General industry skepticism may not be sufficient by itself to preclude a finding of motivation to combine
Sung-Hoon Kim | August 2, 2022
Auris Health, Inc. v. Intuitive Surgical Operations, Inc.
Decided: April 29, 2022
Prost (author), Dyke, and Reyna (dissenting)
Summary:
The Federal Circuit rejected the PTAB’s obviousness decision by holding that general industry skepticism is not relevant to the question of obviousness.
Details:
In 2018, Intuitive Surgical sued Auris Health for patent infringement of U.S. Patent No. 8,142,447 (“the ’447 patent”).
The ’447 patent
This patent is directed to robotic surgery systems.
The ’447 patent describes “an improvement over Intuitive’s earlier robotic surgery systems, which allow surgeons to remotely manipulate surgical tools using a controller.”
The ’447 patent attempts to solve problems (doctors must swap out various surgical instruments and this step could be tricky in a robotic surgical system where space is limited, different ranges of motion must be calibrated for different surgical instruments, and time is need to interchange those instruments) in the surgery via a robotic system with a servo-pulley mechanism so that doctors could swap out surgical instruments and reduce surgery time, improve safety, and increase reliability of the system.
PTAB
The PTAB determined that the prior art references asserted by Aurie – Smith and Faraz – disclosed each limitation of the claims in the ’447 patent.
The only remaining issue is whether a skilled artisan would have motivated to combine these two references.
Smith discloses “a robotic surgical system that uses an exoskeleton controller, worn by a clinician, to remotely manipulate a pair of robotic arms, each of which holds a surgical instrument.” Smith discloses that the clinician may direct an assistant to relocate the arms as necessary.
Faraz is directed an adjustable support stand that holds surgical instruments. Faraz discloses that its stand “may enable a surgeon to perform surgery with fewer assistants” because its stand “can support multiple surgical implements while [they] are being moved” and “can also provide support for a surgeon’s arms during long or complicated surgery.”
Auris argued that a skilled artisan would be motivated to combine these references to decrease the number of assistants necessary for surgery.
Intuitive argued that a skilled artisan would not be motivated to combine these references because “surgeons were skeptical about performing robotic surgery in the first place, [so] there would have been no reason to further complicate Smith’s already complex robotic surgical system with [Faraz’s] roboticized surgical stand.”
The PTAB agreed with Intuitive that there is no motivation to combine these references because there is skepticism at the time of the invention for using robotic systems during surgery in the first place.
Federal Circuit
The Federal Circuit held that general industry skepticism cannot, by itself, preclude a finding of motivation to combine.
The Federal Circuit noted that the evidence of skepticism must be specific to the invention, not generic to the field and that Intuitive provided not case law to suggest that the PTAB can rely on generic industry skepticism to find a lack of motivation of combine.
The Federal Circuit held that the PTAB was wrong to exclusively rely on Intuitive’s expert testimony that “there was great skepticism for performing telesurgery” at the time of the invention and, as a result, a skilled artisan “would not have been compelled to complicate Smith’s system further.”
Therefore, the Federal Circuit remand for further consideration of the parties’ motivation-to-combine evidence.
Dissent
Judge Reyna noted that the PTAB’s determination that Auris failed to show a motivation to combine is adequately supported by substantial evidence and was not contrary to our law on obviousness.
While Judge Reyna agreed that skilled artisans’ general skepticism toward robotic surgery, by itself, could be insufficient to negate a motivation to combine, he disagreed that it could never support a finding of no motivation to combine.
Judge Reyna believes that the majority’s inflexible and rigid rule appears to be in tension with the central thrust of KSR (rejecting the “rigid approach of the Court of Appeals” and articulating an “expansive and flexible approach” of determining obviousness).
Takeaway:
- General industry skepticism may not be sufficient by itself to preclude a finding of motivation to combine.
- Specific evidence of industry skepticism related to a specific combination of references might contribute to finding a lack of motivation to combine.
The applicants’ statement during the prosecution may play a critical role for claim construction
WHDA Blogging Team | July 4, 2022
Sound View Innovations, LLC v. Hulu, LLC
Decided: May 11, 2022
Prost, Mayer (Sr.) and Taranto. Court opinion by Taranto.
Summary
On appeals from the district court for summary judgment of noninfringement of a patent, directed to a method of reducing latency in a network having a content server, the Federal Circuit affirmed the district court’s construction of the down-loading/retrieving limitation solely on the basis of prosecution history, but the Court rejected the district court’s determination that “buffer” cannot cover “a cache,” and vacated the district court’s grant of summary judgment and remanded for further proceedings.
Details
I. Background
(i) The Patent in Dispute
Sound View Innovations, LLC (“Sound View”) owns now-expired U.S. Patent No. 6,708,213 (“the ’213 patent”), which describes and claims “methods which improve the caching of streaming multimedia data (e.g., audio and video data) from a content provider over a network to a client’s computer.” Claim 16 of the ’213 patent provides as follows:
16. A method of reducing latency in a network having a content server which hosts streaming media (SM) objects which comprise a plurality of time-ordered segments for distribution over said network through a plurality of helpers (HSs) to a plurality of clients, said method comprising:
receiving a request for an SM object from one of said plurality of clients at one of said plurality of helper servers;
allocating a buffer at one of said plurality of HSs to cache at least a portion of said requested SM object;
downloading said portion of said requested SM object to said requesting client, while concurrently retrieving a remaining portion of said requested SM object from one of another HS and said content server (the “downloading/retrieving limitation”); and
adjusting a data transfer rate at said one of said plurality of HSs for transferring data from said one of said plurality of helper servers to said one of said plurality of clients (emphasis added).
During the prosecution, the examiner rejected original claim 16—which was identical to issued claim 16 except that it lacked the downloading/retrieving limitation—as anticipated over DeMoney (U.S. Patent No. 6,438,630). To overcome the rejection, the applicants amended the claim to add the downloading/retrieving limitation. The applicants explained that support for the added limitation is found in the applicants’ specification, pointing to the portion of the specification that shows concurrent downloading and retrieval involving a single buffer (emphasis added). In fact, the specification nowhere says that the invention includes use of separate buffers for the concurrent downloading and retrieving functions, and it nowhere illustrates or describes such an embodiment, in which different buffers are involved in con- current downloading of one portion and retrieving of a remaining portion of the same SM object in response to a given client’s request.
(ii) The District Court
Sound View sued Hulu, LLC (“Hulu”) for infringement of six Sound View patents including the ’213 patent in the United States District Court for the Central District of California (“the district court”). As the case proceeded, only claim 16 of the ’213 patent remained at issue.
It was undisputed that the accused edge servers— the edge servers Sound View identified as the “helper servers” for its infringement charge—do NOT download and retrieve subsequent portions of the same SM object in the same buffer (emphasis added).
Sound View alleged, among other things, that, under Hulu’s direction, when an edge server receives a client request for a video not already fully in the edge server’s possession, and obtains segments of the video seriatim from the content server (or another edge server), the edge server transmits to the Hulu client a segment it has obtained while concurrently retrieving a remaining segment.
The district court agreed with Hulu’s argument that the applicants’ statements accompanying the amendment in the prosecution disclaimed the full scope of the downloading/retrieving limitation, and that the downloading/retrieving limitation thus required that the same buffer in the helper server—the one allocated in the preceding step—host both the portion sent to the client and a remaining portion retrieved concurrently from the content server or other helper server (emphasis added).
In reliance on the construction, Hulu then sought summary judgment of non-infringement of claim 16, arguing that it was undisputed that, in the edge servers of its content delivery networks, no single buffer hosts both the video portion downloaded to the client and the retrieved additional portion. Sound View countered that there remained a factual dispute about whether “caches” in the edge servers met the concurrency limitation as construed. The district court held, however, that a “cache” could not be the “buffer” that its construction of the down- loading/retrieving limitation required, and on that basis, it granted summary judgment of non-infringement. A final judgment followed.
Sound View timely appealed.
II. The Federal Circuit
The Federal Circuit (“the Court”) affirmed the district court’s construction of the down-loading/retrieving limitation. but the Court rejected the district court’s determination that “buffer” cannot cover “a cache,” and vacated the district court’s grant of summary judgment and remanded for further proceedings.
Claim Construction (the downloading/retrieving limitation)
The Court first noted that this is not a case in which the other intrinsic evidence—the claim language and specification—establish a truly plain meaning contrary to the meaning assertedly established by the prosecution history because the downloading/retrieving limitation, which does not expressly refer to “buffers,” contains no words affirmatively making clear that different buffers in the helper server may be used for the sending out to clients of one portion of the SM object and the receiving of a retrieved remaining portion.
The Court viewed the prosecution history as establishing that the applicants made clear that the applicants’ invention concurrently empties and fills the buffer, while the DeMoney reference teaches filling the buffer only after the buffer is empty,” citing column 12, lines 28–40 of DeMoney (emphasis added).
Based on the applicants’ statements, the Court agreed with the district court that the applicants limited claim 16 to using the same buffer for the required concurrent downloading and retrieval of portions of a requested SM object.
Summary Judgment of Non-Infringement
After the district court adopted its “buffer”-requiring claim construction of the downloading/retrieving limitation, it granted summary judgment of non-infringement, concluding that accused-system components called “caches”—on which Sound View relied for its allegation of infringement under the court’s claim construction—could not be the required “buffers.” The district court relied for its conclusion on the ’213 patent’s references to its described “buffers” and “caches” as distinct physical components. To support the conclusion, the district court noted that the ’213 patent describes buffers and caches in different locations: The patent defines “cache” as “a region on the computer disk that holds a subset of a larger collection of data,” and although the patent does not define “buffer,” it describes “ring buffers” located “in the memory” of the HS.
However, the Court stated that the district court’s construction here was inadequate for the second step of an infringement analysis (comparison to the accused products or methods) because it did not adopt an affirmative construction of what constitutes a “buffer” in this patent. More specifically, the Court stated that the district court did not decide, and the record does not establish, that “cache” is a term of such uniform meaning in the art that its meaning in the ’213 patent must be relevantly identical to its meaning when used by those who labeled the pertinent components of the accused edge servers. The Court thus concluded that, in the absence of such a uniformity-of-meaning determination, the district court’s conclusion that the ’213 patent distinguishes its buffers and caches is insufficient to support a determination that the accused-component “caches” are outside the “buffers” of the ’213 patent. What was needed was an affirmative construction of “buffer”— which could then be compared to the accused-component “caches” based on more than a mere name.
For an additional reason for the further affirmative construction, the Court pointed out that, even in the ’213 patent, the terms “buffer” and “cache” do not appear to be mutually exclusive, but instead seem to have at least some overlap in their coverage given that the disputed claim describes “allocating a buffer . . . to cache” a portion of the SM object, and that the specification explains that “the ring buffer . . . operates as a type of short term cache” because it is capable of servicing multiple client requests within a certain time interval (emphasis added).
Takeaway
· Claim construction: The applicants’ statement during the prosecution may play a critical role for claim construction if the claim language and specification do not establish a truly plain meaning of a disputed term contrary to the meaning assertedly established by the prosecution history.
· Summary Judgment: Portions of the specification may provide genuine issue of material fact for denial of summary judgment (in this case, the embodiment describes buffers and caches in different locations while the disputed claim provides “allocating a buffer . . . to cache”)
Inventor’s Own Provisional Application Can Be Prior Art Against Inventor’s Own US National Stage Application
John Kong | June 10, 2022
Konda v. Flex Logix Technologies, Inc.
Decided: May 6, 2022
per curiam: Taranto, Clevenger, Chen (May 6, 2020).
Summary:
In Flex Logic’s inter partes reviews (IPRs), the PTAB agreed with Flex Logic in that the ‘605 PCT and the ‘394 Provisional application did not support the challenged claims of the ‘523 patent, and therefore, the ‘523 patent could not benefit from the earlier filing dates of the ‘605 PCT and the ‘394 Provisional application and that the ‘523 patent benefited only from its filing date of November 22, 2009. The PTAB agreed that a prior art ‘756 PCT publication (another one of Konda’s earlier patent applications published on September 12, 2008) and the ‘394 provisional application (that was incorporated by reference into the ‘756 PCT) rendered all the challenged claims unpatentable. The only issue on appeal was whether the ‘394 Provisional is publicly available to qualify as prior art. The Federal Circuit held that Konda’s US ‘394 Provisional application that is incorporated by reference in a publicly available publication of a PCT application is “publicly available” as prior art under pre-AIA 35 USC §102(b).
Background:
Konda’s US Patent No. 8,269,523 issued from US patent application s/n 12/601,275 (the ‘275 application) filed November 22, 2009. The ‘275 application is the national phase entry of PCT application no. PCT/US2008/064605 (the ‘605 PCT) filed May 22, 2008. The ‘275 application also claimed priority back to Provisional application no. 60/940,394 (the ‘394 Provisional) filed May 25, 2007. Flex Logic’s IPRs relied upon WO 2008/109756 (the ‘756 PCT) and the ‘394 Provisional as prior art against the challenged claims of the ‘523 patent. The ‘756 PCT is another one of Konda’s earlier patent applications that incorporated by reference the ‘394 Provisional. The ‘756 PCT was published on September 12, 2008.
Procedural History:
Two inter partes reviews (IPRs) were filed by Flex Logic, addressing different sets of claims in Konda’s US Patent No. 8,269,523 (the ‘523 patent). The PTAB’s Final Decision in the consolidated IPRs found that the ‘605 PCT and the ‘394 Provisional applications did not have support for the claims of the ‘523 patent as required by 35 USC §112. Accordingly, the ‘523 patent only benefited from its filing date of November 22, 2009. The PTAB also found that all the challenged claims to be unpatentable as being anticipated or obvious over the ‘756 PCT published on September 12, 2008 and the ‘394 provisional application that was incorporated by reference into the ‘756 PCT. The only issue on appeal to the Federal Circuit was whether the ‘394 Provisional was publicly available to qualify as prior art under pre-AIA 35 USC §102(b).
Relevant Statute and Rules:
35 U.S.C. 122(a):
(a) CONFIDENTIALITY.— Except as provided in subsection (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director
37 CFR 1.14(a)(1)(vi):
(vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
37 CFR 1.14(c):
(c) Power to inspect a pending or abandoned application. Access to an application may be provided to any person if the application file is available, and the application contains written authority (e.g., a power to inspect) granting access to such person. The written authority must be signed by:
(1) The applicant;
(2) A patent practitioner of record;
(3) The assignee or an assignee of an undivided part interest;
(4) The inventor or a joint inventor; or
(5) A registered attorney or agent named in the papers accompanying the application papers filed under § 1.53 or the national stage documents filed under § 1.495, if a power of attorney has not been appointed under § 1.32.
Decision:
There is no dispute that the ‘756 PCT is an international patent application that incorporated by reference the ‘394 Provisional application, thereby meeting the requirements of 37 CFR 1.14(a)(1)(vi) for public accessibility to the ‘394 Provisional application.
Konda relied on the last sentence of 37 CFR 1.14(a)(1)(vi) whereby “The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.” And, Konda did not provide any written authority pursuant to 37 CFR 1.14(c) to provide access the ‘394 Provisional application. Konda also relied on MPEP 103(VII) (8th ed., rev. July 7, 2008) stating that access to provisional applications “will only be given to parties with written authority from a named inventor, the assignee of record, or the attorney or agent of record.”
However, the Federal Circuit noted the last sentence of 37 CFR 1.14(a)(1)(vi) pertains only to access to the “paper file” of the pending application, which the Federal Circuit interprets to mean the “whole file history,” which the regulation clearly distinguishes from the “application as originally filed.” It is the “application as originally filed” to which 37 CFR 1.14(a)(1)(vi) grants public accessibility when that “application as originally filed” was incorporated by reference in a PCT application. The last sentence of 37 CFR 1.14(a)(1)(vi) and 37 CFR 1.14(c) do not apply to the “application as originally filed.” There was no need for Konda’s written authorization to access that “application as originally filed.”
As for the MPEP, the court noted that the MPEP “does not have the force of law.” The court also noted that MPEP 103 further stated that provisional applications were “also available in the same manner as any other application” “thereby permitting the access authorized under 37 CFR 1.14(a)(1)(vi).”
Takeaways:
- If, following the inventor’s incorporation by reference preferences, the ‘605 PCT in the subject ‘523 patent family incorporated by reference the ‘756 PCT, perhaps 112 support could have been argued for the ‘523 claims. Nevertheless, as can be appreciated from the result of this case (an inventor’s own provisional application was used as prior art against his own national stage application!), applicants must be careful when incorporating by reference applications from a different patent application family.
- In the PTAB’s Final Decision, the entire 112 support discussion is premised on case law regarding entitlement to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier filed application provides support for the claims of the later application. And, somehow, the national stage application of an international PCT application is only accorded the benefit of its “filing date” of the national stage ‘275 application. However, the international ‘605 PCT application is not “an earlier filed application” from the national stage application thereof. As noted in MPEP 1893.03(b):
An international application designating the U.S. has two stages (international and national) with the filing date being the same in both stages. Often the date of entry into the national stage is confused with the filing date. It should be borne in mind that the filing date of the international stage application is also the filing date for the national stage application.
Pursuant to 35 USC 363:
An international application designating the United States shall have the effect, from its international filing date under Article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office.
Similarly, PCT Article 11(3) provides that…
an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.
Here, the ‘275 national stage application appears to be identical to the ‘605 PCT application. Nevertheless, this issue was never challenged before the PTAB nor the Federal Circuit.
Tags: Earliest effective date > Incorporation by reference > PCT application > Publicly available as prior art
TRANSACTIONS WITHOUT PRIMARY EXPERIMENTAL-USE PURPOSE DO NOT INSULATE FROM THE ON-SALE BAR
Bo Xiao | June 3, 2022
Sunoco Partners Marketing & Terminals L.P., v. U.S. Venture, Inc., U.S. Oil Co., Inc.
Decided: April 29, 2022
Before PROST, REYNA, and STOLL, Circuit Judges.
Summary
The Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded judgement of the United States District Court for the Northern District of Illinois regarding patent infringement. In one of the decisions, the Federal Circuit overturned a district court judgment on some of Sunoco’s claims insulating from the on-sale bar.
Background
Sunoco Partners Marketing & Terminals L.P. (“Sunoco”) sued U.S. Venture, Inc. and U.S. Oil Co., Inc. (collectively, “Venture”), alleging that Venture’s operation butane-blending systems infringed claims of U.S. Patent Nos. 7,032,629 (“the ’629 patent”), 6,679,302 (“the ’302 patent”), 9,494,948 (“the ’948 patent”), and 9,606,548 (“the ’548 patent”) owned by Sunoco.
The patents claimed systems and methods that are directed to blending butane into gasoline before the end chain of distribution. Butane blended with gasoline has some advantages: butane’s volatility helps cars start more easily at low temperatures, and butane is cheaper than gasoline. However, since butane causes air pollution when burned in warm climate, the Environmental Protection Agency (EPA) established regulations on butane blending. Sunoco’s patented technology seeks to maximize butane content while complying with EPA’s (U.S. Environmental Protection Agency) regulations.
The district court ruled on various summary judgment motions and sided with Sunoco in a bench trial to affirm the award of $2 million in damages, later trebled to $6 million.
Discussion
Venture appealed the district court’s decision on (I) rejection of its on-sale-bar defense, (II) determination that it infringed two patents, (III) construction of two claim terms, and (IV) decision to enhance damages. On cross-appeal, Sunoco challenged the district court’s decision not to grant lost-profits damages and its reasonable-royalty award.
The discussion is focused on the topic of on-sale-bar. Venture’s on-sale-bar defense, if successful, would invalidate some claims in two of Sunoco’s patents. The “on-sale-bar” provides the principle that “no person is entitled to patent an ‘invention’ that has been ‘on sale’ more than one year before filing a patent application” (i.e., before the critical date). “On sale” defined by the courts should meet two criteria that the invention is both “the subject of a commercial offer for sale” and “ready for patenting.” Pfaff v. Wells Elec’s., Inc., 525 U.S. 55 (1998). In addition, the on-sale bar can be negated if the patent owner demonstrates that the sale qualifies as “primarily for purposes of experimentation.”
The inventor’s company (MCE) offered to sell and install a butane-blending system to Equilon on February 9, 2000, two days before the critical date. The agreement indicated that Equilon would not pay anything for the machine, but would agree to purchase at least 500,000 barrels of butane from MCE over the next 5 years. The district court found that the equipment was being given away since “the contract did not require Equilon to pay MCE anything in exchange for the system in the normal course of events.” The district court later determined that Sunoco’s systems were sold for experimental-use purposes rather than commercial purposes. However, the Federal Circuit disagreed and opined that the sale “agreement bears ‘all the hallmarks of a commercial contract for sale.’”
The Federal Circuit states that “the agreement begins by expressly describing the transaction as a sale, without reference to any experimental purpose” as recited in the agreement:
MCE agrees to sell to Equilon, and Equilon agrees to purchase, the Equipment (as hereinafter defined) along with a license to use certain technology and software owned by MCE pertaining to the computerized blending of Butane and gasoline stocks, in consideration for the purchase and sale of Butane as set forth herein.
The section of the agreement characterized the sale’s commercial purpose and indicated that “MCE already ‘developed’ the relevant technology and equipment, that Equilon wanted to purchase it, and that MCE was willing to sell it, install it, and supply butane for it.”
Sunoco argued that a primarily experimental purpose is a section of the agreement entitled “Equipment Testing” including two sets of testing: pre-installation testing and post-installation testing. Sunoco drew an analogy to the Supreme Court’s seminal City of Elizabeth case. However, the Federal Circuit pointed out that “the nature of a street pavement,” the invention in the case of the City of Elizabeth, “is such that it cannot be experimented upon satisfactorily except on a highway, which is always public,” City of Elizabeth, 97 U.S. at 134. The Federal Circuit found that the testing was not done by Equilon but a third party. Sunoco also acknowledged that the test could have been done at any time prior to entering the deal with Equilon in January of 2000.
For the posit-installation testing, the section of the agreement states:
Upon completion of installation of the Equipment, MCE shall provide Equilon with written notice of such completion. Within three (3) days of said notice, Equilon shall (i) make all necessary arrangements within the Terminal to enable MCE to test the Equipment to determine whether the Equipment is properly blending butane, and (ii) provide notification to MCE that said arrangements have been made. MCE shall test the Equipment according
to parameters set forth in Schedule 1.10. MCE shall proceed with testing in a timely manner and have a period not to exceed ninety (90) days from the date of said notification by Equilon to complete its testing.
The Federal Circuit found that the post-installation tests were also not experiments, but are acceptance tests to confirm that the equipment “is properly blending butane”—that is, that it is working as promised. It further noted that there was no objective evidence that supported a conclusion that the “primary purpose” of the sale was “to conduct experimentation.”
The Federal Circuit further noted that the district court should have considered “whether the invention was under development, subject to testing, or otherwise still in its experimental stage at the time of the asserted sale.” But that consideration is not the question of Pfaff prong 1. The district court’s “still under development” observation would be better considered at Pfaff prong 2.
Therefore, the Federal Circuit reversed the district court’s experimental-use determination and remand the district court to assess whether the invention was “ready for patenting.”.
Takeaway
- Transactions without primary experimental-use purpose do not insulate from the on-sale bar.
