Claimed Narrow Range Must Be Shown To Be Critical To Operability Of Invention To Avoid Anticipation By Broader Range
| April 27, 2015
Ineos USA LLC v. Berry Plastics Corp.
April 16, 2015
Before: Dyk, Moore and O’Malley. Opinion by Moore.
Background: Appeal from U.S. District Court for Southern District of Texas which granted summary judgment that patent asserted by Ineos is invalid for anticipation.
Summary:
U.S. Patent No. 6,846,863 (the ‘863 patent) claims a polyethylene-based composition which can be used to form shaped products, in particular bottle caps. The composition contains a lubricant to optimize the cap’s slip properties. The ‘863 patent asserts that the composition does not impart a bad odor and flavor to food products stored in contact with the composition, which is an improvement over prior art polyethylene composition containing a lubricant.
Claim 1 is the only independent claim:
1. Composition comprising at least
[1] 94.5% by weight of a polyethylene with a standard density of more than 940 kg/m3,
[2] 0.05 to 0.5% by weight of at least one saturated fatty acid amide represented by CH3(CH2)nCONH2 in which n ranges from 6 to 28[,]
[3] 0 to 0.15% by weight of a subsidiary lubricant selected from fatty acids, fatty acid esters, fatty acid salts, mono-unsaturated fatty acid amides, polyols containing at least 4 carbon atoms, mono or poly-alcohol monoethers, glycerol esters, paraffins, polysiloxanes, fluoropolymers and mixtures thereof, and
[4] 0 to 5% by weight of one or more additives selected from antioxidants, antacids, UV stabilizers, colorants and antistatic agents. (emphasis added)
The CAFC opinion inserted the bracketed numbers into the claims to identify the components of the composition. In addition to the base polyethylene (component 1), the only required component is the specifically defined saturated fatty acid amide (component 2, which serves as a primary lubricant.)
Claim 1 recites a range of 0.05 to 0.5% by weight for the lubricant. Berry asserts that claim 1 is anticipated by U.S. Patent No. 5,948,846 (the ‘846 reference patent) which discloses a polyethylene based composition containing stearamide, a compound falling within the group of saturated fatty ester amide (2) recited in claim 1 of the ‘863 patent. The broad range of 0.1 to 5 parts by weight disclosed in the ‘846 reference patent for component (2) overlaps with the relatively narrow range recited in claim 1 of the asserted patent, as shown below (not to scale):
The ‘846 reference patent also describes the amount of the lubricant as being “at least 0.1 part by weight per 100 parts of polyolefin, in particular of at least 0.2 parts by weight, quantities of at least 0.4 parts by weight being the most common ones”.
The district court found claim 1 and the dependent asserted claims to be anticipated by the ‘846 reference patent, and granted summary judgment for Berry Plastics.
The Supreme Court’s Recent Lowering of the Evidentiary Standard for Awarding Legal Fees in the Octane Case Turns-Up the Heat on Aggressive Patentees
| April 24, 2015
Oplus Technologies, Ltd. v. Vizio, Inc.
April 10, 2015
Before: Prost, Moore, and O’Malley. Opinion by Moore.
Summary
Despite the district court’s determination that non-practicing-entity-plaintiff Oplus Technologies, Ltd.’s counsel, Niro, Haller & Niro, had engaged in “exceptional” litigation misconduct, the district court determined that attorney fees should not be awarded to defendants. Upon appeal by defendant Vizio, Inc. of the denial of attorney fees, the Federal Circuit vacated and remanded the decision back to the district court to force the district court to reconsider its decision not to award attorney fees in light of the district court’s own fact findings showing a high extent of harassing, unprofessional and vexatious misconduct of plaintiff’s counsel and in view of the Supreme Court’s subsequent changing of the evidentiary standard for awarding legal fees in the Octane case to a preponderance of the evidence standard from the former clear and convincing evidence standard.
Tags: attorney fees > exceptional case > expert witness fees > legal fees > non practicing entities > npe
Claim terms narrowed by prosecution record
| April 23, 2015
Vasudevan Software, Inc., v. MicroStrategy, Inc.
April 3, 2015
Before: Chen, Linn and Hughes. Opinion by Linn.
Summary:
The claims of the patents at issue recite a system that accesses “disparate … databases.” The CAFC stated that while this term means “incompatible,” the plain meaning of the term and the specification do not explain how extensive that incompatibility must be. The district court analyzed statements in the prosecution history regarding this term and the arguments made for distinguishing the prior art to construe the term. The CAFC affirmed the district court’s claim construction. The CAFC also reversed the district court’s summary judgment of invalidity regarding written description and enablement, and remanded to the district court.
The act of contemplation then creates the thing created (Isaac D’Israeli).
| April 21, 2015
Kennametal, Inc., v. Ingersoll Cutting Tool Company.
March 25, 2015
Before: Newman and Linn. Opinion by Linn.
Summary:
The CAFC affirmed the decision of the Patent Trial and Appeal Board (the “Board”) in an inter partes reexamination of U.S. Patent No. 7,244,519 (the ‘519 Patent) in which the Board (i) entered a new anticipation ground of rejection asserted by Ingersoll over US. Patent No. 6,554,548 (Grab); and (ii) affirmed the Examiner’s obviousness rejection.
The CAFC held that “contemplation” of a method in a prior art reference is sufficient disclosure for a rejection under §102. The CAFC further held that a finite number of solutions were present in Grab for the specific claimed combination, and that the motivation to select the specific combination was not undermined by the known problem of cobalt capping.
Claim term “at least one component of [a unit]” excludes the entire unit – expert testimony cannot override intrinsic evidence
| April 17, 2015
Enzo Biochem Inc. v. Applera Corp. (Precedential)
March 16, 2015
Before: Prost, Newman and Linn. Opinion by Prost, Dissent by Newman.
Summary
In this case, grammatical construction and invention “purpose” beat expert testimony and claim differentiation, leading to reversal of the District Court’s claim interpretation.
One might have thought that the Federal Circuit would make a point of carefully applying the different standards of review when a District Court’s claim construction relied in part on extrinsic evidence (“clear error” for findings based on extrinsic evidence, instead of “de novo” review for intrinsic evidence, see Teva Pharm. USA, Inc. v. Sandoz, Inc. (Jan. 20, 2015)).
This decision suggests a different trend, toward minimizing the importance of extrinsic evidence in claim interpretation, which allows the Federal Circuit to maintain its customary high level of scrutiny.
CAFC Finds Proof of Damages Inadequate
| March 31, 2015
Warsaw Orthopedic v. NuVasive
March 2, 2015
Before Dyk, Lourie & Renya. Opinion by Dyk.
Procedural History
After a trial, the jury issued a verdict finding the patents valid and infringed, and awarded damages to the patentee Warsaw ($101,196,000 identified as total damages) to be paid by the infringer NuVasive. The trial judge sustained the verdict and issued a judgment in favor of the patentee. On appeal, the CAFC affirmed the judgment in favor the patentee, with respect to the validity and infringement issues. On the question of damages, however, the CAFC vacated the judgment and sent the case back to the trial judge for a new trial on reasonable royalty.
A Computer Implemented Method Is Found Obvious – (But Likely Would Have Been Challenged As Patent-Ineligible Post-Alice)
| March 20, 2015
In Re Thomas C. Chuang
February 10, 2015
Before Reyna, Mayer, and Chen, per curiam.
Thomas Chuang had experienced some early success in ex parte prosecution by seeking appeals before the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board). In response to an initial appeal[1], the Examiner reopened prosecution by rejecting claims as obvious under §103 and rejecting certain claims under §101 as non-statutory. Mr. Chuang appealed again, and was successful in having the Board reverse the rejection under §101 (without the benefit of the later decided Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2358 (2014)), but the Board maintained the rejection under §103. Mr. Chuang appealed the rejection under §103 to the Federal Circuit, in which the review was confined to the obviousness rejection under §103.
Independent claim 1 of Chuang’s application is directed to a computer implemented method as follows:
A computer implemented method for managing rented downloaded content comprising:
[a] presenting a user with a content descriptor associated with a downloadable content downloadable to the user available to rent at a rental price and purchase at an initial purchase price;
[b] receiving a user rental request to rent the downloadable content at the rental price;
[c] initiating downloading of the downloadable content to the user at a user computer responsive to receiving the user rental request, the downloadable content including a use limitation comprising an expiration date;
[d] generating a user data structure comprising:
[i] one or more content descriptors associated with previously downloaded content rented by the user; and
[ii] a status identifier for each content descriptor, the status identifier comprising the expiration date;
[e] maintaining a database of user data structures corresponding to a plurality of users;
[f] generating a previously downloaded content purchase price for a content descriptor associated with a previously downloaded content rented by the user;
[g] providing the previously downloaded content purchase price to the user;
[h] receiving a user purchase request to purchase the previously downloaded content rented by the user and residing on the user computer; and
[i] transmitting an update of the use limitation following receipt of the user purchase request, the update comprising a file update eliminating the expiration date included in the downloadable content.
The Examiner had rejected the claims as obvious over a combination of three references, Lenk, Hastings and Sherr. All three references were found to disclose online video or video game rental services and described business strategies that were old and well known in the art. As stated in the Examiner’s Answer dated Apr. 6, 2011 (Answer), combining Lenk and Hastings would predictably provide “a more versatile media” as well as “providing a more streamlined process of allowing user’s [sic] to purchase media that they already have in their possession.” Id. at 12-13. The Examiner also concluded that it would have been obvious to combine aspects of Sherr even though Sherr discloses a different payment model, because that model was simply “an alternate business strategy that is old and well known in the art.” Id. at 28. Ultimately, the nature of the problem to be solved— renting media to users—as well as the need to do so in an efficient and user-friendly way, would have led one of ordinary skill in the art to choose appropriate features from each reference to arrive at the claimed invention.
Mr. Chuang contended that the Board erred in affirming the Examiner’s conclusion that Lenk discloses the claimed “rental price” in clause (a) of claim 1. In particular, the Examiner found that the prior art has “an associated rental fee for renting media online.” Under the broadest reasonable interpretation, the Federal Circuit was not persuaded that this could not mean “an associated rental fee for renting media online.” The Federal Circuit also noted that Chuang’s proposed construction would be inconsistent with parts of the specification that disclose a DVD rental embodiment where users pay a monthly fee to rent as many DVDs as desired. As such, there would be no dispute that Lenk’s monthly fee for renting media would disclose the claimed “rental price.”
Mr. Chuang also contended that Lenk would not be properly combinable with Sherr to teach the “expiration date” limitations in clauses (c) and (d) of claim 1 because Lenk teaches that members can rent games for any length of time and emphasizes the absence of due dates. In response to this argument, the Federal Circuit stated:
We disagree. There is substantial evidence to support the Board’s finding that Lenk does not teach away from the claimed invention. The fact that the two references teach different payment models for how to rent videos does not mean that a person of ordinary skill in the art would have been discouraged from combining different features from the two disclosures, including the well-known aspect of using expiration dates on rental media. “[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the [claimed] solution . . . .”). Rather, the relevant inquiry is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981).
The Federal Circuit concluded that the Board reasonably found that the references are directed to the same field of endeavor, and that the combination of the references “was no more than a combination of familiar elements in a known way to yield predictable results.” In addition, Chuang failed “to point to any passage in Lenk that criticizes or otherwise discourages the use of expiration dates in a rental system using a subscription payment model.”
Takeaways
Always keep in mind that Examiners examine claims based upon the broadest reasonable interpretation. Although the applicant may consider the invention very different from the prior art, the claim language must clearly set forth that difference.
If you wish to argue that a prior art reference teaches away from the invention, evidence must be presented in the prior art reference that criticizes, discredits or otherwise discourages what the applicant has claimed.
Had Mr. Chuang been successful in overcoming the obviousness rejection, it is likely that the Examiner would have re-opened prosecution with another rejection based upon Alice Corp. v. CLS Bank Int’l.
[1] The nature of the initial appeal is not known or discussed in the opinion. In addition, it appears that a non-publication request was filed, as there is no corresponding publication and no access through the Patent Application Information Retrieval (PAIR) system of the USPTO.
Claim Construction
| March 18, 2015
Fenner Investments, LTD., v. Cellco Partnership (doing business as Verizon Wireless)
February 12, 2015
Before: Newman, Schall and Hughes. Opinion by Newman.
Summary
Fenner owns US Patent No. 5,561,706 (the ‘706 patent) directed to a personal communications services (PCS) system that permits users to access a communications network from different locations. The US District Court for the Eastern District of Texas granted summary judgment that Cellco does not infringe claim 1 of the ‘706 patent. Fenner appealed to the CAFC arguing that the district court erred in construing the term “personal identification number” in claim 1. The CAFC affirmed the summary judgment of noninfringement.
A Refined Standard for Appellate Review of Patent Claim Construction: “de novo” on Ultimate Claim Construction with “Clear Error” on Subsidiary Factfindings
| March 10, 2015
Teva Pharmaceuticals USA, Inc., Et Al. v. Sandoz, Inc., et al.
January 20, 2015
Justice Breyer delivered the majority opinion; Justices Thomas and Alito dissented.
Summary
The Supreme Court of the United States held that when reviewing a District Court’s resolution of subsidiary factual matters made in the course of its construction of a patent claim, the Federal Circuit must apply a “clear error,” not a “de novo”, standard of review.
总结
美国最高法院裁定:在审查地方法院的裁定专利权利要求解释时使用的附属事实,美国联邦巡回法院必须使用“明确错误”，而不是“从头”，审查标准。
Tags: claim construction > clear error > de novo > molecular weight > standard of review
Improper modification of cited art in obviousness determination: how to define “principle of operation” or “intended purpose” of the art
| February 11, 2015
Plas-Pak Industries v. Sulzer Mixpak AG
January 27, 2015
Panel: Before Lourie, Moore, and Reyna. Opinion by Lourie.
Summary
Sulzer Mixpak AG is the owner of Patent No. 7,815,384 (“the 384 patent”). Plas-Pak Industries (Plas-Pak) is a requester of inter partes reexamination against the 384 patent. In the reexamination, the examiner decided that the claims of the 384 patent are NOT obvious, and PTAB affirmed the decision. Plas-Pak appealed to CAFC and argued that PTAB erred in finding that proposed modifications of prior art apparatus are improper because the modifications could destroy a “principle of operation” or “intended purpose” of the prior art apparatus. CAFC agreed with PTAB’s narrower definition of the “principle operation” or “intended purpose” of prior art and affirmed that the 384 patent are not obvious.
本判決は、引用例の組み合わせに基づく自明性の認定において、主要引用例に第2引用例の要素を組み合わせると主要引用例の動作原理（principle of operation）あるいは意図された目的（intended purpose）を損なう場合は、組み合わせの動機付けがないので自明ではないとした米国特許庁の判断を維持したものである。本件では、主要引用例の改変がその発明の目的達成に必要である要素を取り除くような改変となる場合、あるいは主要引用例の技術の相当な再構築を必要とする場合は引用例の組み合わせを否定すべきであるとされた。引用例の組み合わせは主要引用例の動作原理あるいは意図された目的を損なわない範囲で可能であるというルールは従前とおりであるが、本判決において、先行技術の発明が従来技術に対してどのような技術的貢献を目的としているのか、それをどのような要素あるいはどのようなやり方で達成しているのかに着目して、主要引用例の動作原理や目的の内容をより具体的に定義できることが示唆された。
Details
I. Patented subject matter
The 384 patent relates to apparatuses for mixing, and dispensing multi-component paints. The representative claim 1 recites:
1. A device for applying a coating, comprising:
at least two cylindrical cartridges,
a static mixing nozzle in fluid communication with the cartridges,
a spray tip, in fluid communication with the nozzle,
a first flexible hose is disposed between and in fluid communication with the nozzle and the spray tip, and
a second hose, in fluid communication with the spray tip, for supplying atomization air to the spray tip.
II. Issues and PTO’s decisions
Issue 1: whether there is an error in finding that modification of Fukuta’s apparatus with a mixing and dispensing apparatus (two cylindrical cartridges) of Morris would have changed the “principle of operation” of Fukuta.
Plas-Pak first argues that replacing the components upstream of the mixer 3 (the set of paint suppliers, pumps, and valves, or only the paint suppliers and pumps) in Fukuta’s apparatus with the cartridges 70 of Morris is a simple substitution of known elements. Plas-Pak particularly argues that the proposed modification does not require a substantial reconstruction of Fukuta simply because the apparatus of Fukuta and the two-component cartridges of Morris are combinable and still able to work as a dispenser.
PTAB disagrees and finds that Fukuta’s “contribution to the art” is not to merely provide an apparatus for bringing a two component mixture, but rather to provide an apparatus with the arrangement and implementation of additional components such as check valves, stop valves, escape valves, etc. for preventing a backflow problem. Based on the narrower definition of “principle of operation” of Fukuta, PTAB rejected the Plas-Pak’s argument.
Plas-Pak also argues that only the two-component (suppliers and pumps) of Fukuta’s apparatus can be substituted with the cartridges of Morris as such known actuators are generally an obvious variation. PTAB disagrees and reasons that Plas-Pak still fails to show how such modification would avoid a substantial reconstruction, PTAB appears to note that it is unknown whether “using the manually actuated mixing gun” of Morris can attain the result intended by Fukuta.
Asserted definitions of “principle of operation”
Issue 2: whether there is an error in finding that modification of Jacobsen’s apparatus with a spray nozzle of Hunter would have rendered the “intended purpose” of Jacobsen inoperable.
Jacobsen discloses a liquid dispensing device for establishing leakproof by directing a fluid into cracks in an underlying structure, while Hunter teaches a conventional spray nozzle. Plas-Pak first argues that modifying Jacobsen’s apparatus with the spray nozzle of Hunter “would have nothing more than predictable variations of prior art elements.” PTAB disagrees with the Plas-Pak’s argument by finding that the requester fails to show how the specific function of Jacobsen can be attained by using the spray nozzle of Hunter. PTAB then concludes that such modification of Jacobsen would render the prior art “unsuitable for its intended purpose of dispensing the components into cracks.”
Asserted definitions of “intended purpose”
III. CAFC decision
Regarding the combination of Fukuta with Morris (issue 1), CAFC agrees with PTAB’s narrower definition of Fukuta’s “principle of operation” and with their finding that the proposed modification would fundamentally alter the principle operation of Fukuta. CAFC refers to the uniqueness of Fukuta’s invention by citing its disclosures: “the inventors of the present invention have proposed placing stop valves disposed between the junction and the check valve in addition to the construction of the conventional two-component mixing type coating apparatus described above,” and “the present invention [] is characterized . . . by closing the stop valves when the spraying operation of the gun is stopped.” CAFC then holds that “the Board correctly limited Fukuta’s “principle of operation” to that specific functionality.”
Regarding the combination of Jacobsen with Hunter (issue 2), CAFC agrees with PTAB’s narrower definition of Jacobsen’s “intended purpose” and with the PTAB’s finding that Jacobsen’s dispensing system has the very “specific function of dispensing fluid materials directly into surface[] cracks to minimize leakage.” CAFC notes that “[a]dding a spray nozzle as Plas-Pak suggests would necessarily undermine that express goal of Jacobsen, i.e., “dispensing fluid materials directly into cracks.” CAFC also notes that Jacobsen does not teach how a spray nozzle might accomplish the “intended purpose” of “dispensing fluid materials directly into cracks.” Based on the specific purpose of Jacobsen, CAFC agrees with the PTAB’s decision that modifying Jacobsen to accommodate the spray nozzle of Hunter would render Jacobsen “inoperable for its intended purpose of dispensing fluid materials directly into cracks.”
Take Away
This may be a good case to note if you want to attack the combinability of references where a proposed modification of a main reference would result in requiring substantial reconstruction of the art in the main reference, such as removing or replacing some elements required for the “invention” or “features” (its contribution to the art) of the main reference.
Tags: intended purpose > modification > obviousness > principle operation > substitution of known elements
