DC denial of new infringement trial affirmed but jury damages award vacated due to improper apportionment

Omega Patents, LLC v. Calamp Corp.

Docket No. 2020-1793, -1794 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1793.OPINION.9-14-2021_1833974.pdf)

DYK, PROST, HUGHES

September 14, 2021

Brief Summary:  DC denial of CalAmp’s JMOL for a new trial on infringement affirmed but jury damages award vacated and remanded for improper apportionment.

Summary:  CalAmp appealed DC judgment of infringement and damages award regarding Omega’s US 8,032,278 relating to multi-vehicle-compatible systems that can remotely control various vehicle functions such as remote vehicle starting.  Omega appealed the DC’s post-verdict royalty rate.  The jury also found that CalAmp did not induce infringement of Omega’s US 6,756,885 (same subject matter at the ‘278 patent) but CalAmp appealed the jury’s underlying finding of direct infringement of the asserted claims by CalAmp’s customers, “specifically, the district court’s denial of JMOL that those customers did not directly infringe.”  The FC panel explained that “[t]he direct-infringement finding did not itself impose liability on CalAmp but instead was intended to serve as a predicate to Omega’s induced-infringement theory.”  However, as CalAmp was “the prevailing party as to Omega’s claim of induced infringement of the ’885 patent, we decline to review the merits of CalAmp’s appeal of the JMOL denial regarding direct infringement by its customers” but it did “agree with CalAmp that the jury’s direct-infringement finding should be vacated” (Camreta, US 2011).  The FC panel did consider the DC’s denial of CalAmp’s request for a judgment of a matter of law (JMOL) and a new trial as to infringement, with CalAmp alleging that Omega expert’s testimony was “beyond the scope of his expert report” and that “Omega failed to present evidence that two claim limitations were met.”  The FC panel disagreed as to the expert, finding the “disclosures provided enough notice to CalAmp ‘to prepare [its] case[] adequately and to prevent surprise’” (Guevara, 11th Cir. 2019).  The FC panel also found “there was sufficient evidence” in the expert’s reports “for the jury to find the ‘corresponding vehicle device code’ limitation met” and “the ‘enabling data’ limitation met” by CalAmp’s accused products.  It therefore affirmed the DC’s denial of JMOL on infringement.  The FC panel did find the DC abused its discretion by precluding CalAmp’s damages expert and that the jury’s damages award was unsupported by the record (e.g., “the $5.00 figure does not reflect apportionment and that Omega failed to show the incremental value of the ’278 patent (or that the patented improvement drove demand for the entire accused product)” (LaserDynamics, FC 2012; VirnetX, FC 2014; Ericsson, FC 2014; Exmark, FC 2018; “Omega still must ‘adequately and reliably apportion[] between the improved and conventional features of the accused [product]’ when using the LMUs ‘as a royalty base’… the jury could not reasonably have found that the multi-vehicle-compatibility feature of the LMUs drove demand for the entire LMU product.”)  The FC panel therefore vacated the jury’s damage award and remanded the case for a new trial on damages.  Judge Hughes’s dissent argued Omega’s royalty evidence was sufficient and certain expert testimony should not have been precluded.

Posted in Damages, Infringement, Royalties | Leave a comment

DC decision finding inequitable conduct based on FDA submissions affirmed

Belcher Pharmaceuticals, LLC v. Hospira, Inc.

Docket No. 2020-1799 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1799.OPINION.9-1-2021_1828017.pdf)

REYNA, TARANTO, STOLL

September 1, 2021

Brief Summary:  DC inequitable conduct finding based in part on prior art submitted to the FDA during the approval process affirmed. Summary:  Belcher appealed DC inequitable conduct finding regarding US 9,283,197 directed to injectable epinephrine formulations.  The FC panel opinion explains that the 2014 application leading to the ‘197 patent filed by Belcher’s CEO (Jugal Taneja) “describes the problem of l-epinephrine’s degradation and the resulting need for product overages and sulfite antioxidants, and it claims to provide an answer to this need”, “an answer” that “‘seemed impossible’ and ‘had never been accomplished before’”, and “states that the idea of raising the in-process pH above the range of 2.2 to 2.6 ‘was contradictory to one skilled in the art’ before the claimed invention” and “increasing the in-process pH to 2.8-3.3[] unexpectedly reduced the racemization of l-epinephrine to d-epinephrine at release by approximately two-thirds, from 14% to 5%, respectively.”  This, the patent explained, “led to new methods of manufacturing sulfite-free, l-epinephrine solution with an in-process pH of 2.8 to 3.3, approximately 3.0, which was a nonobvious solution to the problem of racemization” such that “with these new methods, overages could greatly be reduced.”  The disputed claims are directed to a “liquid pharmaceutical formulation having a pH between 2.8 and 3.3” including “1.0 to 1.06 mg/mL l-epinephrine”, and limits to the amounts of certain impurities “over a shelf-life of at least 12 months.”  During prosecution, “Mr. Tajena’s counsel responded” to a prior art (Helenek) rejection by “arguing that Helenek’s 2.2 to 5.0 pH range failed to render obvious the claimed range of 2.8 to 3.3 because the claimed range ‘was unexpectedly found to be critical by the Applicant to reduce the racemization of l-epinephrine’”, citing In re Woodruff (FC 1990 (“the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range”)).  In the reasons for allowance of the claims, “the examiner explained that the cited art failed to render the claims unpatentable ‘in view of Applicant’s demonstration of criticality of a pH range between 2.8 and 3.3.’”  Belcher’s head of intellectual property (Mr. Rubin) testified that he knew of the prior art reference Stepensky “before the ’197 patent was filed” that was “cited…in two separate communications to the FDA during the approval process”.  He also admitted that while the ‘197 patent was being prosecuted “he possessed a label for a 1 mg/mL epinephrine product that a company named JHP had already introduced to the market” that had “a pH in the range of 2.2 to 5.0” (“2.8 to 3.3 (specifically 2.9, 2.9, and 3.1) at 15 months” (“Sintetica’s product”)).  The DC concluded “that clear and convincing evidence demonstrated that Mr. Rubin” (“a key player in the FDA approval process as well as the ’197 patent’s prosecution”) “acted with requisite intent to deceive the PTO” by submitting “data on Sintetica’s and JHP’s products showing a pH within the claimed range” and “not merely withhold[ing] this information but also us[ing] emphatic language to argue that the claimed pH range of 2.8 to 3.3 was a ‘critical’ innovation that ‘unexpectedly’ reduced racemization.”  The FC panel agreed with the DC, finding the withheld information to be “but-for material information” (“the PTO would not have allowed a claim had it been aware” (Therasense, FC 2011; Aventis, FC 2012) and that Belcher clearly and convincingly “knew of the reference, knew that it was material, and made a deliberate decision to withhold it” (Aventis, Therasense; e.g., “Belcher had stated to the FDA that the 2.8 to 3.3 pH range was an ‘old’ range” and “Mr. Rubin performed an about-face” to the PTO.)  The FC panel rejected Mr. Rubin’s arguments that he believed the references “were irrelevant” as “they were different from the asserted claims in certain respects, including their high overages”, comparing this case to its Aventis decision in which it “rejected similar post hoc rationales for withholding material prior art.”  The DC decision was therefore affirmed.

Posted in Inequitable Conduct | Leave a comment

DC decision finding Juno’s CAR-T claims to be properly described reversed

Juno Therapeutics, Inc., Sloan Kettering v. Kite Pharma, Inc.

Docket No. 2020-1758 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1758.OPINION.8-26-2021_1825257.pdf)

MOORE, PROST, O’MALLEY

August 26, 2021

Brief Summary:  DC decision that Juno’s claimed “binding element that specifically interacts with a selected target” (e.g., scFv that binds CD19) was properly described reversed.

Summary:  Kite appealed DC decision finding Juno’s US 7,446,190 directed to nucleic acids encoding chimeric T cell receptors (chimeric antigen receptors, CARs) not invalid for lack of written description, the certificate of correction is not invalid, and awarding Juno over $1.2 billion in damages for infringement by Kite’s YESCARTA® product.  The FC panel found the claims invalid for lacking a proper written description (WD; under pre-AIA section 112) and reversed the DC’s decision without reaching the other issues.  Independent claim 1 of the ‘190 patent claims “a nucleic acid polymer encoding” a CAR “comprising…a zeta chain portion…a costimulatory signaling region [SEQ ID NO:6]…and…a binding element that specifically interacts with a selected target” and dependent claims 3 and 9 limiting “the claimed ‘binding element’ to ‘a single chain antibody,’ i.e., an scFv.”  Kite’s product includes “an scFv that binds the CD19 antigen”.  The FC panel explained the basic WD requirements (“reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date” (Ariad, FC 2010), not a “mere wish or plan” (Centocor, FC 2011)) and that those vary “with the nature and scope of the invention at issue, and with the scientific and technologic knowledge already in existence” (Capon, FC 2005).  Further, the FC panel explained, “[f]or genus claims using functional language, like the binding function of the scFvs claimed here, the written description ‘must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus’” (“either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus” (Ariad)) and that “a description of a chemical species, ‘requires a precise definition, such as by structure, formula, [or] chemical name,’ of the claimed subject matter sufficient to distinguish it from other materials” (Lilly, 1997).  Here, the FC panel found that the ‘190 patent explains that “[t]he target” of the scFV “can be any target of clinical interest to which it would be desirable to induce a T cell response” (in the FC panel’s words “any scFv for binding any target”) and that the ‘190 WD “fails to provide a representative sample of species within, or defining characteristics for, that expansive genus” and “no details about these scFv species beyond the alphanumeric designations J591 and SJ25C1 for a skilled artisan to determine how or whether they are representative of the entire claimed genus.”  The FC panel wrote that “[t]o satisfy the written description requirement, the patent needed to demonstrate to a skilled artisan that the inventors possessed and disclosed in their filing the particular species of scFvs that would bind to a representative number of targets”, which is not satisfied by “[t]he disclosure of one scFv that binds to CD19 and one scFv that binds to a PSMA antigen on prostate cancer cells”.   The FC panel added that it is not saying “that a patentee must in all circumstances disclose the nucleotide or amino acid sequence of the claimed scFvs to satisfy the written description requirement when such sequences are already known in the prior art” and that “[i]t is not fatal that the amino acid sequences of these two scFvs were not disclosed as long as the patent provided other means of identifying which scFvs would bind to which targets, such as common structural characteristics or shared traits.”  Juno argued “that because scFvs, in general, were known, the two scFvs in the ’190 patent are representative” but the FC panel responded that “the specification provides no means of distinguishing which scFvs will bind to which targets” (citing Lilly and distinguishing Capon in which “more was known in the prior art”; see FN2:  “We agree with Juno that a patent specification need not redescribe known prior art concepts.”  Immunex, FC 2020).  The FC panel also found Juno’s expert testimony insufficient even though “[i]t is undisputed that scFvs generally have a common structure” given that “an scFv with the same general common structure but with a different amino acid sequence would recognize a different antigen” (citing Idenix, FC 2019 (“the patent merely provided ‘lists or examples of supposedly effective nucleosides, but [did] not explain what makes them effective, or why’”) and Abbvie, FC 2014 (“the patents described one species of structurally similar antibodies derived from only one lead antibody”); distinguishing Erfindergemeinschaft, FC 2018 (“there were hundreds of known PDE5 inhibitors, the type of compound at issue, and the patent identified the compounds by chemical name and structural drawings”)).  Claims 5 and 11, “limited to scFvs that bind CD19 (a specific target)”, were also found to lack WD even though Kite itself argued “that there were ‘four or five’ CD19-specific scFvs ‘arguably known in the art’ at the priority date” (including as argued by Juno “the one used in YESCARTA®”).  Thus, the FC panel reversed the DC decision.

Posted in Written description | Leave a comment

IPR obviousness decisions reversed for new claim construction; algorithm not required for circuitry

Qualcomm Inc. v. Intel Corp. (USPTO as Intervenor)

Docket No. 2020-1589-94 (IPR2018-01326-30, -01340) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1589.OPINION.7-27-2021_1810321.pdf)

MOORE, REYNA, STOLL

July 27, 2021

Brief Summary:  Board IPR obviousness decisions vacated and remanded as Qualcomm had no notice of change in claim construction; “algorithm requirement of WMS Gaming” not triggered by circuitry limitation.

Summary:  Qualcomm appealed PTAB (“Board”) IPR final written decisions (six FWDs) finding the challenged claims of U.S. Pat. No. 9,608,675 relating to power tracking techniques obvious.  The challenged claims include an “increased bandwidth requirement” that was agreed to by Intel, Qualcomm and the International Trade Commission is a parallel proceeding.  The FC panel explained that during an oral hearing on the IPRs “one judge asked one question about the increased bandwidth requirement, directed only at Intel, during the entire hearing” and the Board then requested additional briefing on the “power tracker limitation” but not the increased bandwidth requirement.  However, in its FWDs the Board removed the increased bandwidth requirement.  Qualcomm argued “that it was not afforded notice of, or an adequate opportunity to respond to, the Board’s construction” and the FC panel agreed.  It explained that while it has “held that the Board may adopt a claim construction of a disputed term that neither party proposes without running afoul of the APA” (Praxair, FC 2018; Western-Geco, FC 2018), in this case “the issue of whether increased bandwidth was a required part of the claim construction was not in dispute.”  Here, the FC panel wrote, “[t]he Board’s construction of ‘a plurality of carrier aggregated transmit signals’ diverged from the agreed-upon increased bandwidth requirement for the term; it did not merely adopt its own construction of a disputed term” and “it is unreasonable to expect parties to brief or argue agreed-upon matters of claim construction” (SAS, FC 2016).  The FC panel also found Qualcomm was prejudiced as it “had no reason to brief that requirement or establish an evidentiary record supporting it” and “did not provide Qualcomm notice that the Board might depart from the increased bandwidth requirement” (Dell, FC 2016 (“Unlike the issue of anticipation in Dell, the parties here agreed on the increased bandwidth requirement.”); unlike TQ Delta (FC 2019) in which the “patent owner had adequate notice of the Board’s sua sponte construction of a claim term in its final written decision”).  Qualcomm also challenged the Board’s construction of the power tracker limitation (agreed by both parties to be means-plus-function) as not requiring the “corresponding structure” (a circuit, not a computer) to include an algorithm.  The FC panel agreed with the Board (“[I]f a recited function requires special programming, then the specification must disclose the algorithm that the computer performs to accomplish that function…Because power tracker 582 is not a general-purpose computer, it does not trigger the algorithm requirement of WMS Gaming.”; WMS, FC 1999; Nevro, FC 2020 (“[O]ur case law ‘does not require a specific algorithm when the identified structure is not a general purpose computer or processor.’”); “Qualcomm’s proposed extension would jeopardize a plethora of patents in the electrical arts that rely on circuitry as the corresponding structure for their means-plus-function claim limitations.”)  The Board’s FWDs were vacated and remanded.

Posted in Claim Construction, Inter Parties Review (IPR), IPR, Means-plus-function, Obviousness, Software | Leave a comment

IPR obviousness decisions reversed for lacking a proper explanation and improperly considering the commercial sales evidence

Chemours Company FC, LLC v. Daikin Industries, Ltd. et al. (USPTO as Intervenor)

Docket No. 2020-1289, -1290 (IPR2018-00992, -00993) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1289.OPINION.7-22-2021_1808187.pdf)

NEWMAN, DYK, REYNA

July 22, 2021

Brief Summary:  Board obviousness IPR decisions reversed for lacking a proper explanation and improperly considering the commercial sales evidence.

Summary:  Chemours appealed two IPR final written decisions (FWDs) finding the challenged claims relating to polymers obvious.  Chemours argued “the Board erred in its obviousness factual findings and did not provide adequate support for its analysis of objective indicia of nonobviousness”.  Chemours also argued the decision violated “the Appointments Clause because the Board’s decision came after this court’s decision in Arthrex” (Arthrex, FC 2019), but this request was withdrawn.  Chemours argued that Daikin “did not meet its burden of proof because it failed to show that a person of ordinary skill in the art (‘POSA’) would modify Kaulbach’s [the prior art] polymer to achieve the claimed invention.”  The FC panel concluded that “the Board appears to have ignored the express disclosure in Kaulbach that teaches away from the claimed invention and relied on teachings from other references that were not concerned with the particular problems Kaulbach sought to solve” and “did not adequately grapple with why a skilled artisan would find it obvious to increase Kaulbach’s melt flow rate to the claimed range while retaining its critical ‘very narrow molecular-weight distribution’” or “explain why a POSA would be motivated to increase Kaulbach’s melt flow rate to the claimed range, when doing so would necessarily involve altering the inventive concept of a narrow molecular weight distribution polymer” (Stratoflex, FC 1983 (“the scope of the relevant prior art is that which is ‘reasonably pertinent to the particular problem with which the inventor was involved’”); In re GPAC, FC 1995 (“it is key to first determine whether the reference is within the inventor’s field of endeavor, and if not, ‘whether the reference is reasonably pertinent to the particular problem confronting the inventor’”); both citing In re Wood, CCPA 1979; Trivascular, FC 2016 (finding no motivation to modify the prior art where doing so “would destroy the basic objective” of the prior art); Judge Dyk dissented from this teaching away conclusion (Bayer, FC 2017 (“that ‘better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes’”)).  Further, the FC panel found the factors cited by the Board “do not demonstrate that a POSA would have had a ‘reason to attempt’ to get within the claimed range, as is required to make such an obviousness finding” (Procter & Gamble, FC 2009 (citing PharmaStem, FC 2007)).  The FC panel also explained that “evidence of objective indicia of nonobviousness must be considered if present” and have a “nexus to the claimed invention” that can be the “inventive combination of known elements” (Pentec, FC 1985; Graham, US 1966; In re GPAC; WBIP, FC 2016; Rambus, FC 2013 (“patented design as a whole”); “the separate disclosure of individual limitations, where the invention is a unique combination of three interdependent properties, does not negate a nexus”).  It concluded that the Board “erred in its analysis that gross sales figures, absent market share data, ‘are inadequate to establish commercial success’” of Chemour’s claimed invention.  The FC panel also disagreed with the Board’s determination that the commercial success evidence “was weak” because “the ’609 patent covering the FEP 9494 product would have precluded others from freely entering the market” as the challenged patent “cannot act as a blocking patent” (Acorda, FC 2018; Galderma, FC 2013; Prima Tek II, FC 2000).

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

DC indefiniteness and invalidity findings affirmed as claims lack “reasonable certainty”

TVnGO Ltd. (BVI) v. LG Electronics, et al.

Docket No. 2020-1837 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1837.OPINION.6-28-2021_1796547.pdf) (Non-precedential)

PROST, SCHALL, REYNA

June 28, 2021

Brief Summary:  DC indefiniteness and invalidity findings affirmed (no reasonable certainty). Summary:  TVnGO appealed DC finding that the claims of five patents that share a specification directed to “a TV-Internet Integration box having the ability to merge broadcast TN signals with IP packet data at a customer site” are indefinite (pre-AIA section 112 based on 2005 filing date) and therefore invalid.  The FC panel reviewed the Nautilus (US 2014) indefiniteness standard (“precise enough to afford clear notice of what is claimed”, “particularly pointing out and distinctly claiming the subject matter”, “reasonable certainty”), the DC’s claim construction under the Phillips “ordinary and customary meaning” standard (FC 2005; “in light of the patent’s specification and prosecution history” (Nautilus)), and the indefiniteness determination de novo (“clear and convincing evidence” (Cox, FC 2016)).  The phrases at issue were ““overlay activation criterion” and “overlay activation signal”, and the DC found that “their precise meanings are not reasonably certain in view of the intra-patent inconsistencies”.  TVnGO argued “that a skilled artisan would understand the disputed phrases by stitching together their constituent words” from the specification (e.g., (“the terms – “overlay,” “activation,” “criterion,” and “signal” – are each easily understood, plain English words”, “overlay has a meaning, criterion has a meaning, signal has a meaning, activation has a meaning”).  The FC panel was “unpersuaded that the ordinary meanings of the constituent words alone are enough in the context of this case to establish what these phrases mean” and that there is no other clarifying evidence (e.g., “[n]either phrase is mentioned, let alone defined, in the shared specification, as both were added to the claims during prosecution”, “‘limited information’ provided by the prosecution history isn’t enough to provide reasonable certainty here either”, “unconvinced that the disputed phrases ‘are far from indefinite’ merely because they were ‘added to the claims, discussed, understood and considered by the Examiner, and ultimately allowed’” (Sonix Tech., FC 2017), “the specification’s use of the words ‘activates’ and ‘activating’ injects further uncertainty”, “[h]ere, a person of ordinary skill would encounter two claim phrases without an ordinary meaning in the art” (Teva, FC 2015; Infinity Computer, FC 2021), “inconsistency between the independent and dependent claims… [t]he issue is not breadth of the dependent claims but their use of the disputed phrase in a way that contradicts the independent claims”).   The DC decision was therefore affirmed.

Posted in Claim Construction, Indefiniteness | Leave a comment

Amgen’s petition for en banc hearing regarding enablement of anti-PCSK9 antibody claims denied

Amgen Inc. v. Sanofi, et al.

Docket No. 2020-1074 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1074.OPINION.2-11-2021_1731739.pdf)

PROST, LOURIE, HUGHES

February 11, 2021 (updated June 21, 2021)

Update (June 21, 2021):  Amgen’s petition for rehearing en banc was denied.  Judges Lourie, Prost and Hughes authored an opinion issued with the order.  In it, the judges explained that Amgen incorrectly argued that the FC has “created a new test for enablement” as “[g]enus claims, to any type of invention, when properly supported, are alive and well” (referring to “[c]hemical patent specifications”).  However, the opinion explained that “as with genus claims to chemical compounds, if” biological composition claims “encompass more subject matter than just a few species, they need to be enabled accordingly” (“Biological compositions not actually prepared need to be described constructively, if required to enable the full scope of the claims, with procedures and names of resultant compositions, as with chemical compositions…If the genus had been invented by the time of filing, it would have been fully enabled in the patent.”)  In this case, the judges wrote, “the narrow and limited guidance in the specification made far corners of the claimed landscape that were particularly inaccessible or uncertain to make unenabled” and given that “Amgen in fact has separate patent protection on the PCSK9 antibody” (U.S. 8,030,457), “the failure to obtain unsupported, unenabled claims has not deprived it of patent protection on the fruits of its investment.”  Regarding Amgen’s arguments regarding the rewards for innovation, the opinion explains that the innovator can rely on the doctrine of equivalents to protect compounds “so close to species disclosed and claimed by a first entrant as to be an equivalent” and that the “second comer may encounter the expensive hurdle of having to meet its own regulatory requirements, if it does not qualify for ANDA or biosimilar status.”  Regarding functional claims generally, the opinion states that the analysis “is circular; enablement comes only with success, which depends upon enablement”, “one cannot claim everything that works”, “single means claims claim too much” (citing In re Hyatt, FC 1983), and “[m]ultiple means claims simply compound the problem.”  The opinion also refers to many earlier enablement decisions, noting that “[t]he much-cited Wands case is the signature authority on the issue” (In re Wands, FC 1988). Summary of Feb. 11, 2021 FC panel decision:  Amgen appealed DC grant of JMOL for lack of enablement of claims 19 and 29 of US 8,829,165 and claim 7 of US 8,859,741 directed to antibodies against PCSK9.  In a prior appeal related to this suit, the FC remanded the DC decision with respect to “its evidentiary rulings and jury instructions regarding Sanofi’s defenses that the patents lack written description and enablement” and vacated the permanent injunction (Amgen, FC 2017).  Relevant to this appeal, “[t]he jury again found that Sanofi failed to prove that the asserted claims were invalid for lack of written description and enablement”, but the DC “granted Sanofi’s Motion for JMOL for lack of enablement and denied the motion for lack of written description.”  The FC panel explained that it reviewed enablement decision without deference and the underlying factual findings for clear error, and the requirements of an enablement determination (e.g., undue experimentation, Wands factors (Alcon, FC 2014; In re Wands, FC 1988 (“‘go to’ precedent for guidance on enablement”, “disclosure adequately taught using hybridoma technology to produce the needed claims antibodies”)).  It also explained that “[a]lthough a specification does not need to ‘describe how to make and use every possible variant of the claimed invention, when a range is claimed, there must be reasonable enablement of the scope of the range’” (McRO, FC 2020, citing AK Steel, FC 2003).  Amgen argued that “no undue experimentation is required to obtain antibodies fully within the scope of the claims” by, e.g., “following a roadmap using anchor antibodies and well-known screening techniques described in the specification or by making conservative amino acid substitutions in the twenty-six examples” (e.g., “binds to at least one of the following residues” on PCSK9, “an epitope on PCSK9 comprising at least one of residues 237 or 238 of SEQ ID NO:3, and…blocks the binding of PCSK9 to LDLR” (low-density lipoprotein receptor)).  Sanofi argued “that there are millions of antibody candidates within the scope of the claims” the specification lacks sufficient guidance, and “antibody generation is unpredictable”.  The FC panel reviewed the Wands decision as well as its Wyeth (FC 2013 (no enablement of “methods of preventing restenosis with compounds having certain functionality requirements”), Enzo (FC 2019 (claims requiring “particular structure and functionality” not enabled), and Identix (FC 2019 (no enablement due to “lack of guidance across…full scope”, “needle in a haystack”) decisions.  The FC panel also wrote that “functional claim limitations…pose high hurdles in fulfilling the enablement requirement for claims with broad functional language”.  And it concluded that “[t]he binding limitation is…require[s] undue experimentation” since, e.g., “the claims are far broader in functional diversity than the disclosed examples” (AbbVie, FC 2014), “this invention is in an unpredictable field of science”, and the “required experimentation ‘would take a substantial amount of time effort’”.  The FC panel therefore affirmed the DC decision.

Posted in Enablement | Leave a comment

FC panel finds MSFT’s IPR obviousness arguments lack particularity and affirms Board claim construction and no anticipation finding

Microsoft Corp. v. FG SRC, LLC

Docket No. 2020-1928 (IPR2018-01594) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1928.OPINION.6-17-2021_1792142.pdf) (Non-precedential)

LOURIE, PROST, O’MALLEY

June 17, 2021

Brief Summary:  PTAB decision finding MSFT failed to show FG’s claims to be unpatentable affirmed. Summary:  MSFT appealed PTAB (“Board”) decision that the claims of FG’s US 6,434,687 directed to methods for accelerating web site access and processing using reconfigurable servers were not shown to be unpatentable for anticipation by a white paper (“Obelix”) or obvious over Obelix in view of the Skillen patent (US 6,098,065).  The ‘687 patent “explains that a conventional server with conventional processing elements processes data serially, such that N processing iterations are required to process N elements of data” and that “reconfigurable servers can process data in parallel, and N data elements can therefore be processed in a single iteration, reducing processing time considerably”.  In this appeal, MSFT argued that the Board erred in finding ‘687 claim 18 not to be anticipated or obvious by Obelix or Obelix/Skillen because it “erred in implicitly construing the selecting and transmitting limitations to require a current user” (“the claim was shown to be anticipated absent that requirement”) and failed to address its obviousness arguments.  The FC panel reviewed the Board decision for an abuse of discretion (“clearly unreasonable, arbitrary, or fanciful”, “erroneous conclusion of law”, “clearly erroneous fact finding”, or “no evidence on which the Board could rationally base its decision” (Ericsson, FC 2018).  MSFT argued its petition explained its obviousness challenge specific to ‘687 claim 18 as it referred to reasons “‘set forth above’ with respect to claim 2 under the same heading” and its expert declaration.  The FC panel wrote that “Microsoft argues that the Board should have understood the statement to refer to the reasons set forth way above (34 pages above, in fact) with respect to claim 2, in a completely different and unrelated section”, and that the expert declaration also referred to that section.  It concluded that the Board did not “abuse[] its discretion in declining to interpret Microsoft’s petition as challenging claim 18 over Obelix and Skillen based on such tenuous connections in Microsoft’s petition” (“there is no plausible argument…based on obviousness over Obelix and Skillen with any particularity whatsoever”) as “the petitioner is the ‘master of its complaint’” (SAS, US 2018; Intelligent Bio-Systems, FC 2016 (“identify ‘with particularity’ the ‘evidence’”)).  The FC panel reviewed the Board’s claim construction de novo as it was based only on intrinsic evidence (Shire, FC 2015) and the plain and ordinary meaning standard under Phillips (FC 2005) “[b]ecause the ‘687 patent has expired”, finding MSFT’s proposed construction to be “too broad because it does not account for all the language of the claim” and “[t]he written description accords with [the Board’s] understanding of the selecting limitation.”   The Board decision was therefore affirmed.

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

Digital camera device claims affirmed as patent ineligible under section 101

Yanbin Yu, et al. v. Apple Inc., Samsung Electronics Co., Ltd., et al.

Docket No. 2020-1760 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1760.OPINION.6-11-2021_1789244.pdf)

NEWMAN, PROST, TARANTO

June 11, 2021

Brief Summary:  DC finding that claims to “improved digital camera” are patent ineligibile (101) affirmed (“whether a device is ‘a tangible system (in § 101 terms, a ‘machine’)’ is not dispositive”).

Summary:  Yu appealed DC grant of Apple and Samsung’s motion to dismiss after finding the asserted claims related to digital cameras to be patent ineligible (section 101).  Representative claim 1 is directed to “[a]n improved digital camera comprising…a first and second image sensor[s]” that produce first and second images, “two lenses” mounted on one of the sensors, “an analog-to-digital converting circuitry coupled to said first and second image sensor[s]” that digitizes the images, “an image memory, coupled to said..circuitry”, and “a digital image processor, coupled to said image memory” that produces an image from the first and second digital images.  The DC “held that the asserted claims were directed to ‘the abstract idea of taking two pictures and using those pictures to enhance each other in some way’” and “lack an inventive concept, noting ‘the complete absence of any facts showing that the[] [claimed] elements were not well-known, routine, and conventional.’”  The FC panel reviewed the DC decision de novo (Ninth Circuit law, Visual Memory (FC 2017)) using “the two-step Mayo/Alice framework” (Alice, US 2014; Mayo, US 2012).  The FC panel agreed “with the district court that claim 1 is directed to the abstract idea of taking two pictures (which may be at different exposures) and using one picture to enhance the other in some way” (“‘a result or effect that itself is the abstract idea and merely invoke[s] generic processes and machinery’ rather than ‘a specific means or method that improves the relevant technology’”).  Yu argued “that claim 1 is directed to a patent-eligible application of this idea as opposed to just the idea itself”, but the FC panel disagreed since “[o]nly conventional camera components are recited to effectuate the resulting ‘enhanced’ image” (“perform only their basic functions… set forth at a high degree of generality”) and “[w]hat is claimed is simply a generic environment in which to carry out the abstract idea” (In re TLI, FC 2016) (“claim 1’s solution to those problems is the abstract idea itself-to take one image and ‘enhance’ it with another”).  The FC panel also disagreed with Yu’s argument “that the asserted advance in the claims is the particular configuration of lenses and image sensors”, explaining that “[e]ven a specification full of technical details about a physical invention may nonetheless conclude with claims that claim nothing more than the broad law or abstract idea underlying the claims” (ChargePoint, FC 2019).  The FC panel also explained in FN2 that while “Yu’s claimed invention is couched as an improved machine (an ‘improved digital camera’)”, “whether a device is ‘a tangible system (in § 101 terms, a ‘machine’)’ is not dispositive” (Alice, In re TLI (“[N]ot every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry.”)) The FC panel therefore agreed with the DC that the claims are abstract under Alice’s step one.  It also agreed with the DC that under Alice’s step two, explaining that “even if claim 1 recites novel subject matter” (e.g., overcame prior art rejections during prosecution), “that fact is insufficient by itself to confer eligibility” (SAP, FC 2018; Two-Way Media, FC 2017), and “the claimed hardware configuration itself is not an advance”, “does not add sufficient substance to the underlying abstract idea of enhancement”, and “merely serve[s] as ‘a conduit for the abstract idea’” (TLI).  The DC decision was therefore affirmed.  Judge Newman’s dissent argued the claimed “camera is a mechanical and electronic device of defined structure and mechanism; it is not an ‘abstract idea’” and “[a] statement of purpose or advantage does not convert a device into an abstract idea.”

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DC claim construction and finding of noninfringement by Amazon et al. affirmed

SpeedTrack, Inc. v. Amazon, et al. (multiple retailers)

Docket No. 2020-1573, -1660 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1573.OPINION.6-3-2021_1785939.pdf)

PROST, BRYSON, REYNA

June 3, 2021

Brief Summary:  DC finding that Amazon et al. do not infringe SpeedTrack’s patent to computer file access systems affirmed (no claim construction error). Summary:  SpeedTrack appealed DC finding of noninfringement based on construction of the claims of US 5,544,360 directed to improved computer file access systems.  The FC panel reviewed the system, that there were prior art solutions that “presented…drawbacks” (e.g., mistyping search terms, search restrictions of relational databases), and the alleged improvements described in the ‘360 patent (e.g., “‘hybrid’ folders…that ‘allow[] total freedom from the restrictions imposed by hierarchical and other present day computer filing systems’”).  The FC panel explained that “‘[t]he words of a claim ‘are generally given their ordinary and customary meaning,’ which is ‘the meaning that the term would have to a person of ordinary skill in the art’” and that “the prosecution history can often inform the meaning of the claim language” (Phillips, FC 2005; Vita-Mix, FC 2009 (“[a] patentee may, through a clear and unmistakable disavowal in the prosecution history, surrender certain claim scope”); Teva, US 2015 (“claim construction based on intrinsic evidence de novo and review any findings of fact regarding extrinsic evidence for clear error”)).  “SpeedTrack acknowledge[d] that the ’360 patent applicants added the hierarchical limitation during prosecution ‘[t]o overcome’” prior art rejections, but “disagree[d] regarding the effect of this history on the claim scope—in particular, whether the claims cover predefined hierarchical field-and-value relationships.”  The FC panel agreed with the DC that “the claims exclude predefined field-and-value relationships” as “[t]hey are disclaimed” (e.g., “[t]he ’360 patent applicants repeatedly highlighted predefined hierarchical field-and-value relationships as a difference between Schwartz and the ’360 patent”, “[a]n applicant’s argument that a prior art reference is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds as well” (Andersen, FC 2007); “SpeedTrack’s position contradicts its other litigation statements”; “the doctrine of prosecution disclaimer ensures that claims are not ‘construed one way in order to obtain their allowance and in a different way against accused infringers’” (Aylus Networks, FC 2017); “We also disagree that there was no clear and unmistakable disclaimer merely because the Wal-Mart court and the patent office did not expressly find one.”)  The cross-appellants patent eligibility and indefiniteness arguments were voluntarily dismissed since the DC noninfringement decision was affirmed.

Posted in Claim Construction, Infringement, Software | Leave a comment