DJ grant of SJ of non-infringement vacated due to pre-existing settlement agreement

Serta Simmons Bedding, LLC et al. v. Casper Sleep Inc.

Docket No. 2019-1098, -1159
February 13, 2020

Brief Summary: DC grant of SJ vacated and remanded due to pre-existing settlement agreement.

Summary: Serta appealed DC grant of Casper’s summary judgment (SJ) motions of non-infringement and denial of Serta’s motions to vacate the SJ and to enforce a settlement agreement (SA). The disputed patents are US 7,036,137; 7,424,763; and 8,918,935 relating to mattresses including a channel and methods for forming it. The SA was entered into on June 18, 2018 while Casper’s SJ motions were pending, and the court was notified by a Joint Notice of Settlement and Motion to Stay filed the same day but nevertheless issued its order granting Casper’s motions (SJ of non-infringement) on June 20, 2018. Casper then “informed Serta Simmons that it would not make the payment required by the [SA] because the agreement was ‘null and void’ given the” DC’s grant of SJ. Serta filed motions to enforce the SA reasoning that “the case was not moot because ‘the parties did not intend to immediately dismiss the claims, instead keeping the action alive until the parties fulfilled their obligations under the” SA. The DC held “it lacked the authority to enforce the [SA] once the [SJ] order issued.” Casper then filed a motion for fees and costs (section 285) based on alleged improper litigation tactics by Serta (e.g., baseless infringement claims), which was denied. ¬¬¬¬The FC panel explained that in Exigent Tech. (FC 2006), it “recognized that a binding settlement generally moots an action despite the fact that the settlement agreement requires further implanting steps to be taken”, and it confirmed that that holding applies to this case, and vacated the DC grant of SJ on this basis. Although not at issue here, the FC panel did note that DCs are not required to “enforce settlement agreements that are contrary to public law or public policy” (Hurd, US 1948). The FC panel also concluded that under FC law a DC “has jurisdiction to enforce a settlement agreement that resolves patent infringement claims if the motion to enforce is filed before the case is dismissed and the proceedings are ongoing”, and directed the DC to enforce the SA during the remand proceedings.” The FC panel also found Casper’s request for fees to be moot since the SJ order was vacated, noting that the SA requires that “the Parties [are] to bear their own litigation costs and fees” and “release…all…attorneys’ fees” arising out of the litigation.

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Board erroneously excluded Apple’s reply arguments as new, not presented in IPR petition

Apple Inc. v. Andrea Electronics Corporation

Docket No. 2018-2382, -2383 (IPR2017-00626, -00627)
February 7, 2020

Brief Summary: Board erroneously excluded Apple’s IPR reply arguments as new as compared to IPR petition (‘626 remanded), and no anticipation or obviousness finding affirmed (‘627).

Summary: Apple appealed two IPR final written decisions (‘626 FWD and ‘627 FWD) regarding Andrea’s US 6,363,345 relating to digital audio processing (“[a]n apparatus for cancelling noise” using a “threshold detector”). Apple challenged ‘345 patent claims 1-25 and 38-47 but this appeal relates to claims 6-9.
Regarding the ‘626 FWD, Apple challenged claims 6-9 as obvious over the Hirsch and Martin references and appealed “the Board’s conclusion that claims 6-9 are surviving claims, arguing that had the Board properly considered its reply brief arguments, that would not have been the outcome.” Replying to Andrea’s arguments, Apple argued “Andrea mischaracterized Martin and read non-existent limitations into the claims” and submitted a reply expert declaration but the Board found that “Apple’s reply raised new arguments that were not otherwise discussed in the petition” (“raised a new theory of unpatentability for the first time in its reply brief”). The FC panel reviewed this conclusion “for abuse of discretion” (Ericsson, FC 2018), explaining that under 37 CFR § 42.23(b) “[a] reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response”. The FC panel disagreed with the Board, finding that Apple still asserted the same obviousness ground in its reply and “does not cite any new evidence or ‘unidentified portions’ of the Martin reference” but “merely demonstrates another example of the same algorithm to further explain why” the reference met the disputed limitations (unlike Ariosa, FC 2015 (“discussed ‘previously unidentified portions of a prior-art reference”) or Intell. Bio-Sys., FC 2016 (“cited several new…references”)). The FC panel also explained that Apple’s reply was “a legitimate reply to evidence introduced by the patent owner” (Anacor, FC 2018). Thus, the FC panel found the Board’s decision to be an abuse of discretion.

The FC panel agreed with the Board’s construction of “periodically” as “at regular intervals of time’ rather than ‘from time to time’” (as argued by Apple) as it is supported by the specification and expert declarations (Pacing Techs., FC 2015 (“[when] the patent describes multiple embodiments, every claim does not need to cover every embodiment”); Phillips, FC 2005 (“establish…a particular meaning in the pertinent field”)).

Regarding the ‘627 FWD, Apple alleged claims 6-9 were anticipated by the Helf reference or obvious over Helf and the Martin reference, and appealed the Board decision that invalidity was not shown. In making its decision, the Board concluded that Apple failed to prove that” the cited prior art “discloses the ‘periodically’ limitation as required by claims 6-9”. Based in part on the construction of “periodically”, the FC panel found substantial evidence supported the Board’s finding of no invalidity.

Posted in Anticipation (35 USC 102), Inter Parties Review (IPR), IPR, Obviousness, Uncategorized | Leave a comment

DC dismissal affirmed as grandchild patent impliedly licensed in settlement agreement

Cheetah Omni LLC v. AT&T Services, Inc. et al.

Docket No. 2019-1264
February 6, 2020

Brief Summary: DC dismissal of Cheetah’s claims against AT&T affirmed since grandchild patent was impliedly included in prior license to grandparent parent.

Summary: Cheetah appealed DC dismissal of its claims of infringement of US 7,522,836 relating to optical communication networks with prejudice due to a prior agreement to settle litigation (the ROADM litigation). The prior agreement was made with Fujitsu and Ciena. After Cheetah asserted the ‘836 patent against AT&T, Ciena successfully intervened as it manufacture and supplies components to AT&T that “formed the basis of some of Cheetah’s infringement allegations.” Ciena argued that its previous settlement agreement with Cheetah included the ‘836 patent through its grandparent ‘925 patent to the ‘714 patent explicitly referenced in the settlement agreement. The ‘714 patent is a continuation-in-part of parental ‘925 patent. The “Licensed Patents” covered by the settlement agreement includes “all parents” and the “Licensed Products” includes “all past, present or future Ciena…products, services or combinations, components, or systems of products or services”. The FC panel framed the question presented here to be “whether the ‘836 patent, i.e., its grandchild, is impliedly licensed under the Ciena license” as determined by the DC (“because the uncle and grandparent of the ‘836 patent, are licensed, is the ‘836 patent also licensed?”) Cheetah argued “the parties did not intend that the licenses extend to the ‘836 patent”, that “the covenants not to sue expressly included the ‘836 patent, while the licenses did not”, “all parties were aware of the ‘836 patent” (“if they had intended to include the ‘836 patent, the patent would have been expressly named in the license agreements”), and “the ‘836 patent covers an invention different from the inventions claimed in the patents at issue in the ROADM litigation”. Ciena argued that the licenses “only list[] broad categories of patents” and “if the parties had mutually intended to exclude the ‘836 patent, they would have done so explicitly.” The FC panel agreed with the DC, finding that “the license include[s] an implied license to the ‘836 patent that extends to the accused AT&T systems”, “[l]egal estoppel prevents licensors from derogating or detracting from definable license rights granted to licensees for valuable consideration”, and “the same inventive subject matter was disclosed in the expressly licensed patents” (AMP, Ct. Cl. 1968; TransCore, FC 2009 (“implied license to related, later-issued patent that was broader”); General Protecht, FC 2011 (relied on by the DC here; not-yet-issued continuations of licensed parent patents “impliedly licensed”)). The FC panel also concluded that the accused AT&T products are included in the Licensed Products (i.e., “in combination with other products, services, components or systems”). The FC panel did not “consider the scope of the covenant not to sue” as it concluded “AT&T’s products are licensed under the license agreement”. The DC decision was therefore affirmed.

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Biogen’s Tecfidera-related ‘514 patent not obvious in IPR final written decision due to unexpected results of claimed dosage amount

Mylan Pharmaceuticals Inc. v. Biogen MA Inc.
IPR2018-01403 (PTAB Final Written Decision)
February 5, 2020

Brief Summary: Biogen’s Tecfidera-related US 8,399,514 B2 (“method of treating…multiple sclerosis” not obvious due in part to unexpected results (IPR final written decision).

Summary: Mylan challenged Biogen’s Tecfidera-related US 8,399,514 B2 (“method of treating…multiple sclerosis” with “dimethyl fumarate, monomethyl fumarate, or a combination thereof”) as obvious (§ 103) in view of four combinations of references (four grounds). The final written decision (FWD) indicates that the ‘514 patent has been involved in two other IPRs (IPR2015-01993, IPR2015–01136, Coalition for Affordable Drugs v LLC) and one interference proceeding (106,023, v. Forward Pharma A/S). The claims require administration of a “therapeutically effective amount” of DMF, MEF, or a combination thereof “wherein” that amount “is about 480 mg per day”. Biogen’s definition of a person of skill in the art (POSA) was accepted by the Board (“a medical degree with at least three years of training in neurology and at least three years of clinical experience treating MS”). No claim terms were specifically construed, and were reviewed “[u]nder the broadest reasonable construction standard…presumed to have their ordinary meaning, as would be understood by” a POSA (In re Translogic, FC 2007; Vivid Techs., FC 1999). The Board explained that on the first ground of obviousness “[t]he question before” them was “whether discovery of the 480 mg/day dose of DMF…was the result of DMF dose optimization within an established effective range (i.e., doses between 360 mg/day and 720 mg/day)” (citing, e.g., Pfizer, FC 2007 (“discovery of an optimum value of a variable in a known process is usually obvious”)), a range that “the asserted prior art must teach…was known.” And it found the first combination of references “does not support a finding that any such range was known” (e.g., “the Biogen Press Release…does not indicate which of the tested dosages…showed efficacy”, combination of fumarates “does not teach or suggest anything about the effectiveness of any individual fumarate”). Regarding the second ground of obviousness, the Board relied on its finding regarding the combination of fumarates, and also found the prior art did not “teach efficacy in treating MS with a 360 mg/day dose of DMF” based in large part on expert testimony. On the third ground of obviousness, the Board considered whether the 480 mg/day dose is a “result-effective variable” (In re Antoine, CCPA 1977; In re Boesch), and concluded the prior art would have motivated a POSA “to optimize the daily dose of DMF with a reasonable expectation of success”. But Biogen’s evidence of unexpected results (“unexpected magnitude of efficacy as compared to a much higher 720 mg/day dose”) was found to overcome a conclusion of obviousness on these grounds (In re Antoine (“rebutted… ‘where the results of optimizing a variable…[are] unexpectedly good’”)). In arguing the fourth ground, Mylan relied on the Board’s findings in IPR2015-01993 (also overcome by unexpected results), but this Board found this reference not to be enough, recognizing “the possibility for a different outcome based on the record” of this proceeding (Novartis AG, FC 2017; § 312(a)(3); Harmonic, FC 2016), and found Biogen’s unexpected results to overcome an obviousness finding.

Posted in Inter Parties Review (IPR), IPR, Obviousness, Obviousness (Secondary Considerations), Uncategorized | Leave a comment

“Lay witness” not qualified as an expert cannot testify as to conclusion of obviousness

HVLPO2, LLC v. Oxygen Frog, LLC, Scott D. Fleischman

Docket No. 2019-1649
February 5, 2020

Brief Summary: DC’s limiting jury instructions regarding obviousness because “lay witness” was not qualified as an expert.

Summary: HVO appealed DC denial of its motion for judgment as a matter of law (JMOL) that US 8,876,941 and 9,372,488 relating to managing an oxygen generating system (e.g., “for torch glass artists”) should have been found obvious by the jury or, alternatively, “for a new trial based on the admission of lay opinion testimony on the issue of obviousness.” The DC granted partial summary judgment finding Oxygen infringed the claims, but after trail the jury found the asserted claims invalid for obviousness in view of a combination of two references (“Cornette” and the “Low tide video”). The Low tide video was posted online by Mr. Piebes who “provided deposition testimony as a fact witness” but “was not qualified as an expert witness”, and was played before the jury. The DC instructed the jury that Mr. Piebes deposition testimony that he thought “modifying the Conette system” would have been obvious were “observations” that “can explain to you how a system works and what he thinks would occur to him from his perspective would or would not be obvious.” The FC panel found that Mr. Piebes testimony caused “substantial prejudice” against HVO and the DC’s “limiting instruction was insufficient to cure” it, and that the DC “abused its discretion by denying the motion for a new trial.” The FC panel explained that “it is an abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless that witness is qualified as an expert in the pertinent art” (Sundance, FC 2008; Fed. R. Civ. Pr. 26(a)(2)), and Mr. Piebes was not (“Mr. Piebes’ testimony, which is directed to the conclusion of obviousness and its underlying technical questions, is the province of qualified experts, not lay witnesses.”) The FC panel therefore concluded that a new trial was required, reversing and remanding the DC decision.

Posted in Expert Testimony, Obviousness, Uncategorized | Leave a comment

Disclosed algorithm found to provide sufficient support for mean-plus-function claim term

Intelligent Automation Design, LLC v. Zimmer Biomet CMF et al.

Docket No. 2019-1100
January 30, 2020

Brief Summary: DC determination of means-plus-function construction affirmed but reversed as to whether sufficient structure was disclosed.

Summary: IAD appealed DC finding that claims 1 and 6 of US 7,091,683 relating to methods for using a motor to drive a screwdriver bit invalid for indefiniteness under 112, § 6 (means-plus-function). Under 112, § 6, “‘[a]n element in a claim for a combination…expressed as a means…for performing a specified function…shall be construed to cover the corresponding structure’ described in the specification.” Where the word “means” is used in a claim, a “rebuttable presumption that 112, § 6 applies” that can be overcome by showing “an ordinarily skilled artisan would understand the recited claim element ‘to have sufficiently definite meaning as the name for the structure’” (Williamson, FC 2015; Noah Sys., FC 2012 (“indefinite it a person of ordinary skill in the art would unable to recognize the structure in the specification and associate it with the corresponding function in the claim”, “an algorithm for performing the claimed function…in any understandable terms” (quoting Typhoon Touch, FC 2011)); Bosch, FC 2017; In re Aoyama, FC 2011 (“perceive the founds of the invention”)). Claim 1 is directed to a “method of controlling a motor” and claim 6 is directed to a “speed/torque controller”. The parties disputed whether “determining a time when the torque reaches a maximum” in claim 6 is a means-plus-function term and whether the specification provided sufficient structure. The DC found claim 1 to be in means-plus-function form and it includes the same term. The FC panel explained that “that function should have the same meaning in claim 6” (In re Varma, FC 2016 (“the same phrase in different claims of the same patent should have the same meaning unless ‘it is clear that the same phrase has different meanings in different claims’”)). And while “recitation of a ‘control circuit for’ performing the determining function in claim 6 provides detail about how the system achieves the function”, the FC panel also explained, it “does not change the meaning” of the “determining” limitation or “provide enough description of the structure to render the limitation structural, rather than functional” (Power Integ., FC 2013). Claim 6 was therefore found to be a means-plus-function claim. The FC panel disagreed with an argument against means-plus-function construction since the required construction would “render[] the claimed invention inoperable” (AIA Eng’g, FC 2011). The FC panel then considered whether the specification disclosed sufficient structure, and found that it did since “the disclosed algorithm and the claimed function both solve the problem of establishing the ‘optimum point of grip’” such that “an ordinarily skilled artisan could perceive the bounds of the invention” (“a reasonably certain description”, “the brief passage…suffices to define the bounds”, “particularly in light of the specification’s explanation of the assumptions inherent in the method”). It also found expert testimony to be “irrelevant” since “the specification ‘unambiguously set[s] forth’ the meaning of [the] claim term” (Personalized Media, FC 1998). Thus, the DC decision was affirmed-in-part and reversed-in-part.

Posted in Claim Construction, Claim Differentiation, Means-plus-function, Uncategorized | Leave a comment

Board IPR obviousness conclusion affirmed (cannot “ignore the skilled artisan’s knowledge”)

Koninklijke Philips N.V. v. Google, LLC, Microsoft Corp. et al.

Docket No. 2019-1177 (IPR2017-00447)
January 30, 2020

Brief Summary: Board IPR obviousness determination regarding Phillips’s claims affirmed (e.g., § 311(b) limitation on prior art does not mean one can “ignore the skilled artisan’s knowledge when determining” obviousness).

Summary: Philips appealed Board IPR decision finding claims 1-11 of US 7,529,806 relating to methods for providing multiple formats of a media presentation invalid for obviousness. The Board found the claims obvious over “SMIL 1.0” teaching a computer language including “a ‘switch’ element that specifies a set of alternative files from which only one should be chosen by a media player”, or SMIL 1.0 and the Hua reference (“a review [of] the convention pipelining scheme”, which “refers to dividing a media presentation into multiple segments”). Philips argued to the Board in its preliminary IPR response “that it was inappropriate for Google to rely on Hua as evidence of general knowledge but rather was required to make Hua ‘part of the combination’ and ‘explain[] how [Hua] would have been combined with SMIL 1.0”, and that Google cannot “rely on ‘conclusory statements of ‘general knowledge’ to supply a missing claim limitation”, but the Board disagreed in its obviousness determination. In this appeal, Philips argued the Board erred in relying on the combination of SMIL 1.0 and Hua because “Google did not advance that combination of prior art in its petition” and the FC panel agreed (citing Sirona Dental, FC 2018 and SAS, US 2018; distinguishing this case from Anacor (FC 2018) and Genzyme (FC 2016) (regarding invalidity arguments need not remain “precisely as formulated in the petition’ so long as the Board ‘provide[s] reasonable notice”, not “whether the Board has discretion to institute…on a ground of unpatentability not raised in the petitioner’s petition”)). Philips also argued “that the Board erred in relying on ‘general knowledge’ to supply a missing claim limitation” in its conclusion of obviousness over SMIL 1.0 because general knowledge is not “prior art consisting of patents or printed publications” and therefore prohibited from being used under § 311(b). The FC panel disagreed, however, since the § 311(b) limitation on prior art does not mean one can “ignore the skilled artisan’s knowledge when determining” obviousness (Dow Jones, FC 2010; Arendi, FC 2016 (“common sense and common knowledge” in IPR, but “cannot be used as a wholesale substitute for reasoned analysis and evidentiary support” or be “based merely upon ‘conclusory statements and unspecified expert testimony”); Randall, FC 2013), and “Phillips offered no evidence to rebut the conclusion that a skilled artisan would have known about pipelining.” The FC panel also found substantial evidence supported the Board’s conclusion and no error in its “reliance on the ‘806 patent’s disclosure” since “it is appropriate to rely on admissions in a patent’s specification” (PharmaStem, FC 2007). The Board decision was therefore affirmed.

Posted in Anticipation (35 USC 102), Inter Parties Review (IPR), IPR, Obviousness, Uncategorized | Leave a comment