitration is Good, but it Needs Protection
| August 17, 2016
Verinata Health, Stanford & Illumina v. Ariosa & Laboratory Corp.
July 26, 2016
Before Reyna, Clevenger and Wallach. Opinion by Reyna.
Summary:
- Plaintiff Illumina and Defendant Ariosa entered into a supply agreement which contained a compulsory arbitration clause.
- Illumina sued Ariosa for patent infringement.
- Ariosa counterclaimed for breach of contract and breach of good faith, asserting that the supply agreement gave it a license to Illumina’s patent.
- Illumina moved the trial judge to order that the contract and good faith breach counterclaims go to compulsory arbitration.
- The trial judge denied Illumina’s motion that Ariosa’s counterclaims go to arbitration.
- The CAFC affirmed the trial judge’s denial of Illumina’s motion for arbitration.
Another fatality attributed to 35 U.S.C. §101 abstract idea
| August 5, 2016
Electric Power Group, LLC v Alstom
August 1, 2016
Before: Taranto, Bryson and Stoll. Opinion by Taranto.
Summary:
Electric Power Group sued Alstom alleging infringement of various claims of U.S. Patents Nos. 7,233,843; 8,060,259; and 8,401,710 directed to systems and methods for performing real-time performance monitoring of an electric power grid. On Alstom’s motion for summary judgment, the district court held that Electric Power Group’s asserted patent claims fail the standard for patent eligibility under §101. The CAFC affirmed finding the claims don’t go beyond the abstract idea of the collection, analysis, and display of available information in a particular field.
Burden of Proof does not shift to Patent Owner upon institution of an Inter Partes Review
| August 1, 2016
In Re: Magnum Oil Tools International, LTD.
July 25, 2016
Before Newman, O’Malley, and Chen. Opinion by O’Malley
Summary:
McClinton Energy Group, LLC (“McClinton”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 8,079,413 (“the ‘413 patent”) owned by Magnum Oil Tools International, Ltd. (“Magnum”). McClinton based the petition on two combinations of prior art references: (1) Alpha in view of Cockrell and Kristiansen, and (2) Lehr in view of Cockrell and Kristiansen. The petition primarily focused on the combination of Alpha, Cockrell and Kristiansen, and merely “incorporated by reference” the arguments based on Alpha for the arguments based on Lehr. The IPR was instituted based only on Lehr in view of Cockrell and Kristiansen, and in a final decision, the claims were found unpatentable. The CAFC reversed the PTAB decision stating that the arguments “incorporated by reference” are not sufficient for meeting the burden of proving obviousness by a preponderance of the evidence. Conclusory statements cannot satisfy the petitioner’s burden of demonstrating obviousness, and thus the PTAB did not have sufficient evidence on which to base its legal conclusion of obviousness. The PTAB improperly shifted the burden to Magnum to disprove obviousness without requiring McClinton to prove its assertion of obviousness. The CAFC also stated that it was improper for the PTAB to rely on an unpatentability theory that was not included in the petition.
Appealing a Victory in an Inter Partes Reexamination?
| July 21, 2016
SKYHAWKE TECHNOLOGIES, LLC V. DECA INTERNATIONAL CORP.
July 15, 2016
Before Taranto, Chen, and Hughes. Opinion by Hughes.
Summary
The results of inter partes reexaminations under pre-AIA are important both to the patent owner and the requester because of ongoing litigation between the parties. The results in one proceeding could certainly have an impact on the other proceeding. In this case, the patent owner SkyHawke received a decision from the Patent Trial and Appeal Board (PTAB) affirming the patentability of its claims. However, SkyHawke was concerned with the reasoning of the PTAB with respect to claim construction which could allow Deca to escape infringement in the litigation proceeding. Asserting 35 U.S.C. § 141 (a patent owner “who is in any reexamination proceeding dissatisfied with the final decision in an appeal to the Board … may appeal the decision only to” the CAFC), SkyHawke appealed to the CAFC. Deca filed a motion to dismiss the appeal for lack of jurisdiction. The CAFC granted the motion to dismiss.
The “on-sale” bar is triggered by a commercial sale that bears the general hallmarks of a sale pursuant to the Uniform Commercial Code
| July 18, 2016
The Medicines Company v. Hospira, Inc.
July 11, 2016
En Banc Decision by O’Malley.
Summary
Hospira submitted two Abbreviated New Drug Applications (“ANDA”) to seek approval of Food and Drug Administration (“FDA”) for selling generic bivalirudin drug products before the expiration of patents-in-suit: the ‘727 patent and the ‘343 patent. The two patents-in-suit cover Angiomax, the trade name of a form of bivalirudin that MedCo markets in the United States. On August 19, 2010, MedCo sued Hospira in the district court of Delaware alleging that Hospira’s two ANDA filings infringed the two patents-in-suit. The district court found the patents-in-suit not invalid and not infringed. MedCo appealed and Hospira cross-appealed. The original three-judge panel of the Federal Circuit agreed with Hospira and held that the patents-in-suit are invalid. MedCo petitioned for panel rehearing or rehearing en banc. The en banc panel affirmed the district court’s holding and remanded the appeal to the original three-judge panel for further proceedings.
Tags: on sale bar > patent invalidation > product-by-pass claims > supplier exeption
Patent eligible Laboratory methods
| July 13, 2016
Rapid Litigation Management Ltd. v. CellzDirect, Inc.
July 5, 2016
Before Prost, Moore and Stoll. Opinion by Prost.
Summary
Patented claims at issue were directed to a method of producing a desired preparation of hepatocytes (liver cells) useful for laboratory tests such as drug safety tests. The claimed process was invented based on the discovery that liver cells are capable of surviving multiple freeze-thaw cycles, which provides desired pool samples of hepatocytes from multiple donners. The district court held that the claims were invalid under 35 U.S.C. §101. CAFC vacated the decision, holding that the claimed process is not directed to a patent-ineligible concept.
ドラッグテスト等に有用な肝細胞プールを調製する方法を記載した特許クレームが、101条の特許対象要件を満たすか否かを争われたケースである。従来は、肝細胞の冷凍保存は1回が限度であると認識されていた（一度解凍したら使い捨てとなる）。しかし、本件発明者は肝細胞を複数回冷凍保存しても使用できることを発見し、少なくとも2回の冷凍－解凍の工程を記した方法に特許を受けた。複数回の冷凍-解凍を繰り返せること利用して、異なるドナーからの肝細胞プールを無駄なく適宜に調製できるという利点がある。
近年最高裁判決の下、自然法則または自然現象を優位に超える特徴をクレームに記載しなければ特許対象にはならない。地裁は肝細胞が冷凍保存可能であることはその細胞の自然能力の発揮にすぎず、本特許の方法は自然法則の利用を優位に超える特徴を記載していないとして同特許を無効にした。高裁はその地裁判決を破棄し、従来の知見反して肝細胞の冷凍を2回以上繰り返す工程を記載した本特許の方法は従来の方法にはない利点があるから特許可能対象であると判示した。複数回の冷凍保存を行うことができるという科学的発見に基づくシンプルな発明コンセプトであるが、新規で有用な結果をもたらす方法は特許対象になりえることが示された。このケースは発見を利用する発明を新規な「方法」として記載することで特許対象になり得ることを示しているが、その肝細胞を「プロダクト」としてクレームした場合は自然物の寄せ集めであり特許対象になりえないことも示唆された（Funk Bros判決参照）。一方で、101条の特許対象要件の判断において従来技術との対比が重要な意味を持ち得ることを示した判決でもある。
Tags: laboratory technique > law of nature > method claims > patent eligibility
Federal Circuit reverses district court’s decision that a continuing application filed on the same day as the parent’s issuance loses benefit under 35 U.S.C. §120
| July 6, 2016
Immersion Corp. v. HTC Corp.
June 21, 2016
Before Prost, Linn, and Taranto. Opinion by Taranto
Summary
The Federal Circuit confirmed the longstanding practice that for the purpose of claiming benefit under 35 U.S.C. §120, a continuing application can be filed either before, or on the same date as, the patent issue date of the parent application.
Software can make non-abstract improvements to computer technology under 35 USC §101
| June 24, 2016
Enfish, LLC v Microsoft Corp.
May 12, 2016
Precedential Opinion by Hughes, joined by Moore and Taranto.
Summary:
Enfish sued Microsoft for infringement of several patents related to a “self-referential” table for a database. The district court found all claims invalid as ineligible under § 101 on summary judgment. The CAFC reversed the summary judgment based on § 101 by finding that claims drawn to a “self-referential” table for a data base are not directed to an abstract idea under step one of the Alice analysis.
Tags: 35 U.S.C. § 101 > abstract idea > Alice > eligible subject matter > ineligible subject matter
Supremes Sink Seagate
| June 15, 2016
Halo Electronics, Inc. v. Pulse Electronics, Inc., et al.
June 13, 2016
Summary: The U.S. Supreme Court unanimously vacated the Seagate test for enhanced damages as inconsistent with §284. District courts have discretion to award enhanced damages where appropriate “as a sanction for egregious infringement behavior.”
Tags: 35 U.S.C. §284 > enhanced damages > non-infringement opinion > Seagate > willful infringement
Definition in specification trumps asserted meaning to a person of ordinary skill in the art and the doctrine of claim differentiation.
| June 10, 2016
Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC
May 31, 2016
Before Prost, Reyna, and Stark. Opinion by Reyna, Dissent by Stark.
Summary
The specification consistently characterized “communications path” in terms of wired connections. In the absence of any evidence, either intrinsic or extrinsic, to the contrary, these characterizations are understood as definitional and limit “communications path” to a wired connection.
Details
The patent in suit: Innovative Wireless Solutions (“IWS”) owns U.S. Patent Nos. 5,912,895; 6,327,264; and 6,587,473 (the “Terry patents”), directed to techniques for providing access to a local area network (“LAN”) from a relatively distant computer, using an approach by which a “master” modem in the LAN dictates the timing of one-way communications between the master modem and a “slave” modem in the distant computer.
The patents, which are related to each other as parent and continuations, only describe connecting the master and slave modems over physical wires, such as a telephone line, and make no mention of wireless communications, but the claims recite that the two modems are connected via a “communications path.”
Issue at trial: The central dispute during claim construction was whether the recited “communications path” captures wireless communications or is limited to wired communication.
Ruckus argued “that its wireless equipment does not infringe the Terry patents because the Terry patents are limited to wired rather than wireless communications.”
The district court’s claim construction: The district court based its claim interpretation on intrinsic evidence, primarily the specification, which repeatedly refers to “two-wire lines and telephone lines,” and with respect to alternative embodiments says that “although as described here the line 12 is a telephone subscriber line, it can be appreciated that the same arrangement of master and slave modems operating in accordance with the new protocol can be used to communicate Ethernet frames via any twisted pair wiring which is too long to permit conventional 10BASE-T or similar LAN interconnections.”
The district court construed “communications path” to mean “communications path utilizing twisted-pair wiring that is too long to permit conventional 10BASE-T or similar LAN (Local Area Network) interconnections.”
The CAFC’s opinion: Because the district court relied on intrinsic evidence, its claim construction was a legal determination reviewed de novo by the CAFC.
Claim interpretation is based on the ordinary and customary meaning of the words in a claim, which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention,” but importantly, within the context of the patent. The CAFC pointed out that it is legal error to rely “on extrinsic evidence that contradicts the intrinsic record.”
IWS presented three arguments on appeal:
- The district court imported the wired limitation into the claims, thereby committing reversible error.
- The district court read a “wired” limitation into the claims on the basis that every disclosed embodiment was wired, thereby committing reversible error.
- Several dependent claims limited the communications path to wired lines, so the doctrine of claim differentiation requires that the independent claims to be interpreted not to be so limited.
Ruckus argued that “communications path” does not actually have a plain and ordinary meaning to a person of ordinary skill in the art and that the specification limited the scope of “communications path” to a wired connection. It also countered the “claim differentiation” argument by pointing out that the type of wired line recited in the dependent claims is only one of several types disclosed in the specification, so that all that the doctrine of claim differentiation requires is that the “communication path” not be limited to the type of wired line recited in the dependent claims.
The CAFC agreed with Ruckus that IWS could not point to any intrinsic or extrinsic evidence in support of an ordinary meaning for “communications path” encompassing both wired and wireless communications, and that the dependent claims merely exclude other types of wired communications disclosed in the patents; and agreed with the district court that the intrinsic evidence (specifically, the specification’s description of the invention) strongly supported an understanding that “communications path” must be a wired connection.
Finally, the CAFC pointed out that the canons of claim construction require that “if, after applying all other available tools of claim construction, a claim is ambiguous, it should be construed to preserve its validity”; but that “[b]ecause the specification makes no mention of wireless communications, construing the instant claims to encompass that subject matter would likely render the claims invalid for lack of written description.”
The CAFC accordingly affirmed the district court’s claim interpretation and final judgment of noninfringement.
Dissent: The dissent states that the district court’s judgment should have been vacated and the case remanded to the district court to provide the parties an opportunity to present extrinsic evidence on the meaning of “communications path.”
Take-away
When preparing an application, check dictionaries and do an online search to verify that terms used to designate elements of the invention have a well-understood meaning. If a term does not have a well-understood meaning, be aware that descriptions of the element and its embodiments may be viewed as implicit definitions that limit its scope.
Tags: claim construction > claim differentiation > extrinsic evidence > intrinsic evidence > ordinary meaning
