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
CAFC emphasizes “would have motivation” in obviousness determinations from Inter Partes Reviews
| November 11, 2015
Belden, Inc. v. Berk-Tek, LLC
November 5, 2015
CAFC Panel and opinion author: Before Newman, Dyk and Taranto. Opinion by Taranto
Summary:
In an appeal from an Inter Partes Review, the CAFC rejected all claims of the ‘503 patent as being obvious over the prior art, emphasizing that the test for obviousness focuses on whether the skilled artisan would have a motivation to modify or combine the prior art disclosures to reach the claimed invention. The Court further upheld the authority of the Board to allow for consideration of a late filed Declaration by the Petitioner.
Digital data is not considered “article” within the meaning of Section 337
| November 11, 2015
Clearcorrect Operating, LLC, et al. v. ITC, et al.
November 10, 2015
Judges: Prost, Newman, O’Malley
Majority opinion by Prost
Concurring opinion by O’Malley
Dissenting opinion by Newman
Summary
The Congress enacted 19 U.S.C. §1337 (“Section 337”) to regulate international commerce, intending it to be an enforcement statute to stop at the border the entry of goods, i.e., articles, that are involved in unfair trade practices. In this case, the purported “article” found to have been imported was digital data that was transferred electronically. The CAFC’s majority opinion concluded that digital data is not considered “article” covered by Section 337, and therefore, ITC does not have jurisdiction over the case.
19 U.S.C. §1337（337条）は、侵害製品等、不公正な貿易に関わる製品を国境において差し止めることを目的とする、通商を規制する法律である。本件において、ITCは、電子的に米国内に輸入されたデジタルデータは特許を侵害しているため、337条違反が行われたと認定した。しかし、CAFCは、電子データは、337条の「製品（article）」の定義には当てはまらないとして、国境を越えて輸入された電子データは、ITCの管轄下ではないと結論付けた。
Timeliness of IPR petition under §315(b) is an issue of whether to initiate the proceeding, and Board’s determination is nonappealable under §314(d), and the court cannot review it.
| October 21, 2015
Achates Reference v. Apple Inc.,
September 30, 2015
CAFC Panel and Opinion Author: PROST, LOURIE and LINN (Author)
Summary
The patentee, Achates sued QuickOffice and others for patent infringement. One year later, Achates joined Apple as a codefendant. Several months later, Apple filed petitions for IPR in USPTO against each of the patents. Achates argued that Apple had a relationship with QuickOffice based on their blank indemnification agreement and that such relationship caused Apple’s petitions for IPR to be time-barred under 35 U.S.C. § 315(b). CAFC held that timeliness of the petition for IPR under §315(b) is an issue of whether to initiate the proceeding, and Board’s determination is nonappealable under §314(d), and the court cannot review it.
特許権者のAchates社は、QuickOffice社らに訴状を送達してから1年後にApple社を原告として追加した。数ヵ月後Apple社は米国特許庁に当事者系レビューの請求を提出した。Achates社は、Apple社は最初の被告QuickOfficeから賠償保証を受ける契約をしているので、QuickOfficeの関係者であり、当事者系レビューの請求は米国特許法315条(b)に規定する期限を徒過していると主張した。CAFCは、当事者系レビューの請求が、期限内に提出されたかどうかは、当事者系レビューを開始するかどうかに関する問題であり、審判部の決定は、314条(d)の規定により、裁判所が見直すことはできないと判示した。
Tags: 35 U.S.C. §314(d) > 35 U.S.C. §315(b) > appeal of decision whether to institute IPR > IPR
A guide for the international patent attorney: how to read the recent CAFC en banc decision on laches–a viable defense against patent infringement, for the time being
| October 19, 2015
SCA Hygiene Products Aktiebolag v. First Quality Products, LLC
September 18, 2015
Introductory note from the author of this review: When I read this decision, it struck me that the legal analysis is based on concepts and distinctions which may not be clearly appreciated by someone not familiar with the “common law” tradition, the co-existence of remedies “at law” and remedies in “equity”, and the underlying principle of “separation of powers” in the federal government in the U.S. This en banc decision is very important, so there have been already numerous reports on the decision. I hope to contribute, in the form of the interspersed “notes” below, background information which may shed more light on the decision for our international colleagues. Le-Nhung McLeland
En banc decision: Opinion for court by Prost, joined by Newman, Lourie, Dyk, O’Malley, and Reyna. Opinion concurring-in-part, dissenting-in-part by Hughes, joined by Moore, Wallach, Taranto, and Chen. Judge Stoll did not participate in decision.
Note: Twenty three “amicus curiae” briefs were received in this case, which is a measure of its importance. The briefs were submitted on behalf of patent professional associations, as well as a broad range of corporations including Hewlett-Packard, Intel Corporation, Xerox Corporation, Johnson & Johnson, AT&T Mobility II LLC, T-Mobile USA, Roche Molecular Systems, Harley-Davidson Motor Company, and Rockwell Automation, Inc. The en banc majority refers to some of these briefs, in the body of the opinion or in footnotes.
Board’s Jurisdiction Over Examiner’s Decision Of Not Finding Substantial New Question Made As To Claims Added Or Amended After Institution Of Reexamination
| September 30, 2015
Airbus S.A.S. v. Firepass Corp.
July 17, 2015
Before: Lourie, Dyk and Moore. Opinion by Laurie
Summary:
In response to a patent infringement litigation brought by Firepass, Airbus requested inter partes reexamination with proposed anticipation rejections based on three prior arts. The PTO instituted reexamination based on one prior art but did not find substantial new question as to other two prior arts. During reexamination, Firepass added claims 91-94. In response, Airbus proposed obviousness rejections to claims 91-94 over the previously submitted three prior arts. Examiner did not find substantial new question of patentability. Airbus appealed but the Board dismissed because the Board did not have jurisdiction over the issue of lack of substantial new question of patentability. CAFC reversed because the Board applied incorrect rule which is only applicable before institution of reexamination. Newly added or amended claims during reexamination should be controlled by different rule (37 C.F.R. §1.948(a)(2)).
Firepass 社によって提起された特許侵害訴訟に対抗して、Airbus社は当事者系のリイグザミネーションを請求した。特許の無効理由は、3件の先行技術に基づく新規性であった。米国特許庁は、そのうち1件の先行技術による新たな特許性の疑義(substantial new question of patentability)を認めてリイグザミネーションを開始したものの、他の2件の先行技術については無効理由として不十分と判断した。リイグザミネーションの途中でFirepass社はクレーム91−94を追加した。これに対して、Airbus社は、先の3件の先行技術に基づく自明性の拒絶を提案した。審査官は、Airbus社の提案に新たな特許性の疑義を認めなかったため、Airbus社はアピールをした。米国特許庁審判部は、新たな特許性の疑義の問題は管轄外であるとしてAirbus社の請求を却下した。CAFCは、「いったんリイグザミネーションが開始された場合、その後に追加されたあるいは補正されたクレームに対して提出できる先行技術の問題は、規則1.948(a)(2)によって判断されるべきであり、特許庁審判部は適用すべきルールを誤った。」と判断し、Airbus社の提案した自明性の拒絶によってクレーム91～94が拒絶されるか否か検討するよう事件を差し戻した。 コメント：リイグザミネーションの請求時に無効理由が見つからず採用されなかった弱い引例であっても、他の引例でリイグザミネーションが開始された後に新しいクレームが追加されたり、あるいはクレームが補正された場合には、リイグザミネーションの請求者は、当該採用されなかった引例を再度使用して、それらの追加・補正クレームに対する拒絶理由を主張できる。
Intent of Amendment is Irrelevant for Determining Intervening Rights
| September 29, 2015
R+L Carriers, Inc. v. Qualcomm, Inc.
September 17, 2015
Before: Newman, O’Malley and Wallach. Opinion by O’Malley.
Summary:
R+L Carriers (“R+L”) sued Qualcomm for patent infringement and subsequently filed an ex parte reexamination for the patent based on prior art identified by a third party. R+L amended the claims in the patent and argued that the amendment was merely a clarifying amendment that did not change the scope with respect to whether a step in the process is done manually or by computer. Qualcomm argued that the prior art disclosed performing the step manually, and thus, the claim must now be narrowed such that the step is performed only by computer. The CAFC held that reasons for an amendment in a reexamination are irrelevant with regard to intervening rights. The inquiry is strictly with regard to whether the claim scope of the amended claim is narrower than the original claim regardless of reasons for an amendment.
Details:
Legal Principles:
1. Intervening rights are described in 35 U.S.C. § 252 for reissued patents and § 252 is applicable to reexamined patents under § 307(b). A patentee of a patent that survives reexamination is only entitled to infringement damages for the time period between the date of issuance of the original claims and the date of issuance of the reexamined claims if the original and the reexamined claims are “substantially identical.”
2. “Identical” in § 252 does not mean verbatim. The determination is made by considering “whether the scope of the claims are identical, not merely whether different words are used.” The determination of whether an amended claim is narrower is whether there is any product or process that would infringe the original claims, but not infringe the amended claim.
Case details
R+L Carriers (“R+L”) sued Qualcomm for infringement of U.S. Patent No. 6,401,078 (“the ‘078 patent”). While the case was pending, R+L requested ex parte reexamination of the ‘078 patent based on prior art identified by a third party. The ‘078 patent is to an improved method of consolidating freight into trailers to optimize delivery efficiencies for the loads in each trailer. The patent describes two methods for getting the load planning information from the transmission and preparing loading manifests: (1) a computerized system automatically interpreting the data; and (2) a data entry clerk manually reviewing the information.
In the reexam, claim 1 was amended after being rejected as anticipated by a prior art reference from N&M Transfer company (“N&M”). N&M teaches a method for transferring shipping documentation data for a package from a transporting vehicle to a remote processing center. Claim 1 was amended as follows:
1. A method for transferring shipping documentation data for a package from a transporting vehicle to a remote processing center comprising the steps of:
placing a package on the transporting vehicle;
using a portable document scanner to scan an image of the documentation data for the package, said image including shipping details of the package;
providing a portable image processor capable of wirelessly transferring the image from the transporting vehicle;
wirelessly sending the image to a remote processing center;
receiving the image at said remote processing center; and
prior to the package being removed from the transporting vehicle, utilizing said documentation data at said remote processing center to prepare [a] an advance loading manifest document for another transporting vehicle which includes said package for further transport of the package on another transporting vehicle.
The PTO allowed the claim because the prior art reference only discussed a “manifest for the current shipping vehicle and not an advance loading manifest document for another transporting vehicle.”
The district court found that the amendment to the claims of R+L’s patent “substantively narrowed” the claim precluding recovery of damages for infringement prior to issuance of the reexam certificate. The district court stated that the ‘078 patent discloses both manual and computerized extraction of information and preparation of loading manifests, and the N&M prior art reference only discloses manual entry. The district court reasoned that the amendment adding the word “advance” was added to get around the N&M reference, and thus, claim 1 must include only computerized processing.
R+L argued that “loading manifests” in claim 1 was always limited to computerized processing. R+L stated that they only amended claim 1 to overcome the N&M reference by clarifying that the loading manifest must be a document for another transporting vehicle, rather than the current vehicle, and thus, the narrowing on which the district court relied for its judgment actually never occurred.
The CAFC held that claim 1 was substantively changed. However, it was not substantively changed due to a change to only computerized processing as argued by Qualcomm. Original claim 1 and amended claim 1 are broad enough to encompass both manual and computerized processing. The term “advance” was added to the claims for reasons unrelated to the format for preparing the loading manifests. Furthermore, speculation about what R+L was attempting to accomplish with regard to the N&M reference is irrelevant.
The CAFC held that the claim was substantively changed in a different way. In the reasons for allowance, the Examiner highlighted the claim 1 limitation reciting that the manifest is for another transporting vehicle as opposed to the current shipping vehicle as in the prior art. The Examiner did not comment on whether computerized processing was used. The CAFC stated that the Examiner’s commentary regarding why the claim was allowed reveals a method that would be covered by original claim 1 but not amended claim 1, i.e., the process of preparing a loading manifest “for the current shipping vehicle.”
For further support, the CAFC noted that during the reexamination, R+L stated in their interview summary that addition of “loading manifest document for another transportation vehicle” resulted in an agreement that the amendment would overcome the prior art. Thus, even if the amendment was added merely for “clarity” as argued by R+L, they understood that they were limiting the scope of their claim to get around the prior art. Therefore, the CAFC concluded that amended claim 1 is not “substantially identical” to original claim 1 and R+L is not entitled to infringement damages prior to issuance of the reexamination certificate.
Comments:
In a reexamination or other post-grant review, a patent owner should be careful with amending claims and should limit discussion on the amendment as much as possible to preserve a possible damages award for the period prior to the reexamination certificate.
An accused infringer should consider requesting an ex parte reexamination or other post-grant review. Even if an accused infringer is not successful in invalidating a patent in a reexam or other post-grant proceeding, if the patent owner is forced to amend claims, damages may be reduced or eliminated. In addition, an amendment to the claims may make the accused product, device method, etc., no longer infringing.
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