Patent News

Federal Circuit Year in Review (posted 01/11/25)

In 2024, the Federal Circuit issued eighteen opinions labeled “precedential” that were related to patent law. Quotations below omit citations and internal quotation marks. Here is a break-down:

Anticipation / Obviousness

Cytiva Bioprocess R&D AB v. JSR Corp.: Non-obviousness of novel compounds

Reasonable expectation of success is not needed for motivation to combine for claims directed to an inherent property of an otherwise obvious composition or process.
Lead-compound analysis not required when the prior art expressly suggests the modification
Obvious to try is obvious under § 103 when there is a design need or market pressure exists to solve the problem and there are a finite number of identified, predictable solutions.

Holdings:

Inherency and reasonable expectation of success: “Inherency may supply a missing claim limitation in an obviousness analysis. [. . .] [I]nherency may be demonstrated by the natural result flowing form the operation as taught would result in the performance of the questioned function. [. . .] When claims require prior knowledge of the inherent property–e.g., for motivation to combine–then a petitioner would still generally need to demonstrate a reasonable expectation of success. [. . .] But that situation is different from simply claiming an inherent property of an otherwise obvious composition or process–i.e., one obvious without regard to the property at issue. In this latter context, there is no question of a reasonable expectation of success.”
Lead compound analysis: Caselaw provides that “whether a new compound would have been prima facie obvious . . . ordinarily follows a two-part inquiry. When it applies, the lead-compound analysis typically proceeds with a two-part inquiry. First, the court determines whether a chemist of ordinary skill would have selected the asserted prior art compounds as lead compounds, or starting points, for further development efforts. [. . .] The second inquiry in the analysis is whether the prior art would have supplied one of ordinary skill in the art with a reason or motivation to modify a lead compound to make the claimed compound with a reasonable expectation of success” (emphasis added, internal citations and quotations omitted).
- The lead-compound analysis is not required where the prior-art references expressly suggest the proposed modification.
- “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. . . . In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.” (Quoting KSR.) “The Board identified a design need of 'finding a SPA IgG binding domain that is resistant to protein degradation.' The Board also identified a finite number of identified, predictable solutions. [. . .] Under these circumstances, we conclude that no lead compound analysis was required.”

Palo Alto Networks, Inc. v. Centripetal Networks, LLC et al.: Motivation to combine (Patent challenger appeals from unsuccessful IPR.)

Patentability determinations based on obviousness must “clearly explain[] its holding or rationale regarding motivation to combine and whether the proposed combination teaches the . . . limitation.”
“Arguments that 'attack the disclosures of the two references individually' lack merit.”

Pfizer Inc. v. Sanofi Pasteur Inc.: Optimization of result-effective variables (Patent owner Pfizer challenges IPR holding of invalidity.)

If a claimed parameter would have been recognized as result-effective, the optimization of that parameter is normally obvious.

Virtek Vision Internat'l ULC v. Assembly Guidance Systems, Inc.: Motivation (Patent owner Virtek and patent challenger Aligned Vision cross-appeals IPR findings of a subset of challenged claims invalid.)

KSR did not do away with the requirement that there must exist a motivation to combine various prior art references in order for a skilled artisan to make the claimed invention. Here, the court quoted KSR stating “when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” However, because the patent challenger failed to articulate any rationale or motivation for combining the references, it was “error of law” for PTAB to conclude that selection of one known coordinate system over another was obvious.

Holdings:

“It does not suffice to meet the motivation to combine requirement to recognize that two alternative arrangements . . . were both known in the art. [. . .] These [two alternate prior art] disclosures, however, do not provide any reason why a skilled artisan would use [one over the other]. The mere fact that these possible arrangements existed in teh prior art does not provide a reason that skilled artisan would have substituted the [one] with [the other]. There was no argument in the petition regarding why a skilled artisan would make this substitution–other than that the two different . . . systems were 'known and used.' The petition does not argue [that the secondary reference] articulates any reason to substitute one for another or any advantages that would flow from doing so. Nor does . . . Aligned Vision's expert, articulate any reason why a skilled artisan would combine these references. In his declaration, he testified 'it would have been obvious' to use [one system] instead of [the other] because 'both such . . . systems were known.”
“KSR provides an important understanding of the circumstances in which limitations from different references can be combined to conclude that a claimed invention would have been obvious. In KSR, the Supreme Court explained, when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. KSR did not do away with the requirement that there must exist a motivation to combine various prior art references in order for a skilled artisan to make the claimed invention. Here, there was no argument about common sense in the petition or in [the expert's] declaration. There was no evidence that there are a finite number of identified, predictable solutions. There is no evidence of a design need or market pressure. In short, this case involves nothing other than an assertion that because two coordinate systems were disclosed in a prior art reference and were therefore “known,” that satisfies the motivation to combine analysis. That is an error as a matter of law. It does not suffice to simply be known. A reason for combining must exist.

Prior Art

Sanho Corp. v. Kaijet Tech. Int'l Ltd.: Excluding prior art under § 102(b)(2)(B) (Patent owner Sanho appeals invalidity finding by PTAB.)

A non-confidential, but otherwise private sale of a product embodying an invention does not qualify as a “public disclosure” for an exemption of prior art under 35 U.S.C. § 102(b)(2)(B).

Weber v. Provisur Tech.: Printed publication requirement. (Patent challenger Weber appeals PTAB holding that Provisur's patents were not invalid.)

No minimum number of occasions of access is dispositive of the public accessibility inquiry.
It's sufficient to meet public accessibility requirement for a product manual to be obtained (1) upon purchase and (2) upon direct request.”

Holdings:

“The statutory phrase 'printed publication' from § 102 has been defined to mean a reference that was 'sufficiently accessible to the public interested in the art.' The touchstone of whether a reference constitutes a printed publication is public accessibility. The standard for public accessibility is whether interested members of the relevant public could locate the reference by reasonable diligence.”
“In Cordis, the references were two academic monographs describing an inventor's work on intravascular stents that were only distributed to a handful of university and hospital colleagues as well as two companies interested in commercializing the technology. We observed that the record contained 'clear evidence that such academic norms gave rise to an expectation that disclosure will remain confidential.' Cordis is readily distinguishable from this case. Weber's operating manuals were created for dissemination to the interested public to provide instructions about how to assemble, use, clean, and maintain Weber's slicer. . . . These operating manuals stand in stark contrast to Cordis and the confidential nature of the monographs and circumstances surrounding disclosure, including academic confidentiality norms. [. . .] The record evidence shows that Weber's operating manuals were accessible to interested members of the relevant public by reasonable diligence. For instance, Weber employees testified that the operating manuals could be obtained either upon purchase . . . or upon direct request to a Weber employee.
“No minimum number of occasions of access is dispositive of the public accessibility inquiry in all cases.”
“We disagree with the Board's decisions that the operating manuals were not printed publications because they were subject to confidentiality restrictions. The copyright notice itself allows the original owners and their personnel to copy the operating manual for their own internal use. Weber expressly instructed customers who were re-selling their slicers to transfer their operating manuals to purchasing third parties. Weber's assertion of copyright ownership does not negates its own ability to make the reference publicly accessible. The intellectual property rights clause from Weber's terms and conditions covering sales, likewise, has no dispositive bearing on weber's public dissemination of operating manuals to owners after a sale has been consummated.”

Design Patents

LKQ Corp. v. GM Global Tech. Operations, LLC: Design Patent Nonobviousness (Patent challenger LKQ appeals PTAB decision upholding GM's design patent on a vehicle front fender.)

The court overturned the Rosen-Durling test for obviousness analysis of design patents.

Claim Construction

IOENGINE, LLC v. Ingenico Inc.: Printed matter doctrine (Fed. Cir. reversed PTAB's invalidation of claims related to portable data processing devices.)

“Encrypted communications” and “program code” are not claimed for the content they are communicating, therefore they are not “printed matter” and the printed matter doctrine does not apply.

Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc.: “For identifying a single biomolecule”

The PTAB's construction of the phrase, “for identifying a single biomolecule” properly required an apparatus to have the capability to characterize (determine the identity of) a biomolecule by examining that biomolecule alone, with no copies created to form an ensemble for examination.

Claim 1. An apparatus for identifying a single biomolecule, comprising:

a substrate having a light detector; and

a linker site formed over the light detector, the linker site being treated to affix the biomolecule to the linker site;

wherein the linker site is proximate to the light detector and is spaced apart from the light detector by a distance of less than or equal to 100 micrometers.

Holdings:

“It is undisputed before us that the claim language at issue—“for identifying a single biomolecule”—refers to a capability of an apparatus. What is disputed is the meaning of “identifying a single biomolecule.” That phrase has an ordinary meaning on its face and in context. The language refers to (a) ascertaining the identity of a biomolecule, i.e., what that biomolecule is, and (b) doing so by examining just that one biomolecule, not others (even copies). It is that capability the apparatus must have, no matter what other capabilities it has or how the apparatus may be used in a particular instance. [. . .] The proper construction in this case is determined by the ordinary meaning of the claim language understood in the context of the patent document. [. . .] We agree with the Board that this identifying-by-examining-one-alone meaning is the ordinary meaning of the phrase in context. The striking feature of the phrase is its inclusion of the word “single.” There is no apparent reason for the inclusion of the word “single” in the phrase except to indicate that the capability required is to identify a molecule with just that one molecule in view. [. . .] The '441 patent's specification confirms this understanding.”
“We reject PacBio's contention that the Board's (and our) reading 'conflates identifying a single molecule with detecting a single molecule.' [. . .] Such a claim does not conflate identification with detection but instead uses a detection requirement to specify a particular identification capability.

Written Description

RAI Strategic Holdings v. Philip Morris Products: Claimed ranges (Appeal by patent owner RAI of post-grant review finding invalidity.)

A broader range of a variable in the application as filed provides written description support for a narrower claimed range if the disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed range. The court looked to whether the broad described range pertains to a different invention than the narrower (and subsumed) claimed range.

Procedural Determinations

ZyXEL Communications v. Unm Rainforest Innovations: Motion to Amend [MTA] Pilot Program. (ZyXEL appeals PTAB's grant to UNMRI's motion to amend and finding claim 8 nonobvious; UNMRI cross-appeals on other findings.)

The MTA Pilot Program is designed to allow reply briefs to address and correct errors.

SoftView LLC v. Apple Inc.: Estoppel (Patent owner SoftView appeals PTAB invalidation of all claims based on estoppel)

37 C.F.R. § 42.73(d)(3)(i) is authorized by 35 U.S.C. § 316(a)(4), and the PTO therefore did not exceed its rulemaking authority in promulgating it.
Not patentably distinct is equivalent to substantially the same and goes beyond common law by calling for a comparison between the claims an applicant is obtaining and the finally refused or canceled claim.
The Board can employ principles of obviousness under KSR in determining whether a claim is patentably distinct from a prior canceled claim under 37 C.F.R. § 42.73(d)(3)(i).

37 C.F.R. § 42.73(d)(3): A patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim.

Holdings:

Background: “37 C.F.R. § 42.73(d)(3) . . . prohibits a patent owner from 'taking action inconsistent with the adverse judgment' in various proceedings, including IPR proceedings. [. . .] In particular, the regulation prohibits a patent owner from 'obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim.'
- “In the inter partes reexaminations [of the '353 patent in which 18 claims were found invalid in a 2014 IPR decision] the examiner found the overwhelming majority of claims unpatentable over the prior art. . . . On appeal, the Board reversed the examiner's obviousness rejections on the ground that there was 'insufficient articulated reasoning.' The Board, however, entered a new ground of rejection as to all pending claims based on 37 C.F.R. § 42.73(d)(3)(i). Going claim by claim, the Board found that each claim was either essentially the same as a canceled claim or merely a combination of limitations that had previously been invalidated. [. . .] For that reason, the Board held that the claims were not 'patentably distinct' from those that had been invalidated in the IPR proceeding and were therefore invalid under section 42.73(d)(3)(i) of the PTO's regulations.
”[T]he terms 'not patentably distinct' and 'substantially the same' are equivalent. [. . .] In holding that the claims before it were not materially different from the canceled claims in any way that would affect patentability, the Board's approach merely considered whether the resolution of an issue in a previous case bards the relitigation of that issue in a subsequent case. That is the same question addressed under the common law rule. [. . .] Section 42.73(d)(3)(i) goes beyond the common law rule by calling for a comparison between the claims an applicant is 'obtaining' and the 'finally refused or canceled claim.' Whether the Board's action is lawful thus depends on whether the PTO had statutory authority to issue the regulation.”
“35 U.S.C. § 316(a)(4) . . . authorizes the Director to prescribe regulations 'establishing and governing inter partes review under this chapter and the relationship of such review to other proceedings under this title.' [This section] refers broadly to regulations 'governing inter partes review and the relationship of such review to other proceedings' before the PTO, and it provides a separate source of rulemaking authority for the PTO to issue such regulations. Thus, . . . section 316(a)(4) is not limited to authorizing the PTO to issue procedural rules. [. . .] Section 42.73(d)(3) . . . is clearly directed to 'governing inter partes review' and the 'relationship of such review to other proceedings' before the PTO. [. . .] Preventing a patent owner or applicant from acting inconsistently with the outcome of an IPR proceeding ensures that the decisions in those proceedings have practical effect. Preventing such inconsistent action is therefore closely tied to the statutory grant of authority to issue regulations 'governing inter partes review.'”
“Although we agree that the PTO was authorized to promulgate section 42.73(d)(3)(i), we disagree with the Board's application of that regulation to previously issued claims. By its terms, the regulation applies to 'obtaining' a claim–not maintaining an existing claim. For that reason, we vacate the Board's decision as to the 'issued claims' on appeal but affirm its application of the regulation to the 'amended claims.'”
“There are 107 amended claims at issue in this case. SoftView does not raise specific arguments with respect to whether particular amended claims are patentably distinct from the canceled claims. Our review is therefore limited to the Board's general methodology, which we uphold. [. . .] Even if we were to agree with SoftView's positions, SoftView's failure to tie its claim construction arguments to specific claims prevents us from determining whether the Board's constructions could impact the conclusion.”

Summary and takeaways

Cywee Group Ltd. v. ZTE (USA), Inc.: Joint IPR petitioners (Patent owner Cywee appeals IPR decision holding original and proposed amended claims unpatentable.)

Where an active party to an IPR patent challenge no longer meaningfully engages in the IPR proceeding by not filing an opposition brief to a motion to amend, a passive party can file an opposition brief to a motion to amend, even where the passive party agreed to assume the primary role only if the active party ceases to participate in the IPR.

Koss Corp. v. Bose Corp.: Mootness/Issue Preclusion

Filing a (second) amended complaint does not nullify an interlocutory order, where therefore merges with a court's final judgment.

Platinum Optics Tech. v. Viavi Solutions: Standing (Patent challenger PTOT appeals a final written decision from IPR.)

A party does not need Article III standing to appear before an administrative agency, but standing is required once the party seeks review of an agency's final action in a federal court.

Speck v. Bates: Interference - (Junior party Speck appeals PTAB's decision awarding priority to Bates.)

A long-standing exception to section 135(b)(1), wherein an applicant can file its claim after the critical period but 'had already been claiming substantially the same invention as the patentee' during the critical period, are not time-barred. The underlying issue is . . . whether amendments to the Bates '591 application after the critical date changed the claims so that they are not substantially the same as the claims before the critical date. The Board denied Specification's motion to dismiss because it found that the later amended claims did not differ materially from the claims in other patents and patent applications Bates owned that were filed prior to the critical date because 'Speck had not directed the Board to a material limitation of the Bates involved claims that is not present in the earlier Bates claims.

Voice Tech v. Unified Patents: Appealing after Request for Rehearing (Patent owner Voice Tech appeals from PTAB finding all challenged claims obvious.)

An argument not repeated in a Request for Rehearing is not forfeited: “The regulatory requirement that a rehearing request 'identify all matters the party believes the Board misapprehended or overlooked' . . . simply requires the party to identify the issues it wishes to present for rehearing. . . .”

Administrative Procedure Act

Google LLC v. EcoFactor, Inc.: Claim construction and APA (Fed. Cir. vacated PTAB's claim construction.)

The Administrative Procedure Act requires that parties are given notice and an opportunity to address changes in claim interpretation.
- “The Board may adopt a claim construction of a disputed term that neither party proposes without running afoul of the APA. The Board, however, cannot, without notice and opportunity for the parties to respond, change theories midstream by adopting a claim construction in its final written description that neither party requested nor anticipated. [. . .] [B]ecause Google had notice of the contested claim construction issues and an opportunity to be heard, the Board's claim construction of Claim 1 did not violate the APA.”

Pfizer Inc. v. Sanofi Pasteur Inc.: Director Review (Patent owner Pfizer challenges IPR holding of invalidity.)

Failure to abide by notice-and-comment rulemaking in promulgating Director Review procedures is “harmless” unless a party can show prejudice.

Fed. Cir. defines "predefined" (posted 12/31/24)

In Vivint Inc. v. ADT LLC, the Federal Circuit upheld the PTAB's broad interpretation of the term, “predefined.” Claim 1 specifies, “detecting an entity entering a predefined area based at least in part on camera data.” The IPR panel, in finding that certain claims were anticipated and obvious, determined that “predefined” means “defined in advance” and that the “entire field-of-view of a camera” can be a “predefined area.” Stated the court:

Vivint contends that the Board erred by construing 'predefined area' to 'include whatever the camera sees.' It argues that such a broad construction renders 'entering a predefined area' superfluous. That is incorrect. A camera’s entire field-of-view does not automatically or necessarily correspond to a user’s region of interest. Instead, as the Board explained, 'the term “predefined area,” if applied to a camera’s entire field-of-view, would require the user to set up the camera such that the camera’s entire field-of-view would mark a perimeter [to enter] that corresponds to the user’s region of interest,' for example, by zooming in, panning out, or angling.

(Internal citations removed.)

PTAB opinion vacated for failing to consider motivation in 103 analysis (posted 12/31/24)

Patent

In Palo Alto Networks, Inc. v. Centripetal Networks, LLC et al., the Federal Circuit vacated an IPR opinion for failing to make a finding as to whether there was motivation to combine the references under § 103. The patent at issue is directed to a method for correlating computer network packets to detect propagation of potentially malicious network traffic. Claim 1 is focused on detecting the correlation and, “responsive to the correlating . . . transmitting . . . [an] indication of the first host.” Palo Alto Networks (PAN) asserts that two references, Paxton, which discloses correlating packets, and Sutton, which describes transmitting a notification related to a potential threat, are combinable under § 103 to arrive at the claimed invention. However, the PTAB panel concluded:

This leaves us with a correlation from Paxton with no specific actions taken post-correlation, and a transmission from Sutton unrelated to any correlation, but without the necessary bridge showing that one of ordinary skill in the art would have appreciated that the transmission would be responsive to the correlation. As such, Petitioner has not provided us with argument and evidence sufficient to establish by a preponderance of the evidence that claim 1 would have been obvious over the teachings of Paxton, Sutton, and Ivershen.

The Federal Circuit held that:

Where, as here, the grounds for obviousness are based on a specific combination of references, arguments that “attack the disclosures of the two references individually” lack merit. Here, Paxton and Sutton must be read together, not in isolation.
[. . .]
the Board erred by not clearly explaining its holding or rationale regarding motivation to combine and whether the proposed combination teaches the final limitation of claim 1: transmitting an indication.” In fact, the parties disagreed as to whether the Board found motivation to combine, and the Court determined that the Board, “never made a clear finding on whether a person of ordinary skill in the art would have been motivated to modify Paxton by adding Sutton's step of transmitting a notification of malicious activity. [. . .] Relatedly, we cannot discern with any confidence what the Board meant when it said that it was left 'with a correlation from Paxton . . . , and a transmission from Sutton . . . , but without the necessary bridge.'. . . If the Board meant to say that it found no motivation to combine–and we do not know whether it did–it certainly failed to explain why a person of ordinary skill in the art would not have been motivated to modify Paxton to provide the recited notification as taught by Sutton in response to the correlation disclosed in Paxton.

(Emphasis added, citations removed.)

Summary

After After Final Consideration Pilot (AFCP 2.0) (posted 12/13/24)

Time to bid a (fond?) farewell to the AFCP program at the Patent Office. IPWatchdog gives us a looking-back and a looking-ahead. Key takeaways include:

AFCP submissions account for 10% of application disposals.
The USPTO estimated the AFCP program incurred in excess of $15M annually. A proposal to charge a fee of $500 per AFCP was floated and most respondents indicated that the program as a whole was of questionable value and a fee should only be incurred in certain circumstances, e.g., when an amendment is actually entered and/or a interview granted. As a result, the USPTO opted to terminate the program entirely.

After today, applicants will need to revert to prior after-final practice, meaning that typically, only amendments that incorporate allowable subject matter into rejected independent claims (or convert allowable but objected-to dependent claims into independent claims) will be entered.

What to Expect

Intellectual Property as a wealth engine (posted 10/24/24)

Christopher W. Quinn, of Quinn IP Law and also professor of IP innovation and strategy at the University of Michigan, posted a thoughtful article on how IP law is relevant, and some controversial reforms. A worthwhile read!

Read at Lexology. (Private cached)

Summary of PTAB Precedential and Informative Opinions on Eligibility (posted 09/18/24)

Ex Parte Hannun et al. -- Audio Transcription

Findings: The claims are eligible because:

Step 2A – Not an abstract idea
- Normalizing an input file, generating a jitter set of audio files, generating spectrogram frames, obtaining predicted character probabilities from a trained neural network, and decodeing a transcription of the input audio using the predicted character probability outputs “are not steps that can practically be performed mentally. Nor do we see how the claimed invention recites organizing human activity.” P. 9-10
- The claims do not recite a mathematical concept because the mathematical algorithm or formula that is disclosed in the specification is not recited in the claims. P. 10.
- Even if the claims were considered to recite a mathematical concept, the claims are not directed to an abstract idea because the alleged judicial exception is integrated into a practical application, namely, “higher performance.”
Step 2B - Significantly more
- The examiner failed to provide factual support for his conclusion that the claims do not add significantly more to the alleged judicial exception.

Ex parte Smith et al. -- Delaying execution of derivative trade

Findings: the claims are eligible because:

The limitations . . . recite the fundamental economic practice of derivative trading because the limitations all recite the operations that would ordinarily take place in a derivatives trading enviornment.
Claim 1 adds a delay to the execution of a transaction to allow other market participants to quote at the “best price” and to remove communication or computer hardware advantages among in-crowd market participants. These limitations integrate the recited judicial exception of derivative trading into a practical application.

Dissent:

Administrative Judge Bui dissented, stating: “These timing features themselves are not technical in nature and do not provide any 'technical solution to a technical problem' as contemplated by the Federal Circuit in DDR and Amdocs.

Opinion
Patent (Claims amended post-decision)

Rep. claim 7: A fitting method of a golf club, comprising. . . :

creating a hit ball result database . . . . by actual measurement and/or simulation;

measuring a subject's head speed dynamic loft, and blow angle using a reference club;

determining, by a processor, a suitable dynamic loft . . . as a dynamic loft achieving a predetermined hit ball result;

determining a dynamic loft difference from the suitable dynamic loft and the measured dynamic loft; and

determining a recommended loft angle based on a loft angle of the reference club and the dynamic loft difference;

Ex parte Kimizuka et al. -- Golf club fitting

Ex parte Kimizuka et al. 2018-001081

Findings (citations omitted): The claims are ineligible because:

Under the broadest reasonable interpretation of claim 7, the recited determinations can be practically performed in the mind.
[T]he claimed method does not use the processor in a way that indicates that the judicial exception has been integrated into a practical application [because] the recited processor is merely used to perform calculations that . . . can practically be performed in the mind.
The [hit ball result] database's specificity does not remove claim 7 from the abstract realm [because] [u]sing a database to store data in its ordinary capacity, without more, may not integrate the abstract idea.
[T]he recited measuring step is nothing more than insignificant data collection.
Appllants do not identify any inventive concept in the recited combination of components. [. . .] In the claimed arrangement, the processor simply reads values from a database and uses them in the recited calculations. Appellants argue that the claim recites specific features to improve club fitting. [. . .] Yet the claimed “rule” is the abstract idea itself. Here, the limitations on the mental process itself — i.e., the “rules” governing the deterinations–do not make claim 7 less abstract.

Ex parte Savescu et al. -- Project lifecycle workflows

Ex Parte Savescu et al. (PDF)

Findings: the claims are ineligible because:

Overall, limitations (1.a) through (3) encompass steps for creating a workflow that organizes how people perform project tasks. [Therefore], the recited subject matter belongs to the group of certain methods of organizing human activity.
[The] additional limitations [i.e., a server, and a step of creating one or more project detail pages on the server]–considered in the context of claim 1 as a whole–do not integrate the abstract idea into a practical application.
A person . . . can create a project plan and description without a server. By creating the workflows on a server and adding proejct details to web pages, the recited server merely links the abstract idea to a computer environment. In this way, the server's involvement is merely a field of use, which does not integrate the abstract idea into a practical application.
As a whole, claim 1 is directed to an abstractidea on a server used in its ordinary capacity performing well-understood, routine, and conventional activities. For all these reasons, claim 1's limitations, considered individual and in combination, do not provide an inventive concept.

Ex parte Fautz -- Magnetic resonance imaging

Findings: The claims are eligible because:

Step 2A, Prong 1
- The independent claims recite three mathematical formulas. [. . .] as to this idetnified concpet only, we conclude that . . . the independent claims recite an abstract idea: a mathematical concept.
Step 2A, Prong 2
- [T]he additional claims elements reflect an improvement to a technology, and thus the independent claims integrate the recited mathematical concept into a practical application.
  - The mathematical calculations . . . are “a consequence of the arrangement of” the device's coils. This analysis results in an improved reconstructed image. [Therefore], the claimed invention uses the recited mathematical equations to improve the imaging system.

PTAB Affirmed denying exception in § 102(b)(2)(B) (posted 08/09/24)

35 U.S.C. § 102(b)(2): DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS. —A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor

In Sanho Corp. v. Kaijet Technology Int’l Ltd., the Federal Circuit held that a prior sale of HyperDrive devices by the inventor did not trigger an exception under 35 U.S.C. §(b)(2)(B) against a later-filed patent application from serving as prior art under 35 U.S.C. § 102(a).

Stated the court:

We are concerned here with the subsection (b)(2)(B) exception, which applies only to prior patent filings by another and provides that such a “disclosure shall not be prior art” if “the subject matter disclosed had . . . been publicly disclosed by the inventor.” [. . .] The issue here is whether placing something “on sale” in section 102(a)(1) means that the invention embodied by the device sold is necessarily “publicly disclosed” for purposes of section 102(b)(2)(B). [. . .]

Sanho contends that the phrase “publicly disclosed” in section 102(b)(2)(B) should be construed to include all the “disclosure[s]” described in section 102(a)(1), including situations in which the invention was “on sale.” [. . .] Sanho’s first problem is that the words “publicly disclosed” are not the same as the word “disclosed.” [. . .] Thus, we reject Sanho’s argument that the plain language of the statute requires Sanho’s preferred result. Rather, it points strongly in the opposite direction. [. . .]

Section 102(b) appears to have as its purpose protection of an inventor who discloses his invention to the public before filing a patent application because the inventor has made his invention available to the public—a major objective of providing patent protection in the first place. [. . .] In light of this purpose, “publicly disclosed by the inventor” must mean that it is reasonable to conclude that the invention was made available to the public. [. . .]

Because Sanho has failed to demonstrate that the private but non-confidential sale of a product allegedly embodying the invention resulted in the relevant subject matter being “publicly disclosed” under section 102(b)(2)(B), the Board did not err in treating the Kuo reference post-dating that sale as prior art.

USPTO issues subject matter eligibility guidance for AI inventions (posted 07/25/24)

On July 17, 2024, the USPTO Guidance and issued new examples 47-49 related to artificial intelligence, expanding its overall guidance on the topic.

How the death of Chevron might impact patents (posted 07/04/24)

In Loper Bright Enterprises v. Raimondo, the Supreme Court held that “courts may not defer to an agency interpretation of the law simply because a statute is ambiguous.” However, the decision carved out prior cases that relied on the Chevron framework stating that “the holdings of those cases that specific agency actions are lawful . . . are still subject subject to statutory stare decisis.” A challenger must provide a “special justification” to overrule Chevron-era cases.

With the death of Chevron, the ”Skidmore ¹⁾ Deference Test” is now back. This rule states that a court is not compelled to follow an agency's interpretation of a statute but would determine the amount of deference to give the agency depending on “the thoroughness evident in its consideration, the validity of its reasoning, its consistency with earlier and later pronouncements, and all those factors which give it power to persuade, if lacking power to control.

How will this impact the patent system?

The ITC's opinions and interpretations of Section 337 will no longer be entitled to Chevron deference. Therefore, new statutory challenges against induced infringement of products that do not infringe at the time of importation and method claims will increase at the ITC.
- For example, in Suprema, Inc. v. Int'l trade Comm'n ²⁾, the Federal Circuit upheld under Chevron the ITC's interpretation that Section 337 includes articles that do not infringe at the time of importation, but which are used thereafter to directly infringe at the inducement of the seller. It is unclear whether the “special justification” to overcome stare decisis of past Chevron decisions will protect this doctrine going forward.
The PTAB Consolidated Trial Practice Guide (Nov. 2019), PTAB Precedential Opinion Panel (“POP”) decisions and Informative Decisions, and Director Memorandums are not entitled to Chevron deference.

Major change in Design patents (posted 05/29/24)

The reign of Rosen-Durling is over. Long live KSR and Graham v. Deere!

On May 21, 2024, the Federal Circuit, en banc, in LKQ Corp. v. GM Global Tech. Operations, LLC, rejected the decades-long “basically the same” test for design patents and applied standards established for utility patents. This case began with LKQ filing an IPR challenge of GM's design patent of a automotive front fender design. The Board applied the basically-the-same / ordinary observer test and held that the art cited by LKQ did not anticipate or invalidate GM's patent. The panel agreed with the Board but differed on the question of whether KSR overruled Rosen. An en banc rehearing was then granted. Stated the court:

We conclude that the Rosen-Durling test requirements—that (1) the primary reference be “basically the same” as the challenged design claim; and (2) any secondary references be “so related” to the primary reference that features in one would suggest application of those features to the other—are improperly rigid. The statutory rubric along with Supreme Court precedent including Whitman Saddle, Graham, and KSR, all suggest a more flexible approach than the Rosen-Durling test when determining obviousness.

The court summarized the Graham factors: considerations of the scope and content of the prior art, and secondary considerations, and discussed policy concerns regarding risk and uncertainty. Finally, the Court vacated and remanded the panel decision of non-obviousness of the GM's design patent.

USPTO Guidance

In response to this ruling, the USPTO issued guidance. Key points in this memo include:

Focus on the visual impression of the design as a whole
Consider the design from perspective of the ordinary designer, not the ordinary observer.
Prior art must satisfy analogous art test
KSR rationale must be present
Further guidance and training will be forthcoming.

What are the practical implications of this decision?

From McDermott Will & Emery: “Changes obviousness requirements for design patents to a less rigid standard, which can open design patents to additional scruitiny and validity challenges.”
From MoFo: “For litigants, . . . less certainty, at least in the near term. [. . .] This decision is also likely to have a noticeable impact on the examination of design patent applications. During oral arguments, the Solicitor for the Patent Office indicated that only about four percent of design patents are rejected as obvious. With this new . . . test, this rate is likely to increase.”
From Jones Day: “Design patent challengers now have more flexibility to frame their obviousness theories under LKQ. Nevertheless, they must still develop visually persuasive reasons for why a designer of ordinary skill would combine or modify prior art to achieve the challenged design, without the use of impermissible hindsight.”

J. Albright reversed on basic claim construction principles (posted 03/07/24)

Judge Albright of the western district of Texas has an overal decision reversal rate of 25%, which is much higher than the national average of 16%. In the area of claim construction, his claim construction orders are vacated or reversed more often than confirmed, with a vacate/reverse rate of 39.5% verses a 38.8% affirm ratio rate, with the remaining cases being settled or voluntarily dismissed.³⁾

Claim 1. A nonaqueous secondary battery comprising:

[a] a positive electrode . . . [b] wherein . . . the lithium-containing transition metal oxide having the smallest average particle size is a lithium-containing transition metal oxide represented by the formula (1): Li_xM¹_yM²_zM³_vO₂

[c] wherein M¹ represents at least one transition metal element selected from Co, Ni and Mn, . . . ;

[. . .]

[f] wherein the content of Co in the transition metal M1 of the formulae (1) and (2) is from 30% by mole to 100% by mole,

In Maxell, Ltd. v. Amperex Technology Ltd, the Fed. Cir.'s latest reversal of a claim construction out of Albright's court, the Federal Circuit rejected Albright's reasoning that the claims were indefinite because they recite a contradiction. Specifically, the district court stated that ”[t]he first part of the claim recites a Markush group where [cobalt] is not necessarily required to be in the claimed compound while the second part of the claim recites that [cobalt] is necessarily required. For an element to simultaneously be optional and required is a contradiction on its face.”

The Federal Court, however could find no contradiction in the claim. Stated the court: “It is perfectly possible for a transition metal element to meet both requirements. The two limitations are therefore not contradictory.”

The court continues (internal citations omitted):

[A] reader seeking to understand “the scope of the invention,” is charged with knowing not only that any particular claim language must be “read in the context of the full claim,” but also that “all limitations of a claim must be considered in deciding what invention is defined,” In this context, as in other legal-interpretation settings, later text must be read along with earlier text to discern the meaning.
[. . .]
The district court’s explanation for its contrary conclusion repeatedly describes limitation [c] as granting “options” as to the makeup of M1—seemingly in the sense of a grant of right to others—which limitation [f] then takes back. But this description is inapt, even aside from its treatment of the limitations in isolation from each other. Claim limitations do not grant options. They state requirements—conditions that must be met for a product or process (as the case may be) to come within the claim’s protected zone of exclusivity. If there are two requirements, and it is possible to meet both, there is no contradiction.

Summary

Fed. Cir. holds claims to targeted advertising as ineligible (posted 03/07/24}

Claim 1. A method of targeting at least one associated advertisement from an Internet search [. . .], comprising:

identifying at least one search result item [. . .];

searching for said at least one associated advertisement within said repository using said at least one search result item;

identifying said at least one associated advertisement from said repository [. . .]; and

correlating said at least one associated advertisement with said at least one search result item.

Claim 5. The method of claim 1 further comprising: designating said at least one search result item matched to said at least one associated advertisement for subsequent selection by a user.

Claim 13. The method of claim 5 further comprising performing an off-line batch process for each of said at least one search result item, wherein said batch process identifies said at least one associated advertisement for said at least one search result item.

In Chewy v. IBM Corp., the Federal Circuit upheld a determination that claims of U.S. patent 7,076,443 as being ineligible as being drawn to abstract subject matter. The court agreed with the lower court Summary Judgment which concluded that at, Alice step one, the asserted claims are directed to the abstract idea of identifying advertisements based on search results, and rejected IBM's argument that the claims are instead directed to a patent-eligible improvement in online advertising: obtaining search results from a user’s search query and using those search results to identify targeted advertisements.

State the court: “Unlike the claims in Packet Intelligence, ⁴⁾ the ’443 patent claims are not directed to any challenges unique to computer networks, or specific improvements to the functionality of the computer itself. The claims merely recite the concept of identifying advertisements based on search results, without any specificity as to how this is accomplished. Even accepting that the claimed invention improves the specificity and relevancy of online advertisements, this “is at most an improvement to the abstract concept of targeted advertising wherein a computer is merely used as a tool.” Customedia, 951 F.3d at 1365.”

With respect to Alice step 2, the court rejected IBM's arguments that (1) claims 13 and 15 recite an inventive repository configured to associate search results with advertisements, (2) claim 13 recites using offline batch processing in an unconventional way, and (3) claim 16 recites refining the targeting criteria by assigning session identifiers when the user enters a search query. The court concluded that “none of these claim elements, individually or as an ordered combination, constitute an inventive concept sufficient to transform the claimed abstract idea of identifying advertisements based on search results into patent-eligible subject matter.”

With respect to claim 13, the court held as follows (internal citations omitted):

It is undisputed off-line batch processing was conventional at the time of invention. The ’443 patent does not suggest the claimed invention uses off-line batch processing in an unconventional manner. The claimed invention uses conventional off-line batch processing to more efficiently implement the abstract idea of identifying advertisements based on search results. This is insufficient to transform claim 13 into patent-eligible subject matter. We have repeatedly held “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer [does not] provide a sufficient inventive concept.”

Summary

Federal Circuit reverses PTAB's holding that each claimed item in a list is necessarily distinct (posted 02/19/24)

Representative claim 1: A method for reducing the cycling time of a climate control system, said method comprising:

[. . .]

[1m] determining a first time prior to said target time at which said climate control system should turn on to reach the target temperature by the target time based at least in part on

[i] said one or more thermal performance values of said structure,

[ii] said performance characteristic of said climate control system,

[iii] said first internal temperature,

[iv] said first external temperature, and

[v] the forecasted temperature;

[. . .].

EcoFactor has asserted Patent 8,498,753 related to intelligent HVAC control against Google and Ecobee in separate proceedings. Google and Ecobee submitted separate IPR petitions seeking to invalidate the patent. On February 7, 2024, the Federal Circuit, in a precedential decision styled Google LLC, Ecobee, Inc. v. EcoFactor, Inc., reversed PTAB on an implied claim construction. While the PTAB stated that they did not construe the claim because it was unnecessary to do so in order to rule in favor of EcoFactor, the Federal Circuit found both that the PTAB did, in fact, construe the claim, and further, that its construction was “erroneous.”

Stated the court (internal citations removed, emphasis in original):

To determine whether a court, or the Board, has construed a claim, it is helpful to look at the outcome of the tribunal's analysis. If the outcome of the analysis of the claim term establishes the scope . . . and meaning of the patented subject matter, the court (or the Board) has most likely construed the claim.
[T]he Board's statement that it was not engaging in claim construction is not dispositive as to whether claim construction occurred.
Here, the outcome of the Board's assessment established the scope of the [1m] limitation. The [1m] limitation lists five enumerated inputs on which the timing for the system to activate is 'based at least in part on.' However, there is nothing on the face of the claim to discern the scope and boundaries of those inputs, e.g., whether one input may be calculated based on another input, and whether they must be distinct or may be entwined. To determine, as the Board did, that no input can be based in part on another input . . . is to establish a limit to the scope of the [1m] claim limitation. Thus, the Board's assessment resulted in a constriction of the claim. The limiting impact of the Board's determination is evidenced by the Board's rejection of Google's argument that a prior art reference's measurement could satisfy both the input for [i] and the input for [iii].

With respect to the incorrectness of the PTAB's claim construction, the court stated:

[T]he claim language supports a broader reading of the [1m] limitation, which must allow for any of the five claimed inputs to potentially be used to calculate another claimed input. The claim language broadly recites that 'a first time' is determined 'based at least in part on' each of the five inputs. This language places no constraint on the manner in which the inputs are used. [. . .] Additionally, the specification supports a broader construction of the [1m] limitation.
[T]he Board relied on Becton . . . and Engel. . . . These cases do not create a per se rule that separeately listed claim elements are distinct components, regardless of the intrinsic record.
[T]he Board also relied on CAE ⁵⁾, to support what appears to be a claim differentiation determination that 'nothing in the asserted claims [] suggest[s] that one piece of data can be used to satisfy multiple inputs.' But the doctrine of claim differentiation only creates a rebuttable presumption that each claim in a patent has a different scope; it is a guide, not a rigid rule of claim construction. Here, the claim language and the specification rebut such a presumption.
The proper construction of the term must allow for any of the five claimed inputs to potentially be used to calculate another claimed input.

With respect to the Administrative Procedure Act (APA), the court stated:

“The Board may adopt a claim construction of a disputed term that neither party proposes without running afoul of the APA. The Board, however, cannot, without notice and opportunity for the parties to respond, change theories midstream by adopting a claim construction in its final written description that neither party requested nor anticipated. [. . .] [B]ecause Google had notice of the contested claim construction issues and an opportunity to be heard, the Board's claim construction of Claim 1 did not violate the APA.”

Links:

Summary

Patents invalidated by Obviousness-Type Double Patenting (posted 01/23/24)

Aug. 28, 2023: In In re Cellect, the Federal Circuit upheld a decision by PTAB to invalidate a set of patents owned by Cellect as invalid under obviousness-type double patenting (ODP). During prosecution, the Examiner never applied an obviousness-type double patenting rejection, and as a result, the patentee never filed terminal disclaimers in the challenged continuation-in-part and continuation applications filed of a “grandfather” priority patent application. After Cellect accused Samsung of infringing, Samsung petitioned for ex-party reexamination. The reexamination examiner then rejected the challenged Cellect patents on ODP grounds and this decision was appealed to PTAB which agreed with the examiner, as did the Federal Circuit. Because the patents were expired at the time of the appeal, it was not possible for Cellect to submit a terminal disclaimer.

The Federal Circuit rejected Cellect’s attempt to argue that ODP should not apply to patent term adjustments under 35 U.S.C. § 154(b)(2)(B) for the same reason that they don't apply to patent term extensions under 35 U.S.C. § 156. ⁶⁾ The Court also addressed Cellect's other arguments and rejected each in turn, finding that the patents are invalid under obviousness-type double patenting and therefore unenforceable.

On November 13, 2023, Cellect filed a petition for en banc rehearing, which has attracted several amici briefs, which raise some interesting points. On January 19, 2024, the request for rehearing was denied.

Summary, analysis, and comments

UPDATE: In a subsequent case in the District of Delaware, interpreted 35 U.S.C. § 121 as protecting the original patent from being invalidated by a divisional application filed before the issuance of the original application. Allergan USA, Inc. v. MSN Lab’ys Priv. Ltd. See also Acadia Pharms, Inc. v. Aurobindo Pharma Ltd. ⁷⁾ Both cases are now on appeal before the Federal circuit.

At the Supreme Court

After being granted an extension to file, Cellect filed a petition for writ of certiorari in May 20, 2024, which was ultimately denied on October 7, 2024.

PTAB institutes IPR because Examiner erred in not referencing presented prior art (posted 01/04/24)

In Chongqing Yanmei Technology v. Terves ⁸⁾, The board rejected the patent owner's arguments for a discretionary denial based on the prior art having been reviewed by the Office during examination. The board agreed that the references were presented to the examiner, but decided to institute the IPR because (1) the examiner materially erred because they failed to mention the references in the reasons for allowance or assert any rejections that applied any of the references, and furthermore, because the patent challenger presented arguments that the examiner failed to consider regarding the challenged claims' entitlement to priority and prior art effect of the cited references.

-Summary and takeaway

"As used herein" is definitional, reversing J. Albright (posted 12/19/23)

In ParkerVision v. Vidal ⁹⁾ Patent owner ParkerVision lost its argument before the Federal Circuit that the term “storage element” (i.e., a capacitor) should be narrowly interpreted as ”. . . of an energy transfer system“ because the embodiment (described in incorporated language of its asserted patent) is directed to an energy transfer system. However, the Court held that the critical paragraph the incorporated language, which includes the phrase, “as used herein” indicates a broad lexicographic definition of “storage modules.” Stated the court:

“Sentence 3 uses the phrase 'as used herein' to indicate that the descriptions in sentences . . . that follow are applicable to the [incorporated] patent as a whole rather than a specific embodiment.”

It is notable that while the Federal Circuit by this ruling upheld the PTAB's construction ¹⁰⁾, that construction was contrary to the prior district court construction (of which the PTAB panel was aware) by the Western District of Texas (J. Albright) which applied the narrower interpretation favored by the patent owner. As stated by the Federal Circuit: “The analysis in these district court proceedings does not alter our conclusion that the Board arrived at the correct construction for the term 'storage element.'”

Fed. Cir. to Intel: "when" is not suggestive of a causal link (posted 12/14/23)

Patent in suit:
U.S. Patent 7,523,373

In VLSI Technology LLC, v. Intel Corporation ¹¹⁾ the court rejected Intel's argument that claim recitations of “when” requires a causal link. The claim reads in part as follows:

providing the first regulated voltage . . . when the first regulated voltage is at least the value of the minimum operating voltage; and

providing the second regulated voltage . . . when the first regulated voltage is less than the value of the minimum operating voltage

Stated the court: “The 'when' claim language can reasonably be understood to mean simply 'at the time that.'”

Fed. Cir.: Doctrine of Equivalents is not a line-drawing exercise (posted 12/14/23)

Patent in suit:
U.S. Patent 7,725,759

In VLSI Technology LLC, v. Intel Corporation ¹²⁾ the court outlined three limitations on the use of the Doctrine of Equivalents (DoE) in claim construction:

“First, proof of equivalents must be limitation specific, not focused only on the claim as a whole, though the limitation-specific inquiry . . . may be informed by the role played by each element in the context of the specific patent claim.”

“Second, for the determination of whether a substitute element is only insubstantially different from a claimed element and hence an equivalent, a traditional formulation . . . asks whether a substitute element matches the function, way, and result of the claimed element.”

“Third, . . . [t]he patentee must provide particularized testimony and linking argument as to the insubstantiality of the differences between the claimed invention and the accused device.”

Claim 14, in part:

a first master device . . . configured to provide a request to change a clock frequency of a high-speed clock in response to a predefined change in performance of the first master device, wherein the predefined change in performance is due to loading of the first master device as measured within a predefined time interval;

VSLI argued that Intel's ”. . . Lake . . .“ line of microprocessors infringe claim 14 of the '759 patent under the DoE. VLSI proposes that it is a combination of (1) “the core” and (2) “the core-specific p-code” residing on the power control unit that makes the frequency-change request.

VSLI's expert testified that the combination of components provides a request in substantially the same way as claimed because, “it's the first master device and its [p]-code that provides the request.”

The court found this testimony lacking because:

”[i]t contains no meaningful explanation of why the way in which the request is made is substantially the same as what the claim prescribes. The question is not whether, in a schematic drawing used to illustrate functions, an engineer could 'draw . . . [a] line“ in different places. The question is about actual functionality-location differences. It is not enough . . . to say that the different functionality-location placements were a 'design choice.' [. . .] The question that must be addressed is whether the difference in the way the functionalities are actually allocated between devices is an insubstantial one.”

EPO TBA holds regression analysis of travel times "non-technical" (posted 12/10/23)

Claim 1: A travel process prediction system predicting a travel process of a travel object traveling with transportation repeatedly operated at specific time, characterized by comprising:

a means for specifying passage time at which a travel object actually passes through each of a plurality of passage points at a departure/arrival facility of transportation;

a means for acquiring transportation specifying information specifying transportation used by the travel object;

a means for acquiring situation information indicating a situation in which the travel object uses the transportation;

a means for storing passage time at each passage point, transportation specifying information andsituation information, in an associated manner for each of a plurality of travel objects;

a means for extracting, from the means, a plurality of combinations of passage time concerning a specific passage point and other information associated with the passage time; and

a means for calculating, based on the extracted plurality of combinations, an estimate value of passage time at which a travel object passes through a specific passage point under a specific condition by conducting a regression analysis for obtaining a relationship between the passage time and said other information, or a calculation of a mean or variance of the passage time.

The EPO Technical Board of Appeals, on 9/12/23, determined that the claimed method of estimating a travel time of an object using regression analysis of historical data is lacks a technical effect and is therefore unpatentable. With respect to claim interpretation, the Board interpreted the claims broadly, stating, “The means are claimed in functional terms, lacking specific technical details.”

The Board determined that the claim “essentially covers the concept of predicting a mean time for a travel object, like a person passing through a designated point, such as an exit gate at an airport” and further, that “a travel time prediction does not yield any technical effect serving a technical purpose, and the implementation merely involves programming the statistical method on a general-purpose computer.”

The Board reasoned that:

“[f]ollowing the reasoning of T 1148/18 - Travel process prediction/THE AQUA ENTERPRISE COMPANY . . . predicting the arrival or passage time of a traveler or baggage at a specific location based on historical data does not constitute a technical activity.

“This task is performed by a person skilled in applying statistics to logistics and travel planning, rather than a technically skilled person. It encompasses tasks like parameter selection, choosing the prediction algorithm such as regression analysis or deciding on the applicable statistical tests. The latter also involves determining significance levels based on statistical distribution tables such as the chi-square distribution.

“Notably, in the present case, the selection of parameters is not driven by technical considerations, such as their measurement or any technical effects resulting from the selection. Even if this were disclosed in the description, this aspect is not reflected in the claim, which, in the broadest interpretation, merely specifies the (manual) input of passage time and other non-technical data like flight and weather information.

“The claimed means essentially outline the objective of the statistical analysis - namely collecting and storing data and using this data to perform a statistical calculation which could be as simple as calculating the mean value of a set of numbers like the passage time.

“Moreover, the claim does not define any feedback mechanism using the prediction to control the transportation system. This is, for example, different from D6 where, based on the actual location of baggage, the prediction is used to indicate an actual state of the baggage such as being late or on time.”

Internal citations omitted.

Summary

Fed. Cir. faults PTAB's obviousness analysis as improperly limited to prior art's context (posted 12/04/23)

In Axonics, Inc. v. Medtronic, Inc. (Decided July 10, 2023), Axonics sought to invalidate as obvious Medtronic's patents at issue, which are directed to a method for implanting and anchoring a sacral nerve- or muscle tissue-stimulating electrode. Specifically, the claims are directed to a lead body with a plurality of electrodes at a distal end, and a plurality of tine elements at a proximal end, where each electrode is connected to a corresponding conductor. Axonics argued that it would have been obvious to modify the primary reference, Young, by replacing one electrode of Young with multiple electrodes as taught by the secondary reference, Gerber. The Young reference is directed to a method for treating chronic facial pain with electrical stimulation.

While the Board agreed with Axionics that the prior art showed each limitation of independent claim 1 in Axionics' proposed combination, the Board sided with Medtronic's assertion that the relevant artisan would not have had a motivation to combine the references to arrive at the claimed invention. Specifically, the Board rejected Axonics' reliance on Young's statement that ”[t]he electrode could be improved to provide multiple active stimulations at the tip” and instead sided with Medtronic's expert that this sentence did not suggest to a relevant artisan to include a plurality of electrodes distal to all the tines because such an arrangement would not be feasible in the complex anatomy of the trigeminal nerve region (of facial nerves) – the subject matter of Young.

The panel found two critical flaws in the Board's analsyis:

The Board improperly confined its motivation inquiry to whether a motivation would exist to make the proposed combination for use in the Young-specifci trigeminal-nerve context.
The Board incorrectly identified the relevant art as “medical leads specifically for sacral neuromodulation.”

Stated the court:

When an obviousness challenge asserts a combination of identified prior art . . . [t]he inquiry is not whether a relevant artisan would combine a first reference's feature with a second reference's feature to meet requirements of the first reference that are not requirements of the claims at issue. [. . .] As Medtronic states, ”[t]he real question is 'why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.”

The Board adopted a legally incorrect framing of the motivation-to-combine question when it confined the inquiry to whether a motivation would exist . . . for use in the Young-specific trigeminal-nerve context. That context is not part of the Medtronic patents' claims.

[W]e also conclude that the Board erred in its definition of “the relevant art” as limited to medical leads for sacral-nerve stimulation. [. . .] The Medtronic patent claims make no reference to sacral anatomy or sacral neuromodulation, and they cannot properly be construed as so limited. Neither the Board nor Medtronic has cited any authority for treating the relevant art as limited to a narrow subset of what the claims of a patent cover. . . . And we have repeatedly ruled that what constitutes “analogous art” for section 103 purposes is tied to “the claimed invention.”

S.Ct. upholds status quo on enablement (posted 05/25/23)

UPDATE: On 1/10/24, the USPTO published ¹³⁾ guidelines for implementing the Amgen v. Sanofi decision. The new guidelines state that the office will continue to use the framework of eight factors developed in In re Wands ¹⁴⁾, referred to as the Wands factors to determine “reasonableness of experimentation.”

May 18, 2023: In Amgen Inc. v. Sanofi, the Supreme Court unanimously held that Sanofi's “genus” patents – patents directed to broad patents cholesterol-lowering monoclonal antibodies but directed to a specific antibodies – were invalid for lacking an enabling disclosure. Stated the court: “If a patent claims an entire class of processes, machines, manufactures, or compositions of matter . . . the patent's specification must enable a person skilled in the art to make and use the entire class.” Because the class being claimed covers potentially millions of antibodies and the specification only describes 26 specific antibodies, the specification fails this test. The court further explained that it is not required for a patent to explain how to make and use every single embodiment within a claimed class, but should give examples along with identifying specific characteristics that would allow someone else to make and use everything that the patent claims.

This ruling is consistent with prior Federal Circuit holdings that the entire scope of a claimed invention must be enabled. See, e.g., Liebel-Flarsheim v. Medrad ¹⁵⁾ discussed here. However, in their Yale Law Journal article, "The Antibody Patent Paradox"¹⁶⁾ the authors Lemley and Sherkow argue that the written description requirement is inconsistent with the science of antibody research. As we can now learn more about the molecular structure through DNA sequencing, the requirements for satisfying the written description requirement has grown more stringent and is incompatible with how scientists understand antigen science.¹⁷⁾

“Put less abstractly, researchers have little interest in the particular DNA sequence that gives rise to a particular antibody; they are instead interested in what the antibody does and how it does it. So, although function can make an antibody representative of a class, by establishing a group of molecules according to what they bind to and how, this class might have no “common structural features.” This representative-structure standard is, if not scientifically impossible, textually impractical. Demanding it is roughly equivalent to demanding that a sofware patent identify individual strings of computer code that every implementation must have in common, even if slight variations do the exact same thing.”

USPTO Proposes new rules for discretionary denials (posted 05/01/23)

A set of proposed rules for IPR discretionary denials was published by the USPTO to “build on and codify existing precedent and guidance on Director’s discretion to determine whether to institute [IPRs].” In summary the rules would:

Adopt a broader “substantial relationship test” to identify real parties in interest that must be disclosed.
Mandate disclosure of information on corporate control and funding, similar to Judge Connolly's new standing rules in the District of Delaware. This disclosure may be a precondition for requesting discretionary denial.
Codify the compelling merits exception to discretionary denial, which would apply when “the evidence of record . . . is highly likely to lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.”
Permit discretionary denials for
- petitioner misconduct or gamesmanship.
- For-profit entities that have not been sued and are non-competitive in the technical space of the patent.
- patents with claims that substantially overlap claims to another patent that has previously reached final adjudication as to validity by a district court or PTAB.
Provide exemption from AIA reviews for small businesses.
Revise the PTAB's approach to serial or parallel petitions. The proposal will deny any IPR or PGR petition with at least one challenged claim that is the same as a challenged claim in a previously filed IPR, PGR, CBM filed by the same petitioner, a real party in interest or privy to that petitioner, a party with a significant relationship to the petitioner, or a party that previously joined an instituted IPR or PGR filed by the petitioner. Exceptions in the case where the earlier filed petition was discretionarily denied or not resolved on the merits and in extraordinary circumstances. Parallel petitions will be denied except for good cause. In cases where word/page limits restrict what can be argued in a single petition, higher fees will be available for expanded word limits.

Divided Fed. Cir. panel upholds PTAB's obviousness without de novo review (posted 04/14/23)

In Roku, Inc. v. Universal Elec’s, Inc., Case No. 2022-1058 (Fed. Cir. Mar. 31, 2023) (Reyna, Stoll, JJ.) (Newman, J., dissenting), the Federal Circuit reviewed a PTAB decision finding a patent for a universal remote control was patentable over prior art by looking only at the underlying factual issues leading to the obviousness decision, with those underlying factual issues being reviewed for substantial evidence, which is a determination as to whether a reasonable factfinder could have arrived at the same conclusion as to the facts.

Judge Newman dissented, arguing that de novo review of the obviousness–a legal question–was required and had the majority undertaken that required review, it would have resulted in a reversal of the PTAB's decision.

Review

Fed. Cir.: Upholds web document as "publicly available"; vacates anticipation PTAB findings (posted 04/09/23)

Online reference was "publicly available"

February 1, 2021: In M & K Holdings, Inc., v. Samsung Elecs. Co., ¹⁸⁾ the Fed. Cir. upheld a PTAB ruling that a S&K's video compression patent was invalid because prior art documents were available on JTC-VC's public website before the priority date of the patent. The court rejected M&K's argument that a person or ordinary skill in the art could not have located the prior art documents with reasonable diligence because the documents were not prominent and because the structure of JCT-VC's website, which lacked an adequate search function would have made finding the documents prohibitively difficult. Stated the court:

“The pertinent references in this case, Park and Zhou, were presented at JCT-VC development meetings. The Board found that these meetings were attended by between 200 and 300 interested persons and that the conferees had discussed Park and Zhou at the meetings. The Board also noted that JCT-VC meeting reports summarized the Park and Zhou discussions. Those discussions, the Board found, were conducted without any expectation of confidentiality. . . .”

“The law regarding public accessibility is not as restrictive as M&K suggests–a website's landing page is not required to have search functionality. Instead, given the prominence of JCT-VC, the dispositive question is whether interested users of the JCT-VC website could have located Park and Zhou through reasonable diligence. The Board found that they could have, and that conclusion is supported by substantial evidence.”

“Samsung was not required to show that interested artisans actually accessed Park and Zhou. . . .”

“Samsung was also not required to prove that the oral presentations . . . disclosed the exact material relating to Samsung's obviousness theories in the circumstances of this case.”

Anticipation not inherent in Obviousness

In /M & K Holdings, Inc., v. Samsung Elecs. Co., ¹⁹⁾ the Fed. Cir. vacated the PTAB's finding that claim 3 of M&K's patent was invalid because its rationale for doing so, was based on anticipation despite the fact that Samsung did not put forth an anticipation argument with respect to claim 3. Stated the court:

“We agree with M&K that the Board deviated impermissibly from the invalidity theory set forth in Samsung's petition when it held that claim 3 was anticipated by WD4-v3. Although M&K was aware of the prior art used to invalidate claim 3 given the obviousness combination asserted against that claim, M&K was not put on notice that the Board might find that WD4-v3 disclosed all of the limitations in claim 3 and might invalidate claim 3 based on anticipation.

More . . .

Additional blurbs are accessible in categorized lists by accessing the Index link on the left (or, for small-format screens, below).

¹⁾

Skidmore v. Swift & Co., 323 US 134 (1944)

²⁾

796 F.3d 1338 (Fed. Cir. 2015)

³⁾

DocketNavigator

⁴⁾

Packet Intelligence LLC v. NetScout Systems, Inc., 965 F.3d 1299 (Fed. Cir. 2020)

⁵⁾

CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317

⁶⁾

35 U.S.C. § 156 allows an applicant/patentee to extend a patent that covers a product whose market introduction is deleted due to the FDA approval process.

⁷⁾

C.A. No. 20-985-GBW (D. Del)

⁸⁾

IPR2023-00521 (PTAB August 30, 2023)

⁹⁾

No. 2022-1548 (Fed. Cir. Dec. 15, 2023

¹⁰⁾

IPR2021-009902; see pp. 14-21

¹¹⁾ , ¹²⁾

No. 2022-1906 (Fed. Cir. Dec. 4, 2023)

¹³⁾

Federal Register, Vol. 89, No. 7, pp 1563-1566, Jan. 10, 2024

¹⁴⁾

858 F.2d at 737

¹⁵⁾

481 F. 3d 1371 - Court of Appeals, Federal Circuit 2007

¹⁶⁾

132 Yale L. J. 994, 1035 (2023)

¹⁷⁾

Id at 999

¹⁸⁾ , ¹⁹⁾

985 F.3d 1376) (Fed. Cir. Feb. 1, 2021)

Amici	Argues for	Arguments
AIPLA	Fed. Cir. erred; certiorari should be granted.	Patent term “adjustments” are not “unjust extensions of time.” Where Congress has stated that the term of a delayed patent “shall” be adjusted for each day of delay, its use of that word “creates an obligation impervious to judicial discretion.” Just because Section 154(b) permits an applicant to voluntarily surrender statutorily granted PTA via a terminal disclaimer does not mean that Congress intended to nullify PTA entirely by exposing PTA-adjusted patents, where no terminal disclaimer is filed, to ODP.
Sonos	Fed. Cir. erred; certiorari should be granted	ODP was intended to and did penalize patent holders who engaged in gamesmanship. But, under the current statutory scheme, an applicant cannot extend the term of its monopoly by filing sequential continuations in the same patent family–simply because the term for all those continuations will be based on the date of the application to which they claim priority. In In re Cellect, the Federal Circuit chose to expand both the doctrine and rationale of ODP–not to punish gamesmanship, but to penalize patentees who do no more than accept the patent term adjustments that are both: (i) expressly provided by statute and (ii) created solely and exclusively by administrative delays within the Patent Office.
IPO	Fed. Cir. erred; certiorari should be granted.	The filing of a terminal disclaimer is the sole exception authorized by Congress to its mandatory “shall be extended” directive in Section 154. Overruling the statute enacted by congress based on judge-made doctrine is legal error. If allowed to stand, the Fec. Cir's ruling will result in valuable patent rights being unfairly invalidated or their statutorily authorized terms reduced.
NYIPLA	Certiorari should be granted; issues are important.	Cellect ignored binding precedent, misapplied an equitable doctrine as rigid, strict liability standard; and explicitly stated that equities do not matter. ODP has outlived its usefulness; post the Uruguay Round Agreements Act, it is a solution in search of a problem.

Patent News

Federal Circuit Year in Review (posted 01/11/25)

Anticipation / Obviousness

Prior Art

Design Patents

Claim Construction

Written Description

Procedural Determinations

Administrative Procedure Act

Fed. Cir. defines "predefined" (posted 12/31/24)

PTAB opinion vacated for failing to consider motivation in 103 analysis (posted 12/31/24)

After After Final Consideration Pilot (AFCP 2.0) (posted 12/13/24)

Intellectual Property as a wealth engine (posted 10/24/24)

Summary of PTAB Precedential and Informative Opinions on Eligibility (posted 09/18/24)

Ex Parte Hannun et al. -- Audio Transcription

Ex parte Smith et al. -- Delaying execution of derivative trade

Ex parte Kimizuka et al. -- Golf club fitting

Ex parte Savescu et al. -- Project lifecycle workflows

Ex parte Fautz -- Magnetic resonance imaging

PTAB Affirmed denying exception in § 102(b)(2)(B) (posted 08/09/24)

USPTO issues subject matter eligibility guidance for AI inventions (posted 07/25/24)

How the death of Chevron might impact patents (posted 07/04/24)

Major change in Design patents (posted 05/29/24)

USPTO Guidance

J. Albright reversed on basic claim construction principles (posted 03/07/24)

Fed. Cir. holds claims to targeted advertising as ineligible (posted 03/07/24}

Federal Circuit reverses PTAB's holding that each claimed item in a list is necessarily distinct (posted 02/19/24)

Patents invalidated by Obviousness-Type Double Patenting (posted 01/23/24)

At the Supreme Court

PTAB institutes IPR because Examiner erred in not referencing presented prior art (posted 01/04/24)

"As used herein" is definitional, reversing J. Albright (posted 12/19/23)

Fed. Cir. to Intel: "when" is not suggestive of a causal link (posted 12/14/23)

Fed. Cir.: Doctrine of Equivalents is not a line-drawing exercise (posted 12/14/23)

EPO TBA holds regression analysis of travel times "non-technical" (posted 12/10/23)

Fed. Cir. faults PTAB's obviousness analysis as improperly limited to prior art's context (posted 12/04/23)

S.Ct. upholds status quo on enablement (posted 05/25/23)

USPTO Proposes new rules for discretionary denials (posted 05/01/23)

Divided Fed. Cir. panel upholds PTAB's obviousness without de novo review (posted 04/14/23)

Fed. Cir.: Upholds web document as "publicly available"; vacates anticipation PTAB findings (posted 04/09/23)

Online reference was "publicly available"

Anticipation not inherent in Obviousness

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