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
If At First You Don’t Succeed, (Don’t) Try, Try Again?: Myriad Genetics Lost More Claims To 35 U.S.C. §101.
| January 29, 2015
In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litigation, also known as University of Utah Research v. Ambry Genetics Corp.
December 17, 2014
Panel: Prost, Clevenger, and Dyk. Opinion by Prost.
Summary
A year after Association For Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013), in which Myriad saw its isolated DNA claims being invalidated by the Supreme Court for patent ineligibility, Myriad found itself once again trying to defend the patent eligibility of its patent claims. This time, the claims were directed to isolated single-stranded polynucleotides and the use of those polynucleotides to detect the presence of genetic mutations. Different claims, but the outcome was the same as the Federal Circuit, following the Supreme Court and its own precedents, invalidated Myriad’s claims as being directed to patent ineligible subject matter under 35 U.S.C. §101.
The fate of Software inventions related to information processing
| January 28, 2015
Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A. et al.
December 23, 2014
Panel: Chen, Dyk and Taranto. Opinion by Chen.
Summary
The Federal Circuit held that the claims of the asserted patents were invalid as patent-ineligible under 35 U.S.C.S. § 101 because none of asserted claims amounted “to ‘significantly more’ than the abstract idea of extracting and storing data from hard copy documents using generic scanning and processing technology.”
Tags: 35 U.S.C. § 101 > abstract ideas > computer > computer memory > laws of nature > patent eligible subject matter > physical phenomena > scanner > software
Ecommerce Patent found to have patent eligible subject matter under Alice.
| January 27, 2015
DDR Holding, LLC v. Hotels.com, L.P.
December 5, 2014
Panel: Wallach, Mayer, and Chen (Circuit Judges). Precedential Opinion by Chen, Dissenting Opinion by Mayer.
Summary
While not all claims purporting to address Internet-centric challenges are eligible for patent, a claimed solution that is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks constitutes patent eligible subject matter.
Tags: 35 U.S.C. § 101 > patent eligible subject matter > patent ineligible abstract idea
Environment of confidentiality and tight control trumps publicly visible location of invention in “public use” challenge to patent validity
| January 27, 2015
Delano Farms Company v. California Table Grape Comm.
January 9, 2015
Panel: Prost, Bryson, and Hughes. Opinion by Bryson.
Summary
In a case involving plant patents, the CAFC expounds on what constitutes, and does not constitute, a public use. The touchstone of public use is “whether the purported use was accessible to the public or was commercially exploited.” A formal confidentiality agreement is not required to show non-public use. Because there was an environment of confidentiality and tight control in the actions of the third parties who obtained unauthorized possession of the plant material prior to the critical date, and their use was not accessible to the public, there was no invalidating public use.
Details
After disposing of various procedural issues, the CAFC addressed a challenge to the validity of two plant patents under 35 USC § 102(b) (pre-AIA) based on an alleged public use more than one year before the applications for the patents were filed.
Following a bench trial, the district court found that the actions of two individuals who obtained samples of the two patented plant varieties in an unauthorized manner and planted them in their own fields did not constitute a public use of the two plant varieties and therefore rejected the plaintiffs’ challenge to the patents. The CAFC affirmed.
The patent applications were filed on September 28, 2004, making the critical date for a section 102(b) public use bar September 28, 2003. Both plant varieties were made commercially available on July 13, 2005, well after both the critical and filing dates. In 2001, the U.S. Department of Agriculture (“USDA”) held an experimental variety open house, which was attended by cousins Jim and Larry Ludy. Jim Ludy asked a USDA employee for some of the plant material for the two varieties. Although the plant material was not commercially released, and the USDA employee was not authorized to do so, he complied with the request, on the condition that the Ludys not sell the resulting grapes until the varieties were commercially released. Jim Ludy understood that he was to keep the plant material secret, and he understood the adverse consequences if he failed to do so.
Jim Ludy subsequently grew a number of plants from the plant material, and provided a few buds to Larry. Larry was aware of the origins of the plant material, and admitted that Jim told him they should keep it to themselves. Larry grew more plants from the buds he got from Larry, and showed them to his marketer at least twice before the critical date. The Ludys sold no grapes from their plantings before the critical date. After the critical date, the marketer sold grapes harvested from the vines under the name of an unrelated variety to avoid detection. Also after the critical date, Larry Ludy provided some of the plant material to the marketer, who recognized the competitive advantage in possessing plants that were not commercially released.
Based on these findings, the district court found that the plaintiffs failed to meet their burden of showing, by clear and convincing evidence, that the Ludys’ use of the unreleased varieties constituted an invalidating public use.
The CAFC begins its legal analysis by stating the test for public use as being “whether the purported use was accessible to the public or was commercially exploited.” To be accessible to the public, the actions that constitute the use must “create a reasonable belief as to the invention’s public availability.” Regardless of whether the actions are taken by the inventor or an unaffiliated third party, relevant factors include:
- “the nature of the activity that occurred in public”
- “the public access to and knowledge of the public use”
- “whether there was any confidentiality obligation imposed on persons who observed them” and if so, the degree of confidentiality
- [t]he adequacy of any confidentiality guarantees … measured in relation ‘to the party in control of the allegedly invalidating prior use’”
“[A]n agreement of confidentiality, or circumstances creating a similar expectation of secrecy, may negate a public use where there is not commercial exploitation.” Analogously, a secret or confidential third-party use is not an invalidating public use.
In this case, Jim obtained the plant material with the expectation of secrecy and impressed the need for secrecy on Larry; and even after the critical date, they both acted to conceal their possession of the plants. The facts are thus readily distinguishable from the seminal Supreme Court decision in Egbert v. Lippmann, 104 U.S. 333 (1881), in which the inventor of a corset gave two of them to a friend to use, without limitation, restriction, or injunction of secrecy.
The CAFC also pointed out that a formal confidentiality agreement is not required to prove that a use is not public.
With respect to disclosure to the marketer, the CAFC referred to the district court’s finding that there was an environment of confidentiality and tight control, and thus no public use.
Finally, the CAFC considered the impact of Ludys growing the plants in locations that were visible from public roads. The public nature of the location was counteracted by the facts that grape varieties cannot be reliably identified simply by viewing the growing vines, the plantings in question were extremely limited in comparison to the total cultivation of their farms, the plantings were not labeled in any way, and there was no evidence that anyone other than the Ludys and their marketer recognized them.
The CAFC concluded based on the district court’s finding of fact that the purported use was not accessible to the public and did not put the public in possession of the patented plants.
Takeaway
A use by an inventor or an unaffiliated third party is not necessarily a public use, even if the use is made without an explicit confidentiality agreement. Even without a confidentiality agreement an environment of confidentiality and tight control over the invention and its use can prevent the use from being construed as an invalidating public use.
Tags: commercial exploitation > confidential use > confidentiality > control > public access > public availability > public use > secret use
Establishing a General Premise Does Not Satisfy the High Burden of Proving an Inherent Disclosure of a Claimed Feature under an Obviousness Rejection
| December 22, 2014
Par Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc.
December 3, 2014
Panel: O’Malley, Wallach, and Hughes. Opinion by O’Malley.
Summary
Patent 7,101,576 (hereinafter ‘576) is directed towards a method of using megestrol nanoparticles to increase the body mass in a human patient suffering from wasting.
The CAFC vacated a District Court judgment of invalidity of the ‘576 patent and remanded for further analysis. The CAFC held that the District Court committed an error since the District Court analysis of inherency ignored the specific claim limitations at issue.
The appeal to the Federal Circuit would be an option if a motion to stay pending the CBM review is denied
| December 18, 2014
Versata Software, Inc. v. Callidus Software, Inc.
November 20, 2014
Panel: Chen, Mayer, and Linn. Opinion by Chen.
Summary:
Callidus appealed from the U.S. District Court for the District of Delaware’s denial of a stay pending the PTO’s CBM review of the patents-in-suit. The Federal Circuit used a four factor test set forth in AIA §18(b) to hold that each factor strongly favors a stay, thereby reversing and remanding with instructions to grant the motion to stay.
본 사건은 피고인 Callidus가 델라웨어주 연방지방법원의 특허재심사 절차 진행 중인 특허 소송에 대한 중지청구(motion to stay) 판결에 불복하여 연방항소법원에 상고한 사건이다. 판결에서 연방항소법원은 18(b)조에 있는 4가지 요소 모두 현 소송 진행상황상 미 특허청의 특허재심사 절차 (CBM) 결과를 기다리는 것이 타당하다고 판결하였다. 따라서, 연방항소법원은 개정 특허법 18(b)조에 의거하여 연방지방법원의 중지청구 판결을 번복하였다.
Tags: AIA > Covered Business Method (CBM) > Motion to Stay > Patent Trial and Appeal Board (PTAB)
Claimed inventions of a reissue patent must be clearly and unequivocally disclosed in the original specification
| December 17, 2014
Antares Pharma, Inc. v. Medac Pharma Inc., et al.
November 17, 2014
Panel: Dyk, Reyna, and Taranto. Opinion by Dyk.
Summary
The Federal Circuit found the asserted reissue claims invalid for failure to comply with the “original patent” requirement of 35 U.S.C. § 251. Under § 251, the original patent specification must adequately disclose the later-claimed features. Here, the Federal Circuit found that the original specification failed to clearly and unequivocally disclose the inventions of the asserted claims of the reissue patent.
連邦巡回裁判所は、原告が主張する再発行特許のクレームは特許法第251条の要件を満たしていないため無効であると認定した。251条の規定により、元の明細書は、再発行特許のクレーム発明を開示している必要がある。本件では、再発行特許のクレーム発明が元の明細書において明確に開示されていなかった。
Upon Further Review, the Ruling on the Field Stands – Federal Circuit Sustains PTO’s Refusal to Withdraw Terminal Disclaimer
| December 10, 2014
Japanese Foundation for Cancer Research v. Lee
December 9, 2014 (Federal Circuit)
Panel: Prost, Dyk, Taranto. Opinion by Prost
Summary
In Japanese Foundation for Cancer Research v. Lee (2014), the Federal Circuit reversed the district court’s determination on summary judgment that the United States Patent & Trademark Office (“PTO”) acted arbitrarily and capriciously, and abused its discretion, when it refused to withdraw a terminal disclaimer on U.S. Pat. No. 6,194,187 (“’187 patent”). The Federal Circuit held that the PTO did not act arbitrarily or capriciously, or abuse its discretion in declining to use any inherent authority that it may have in withdrawing the terminal disclaimer on the ’187 patent that the Japanese Foundation for Cancer Research’s (“Foundation”) attorney of record filed in accordance with the PTO’s regulations.
Surviving Alice Gone Wild
| November 26, 2014
Before the Supreme Court’s decision in Alice Corp. v CLS Bank Int’l [1], Judge Moore said “this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents.”[2] This concern is premised on about twenty years of patent practice grounded in the en banc 1994 Federal Circuit decision in In re Alappat which previously established the “special purpose computer” justification for patent eligibility under 35 USC §101 for computer-implemented inventions.[3] The Alice decision essentially eliminated the “special purpose computer” bright line rule as applied generally to computer-implemented inventions. The new Mayo 2-part §101 test for computer-implemented inventions is, however, fraught with issues from the lack of guidance on how to properly apply it. Some strategic arguments for surviving a §101 attack are presented in this article, as well as a new way to address what is “significantly more.”
Tags: 101 > abstract idea > Alice > CLS Bank > computer > means plus function > patent eligible subject matter > preemption > Section 101 > software
