Why not to be conclusory!
Adele Critchley | September 6, 2023
Volvo Penta of the Ams. LLC v. Brunswick Corp.
Decided: August 24, 2023
Before Moore, Chief Judge, Lourie and Cunningham, Circuit Judges. Authored by Chief Judge, Lourie.
Summary:
The CAFC vacated a Final Written Decision of the Patent Trial and Appeal Board (PTAB) holding all claims of U.S. Patent 9,630,692 (the “’962 patent”), owned by Volvo Penta, unpatentable as obvious. The court remanded the decision for further evaluation of objective indicia of non-obviousness that the Board had not adequately considered.
- A steerable tractor-type drive for a boat, comprising:
a drive support mountable to a stern of the boat;
a drive housing pivotally attached to the support about a steering axis, the drive housing having a vertical drive shaft connected to drive a propeller shaft, the propeller shaft extending from a forward end of the drive housing;
at least one pulling propeller mounted to the propeller shaft,
wherein the steering axis is offset forward of the vertical drive shaft.
The ’962 patent is directed to a boat drive, designed to provide a “pulling-type” or “forward facing drive” positioned under the stern of the boat. Claim 1 of the ’692 patent, reproduced below, is representative.
In 2015, Volvo Penta launched its commercial embodiment of the ’692 patent, the ‘Forward Drive.’ This product became extremely successful once available, particularly for wakesurfing and other water sports.
In August 2020, Brunswick Corp. (“Brunswick”) launched its own drive that also embodied the ’692 patent, the ‘Bravo Four S.’ The same day that Brunswick launched the Bravo Four S, it petitioned for inter partes review of all claims of the ’692 patent. Relevant to this appeal, Brunswick asserted that the challenged claims would have been obvious based on the references, Kiekhaefer and Brandt. Kiekhaefer is a 1952 patent assigned to Brunswick and directed to an outboard motor that could have either rear-facing or forward-facing propellers. Brandt is a 1989 patent assigned to Volvo Penta and directed to a stern drive with rear-facing propellers.
Volvo Penta position was not that the references combined failed to disclose all the claim elements, but rather that there was a lack of motivation to combine said references. Volvo Penta further proffered evidence of six objective indicia of non-obviousness: copying, industry praise, commercial success, skepticism, failure of others, and long-felt but unsolved need.
Ultimately, the Board had found Volvo Penta’s position unpersuasive asserting that sufficient motivation was found and that Volvo Penta’s objective evidence of secondary considerations was insufficient to outweigh Brunswick’s “strong evidence of obviousness.”
Accordingly, Volvo Penta raises three main arguments on appeal: (1) that the Board’s finding of motivation to combine was not supported by substantial evidence, (2) that the Board erred in its determination that there was no nexus, and (3) that the Board erred in its consideration of Volvo Penta’s objective evidence of secondary considerations of nonobviousness.
The court discussed each one in turn:
- Motivation:
The court began:
The ultimate conclusion of obviousness is a legal determination based on underlying factual findings, including whether or not a relevant artisan would have had a motivation to combine references in the way required to achieve the claimed invention. Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1331 (Fed. Cir. 2019) (citing Wyers v. Master Lock Co., 616 F.3d 1231, 1238–39 (Fed. Cir. 2010)).
Volvo Penta first argued that the Board ignored a number of assertions in its favor, including: (1) that Brunswick, despite having knowledge of Kiekhaefer for decades, never attempted the proposed modification itself; (2) that Brunswick’s proposed modification would have entailed a nearly total and exceedingly complex redesign of the drive system; (3) the complexity of and difficulty in shifting the vertical drive shaft of Kiekhaefer; and (4) that Brunswick itself attempted to make its proposed modification yet failed to create a functional drive. The court disagreed on all points.
The Board acknowledged the testimony of Volvo Penta’s expert that a “complete redesign of Brandt” would be necessary, including “over two dozen modifications,” but ultimately found that not all of the identified changes would have been required to arrive at the claimed invention.
Volvo Penta also argued that the Board’s reliance on Kiekhaefer for motivation to combine was misplaced. The Board had relied on Kiekhaefer teaching that a “tractor-type propeller” is “more efficient and capable of higher speeds.” Volvo Penta argued this is not the metric by which recreational boats are measured.
However, again, the court disagreed stating that while ‘it is likewise not conclusive that speed may not be the primary or only metric by which recreational boats are measured. Substantial evidence supports a finding that speed is at least a consideration.’
The CAFC thus upheld the Board’s finding that motivation to combine was supported by substantial evidence.
II. Nexus
The Court began:
For objective evidence of secondary considerations to be relevant, there must be a nexus between the merits of the claimed invention and the objective evidence. See In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995). A showing of nexus can be made in two ways: (1) via a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention.
A patent owner is entitled to a presumption of nexus when it shows that the asserted objective evidence is tied to a specific product that “embodies the claimed features, and is coextensive with them.” Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000).When a nexus is presumed, “the burden shifts to the party asserting obviousness to present evidence to rebut the presumed nexus.” Id.; see also Yita LLC v. MacNeil IP LLC, 69 F.4th 1356, 1365 (Fed. Cir. 2023). The inclusion of noncritical features does not defeat a finding of a presumption of nexus. See, e.g., PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 734, 747 (Fed. Cir. 2016) (stating that a nexus may exist “even when the product has additional, unclaimed features”)
Initially, for a presumption of nexus, there is a requirement that the product embodies the invention and is coextensive with it. Brown & Williamson, 229 F.3d at 1130. The CAFC noted that neither party disputed that both the Forward Drive and the Bravo Four S embodied the claimed invention. See, e.g., J.A. 1211, 117:10–25, but emphasized that coextensiveness is a separate requirement. Fox Factory, 944 F.3d at 1374.
Volvo Penta, as Brunswick and the Board note, did not provide sufficient argument on coextensiveness. Rather, it submitted a mere sentence that the Forward Drive is a “commercial embodiment” of the ‘692 Patent and “coextensive with the claims”. The Board found this argument “conclusory” and the CAFC agreed. As above, “[t]he patentee bears the burden of showing that a nexus exists.” Fox Factory, 944 F.3d at 1373 (quoting WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999)).
However, the court found that the Boards finding of a lack of nexus, independent of a presumption, not supported by evidence. Specifically, the Board found that Brunswick’s development of the Bravo Four S was “akin to ‘copying,’” and that its “own internal documents indicate that the Forward Drive product guided [Brunswick] to design the Bravo Four S in the first place.” Indeed, the undisputed evidence, as the Board found, shows that boat manufacturers strongly desired Volvo Penta’s Forward Drive and were urging Brunswick to bring a forward drive to market.
The court found that there is therefore a nexus between the unique features of the claimed invention, a tractor-type stern drive, and the evidence of secondary considerations.
III. Objective Indicia
The court began:
Objective evidence of nonobviousness includes: (1) commercial success, (2) copying, (3) industry praise, (4) skepticism, (5) long-felt but unsolved need, and (6) failure of others. See, e.g., Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling U.S., Inc., 699 F.3d 1340, 1349–56 (Fed. Cir. 2012). The weight to be given to evidence of secondary considerations involves factual determinations, which we review only for substantial evidence. In re Couvaras, 70 F.4th 1374, 1380 (Fed. Cir. 2023).
The court found that “the Board’s analysis of [this] objective indicia of non-obviousness, including its assignments of weight to different considerations, was overly vague and ambiguous.”
For example, despite recognizing the importance of Brunswick internal documents demonstrating deliberate copying of the Forward Drive, and “finding copying, the Board only afforded this factor ‘some weight.’” The Federal Circuit held that this “assignment of only ‘some weight’” was insufficient in view of its precedent, which generally explains that “copying [is] strong evidence of non-obviousness,” and the “failure by others to solve the problem and copying may often be the most probative and cogent evidence of non-obviousness.” Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 1099 (Fed. Cir. 1985), cert. granted, judgment vacated on other grounds, 475 U.S. 809 (1986) (“That Dennison, a large corporation with many engineers on its staff, did not copy any prior art device, but found it necessary to copy the cable tie of the claims in suit, is equally strong evidence of nonobviousness.”).
Regarding commercial success, the Board recognized that the record supported, and Brunswick did not contest, that boat manufacturers “strongly desired Volvo Penta’s Forward Drive and were urging Brunswick to bring a forward drive to market.” Nevertheless, the Board only afforded this factor “some weight.” The court stated that this finding was not supported by substantial evidence.
Regarding industry praise, the Board found that although the exhibits submitted “provide praise for the Forward Drive more generally, including mentioning its forward facing propellers, as claimed in the ’692 patent,” it also found that “many of the statements of alleged praise specifically discuss unclaimed features, such as adjustable trim and exhaust-related features.”
The court noted that the Board assigned industry praise, commercial success, and copying all “some weight” without explaining why it gave these three factors the same weight. The court concluded this was ambiguous, and so the Board had “failed to sufficiently explain and support its conclusions. See, e.g., Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed. Cir. 2017) (remanding in view of the Board’s failure to “sufficiently explain and support [its] conclusions”); In re Nuvasive, Inc., 842 F.3d 1376, 1385 (Fed. Cir. 2016) (same).”
Next, the Court also determined that the Board failed to properly evaluate long-felt but unresolved need. In evaluating the evidence presented by Volvo Penta, the Board dismissed it as merely describing the benefits of the product without indicating a long-felt problem that others had failed to solve. Volvo Penta had cited articles in support of its position, but the Board, without explanation, gave the arguments very little weight. Upon review, the CAFC stated that the articles identified more than mere benefits and “indisputably identifies a long-felt need: safe wakesurfing on stern-drive boats.”
The CAFC touches upon the relevance of the time since the issuance of cited references. The CAFC agreed with the Board that “the mere passage of time from dates of the prior art to the challenged patents” does not indicate nonobviousness “their age can be relevant to long-felt unresolved need.” See Leo Pharm. Prods., 726 F.3d 1346, 1359 (Fed. Cir. 2013) (“The length of the intervening time between the publication dates of the prior art and the claimed invention can also qualify as an objective indicator of nonobviousness.”); cf. Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1338 (Fed. Cir. 2016), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). The CAFC stated that other factors such as “lack of market demand” can explain why a product was not developed for years, even decades after the prior art. However, when, as here, “evidence demonstrates that there was a market demand for at least” a period of that time (here, the market demand only existed for ten of the fifty years from the prior art reference), the fact that Brunswick itself owned one of the asserted should not be overlooked. That, it is certainly relevant that the asserted patents were long in existence and not obscure, but rather owned by the parties in this case.
Finally, the CAFC held that the Board’s ultimate conclusion that “Brunswick’s “strong evidence of obviousness outweighs Patent Owner’s objective evidence of nonobviousness” lacked a proper explanation for said conclusion.
Thus, ultimately the Court found that the Board failed to properly consider the evidence of objective indicia of nonobviousness and so vacated and remanded for further consideration consistent with the opinion.
Comments:
Motivation to combine a reference does not require a recognition of the primary or only metric by which an invention is measured, so long as it is at least a consideration.
Regarding a presumption of nexus, be reminded that (i) coextensiveness is a separate element and should be addressed as such; and that (ii) “[t]he patentee bears the burden of showing that a nexus exists” and this requires more than conclusory statements. Similarly, the PTO must support a finding of a lack of nexus with evidence not mere conclusory statements.
It also serves as a reminder to be thoughtful and thorough in presenting objective indicia of nonobviousness, not only during IPRs and other forms of litigation, but in prosecution too. Avoid citing arguments in conclusory fashion.
Tags: Motivation > nexus > objective indicia of nonobviousness > obviousness > secondary considerations
Do not omit an “essential element” of the original invention in the reissue claims
Sung-Hoon Kim | August 29, 2023
In Re: FloatʻN’Grill LLC
Decided: July 12, 2023
Before Linn (author), Prost, and Cunningham
Summary:
When FloatʻN’Grill LLC filed a reissue application, they deleted an essential part of the original disclosure from reissue claims. The PTAB rejected those claims for failure to satisfy the original patent requirement of § 251. The CAFC affirmed the PTAB’s decision.
Details:
FloatʻN’Grill LLC (“FNG”) appeals from the decision of the PTAB affirming the Examiner’s rejection under 35 U.S.C. §§112(b) and 251 of claims 4, 8, 10-14, and 17-22 of FNG’s application for reissue of its U.S. Patent No. 9,771,132 (“’132 patent”).
The ’132 patent
The ’132 patent is directed to a float designed to support a grill (76) so that a user can grill food in a body of water.
A floating apparatus (10) includes a float (20), a pair of grill supports (46 and 48), and an upper support (52). Each of the grill supports includes a plurality of magnets (60) disposed within a middle segment (58) of the upper support (52) of each grill support (46 and 48).
In particular, the specification states: “A flattened bottom side 74 of a portable outdoor grill 76 is removably securable to the plurality of magnets 60 and removably disposed immediately atop the upper support 52 of each” of the grill supports.” The specification does not disclose, suggest, or imply any other structures besides the plurality of magnets for removably securing the grill to the supports.
Independent claim 1 is a representative claim:
1. A floating apparatus for supporting a grill comprising. . .
. . .
a plurality of magnets disposed within the middle segment of the upper support of each of the right grill support and the left grill support . . .
. . .
wherein a flattened bottom side of a portable outdoor grill is removably securable to the plurality of magnets and removably disposed immediately atop the upper support of each of the right grill support and the left grill support.
Reissue Application
After the ’132 patent was issued, FNG filed a reissue application. However, none of the claims in the reissue application recites “the plurality of magnets” limitations. Rather, the claims recite the feature regarding the removable securing of a grill to the floating apparatus.
Independent claim 4 is a representative claim in the reissue application:
4. A floating grill support apparatus adapted to support a grill on water, the apparatus comprising:
a float having an outer rim wherein the float is buoyant and adapted to float in water and support a grill above the water; and
at least one base rod disposed within the outer rim wherein the base rod comprises a grill support member;
wherein the grill support member has an upper support portion;
wherein a bottom side of the grill is removably securable and removably disposed immediately atop the upper support portion of the grill support member.
The Examiner rejected the claims for failure to satisfy the reissue standard of 35 U.S.C. §251.
The Examiner indicated that the ’132 patent disclosed “a single embodiment of a floating apparatus for supporting a grill” using a “plurality of magnets” and did not disclose the plurality of magnets as being “an optional feature of the invention.” In addition, the Examiner indicated that the magnets are a critical element of the invention because the magnets alone are responsible for a safe and stable attachment between the floating apparatus and the grill.
The Examiner noted that since some claims in the reissue application do not require any magnets, require only a single magnet, and do not positively recite any magnets, they do not satisfy the original patent requirement of §251.
The PTAB
The PTAB maintained all the Examiner’s rejection.
The CAFC
The CAFC reviewed de novo.
The CAFC emphasized that for a reissue application, there is an additional statutory limitation in 35 U.S.C. §251 for a patentee seeking to change the scope of the claims through reissue – the “original patent” requirement of §251 (the reissue claims must be directed to “the invention disclosed in the original patent”).
The CAFC noted that the focus of the §251 analysis is on the invention disclosed in the original patent and whether that disclosure, on its face, explicitly and unequivocally described the invention as recited in the reissue claims.
The CAFC agreed with the PTAB that the reissue claims in this case are not directed to the invention disclosed in the original patent and, therefore, do not meet the original patent requirement of § 251.
The CAFC noted that the original specification describes a single embodiment of the invention characterized as a floating apparatus having a grill support including a plurality of magnets for safely and removably securing the grill to the float.
The CAFC held that the plurality of magnets component of the grill support structure are removed from the reissue claims, and that the original patent disclosure does not disclose these structures as optional. Also, the CAFC noted that the original patent disclosure does not provide any examples of alternative components or arrangements that might perform the functions of the plurality of magnets.
Therefore, the CAFC found that the plurality of magnets are essential parts of the invention because they are only disclosed structures for performing the task of removably and safely securing the grill to the float apparatus.
Accordingly, the CAFC held that the PTAB did not err in affirming the rejection of reissue claims for failure to satisfy the original patent requirement of § 251.
Takeaway:
- If Applicant would like to broaden the scope of the original invention, file a continuation or divisional application during the pendency of a parent application.
- Make sure that do not omit an “essential element” of the original invention in the reissue claims.
- Add more boilerplate statements and additional embodiments in the original application so that the broader reissue claims could be saved.
Tags: 35 U.S.C. § 251 > continuation application > divisional application > original patent requirement > Reissue application
Federal Circuit Affirms Alice Nix of Poll-Based Networking System
John Kong | August 10, 2023
Trinity Info Media v Covalent, Inc.
Decided: July 14, 2023
Before Stoll, Bryson and Cunningham.
Summary:
The Federal Circuit affirmed patent ineligibility of the Trinity’s poll-based networking system under Alice. The claims are directed to the abstract idea of matching based on questioning, something that a human can do. The additional features of a data processing system, computer system, web server, processor(s), memory, hand-held device, mobile phone, etc. are all generic components providing a technical environment for performing the abstract idea and do not detract from the focus of the claims being on the abstract idea. The specification also does not support a finding that the claims are directed to a technological improvement in computers, mobile phones, computer systems, etc.
Procedural History:
Trinity sued Covalent for infringing US Patent Nos. 9,087,321 and 10,936,685 in 2021. The district court granted Covalent’s 12(b)(6) motion to dismiss, concluding that the asserted claims are not patent eligible subject matter under 35 USC §101. Trinity appealed.
Decision:
Representative claim 1 from the ‘321 patent is as follows:
A poll-based networking system, comprising:
a data processing system having one or more processors and a memory, the memory being specifically encoded with instructions such that when executed, the instructions cause the one or more processors to perform operations of:
receiving user information from a user to generate a unique user profile for the user;
providing the user a first polling question, the first polling question having a finite set of answers and a unique identification;
receiving and storing a selected answer for the first polling question;
comparing the selected answer against the selected answers of other users, based on the unique identification, to generate a likelihood of match between the user and each of the other users; and
displaying to the user the user profiles of other users that have a likelihood of match within a predetermined threshold.
Representative claim 2 from the ‘685 patent is as follows:
A computer-implemented method for creating a poll-based network, the method comprising an act of causing one or more processors having an associated memory specifically encoded with computer executable instruction means to execute the instruction means to cause the one or more processors to collectively perform operations of:
receiving user information from a user to generate a unique user profile for the user;
providing the user one or more polling questions, the one or more polling ques-tions having a finite set of answers and a unique identification;
receiving and storing a selected answer for the one or more polling questions;
comparing the selected answer against the selected answers of other users, based on the unique identification, to generate a likelihood of match between the user and each of the other users;
causing to be displayed to the user other users, that have a likelihood of match within a predetermined threshold;
wherein one or more of the operations are carried out on a hand-held device; and
wherein two or more results based on the likelihood of match are displayed in a list reviewable by swiping from one result to another.
Looking at the claims first, the claimed functions of (1) receiving user information; (2) providing a polling question; (3) receiving and storing an answer; (4) comparing that answer to generate a “likelihood of match” with other users; and (5) displaying certain user profiles based on that likelihood are all merely collecting information, analyzing it, and displaying certain results which fall in the “familiar class of claims ‘directed to’ a patent ineligible concept,” which a human mind could perform. The court agreed with the district court’s finding that these claims are directed to an abstract idea of matching based on questioning.
The ‘685 patent adds the further function of reviewing matches using swiping and a handheld device. These features did not alter the court’s decision. The dependent claims also added other functional variations, such as performing matching based on gender, varying the number of questions asked, displaying other users’ answers, etc. These are all trivial variations that are themselves abstract ideas. The further recitation of the hand-held device, processors, web servers, database, and a “match aggregator” did not change the “focus” of the asserted claims. Instead, such generic computer components were merely limitations to a particular environment, which did not make the claims any less abstract for the Alice/Mayo Step 1.
With regard to software-based inventions, the Alice/Mayo Step 1 inquiry “often turns on whether the claims focus on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an abstract idea for which computers are invoked merely as a tool.” In addressing this, the court looks at the specification’s description of the “problem facing the inventor.” Here, the specification framed the inventor’s problem as how to improve existing polling systems, not how to improve computer technology. As such, the specification confirms that the invention is not directed to specific technological solutions, but rather, is directed to how to perform the abstract idea of matching based on progressive polling.
Under Alice/Mayo Step 2, the claimed use of general-purpose processors, match servers, unique identifications and/or a match aggregator is merely to implement the underlying abstract idea. The specification describes use of “conventional” processors, web servers, the Internet, etc. The court has “ruled many times” that “invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea.” And, no inventive concept is found where claims merely recite “generic features” or “routine functions” to implement an underlying abstract idea.
Trinity’s Argument 1
Claim construction and fact discovery was necessary, but not done, before analyzing the asserted claims under §101.
Federal Circuit’s Response 1
“A patentee must do more than invoke a generic need for claim construction or discovery to avoid grant of a motion to dismiss under § 101. Instead, the patentee must propose a specific claim construction or identify specific facts that need development and explain why those circumstances must be resolved before the scope of the claims can be understood for § 101 purposes.”
Trinity’s Argument 2
Under Alice/Mayo Step One, the claims included an “advance over the prior art” because the prior art did not carry out matching on mobile phones, did not employ “multiple match servers” and did not employ “match aggregators.”
Federal Circuit’s Response 2
A claim to a “new” abstract idea is still an abstract idea.
Trinity’s Argument 3
Humans cannot mentally engage in the claimed process because humans could not perform “nanosecond comparisons” and aggregate “result values with huge numbers of polls and members” nor could humans select criteria using “servers, storage, identifiers, and/or thresholds.”
Federal Circuit’s Response 3
The asserted claims do not require “nanosecond comparisons” nor “huge numbers of polls and members.”
Trinity’s claims can be directed to an abstract idea even if the claims require generic computer components or require operations that a human cannot perform as quickly as a computer. Compare, for example, with Electric Power Group, where the court held the claims to be directed to an abstract idea even though a human could not detect events on an interconnected electric power grid in real time over a wide area and automatically analyze the events on that grid. Likewise, in ChargePoint (electric car charging network system), claims directed to enabling “communication over a network” were abstract ideas even though a human could not communicate over a computer network without the use of a computer.
Trinity’s Argument 4
Claims are eligible inventions directed to improvements to the functionality of a computer or to a network platform itself.
Federal Circuit’s Response 4
As described in the specification, mere generic computer components, e.g., a conventional computer system, server, web server, data processing system, processors, memory, mobile phones, mobile apps, are used. Such generic computer components merely provide a generic technical environment for performing an abstract idea. The specification does not describe the invention of swiping or improving on mobile phones. Indeed, the ‘685 patent describes the “advent of the internet and mobile phones” as allowing the establishment of a “plethora” or “mobile apps.” As such, “the specification does not support a finding that the claims are directed to a technological improvement in computer or mobile phone functionality.”
Trinity’s Argument 5
The district court failed to properly consider the comparison of selected answers against other uses “based on the unique identification” which was a “non-traditional design” that allowed for “rapid comparison and aggregation of result values even with large numbers of polls and members.”
Federal Circuit’s Response 5
Use of a “unique identifier” does not render an abstract idea any less abstract.
On the other hand, the “non-traditional design” appears to be based on use of an “in-memory, two-dimensional array” that “provides for linear speed across multiple match servers” and permits “an immediate comparison to determine if the user had the same answer to that of another user.” However, the asserted claims do not require any such in-memory, two-dimensional array.
Trinity’s Argument 6
The district court failed to properly consider the generation of a likelihood of a match “within a predetermined threshold.” Without this consideration, “there would be no limit or logic associated with the volume or type of results a user would receive.”
Federal Circuit’s Response 6
This merely addresses the kind of data analysis that the abstract idea of matching would include, namely how many answers should be the same before declaring a match. This does not change the focus of the claimed invention from the abstract idea of matching based on questioning.
Trinity’s Argument 7
There is an inventive concept under Alice/Mayo Step 2 because the claims recite steps performed in a “non-traditional system” that can “rapidly connect multiple users using progressive polling that compare[s] answers in real time based on their unique identification (ID) (and in the case of the ’685 patent employ swiping)” which “represents a significant advance over the art.”
Federal Circuit’s Response 7
These conclusory assertions are insufficient to demonstrate an inventive concept. “We disregard conclusory statements when evaluating a complaint under Rule 12(b)(6).”
Takeaways:
The evisceration of software-related inventions as abstract ideas continues. Although the court looks at the “claimed advance over the prior art” in assessing the “directed to” inquiry under Alice Step 1, conclusory assertions of advances over the prior art are insufficient to demonstrate inventive concept under Alice Step 2, at least for a 12(b)(6) motion to dismiss. It remains to be seen what type of description of an “advance over the prior art” would not be “conclusory” and satisfy the “significantly more” inquiry to be an inventive concept under Alice Step 2.
The one glimmer of hope for the patentee might have been the use of an “in-memory, two-dimensional array” that “provides for linear speed across multiple match servers.” An example of patent eligibility based on use of such logical structures can be found in Enfish. However, if the specification does not describe this use of an in-memory two-dimensional array and the “technological” improvement resulting therefrom to be the “focus” of the invention, even this feature might not be enough to survive § 101.
Claim Construction Should be Well-Grounded in Intrinsic Evidence
Bo Xiao | August 3, 2023
MEDYTOX, INC. v. GALDERMA S.A.
Decided: June 27, 2023
Before DYK, REYNA, and STARK, Circuit Judges.
Summary
The CAFC upheld a decision by the PTAB in a post-grant review involving a patent for a botulinum toxin treatment. The patent owner attempted to replace original claims with substitute claims was rejected by the Board, leading to the cancellation of the original claims and the finding that the substitute claims were unpatentable. The court affirmed the Board’s decision, emphasizing the challenges of amending claims in post-grant proceedings.
Background
Medytox owns U.S. Patent No. 10,143,728 (‘728 patent), issued in December 2018, which is directed to a method that uses an animal-protein-free botulinum toxin composition for cosmetic and non-cosmetic applications. Galderma filed a petition for post-grant review (PGR) proceedings at the PTAB to challenge the validity of ‘728 patent claims.
During the PGR proceedings, Medytox attempted to modify all 10 claims of its ‘728 patent and obtained initial feedback on proposed substitute claims under the PTAB’s amendment motion pilot program. The PTAB’s preliminary guidance revealed that Medytox did not meet the statutory requirements for submitting an amendment motion. However, the board acknowledged that the new phrase claiming “a responder rate at 16 weeks after the first treatment of 50% or greater” neither introduced new matter nor suggested a range of responder rates. Despite this, Galderma opposed Medytox’s substitute claims, arguing that the ‘728 patent’s specification only revealed responder rates up to 62% in clinical trials, whereas Medytox’s claim language encompassed a range of responder rates from 50% to 100%.
Contrary to its initial guidance, the PTAB issued a final written decision in the PGR proceedings, ruling that the substitute claims introduced new matter regarding to the responder rate limitation. Medytox asserted that the 50% responder rate was claimed as a minimum threshold and not a range. Nevertheless, the PTAB found the substitute claim language to be invalid for indefiniteness after reviewing the complete record, as “a skilled artisan would not have been able to achieve higher responder rates under the guidance provided in the specification without undue experimentation.” Ultimately, the Board cancelled the original claims 1-5 and 7-10 and also found that the substitute claims to be unpatentable.
Below, substitute claim 19 is provided as a representative of the substitute claims.
19. A method for treating glabellar lines
a conditionin a patient in need thereof, comprising:locally administering a first treatment of
therapeutically effective amount ofa botulinum toxin composition comprising a serotype A botulinum toxin in an amount pre-sent in about 20 units of MT10109L, a first stabilizer comprising a polysorbate, and at least one additional stabilizer, and that does not comprise an animal-derived product or recombinant human albumin;locally administering a second treatment of the botulinum toxin composition at a time interval after the first treatment;
wherein said time interval is the length of effect of the serotype A botulinum toxin composition as determined by physician’s live assessment at maximum frown;
wherein said botulinum toxin composition has a greater length of effect compared to about 20 units of BOTOX®, when
whereby the botulinum toxin composition exhibits a longer lasting effect in the patient when com-pared to treatment of the same condition with a botulinum toxin composition that contains an animal-derived product or recombinant human albumin dosed at a comparable amount andadministered in the same manner for the treatment of glabellar linesand to the same locations(s)as that of the botulinum toxin composition; andwherein said greater length of effect is determined by physician’s live assessment at maximum frown and requires a responder rate at 16 weeks after the first treatment of 50% or greater.
that does not comprise an animal-derived product or recombinant human albumin, wherein the condition is selected from the group consisting of glabellar lines, marionette lines, brow furrows, lateral canthal lines, and any combination thereof.
Discussion
The key issues in the case were the responder rate limitation and whether the substitute claims contained new matter not found in the patent specification. The responder rate limitation referred to the proportion of patients who responded favorably to the treatment with Medytox’s animal-protein-free botulinum toxin composition. In the appeal, Medytox contested the Board’s findings on claim construction, new matter, written description, and enablement, as well as the Board’s Pilot Program on amending practice and procedure under the Administrative Procedure Act.
The Board’s interpretation of the responder rate limitation as a range was the first issue addressed. Medytox argued that the responder rate limitation should be viewed as a binary (“yes-or-no”) inquiry, serving as a “threshold” for determining whether the animal protein-free composition has a more extended effect than BOTOX®.
According to Galderma, Medytox failed to cite intrinsic evidence supporting its suggested claim construction. Galderma also asserts that Medytox did not propose its “minimum threshold” interpretation of the responder rate limitation until after the Preliminary Guidance was released. Medytox did not substantively counter Galderma’s claim but instead insisted that extrinsic evidence supports their claim construction.
The court upheld the Board’s decision and noted that it is typically considered that intrinsic evidence, such as the specification and the prosecution history, is the most crucial consideration in a claim construction analysis. The court cited the U.S. Supreme Court’s recent landmark decision in Amgen v. Sanofi (2023) when nixing Medytox’s challenge to the PTAB’s lack of enablement determination. Under Amgen, “[t]he more one claims, the more one must enable,” and the court noted that data tables included with the ‘728 patent’s specification only disclosed responder rates of 52%, 61% and 62%. While the parties do not substantially dispute the responder rate limitation as a “threshold” or “range,” the Board’s construction of the responder rate limitation as a range in the substitute claims was ultimately affirmed.
Furthermore, the court concluded that the Board’s change in claim construction between its Preliminary Guidance and final written decision was not arbitrary and capricious and did not violate due process or the Administrative Procedure Act (APA). The court emphasized that the Board’s Preliminary Guidance, as indicated in its statement, is “initial, preliminary, [and] non-binding”, and only provides initial views on whether the patent owner has demonstrated a reasonable likelihood of meeting the requirements for filing an amendment motion. The court cited previous rulings which state that the Board must reevaluate matters based on the full record, especially when the standard changes, and that it is encouraged to modify its viewpoint if further development of the record necessitates such a change. Therefore, the Board’s decision to alter its claim construction for the responder rate limitation was not deemed arbitrary and capricious.
Takeaway
- The evolution of the record over the course of a proceeding can significantly impact the outcome, necessitating adjustments in views and decisions as the evidence develops.
- Arguments related to claim construction should be well-grounded in the intrinsic evidence, which includes the specification and the prosecution history, as these are typically the most important considerations in claim construction.
- Claims should be well-grounded in the specification.
