The USPTO Appeals Board Must Adequately Explain Its Reasoning
| August 27, 2015
Power Integrations v. Lee
August 12, 2015
Before: Moore, Mayer, Linn, opinion by Mayer
Summary
Power Integrations challenged a decision of the Board of Patent Appeals and Interferences (“board”) affirming the rejection of claims 1, 17, 18 and 19 of US Patent No. 6,249,876 (the ‘876 patent) as anticipated under 35 U.S.C. §102(b). The board’s construction of the claim term “coupled” was not adequately explained. The court vacated and remanded the board’s decision, holding only that the board on remand should carefully and fully assess whether the disputed claims of the ’876 patent are anticipated by the prior art, setting out its reasoning in sufficient detail to permit meaningful appellate review.
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 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.
Public use bar inappropriate when participants in clinical trials do not discern specifics of new product
| May 22, 2013
Dey, L.P. v. Sunovion Pharmaceuticals, Inc.
May 20, 2013
Panel: Bryson, O’Malley, and Newman. Opinion by Bryson. Dissent by Newman.
Summary:
The Federal Circuit reversed and remanded the holding of the District Court that some of Dey’s patents were invalid because a Sunovion’s clinical trial, where Sunovion tested its own product, constituted an invalidating public use. The Federal Circuit determined that although some of test samples were lost and clinical trial was not perfectly confidential, Sunovion’s clinical trial is not an invalidating public use as long as participants do not recognize the specifics of a new drug.
연방지방법원 뉴욕 남부지원(U.S. District Court for the Southern District of New York)은 Sunovion의 임상실험 (clinical trial)이 공용 (public use)에 해당된다고 판단하여, Dey의 특허가 무효 (invalid)라도 판결하였다.
이에 불복하여, 원고는 연방항소법원 (U.S. Court of Appeals for the Federal Circuit)에 상고 (appeal)하였다. 연방항소법원은 임상실험 도중 test sample이 분실되었거나 임상실험이 완벽히 비공개로 진행되지 않았더라도 실험참가자가 신약에 대한 자세한 정보를 모른다면Sunovion의 임상실험은 공용에 해당되지 않는다고 판결하였다.
Tags: anticipation > clinical trial > public use bar > summary judgment > third party use
Prior Art Reference Must Disclose Arrangement of Elements, Not Merely Each Discrete Element
| March 20, 2013
SynQor, Inc., v. Artesyn Technologies, Inc., et al.
March 13, 2013
Panel: Rader, Lourie and Daniel (Chief District Judge). Opinion by Rader.
Summary
SynQor sued Artesyn Technologies, Inc., and eight other power converter manufactures (Defendants) for infringement of five of SynQor’s U.S. Patents in the United States District Court (“DC”) for the Eastern District of Texas. The DC granted partial summary judgment of infringement of against the Defendants. The DC denied Defendants’ motion for judgment as a matter of law (JMOL) or a new trial after the jury found all asserted claims infringed, not invalid, and awarded lost-profits of $95 million. On appeal, the CAFC affirmed the DC based on a review of the record evidence.
Tags: anticipation > claim construction > ThomasBrown
Board Should Consider Appellee’s Grounds For Affirming Rejection Presented To Examiner During Reexamination, Even If Grounds Had Not Been Raised On Appeal
| February 6, 2013
Rexnord Industries v. Kappos
January 23, 2013
Panel: Newman, Lourie, Prost. Opinion by Newman.
Summary:
In 2003 Habasit filed an infringement suit against Rexnord in the United States District Court for the District of Delaware for infringement of its U.S. Patent No. 6,523,680 (the ’680 patent). Rexnord then requested inter partes reexamination of the ’680 patent, and the district court stayed the infringement suit pending completion of reexamination.
On reexamination, the examiner held all of the claims in the ’680 patent unpatentable for anticipation and obviousness. Habasit appealed the examiner’s decision to the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board). On appeal, the Board reversed the examiner’s decision and held the claims patentable.
Rexnord appealed to the CAFC. The CAFC affirmed that the claims are not anticipated, and reversed the Board’s determination that the claimed invention is not obvious in view of certain prior art.
Tags: anticipation > appeal > obviousness > reexamination
Prior art can show what the claims would mean to those skilled in the art
| December 5, 2012
ArcelorMittal v. AK Steel Corp.
November 30, 2012
Panel: Dyk, Clevenger, and Wallach. Opinion by Dyk.
Summary:
The U.S. District Court for the District of Delaware held that defendants AK Steel did not infringe plaintiffs ArcelorMittal’s U.S. Patent No. 6,296,805 (the ‘805 patent), and that the asserted claims were invalid as anticipated and obvious based on a jury verdict.
ArcelorMittal appealed the district court’s decision. On appeal, the CAFC upheld the district court’s claim construction in part and reverse it in part. With regard to anticipation, the CAFC reversed the jury’s verdict of anticipation. With regard to obviousness, the CAFC held that a new trial is required because the district court’s claim construction error prevented the jury from properly considering ArcelorMittal’s evidence of commercial success.
미국 델라웨어주 연방지방법원 (U.S. District Court for the District of Delaware)은 원고 (ArcelorMittal)가 피고 (AK Steel)를 상대로 낸 특허 침해 소송에서 원고의 특허 (U.S. Patent No. 6,296,805)가 예견가능성 (anticipation) 및 자명성 (obviousness) 기준을 통과하지 못하였다는 배심원의 판단을 바탕으로 피고가 원고의 특허를 침해하지 않았다고 판결하였다.
이에 불복하여 원고는 연방항소법원 (U.S. Court of Appeals for the Federal Circuit)에서 상고 (appeal) 하였으며, 연방항소법원은 지방법원의 청구항 해석 (claim construction)에 대해 일정 부분은 확인하였으나, 나머지 부분은 번복하였다.
예견가능성과 관련하여 연방항소법원은 배심원의 예견가능성 판단과 다른 결정을 내렸다.
자명성과 관련해서는 연방지방법원의 잘못된 청구항 해석으로 인하여 배심원이 원고의 상업적 성공 (commercial success) 증거를 고려하지 않았기때문에 재심 (new trial)이 필요하다고 판결하였다.
Tags: anticipation > claims construction > commercial success > extrinsic evidence > intrinsic evidence > obviousness > prior art > secondary considerations
Like prior art patents, potentially anticipatory non-patent printed publications are presumed to be enabling
| October 5, 2012
In re Antor Media Corporation
July 27, 2012
Panel: Rader, Lourie and Bryson. Opinion by Lourie.
Summary
Antor Media Corp. appeals from the decision of the Board of Patent Appeals and Interferences rejecting on reexamination the claims of its patent as anticipated and obvious over four prior art references. The prior art references include three printed publications and one U.S. patent. The Board found that two of the printed publications anticipated the claims in Antor’s patent. Here, Antor argues that since the printed publications are not enabling, they could not have anticipated the claims. Antor further argues that unlike prior art patents, prior art printed publications are not presumptively enabling. The principal issue on appeal is therefore whether the presumption that prior art patents are enabling can be logically extended to printed publications. The Federal Circuit answers that it can, holding that a prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee.
Tags: anticipation > enablement > non-enablement > non-patent literature > prior art
