Revisiting KSR: “A person of ordinary skill is also a person of ordinary creativity, not an automaton.”
| June 29, 2021
Becton, Dickinson and Company v. Baxter Corporation Englewood
Decided on May 28, 2021
Prost*, Clevenger, and Dyk. Court opinion by Dyk. (*Sharon Prost vacated the position of Chief Judge on May 21, 2021, and Kimberly A. Moore assumed the position of Chief Judge on May 22, 2021.)
Summary
On appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in an inter partes review, the Federal Circuit unanimously revered the Board’s conclusion of non-obviousness of an asserted patent, directed to a “method for performing telepharmacy,” and a “system for preparing and managing patient-specific dose orders that have been entered into a first system.” The Federal Circuit stated that, in analysis of obviousness, a person of ordinary skill would also consider a source other than cited prior art references, and established that cancellation of all the claims of a patent does not affect the status of the patent as pre-AIA Section 102(e)(2) reference.
Details
I. Background
Becton, Dickinson and Company (“Becton”) petitioned for inter partes review of claims 1– 13 and 22 of U.S. Patent No. 8,554,579 (“the ’579 patent”), owned by Baxter Corporation Englewood (“Baxter”).
Becton asserted invalidity of the challenged claims primarily based on three prior art references: U.S. Patent No. 8,374,887 (“Alexander”), U.S. Patent No. 6,581,798 (“Liff”), and U.S. Patent Publication No. 2005/0080651 (“Morrison”).
Claims 1 and 8 are illustrative of the ’579 patent, as agreed by the parties. Claim 1 is directed to a “method for performing telepharmacy,” and claim 8 is directed to a “system for preparing and managing patient-specific dose orders that have been entered into a first system.”
There are two contested limitations on appeal: the “verification” limitation in claim 8, and the “highlighting” limitation in claims 1 and 8. Claim 8 recites three elements, an order processing server, a dose preparation station, and a display. The relevant portion of the dose preparation station in claim 8, containing both limitations, reads:
8. A system for preparing and managing patient-specific dose orders that have been entered into a first system, comprising:
a dose preparation station for preparing a plurality of doses based on received dose orders, the dose preparation station being in bi-directional communication with the order processing server and having an interface for providing an operator with a protocol associated with each received drug order and specifying a set of drug preparation steps to fill the drug order, the dose preparation station including an interactive screen that includes prompts that can be highlighted by an operator to receive additional information relative to one particular step and includes areas for entering an input;
. . . and wherein each of the steps must be verified as being properly completed before the operator can continue with the other steps of drug preparation process, the captured image displaying a result of a discrete isolated event performed in accordance with one drug preparation step, wherein verifying the steps includes reviewing all of the discrete images in the data record . . . .
The Patent Trial and Appeal Board (“Board”) determined that asserted claims were not invalid as obvious. While the Board found that Becton had established that one of ordinary skill in the art would have been motivated to combine Alexander and Liff, as well as Alexander, Liff, and Morrison, and that Baxter’s evidence of secondary considerations was weak, the Board nevertheless determined that Alexander did not teach or render obvious the verification limitation and that combinations of Alexander, Liff, and Morrison did not teach or render obvious the highlighting limitation.
Becton appealed.
II. The Federal Circuit
The Federal Circuit (“the Court”) unanimously revered the Board’s conclusion of non-obviousness because the determination regarding the verification and highlighting limitations is not supported by substantial evidence.
(i) The Verification Limitation
Alexander discloses in a relevant part: “[I]n some embodiments, a remote pharmacist may supervise pharmacy work as it is being performed. For example, in one embodiment, a remote pharmacist may verify each step as it is performed and may provide an indication to a non-pharmacist per- forming the pharmacy that the step was performed correctly. In such an example, the remote pharmacist may provide verification feedback via the same collaboration software, or via another method, such as by telephone.” Alexander, col. 9 ll. 47–54 (emphasis added).
Relying on the above-cited portion of Alexander, the Board found persuasive Baxter’s argument that Alexander “only discusses that ‘a remote pharmacist may verify each step’; not that the remote pharmacist must verify each and every step before the operator is allowed to proceed” (emphasis added).
The Court concluded that the Board’s determination that Alexander does not teach the verification limitation is not supported by substantial evidence because, among other things, the Court found it quite clear that “[i]n the context of Alexander, “may” does not mean “occasionally,” but rather that one “may” choose to systematically check each step.”
(ii) The Highlighting Limitation
Becton did not argue that Liff “directly discloses highlighting to receive additional language about a drug preparation step.” Instead, Becton argued that “Liff discloses basic computer functionality—i.e., using prompts that can be highlighted by the operator to receive additional information—that would render the highlighting limitation obvious when applied in combination with other references,” primarily Alexander.
In support of petition for inter partes review, Dr. Young testified in his declaration that Liff “teaches that the user can highlight various inputs and information displayed on the screen, as illustrated in Figure 14F.”
The Board found that Liff taught “highlight[ing] patient characteristics when dispensing a prepackaged medication.” Baxter did not contend that this aspect of the Board’s decision was erroneous.
Nevertheless, while finding that “this present[ed] a close case,” the Board determined, that “Dr. Young fail[ed] to explain why Liff’s teaching to highlight patient characteristics when dispensing a prepackaged medication would lead one of ordinary skill to highlight prompts in a drug formulation context to receive additional information relative to one particular step in that process, or even what additional information might be relevant.” In addition, the Board found that Becton’s arguments with respect to Morrison did not address the deficiency in its position based on Alexander and Liff.
In contrast, citing KSR (“[a] person of ordinary skill is also a person of ordinary creativity, not an automaton”), the Court concluded that the Board erred in looking to Liff as the only source a person of ordinary skill would consider for what “additional information might be relevant.” The Court reached an opposite conclusion by citing following Dr. Young’s testimony:
“[a] person of ordinary skill in the art would have understood that additional information could be displayed on the tabs taught by Liff” and that “such information could have included the text of the order itself, information relating to who or how the order should be prepared, or where the or- der should be dispensed.”
“[a] medication dose order for compounding a pharmaceutical would have been accompanied by directions for how the dose should be prepared, including step-by-step directions for preparing the dose.”
(iii) An Alternative Ground
As an alternative ground to affirm the Board’s determination of non-obviousness, Baxter argues that the Board erred in determining that Alexander is prior art under 35 U.S.C. § 102(e)(2) (pre-AIA).
It is undisputed that the filing date of the application for Alexander is February 11, 2005, which is before the earliest filing date of the application for the ’579 patent, October 13, 2008; that the Alexander claims were granted; and that the application for Alexander was filed by another.
However, based on the fact that all claims in Alexander (granted on February 12, 2013) were cancelled on February 15, 2018, following inter partes review, Baxter argued that “because the Alexander ‘grant’ had been revoked, it can no longer qualify as a patent ‘granted’ as required for prior art status under Section 102(e)(2).”
The Court rejected Baxter’s argument because “[t]he text of the statute requires only that the patent be “granted,” meaning the “grant[]” has occurred. 35 U.S.C. § 102(e)(2) (pre-AIA)” and “[t]he statute [thus] does not require that the patent be currently valid.”
(iv) Secondary Considerations
The Court rejected Baxter’s argument because “Baxter does not meaningfully argue that the weak showing of secondary considerations here could overcome the showing of obviousness based on the prior art.”
Takeaway
· In analysis of obviousness, a person of ordinary skill would also consider a source other than cited prior art references (petitioner’s testimony in this case).
· Cancellation of all the claims of a patent does not affect the status of the patent as pre-AIA Section 102(e)(2) reference.
New evidence submitted with a reply in IPR institution proceedings
| December 30, 2020
VidStream LLC v. Twitter, Inc.
November 25, 2020
Newman, O’Malley, and Taranto. Court opinion by Newman.
Summary
On appeals from the United States Patent and Trademark Office in IPR arising from two petitions filed by Twitter, the Federal Circuit affirmed the Board’s ruling that Bradford is prior art (printed publication) against the ’997 patent where the priority date of the ’997 patent is May 9, 2012 and a page of the copy of Bradford cited in Twitter’s petitions stated, in relevant parts, “Copyright © 2011 by Anselm Bradford and Paul Haine” and “Made in the USA Middletown, DE 13 December 2015.” The Federal Circuit affirmed the Board’s admission of new evidence regarding Bradford submitted by Twitter in reply (not included in petitions). The Federal Circuit also affirmed the Board’s rulings of unpatentability of claims 1– 35 of the ’997 patent over Bradford and other prior art references, in the two IPR decisions on appeal.
Details
I. background
U.S. Patent No. 9,083,997 (“the ’997 patent”), assigned to VidStream LLC, is directed to “Recording and Publishing Content on Social Media Websites.” The priority date of the ’997 patent is May 9, 2012.
Twitter filed two petitions for inter partes review (“IPR”), with method claims 1–19 of the ’997 patent in one petition, and medium and system claims 20–35 of the ’997 patent in the other petition. Twitter cited Bradford as the primary reference for both petitions, combined with other references.
With the petitions, Twitter filed copies of several pages of the Bradford book, and explained their relevance to the ’997 claims. Twitter also filed a Bradford copyright page that contains the following legend:
Copyright © 2011 by Anselm Bradford and Paul Haine
ISBN-13 (pbk): 978-1-4302-3861-4
ISBN-13 (electronic): 978-1-4302-3862-1
A page of the copy of Bradford cited in Twitter’s petitions also states:
Made in the USA
Middletown, DE
13 December 2015
VidStream, in its patent owner’s response, argued that Bradford is not an available reference because it was published December 13, 2015.
Twitter filed replies with additional documents, including (i) a copy of Bradford that was obtained from the Library of Congress, marked “Copyright © 2011” (this copy did not contain the “Made in the USA Middletown, DE 13 December 2015” legend); and (ii) a copy of Bradford’s Certificate of Registration that was obtained from the Copyright Office and contains following statements:
Effective date of registration: January 18, 2012
Date of 1st Publication: November 8, 2011
“This Certificate issued under the seal of the Copyright Office in accordance with title 17, United States Code, attests that registration has been made for the work identified below. The information on this certificate has been made a part of the Copyright Office records.”
Twitter also filed following declarations:
The Declaration of “an expert on library cataloging and classification,” Dr. Ingrid Hsieh-Yee, who declared that Bradford was available at the Library of Congress in 2011 with citing a Machine-Readable Cataloging (“MARC”) record that was created on August 25, 2011 by the book vendor, Baker & Taylor Incorporated Technical Services & Product Development, adopted by George Mason University, and modified by the Library of Congress on December 4, 2011.
the Declaration of attorney Raghan Bajaj, who stated that he compared the pages from the copy of Bradford submitted with the petitions, and the pages from the Library of Congress copy of Bradford, and that they are identical.
Twitter further filed copies of archived webpages from the Internet Archive, showing the Bradford book listed on a publicly accessible website (http://www.html5mastery.com/) bearing the website date November 28, 2011, and website pages dated December 6, 2011 showing the Bradford book available for purchase from Amazon in both an electronic Kindle Edition and in paperback.
VidStream filed a sur-reply challenging the timeliness and the probative value of the supplemental information submitted by Twitter.
The Patent Trial and Appeal Board (“PTAB” or “Board”) instituted the IPR petitions, found that Bradford was an available reference, and held claims 1–35 unpatentable in light of Bradford in combination with other cited references. Regarding Bradford, the Board discussed all the materials that were submitted, and found:
“Although no one piece of evidence definitively establishes Bradford’s public accessibility prior to May 9, 2012, we find that the evidence, viewed as a whole, sufficiently does so. In particular, we find the following evidence supports this finding: (1) Bradford’s front matter, including its copyright date and indicia that it was published by an established publisher (Exs. 1010, 1042, 2004); (2) the copyright registration for Bradford (Exs. 1015, 1041); (3) the archived Amazon webpage showing Bradford could be purchased on that website in December 2011 (Ex. 1016); and (4) Dr. Hsieh-Yee’s testimony showing creation and modification of MARC records for Bradford in 2011.”
VidStream timely appealed.
II. The Federal Circuit
The Federal Circuit unanimously affirmed all aspects of the Board’s holdings including Bradford being prior art (printed publication).
The critical issue on this appeal is whether Bradford was made available to the public before May 9, 2012, the priority date of the ’997 patent.
Admissibility of Evidence – PTAB Rules and Procedure
VidStream argued that Twitter was required to include with its petitions all the evidence on which it relies because the PTO’s Trial Guide for inter partes review requires that “[P]etitioner’s case-in-chief” must be made in the petition, and “Petitioner may not submit new evidence or argument in reply that it could have presented earlier.” Trial Practice Guide Update, United States Patent and Trademark Office 14–15 (Aug. 2018), https://www.uspto.gov/sites/de- fault/files/documents/2018_Revised_Trial_Practice_Guide. pdf.
Twitter responded that the information filed with its replies was appropriate in view of VidStream’s challenge to Bradford’s publication date, and that this practice is permitted by the PTAB rules and by precedent, which states: “[T]he petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner, or if it is used to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.” Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018).
The Federal Circuit sided with Twitter, concluding that the Board acted appropriately, for the Board permitted both sides to provide evidence concerning the reference date of the Bradford book, in pursuit of the correct answer.
The Bradford Publication Date
VidStream argued that, even if Twitter’s evidence submitted in reply were considered, the Board did not link the 2015 copy of Bradford with the evidence purporting to show publication in 2011, i.e., the date of copyright registration, the archival dates for the Amazon and other webpages, and the date the MARC records were created. VidStream argued that the Board did not “scrutiniz[e] whether those documents actually demonstrated that any version of Bradford was publicly accessible at that time.” VidStream states that Twitter did not meet its burden of showing that Bradford was accessible prior art.
Twitter responded that that the evidence established the identity of the pages of Bradford filed with the petitions and the pages from the copy of Bradford in the Library of Congress. Twitter explains that the copy “made” on December 13, 2015 was a reprint, for the 2015 copy has the same ISBN as the Library of Congress copy, as is consistent with a reprint, not a new edition.
After citing arguments of both parties, the Federal Circuit affirmed the Board’s ruling that Bradford is prior art against the ’997 patent because “[t]he evidence well supports the Board’s finding that Bradford was published and publicly accessible before the ’997 patent’s 2012 priority date.” There is no more explanation than this for the affirmance.
Obviousness Based on Bradford
The Federal Circuit affirmed the Board’s rulings of unpatentability of claims 1– 35 of the ’997 patent, in the two IPR decisions on appeal because VidStream did not challenge the Board’s decision of obviousness if Bradford is available as a reference.
Takeaway
· Although all relevant evidence should be submitted with an IPR petition, new evidence submitted with a reply may have chance to be admitted if the new evidence is a legitimate reply to the evidence introduced by a patent owner, or if it is used to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.
Prior Art Based on Inherency Does Not Extend to “Probably” Existing Subject Matter, but Is Limited to “Necessarily” Existing Subject Matter.
| March 21, 2019
Personal Web Technologies, LLC v. Apple, Inc.
March 12, 2019
Before Moore, Taranto and Chen. Opinion by Chen.
Summary
In September, 2013, Apple, Inc. (Apple) filed an inter parties review (IPR) proceeding before the U.S. Patent Trial and Appeal Board (PTAB) against Personal Web Technologies, LLC (Personal Web) asserting unpatentability of U.S. Patent No. 7,802,310. The PTAB held that the ‘310 patent was obvious. On appeal, the Federal Circuit overturned the Board’s holding of obviousness on the basis that the Board had relied upon purported “inherent” subject matter in a prior art document without sufficient evidence that the purportedly inherent subject matter “necessarily exists” based on the teachings of the reference.
Details
Procedural Background
In September, 2013, Apple, Inc. (Apple) filed an inter parties review (IPR) proceeding before the U.S. Patent Trial and Appeal Board (PTAB) asserting multiple grounds of unpatentability of U.S. Patent No. 7,802,310 owned by Personal Web Technologies, LLC (Personal-Web). The PTAB held that the ‘310 patent was obvious over U.S. Patent No. 5,649,196 (Woodhill) in view of 7,359,881 (Stefik). Personal-Web appealed the PTAB’s ultimate determination of obviousness.
Factual Background
The ‘310 patent is directed to “Controlling Access to Data in a Data Processing System.” In the prior art, problems arose due to conventional naming techniques in which data files are typically identified by a name and/or pathname or location. In particular, with convention systems, when a data item is transferred from a first device to a second device, if the same data item exists in the second device a duplicate copy will be created on the second device.
According to the invention of the ‘310 patent, a data file or element is given a unique name by creating a “unique identifier” that is added to the data item’s identification along with its user-defined name, location, etc. In particular, this unique identifier is created by applying a cryptograph hash function to the data item, but creates a unique identifier for the specific data item. Accordingly, if the data item is different (e.g., modified), it will have a different unique identifier. However, if the data item is the same (e.g., not modified), it will have the same unique identifier.
The key patent claim at issue – independent claim 24 – is set forth below for reference. And, a key element of this claim at issue in this litigation is highlighted below.
24. A computer-implemented method implemented at least in part by hardware comprising one or more processors, the method comprising:
(a) using a processor, receiving at a first computer from a second computer, a request regarding a particular data item, said request including at least a content-dependent name for the particular data item, the content-dependent name being based, at least in part, on at least a function of the data in the particular data item, wherein the data used by the function to determine the content-dependent name comprises at least some of the contents of the particular data item, wherein the function that was used comprises a message digest function or a hash function, and wherein two identical data items will have the same content-dependent name; and
(b) in response to said request:
(i) causing the content-dependent name of the particular data item to be compared to a plurality of values;
(ii) hardware in combination with software determining whether or not access to the particular data item is unauthorized based on whether the content-dependent name of the particular data item corresponds to at least one of said plurality of values, and
(iii) based on said determining in step (ii), not allowing the particular data item to be provided to or accessed by the second computer if it is determined that access to the particular data item is not authorized.
In holding that the claim was obvious over U.S. Patent No. 5,649,196 (Woodhill) in view of 7,359,881 (Stefik), the PTAB held that the Woodhill reference inherently taught the highlighted features above.
Discussion
The Federal Circuit reversed the Board’s decision on the basis that the Board’s inherency finding determination of the above-noted highlighted feature lacked substantial evidence.
- The Federal Circuit’s Discussion of the Law
The Federal Circuit explained that “[w]hile it is possible that Woodhill’s system utilizes an un-stated Binary Object Identifier lookup table to locate binary objects of a previous version of a file that is going to be restored …, mere possibility is not enough.” The Court further indicated that “[i]nherency . . . may not be established by probabilities or possibilities” and that “[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient.”
The Federal Circuit explained that for inherency “a party must ‘show that the natural result flowing from the [disclosure] as taught would result in [the claimed subject matter]” – i.e., in this case that the “natural result flowing from the operation as taught would result in the performance of the questioned function.”
The Federal Circuit held that because the claimed subject matter “does not necessarily exist in the” Woodhill reference, reliance on inherency for that feature in the obviousness analysis was improper.
2. The Federal Circuit’s Discussion of the Evidence
In concluding that the Board’s inherency finding determination was not based on substantial evidence, the Federal Circuit explained that the Woodhill reference did not inherently include “causing the content-dependent name of the particular data item to be compared to a plurality of values” for the following reasons.
The Woodhill reference teaches a distributed management system in which files are apportioned into binary objects. The system uses binary object identifiers to determine whether a binary object has changed from one version of a file to the next, and only those binary objects whose content has changed needs to be backed up, thereby reducing the amount of data being backed up. In Woodhill, the binary object identifier is based on the contents of the binary object, such that the binary object identifier changes when the contents is changed.
At the PTAB, the Board had agreed with Apple’s argument that in order to determine which data needs to be restored in Woodhill by an update request, the system “must be able to” reference local data files using the binary object identification information received and, thus, that Woodhill must maintain some sort of file system or other mapping that allows the binary object identification record to serve as a lookup for the requisite file data that is to be restored. Thus, the Board asserted that Woodhill must inherently teach the disputed feature.
However, the Federal Circuit explained that “an equally plausible” understanding of Woodhill is that the system uses conventional file names and locations to locate files and the binary object information to locate a given binary object within the file. The Federal Circuit further explained that the only disclosed use of the binary object identifier in Woodhill is to perform a one-to-one comparison with the binary object identifier in the backed-up version of the object, which occurs after the object has been identified.
Takeaways
- This case emphasizes that inherency requires the “necessary” existence of subject matter that is not expressly shown or described in a reference. Accordingly, this case may be helpful in contesting rejections where asserted subject matter is not emphatically necessarily present, but deemed to be probable or likely by the Patent Office.
- This case also demonstrates that one way to
argue against a finding of inherency is to set forth an “equally plausible”
alternative that is supported by the reference.
That is, by demonstrating that an “equally plausible” alternative
subject matter may exist, it can be argued that the Patent Office cannot
conclude that the asserted subject matter inherently exist.
A catalog disclosed at an event not open to the public may still be considered a prior art under 35 U.S.C. § 102(b)
| August 8, 2018
GoPro, Inc. v. Contour IP Holding LLC
July 27, 2018
Before Reyna, Wallach, and Hughes. Opinion by Reyna.
Summary
The United States Court of Appeals for the Federal Circuit (the CAFC) found a catalog distributed during a trade show targeting dealers as opposed to the public can still be considered a printed publication under 35 U.S.C. § 102(b). The CAFC stated that the dealers encompassed the relevant audience such that a person ordinarily skilled and interested in the art exercising reasonable diligence should have been aware of the show. Additionally, there were no restrictions placed on the dissemination of the publication, and the catalog was intended to reach the general public. The CAFC therefore vacated the Patent Trial and Appeal Board’s decision and remanded for the Board to consider the merits of the petitioner’s obviousness claims.
連邦巡回控訴裁判所（CAFC）は、販売業者のみが参加可能な展示会で配布されたカタログでも、先行技術文献となると判決した。展示会は、一般に向けたものではなかったものの、販売業者は、当該技術関連者（relevant audience）に含まれ、合理的なデリジェンスの下、当業者や当該技術に関心がある者は、その展示会について知り得たであろうと判示した。また、カタログには配布制限が設けられていなかったため、一般に配布されることを意図した物であったと示した。よって、CAFCは、特許審判部の判断を破棄し、カタログが先行技術文献であるとした上で、自明性について検討するように、審判部に本件を差し戻した。
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
