A Patent Survives an IPR
| February 10, 2016
Trivascular, Inc. v. Shaun L. W. Samuels
February 5, 2016
Before: Moore, O’Malley, and Wallach. Opinion by O’Malley
Summary
This decision provides a good summary of issues which a patent practitioner may face when prosecuting a patent application or an inter partes review (IPR). In particular, the decision provides insight on claim construction from the viewpoints of “broadest reasonable interpretation” and prosecution history disclaimer. Furthermore, the decision provides insight on making an obviousness analysis when arguing that a reference teaches away or that a combination of references would destroy the objective of the reference.
Guidance on the standard for “reasonable certainty” in an indefiniteness evaluation
| February 4, 2016
Akzo Nobel Coatings, Inc. v. Dow Chemical Co.
January 29, 2016
Before Lourie, Reyna and Chen. Opinion by Lourie.
Summary
The CAFC affirmed the District Court’s holding that the claims of the ‘956 patent are valid and not indefinite and affirmed the holding that the process of Dow does not infringe, either literally or DOE, the ‘956 patent. This case provides additional guidance on the reasonable certainty standard of Nautilus.
Tags: claim construction > doctrine of equivalents > indefiniteness > literal infringement
Threshold of notice requirement for “A-delay” in PTA determination
| February 3, 2016
Pfizer Inc. v. Lee
January 22, 2016
Before: Newman, DYK and O’Malley. Opinion by O’Malley. Dissenting opinion by Newman.
Summary
Appellants (Pfizer) challenged the district court’s decision that denied their motion for acquiring additional part of A-delay by excluding a withdrawn office action as non-event for the A-delay. CAFC affirmed the district court’s decision.
35 U.S.C. § 154(b)は出願後14カ月以内に「at least one of the notifications under section 132」（いわゆるオフィスアクション）が出願人に通知されない場合は、その遅れた分の特許期間延長を認める（PTAのA-delayと呼ばれる）。本件では、最初のオフィスアクションとしてリストリクション要求（クレームに複数の発明が記載されていると認定すると審査官は特定の発明を出願人に選択させる要求）が審査官から出された。ところが、発明分類から漏れた従属クレームがあったため、審査官は最初のリストリクション要求を取り下げて、訂正したリストリクション要求を出し直した。特許庁は、初回と訂正の2つのリストリクション要求の間の197日をPTAのA-delayとして加えることなく、最初のリストリクション要求の送達日に基づいてPTAの計算を行った。連坊地裁において、特許権者は訂正リストリクション要求の日を基準にPTAを計算するべきであり、197日の追加を主張した。連邦地裁は197日を認めない判決を出した。
CAFCは地裁の判断を支持した。CAFCの多数意見は、35 U.S.C. § 154(b)の要件を緩く解釈し、「at least one of the notifications under section 132」の内容が広い意味での拒絶原因（“the broad statutory basis for the rejection”）と、出願人が応答可能な程度の情報量（sufficient information）を提示している場合に該当するので、本件の最初のリストリクション要求は、35 U.S.C. § 154(b)が要求する「通知」であると判断した。従属クレームの欠落程度は、出願人が応答できないほどの不備ではなく、審査官とのやり取りの結果リストリクション要求が出し直されたが、これは審査での通常のやり取りの範囲内であり、最初のリストリクションが取り下げられたという事実だけをもってして、特許期間の延長を認めないという判断である。これに対して、Newman判事はオフィスアクションの不備は出願人の責任ではなく、あきらかに特許庁の責任であり、特許期間の延長を認めるべきとの反対意見を述べた。
Timeliness and relevance are not sufficient conditions for automatically granting a motion to submit supplemental information after IPR institution
| January 29, 2016
Redline Detection, LLC. v. Star Envirotech, Inc.
December 31, 2015
Before Wallach, Lourie, and Hughes. Opinion by Wallach.
Summary
The Federal Circuit held that, with regard to the motion to submit supplemental information after the IPR is instituted, the two criteria in section 37 CFR 42.123(a), timeliness and relevance, are not sufficient conditions for automatically granting a motion to submit supplemental information.
Tags: IPR > Motion to Submit supplemental information > obviousness > smoke generating device
In a post-Williamson decision, “compliance mechanism” is a means-plus-function element that does not comply with the requirements under §112.
| January 20, 2016
Media Rights Technologies, Inc. v. Capital One Financial Corp.
September 4, 2015
Before O’Malley, Plager, and Taranto. Opinion by O’Malley.
Summary
In Williamson v. Citrix Online, LLC, the Federal Circuit relaxed the presumption against interpreting a claim element as a means-plus-function element in the absence of the word “means”. In this first decision applying the Williamson standard, the Federal Circuit interpreted the claim term “compliance mechanism” as a means-plus-function element within the scope of §112, 6th paragraph.
Computer Implemented Means-Plus-Function Terms Must be Supported by an Algorithm in the Specification
| January 14, 2016
Eon Corp. IP Holdings LLC v. AT&T Mobility LLC
May 6, 2015
Before Prost, Newman and Bryson. Opinion by Prost.
Summary
The Federal Circuit held that the Katz exception did not apply. According to the Federal Circuit, a microprocessor or general purpose computer, under the Katz exception, lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm. Because Katz exception did not apply, the Federal Circuit found the claims indefinite because the disclosure of a microprocessor alone in the specification did not provide sufficient structure to the means-plus-functions terms at issue
When inventors are wrong, a certificate of correction can set things right—if the specification is robust
| January 7, 2016
Cubist Pharmaceuticals, Inc. v. Hospira, Inc.
November 12, 2015
Precedential Opinion by Bryson, joined by Wallace and Hughes
Summary:
In prosecution of a claim reciting an antibiotic, a certificate of correction to correct an error in a structural diagram of the antibiotic was not invalid. This was because the specification adequately described the intended subject matter, and it was clear to those skilled in the art that the inventors were in possession of the corrected structure. As such, the certificate of correction did not alter the scope of the claims.
PTAB Decision to Institute a CBM is Final and Non-Appealable
| December 17, 2015
SightSound Technologies, LLC v. Apple Inc.
December 15, 2015
Precedential Opinion by Dyk, joined by Lourie and Hughes.
Summary
Apple filed petitions with the PTAB seeking CBM review of patents owned by SightSound under AIA. In the petitions, Apple argued that certain claims of the patents were invalid as anticipated under 35 U.S.C. § 102. The Board instituted CBM review finding that there was a reasonable likelihood that the asserted claims were anticipated or rendered obvious by prior art. However, while Apple’s petitions included alleged facts to support obviousness, the petitions did not specifically allege obviousness over the prior art. The Board initiated review on obviousness grounds anyway. During the CBM proceedings the Board gave SightSound extra time to respond to the obviousness grounds, but SightSound argued that it has been deprived due process to respond to the obviousness grounds on which the CBM review had been instituted. The PTAB entered a final decision based on the obviousness grounds from which SightSound appeals to the CAFC, but the CAFC rules that they are barred under 35 USC 314(d) and 35 USC 324(e) from reviewing the decision to initiate the CBM proceedings.
Tags: 35 USC 314(d) > 35 USC 324(e) > CBM > Covered Business Method > Due process > inter partes review > IPR > Post Grant Review
Definitional Language In The Specification May Be Fully Determinative Of Claim Construction
| December 9, 2015
CardSoft, LLC v. VeriFone, Inc.
December 2, 2015
CAFC Panel and opinion author: Prost, Taranto, and Hughes, Opinion by Hughes
Summary
On remand from the Supreme Court, the Federal Circuit again reverses the district court’s construction of the term “virtual machine” and gives “virtual machine” its ordinary and customary meaning, resulting in a judgment of no infringement.
Tags: claim differentiation > de novo > extrinsic evidence > ordinary and
Tense Decision: CAFC Reverses PTAB Decision Based on the Meaning of the Word “Is”
| December 2, 2015
Straight Path IP Group, Inc., v. Sipnet EU S.R.O.
November 25, 2015
CAFC Panel and opinion author: Before Dyk, Taranto, and Hughes. Opinion for the court filed by Taranto. Opinion concurring in part and dissenting in part filed by Dyk.
Summary: In an appeal from an Inter Partes Review, the CAFC reversed the Board’s decision cancelling claims 1-7 and 32-42 based on determinations of anticipation and obviousness, and remanded for further proceedings under a new claim construction.
Details
I. Background
Straight Path IP Group, Inc. (Straight Path) owns U.S. Patent No. 6,108,704, (“the ‘704 patent”) which describes protocols for establishing communication links through a network.
Sipnet EU S.R.O. (Sipnet) filed a petition for inter partes review against the ‘704 patent, and the PTAB instituted a review. Straight Path contended that the relevant prior art references (NetBIOS and WINS) do not read on the patent claims because the claims require a real-time check, which is not disclosed by the references. Relying on the specification, which indicates that the database only need be “relatively current,” (col. 5, lines 39-42) the PTAB rejected this construction and determined that according to the broadest reasonable interpretation (BRI standard) in light of the specification (1) claims 1-7 and 32, and 38-42 are anticipated by NetBIOS, (2) claims 1-7 and 32-42 are anticipated by WINS, and (3) claims 33-37 are obvious over NetBIOS and WINS. Sipnet EU S.R.O. v. Straight Path IP Group, Inc. (IPR2013-00246). The PTAB adopted Signet’s view under the BRI standard in view of the specification, namely that “is connected to the computer network encompasses a processing unit that is ‘active and on-line at registration” and reached its conclusion in part because Straight Path agreed that the second process was “active and on-line” at least at registration in both NetBIOS and WINS.
Claim 1 is representative of the asserted claims (emphasis added to highlight the key claim phrase at issue):
1. A computer program product for use with a computer system, the computer system executing a first process and operatively connectable to a second process and a server over a computer network, the computer program product comprising:
a computer usable medium having program code embodied in the medium, the program code comprising:
program code for transmitting to the server a network protocol address received by the first process following connection to the computer network;
program code for transmitting, to the server, a query as to whether the second process is connected to the computer network;
program code for receiving a network protocol address of the second process from the server, when the second process is connected to the computer network; and
program code, responsive to the network protocol address of the second process, for establishing a point-to-point communication link between the first process and the second process over the computer network.
On appeal, the patentability issues ultimately depend on the construction of the term “is connected to the network.”
II. Decision
a. The CAFC reversed the PTAB’s cancellation of the challenged claims and remanded for further proceedings based on a new claim construction
In a 2-1 decision, a majority seized on the present tense meaning of “is” in the claim language and held that the PTAB’s construction of the disputed phrase “is not a reasonable interpretation of the claim language, considering its plain and ordinary meaning.”
According to the majority, “the query required by the claim language asks if the callee ‘is’ online, which is a question about the status at the time of the query. But the [PTAB] did not address the facially clear meaning, instead turning immediately to the specification.” The majority highlighted that in this situation, “the specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant aspects.” Regardless, the majority stated that the specification does not provide a basis for reasonably adopting a construction that contradicts the plain meaning of the claim language (i.e., passage relied upon by PTAB says nothing more than that the unit is active and online – available for communication – at the time it registers.) The majority also jumped on an exchange at oral argument wherein Sipnet’s counsel agreed that “[w]hen somebody registers, that registration means, right then and there, they’re active and online” and “[t]hat could be out of date (a day later)”. The majority also emphasized that “the plain meaning is positively confirmed by the prosecution history, which we have indicated is to be consulted even in determining a claim’s broadest reasonable interpretation.” The majority cited arguments made by Straight Path to overcome a rejection during reexamination (e.g., “NetBIOS does not teach that an active name in NetBIOS is synonymous with ‘whether the second process is connected to the computer network.’”)
Sipnet’s attempt to challenge the claim language for not adequately describing or enabling the systems or processes involving a query about current connection status under Straight Path’s claim construction was rejected by the majority, which pointed out that the statute limits IPR challenges to prior-art, not written-description and enablement. 35 U.S.C. 311(b).
Straight Path’s challenge that PTAB failed to construe “process” was rejected because it did not preserve that contention, e.g., did not request construction in its preliminary response, in its response after the PTAB initiated review, or at the oral hearing before the PTAB.
The majority therefore remanded this case to the PTAB in order to apply the construction – “is connected to the computer network at the time the query is transmitted to the server” – in considering the prior art, including NetBIOS and WINS.
b. Dissent – The word “is” does not require “absolute currency”
In a separate opinion, J. Dyk dissented from the majority’s claim construction of the term “is connected to the computer network” to require absolute currency in a real-time assessment of connectivity.
First, using the following hypothetical example, J. Dyk argued that ordinary usage easily accommodates the Board’s interpretation of “is connected.”
“If a person says that ‘John is at home,’ this might lead to the question: ‘How do you know?’ The response ‘I spoke to him five minutes ago’ would not be viewed as contradicting the original statement, even though John might have left home in the intervening five minutes. In other words, the use of the word ‘is’ does not necessarily imply absolute accuracy or absolute currency.”
J. Dyk continued by attacking the majority for minimizing the role of the specification during claim construction. “[U]nder the Phillips approach, we must look to the specification as the ‘single best guide to the meaning of a disputed term.’ This is true, contrary to the majority’s assertion, even in cases were language, on its face, appears to have a plain meaning, because, as Phillips states, the specification ‘is always highly relevant to the claim construction analysis.’” (emphasis added).
J. Dyk points out that the specification “describes that, when a query is received, the server ‘searches the database … to determine whether the callee is logged-in by finding any stored information corresponding’ to that queried user” (emphasis added) … and that “[t]his information in the database, as described in the specification, is kept ‘relatively current.” According to J. Dyk, checking historical “relatively current” information in a database is not a “real time” determination and that there is no disclosure in the specification that would warrant construing “is connected” to require absolute accuracy, as required by the majority.
Lastly, J. Dyk argued that the majority’s insistence that “is” requires absolute currency is contrary to this Court’s prior decision in Paragon Solutions, LLC v. Timex Corp 566 F.3d 1075 (CAFC 2009), holding that a reference to “real time” does not necessarily require absolute currency.
Take Away
• The PTAB will interpret claims of an unexpired patent using the broadest reasonable interpretation (BRI) in light of the specification. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); 37 CFR 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279 (CAFC 2015).
• The BRI standard does not apply to expired patents (e.g., when a patent term expires during the PTO-litigation proceeding). Instead, the claim construction standard moves to a standard “pursuant to the principle set forth by the court in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (words ‘are generally given their ordinary and customary meaning’ as understood by a person of ordinary skill in the art in question at the time of the invention)” [MPEP §2258.I.G].
• Consider advancing claim constructions under the BRI standard and the Phillips standard if there is a chance that a patent in a PTO-litigation proceeding will expire before the end of the proceeding.
• Typical assumption – The Phillips standard results in a narrower construction than the BRI standard. However, in this case, both the majority and dissent concluded there is “no significant difference between the Phillips and BRI standards.”
• Always be prepared to answer questions at oral hearing (CAFC and PTAB). Here, the majority seized on an exchange between Sipnet’s counsel and the Court to support its claim construction position.
• A Final Written Determination is not necessarily final. The CAFC has reversed two PTAB decisions invalidating claims, in addition to reversing other PTAB decisions validating claims.
• Claim drafting – Words matter. Tense matters. Recognize the significance.
Tags: broadest reasonable interpretation > inter partes review
