IPR obviousness findings affirmed except for one claim that “describes a stand-alone alternative” to means-plus-function limitation

Cochlear Bone Anchored Solutions AB v. Oticon Medical AB, et al.

Docket No. 2019-1105, -1106 (IPR2017-01018, -01019)
May 15, 2020

Brief Summary: Board IPR obviousness findings affirmed, while its analysis of one means-plus-function claim vacated and remanded. The FC panel also emphasized that indefiniteness is not at issue in an IPR.

Summary: Cochlear appealed Board IPR finding that Oticon proved claims 4-6 and 11-12 of US 7,043,040 directed to “bone-conducting bone-anchored hearing” aids unpatentable for obviousness. Oticon appealed the Board’s decision that claims 7-10 were not shown to be unpatentable. Cochlear disclaimed claims 1-3 and 13 during the IPR; the challenged claims are dependent on disclaimed claim 1. The Board originally declined to review claims 7-10 after finding those to be means-plus-function claims and that “there is no identified corresponding structure in the specification” leaving it unable to compare the claim to the prior art, but later added the claims following the SAS decision (US 2018). That reasoning led to the Board’s final decision that claims 7-10 were not shown to be unpatentable. Regarding claim 1, the Board concluded that the “preamble phrase ‘for rehabilitation of unilateral hearing loss’ does not limit the scope of the claims”. The FC panel explained that “[i]n general, a preamble limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim” or if “necessary to provide antecedent basis for the body of the claim”, but not if it “merely extol[s] benefits” and “does not limit the claim scope without clear reliance on those benefits” (Catalina Mktg., FC 2002; Symantec, FC 2008). And the FC panel found the Board correctly found the disputed preamble is not a limitation but “merely a statement of intended use” (“no additional structure” to claim “furnished by the preamble”, “not necessary to provide antecedent basis”), and therefore rejected Cochlear’s first argument. The FC panel also rejected Cochlear’s second argument “that the ‘specifically adapted to’ limitation requires that the frequency characteristics ‘account for the mechanics of the skull’”, finding the Board correctly construed the limitation by “ordinary-meaning construction” (e.g., “‘adapted to’ generally means ‘made to,’ ‘designed to,’, or ‘configured to’ perform the stated function” (In re Man Machine, FC 2016; In re Giannelli, FC 2014; Aspex, FC 2012), and correctly concluded obviousness based on its construction. Cochlear also argued that there was no motivation to combine the prior art that it acknowledged disclosed all the claimed limitations, but the FC panel found the Board’s obviousness findings to be supported by substantial evidence (e.g., the preamble is not a limitation). Regarding Oticon’s cross-appeal as to claims 7-10, the FC panel also concluded that the Board did not err in finding “it could not construe the” means-plus-function limitations of claims 7-9 “in order to compare the claim requirements with the prior art” (Samsung, FC 2020 (cannot compare where “the meaning of that requirement is entirely unknown”); “Each of those claims plainly contains at least one required means-plus-function claim element for which the specification provides no corresponding structure.”; Williamson, FC 2015 (“[s]uch a claim is indefinite…but that is not the inquiry in an” IPR (311(b); Cuozzo, US 2016)). In finding the Board erred in its analysis of claim 10 and vacating this decision, the FC panel found it did not “contain a required claim element in means-plus-function form” and “also describes a stand-alone alternative to the signal processing means” (still indefinite but not relevant to IPR). Judge Newman’s dissent argued that “the court employ[ed] an improper analytic technique” here in part because it “dispose[d] of…limitations by designating the introductory clause as a mere ‘preamble’ that does not limit the claims”.

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

Board IPR FWD finding BSN’s claims obvious affirmed, claim construction arguments waived

Boston Scientific Neuromodulation Corp. v. Nevro Corp., USPTO as Intervenor

Docket No. 2019-1584 (IPR2017-01899)
May 18, 2020

Brief Summary: Board IPR FWD finding BSN’s claims obvious affirmed (e.g., BSN “waived any claim construction argument…by failing to raise it before the Board”, obviousness decision supported by substantial evidence).

Summary: BSN appealed the Board’s final written decision (FWD) holding claims 1-20 of US 7,587,241 claiming “[a] method for controlling an implantable medical device” by “monitoring a voltage of a power source” and, “if…above a first threshold…listening for a first type of telemetry” and a second type and discontinuing listening for the first but not the second “if the voltage falls below the first threshold”. The Board found two sets of claims unpatentable in view of two different combinations of references, respectively. Regarding the first set of claims, BSN argued that the Board incorrectly construed “telemetry’ and what it means to ‘listen[] for…telemetry’” but Nevro argued BSN “waived any claim construction argument…by failing to raise it before the Board”, and the FC panel agreed (explaining that BSN had “amply opportunity to offer a construction for the ‘listening for’ term in its patent owner response”). The Board also found the “Torgerson ‘756” patent “covers the use of a second type of telemetry” but BSN argued the reference “discloses only one type of telemetry”. The FC panel found “nothing in the ‘241 patent specification that precludes” the type of telemetry described by Torgerson ‘756 “from constituting a second ‘type of telemetry’ merely because it is not a different type of energy transfer modality” and support for this point in BSN’s expert testimony. The FC panel, therefore, found the Board’s conclusion to be supported by substantial evidence. BSN also argued “that substantial evidence does not support” the motivation to combine the cited references, but the FC panel disagreed (e.g., “adequate motivation has been provided for a POSA to look to Torgerson ‘883” (another reference) “for another technique (involving telemetry)”). The FC panel similarly found the second set of claims (dependent claims) requiring a particular “first telemetry type” were also properly found to be invalid for obviousness (e.g., “Substantial evidence supports the Board’s finding that it would have been obvious to use FSK for the first type of telemetry and OOK for the second type of telemetry.”) The Board decision was therefore affirmed.

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Corrected assignment effective to show ownership, willful infringement finding and prejudgment interest award affirmed

Jodi A. Schwendimann, Cooler Concepts, Inc. v. Arkwright Advanced Coating, Inc.

Docket No. 2018-2416, 2019-1012
May 13, 2020

Brief Summary: DC finding of willful infringement and award of prejudgment interest affirmed; “corrected nunc pro tunc” assignment effective to show ownership.

Summary: Arkwright appealed DC finding of willful infringement of six US patents regarding methods for transferring images onto a colored base and about $2.6 million damages and pre-judgment interest award. Ms. Schwendimann became the owner of patent applications leading to the disputed patents as part of a settlement with her previous employer. The original complaint against Arkwright was filed in 2008 and re-filed in 2011 following reexamination of one of the disputed patents. Arkwright moved to dismiss the complaint because an assignment was incorrect (i.e., Ms. Schwendimann was not the owner) but the assignment was corrected (also in 2011) and the DC found standing. Arkwright unsuccessfully filed an interlocutory appeal of this issue, which was denied in 2013 (Schwendimann, FC 2013). In this appeal, Arkwright argued unsuccessfully that Ms. Schwendimann lacked standing and that the DC erred in its prejudgment interest award. The FC panel explained that all that was required of the complaint is an allegation of facts by Ms. Schwendimann “that she is the owner by assignment of the ‘845 patent and Appellants infringed that patent”, which was present in the complaint and, therefore, “there is no ‘standing’ issue to be decided in this appeal” (citing Lone Star, FC 2019 (unavailable to the DC at the time of its decision) which brought the FC “into accord with” Lexmark, US 2014 (“whether a party possesses all substantial rights in a patent does not implicate standing or subject-matter jurisdiction”); see FN6 for a discussion of the dissent). “[T]he only questions” the FC needed to decide here, it explained, was “whether Ms. Schwendimann was a patentee at the time her action was filed and, if that status was conferred upon her by assignment, whether that assignment is reflected in a written instrument with the meaning of 35 U.S.C. § 261” for which “there are no form or content requirements” (§ 261; Enzo, FC 1998 (citing 35 U.S.C. § 100(d)). And “[w]ho has legal title is a question of state law.” (Enovsys, FC 2010; Jim Arnold, FC 1997; Tri-Star, FC 2010 (“interpreted in accordance with contract statutes and common law in the state where the assignment took place”); i.e., Minnesota in this case). The FC panel found no error with the DC decision (e.g., “ACT intended to assign” it, “the 2011 Assignment…merely reaffirmed the 2002 agreement”, “mutual mistake of the parties”, “good faith mistake” (Tri-Star); Speedplay, FC 2000 (license agreement listing wrong patent number effective since “substantial patent rights were transferred”); “By virtue of the reformation, the written instrument was corrected nunc pro tunc, to the point of the assignment.”) The FC panel also found no error with the DC’s award of prejudgment interest at “10 percent per year, starting from the first date of infringement” which was proper under Minnesota statutes (Nickson, FC 1988; Comcast IP, FC 2017).

Posted in Assignment / Ownership, Damages, Willfullness | Leave a comment

Uniloc claim ineligible under § 101 as abstract, claim includes “no specific asserted improvements”

Cisco Systems, Inc. v. Uniloc 2017 LLC

Docket No. 2019-2048
May 13, 2020

Brief Summary: DC finding of patent ineligibility under § 101 affirmed (abstract idea since claim includes “no specific asserted improvements”).

Summary: Uniloc appealed DC finding that claim 6 of US 6,980,522 relating to a radio communication system with “a plurality of stations capable of forming an ad-hoc network” ineligible under § 101. Under the Alice (US 2014) eligibility framework, the DC found “that the claims were directed to the abstract idea of ‘ranking stations based on antenna performance characteristics and selecting the station with the highest rank to act as master in a network’” and “lacked an inventive concept as ‘neither the claim nor the specification provides for implementation of the abstract idea using anything other than existing, conventional technology.’” The FC panel agreed with the DC that the claim covers an abstract idea since, e.g., “[t]he general recitation of the familiar concepts of ranking and selecting leaves the claimed method ‘untethered to any specific or concrete way of implementing it’” (Affinity Labs, FC 2016). Uniloc argued that the claimed method is directed “to an improvement in the computer network or network functionality” (citing Uniloc, FC 2020; Customedia, FC 2020; Finjan, FC 2018), but the FC panel disagreed (“Here there are no specific asserted improvements.”; citing Finjan, FC 2018 (“‘behavior-based virus scan’ provided greater computer security”); SRI, FC 2019 (“a specific technique for improving computer network security”); Data Engine, FC 2018 (“specific method for navigating through three-dimensional electronic spreadsheets”); Thales Vision, 850 F.3d 1343 (2017) (“more accurately calculate the position and orientation of an object on a moving platform”))). Uniloc also argued the DC’s dismissal was incorrect because Uniloc “presented ‘specific, plausible factual allegations’ about why the invention…was not conventional’” as it “involves dynamically analyzing relative rankings of antenna performance” and “effectuat[ing] a hand-off of the master station”. The FC panel disagreed since the disputed claim does not include these limitations and the argument are “sweeping conclusory statements” (In re Gilead, 9th Cir. 2008). Regarding Alice’s step two (“whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application”), the FC panel agreed with the DC that “neither the claim nor the specification provides for implementation of the abstract idea using anything other than existing, conventional technology” which was not disputed by Uniloc. Thus, the DC decision was affirmed.

Posted in Patent Eligibility (101), Patentability, Software | Leave a comment

DC non-infringement decision affirmed due to disclosure-dedication doctrine

Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC

Docket No. 2019-1924
May 8, 2020

Brief Summary: DC finding of no infringement under DOE based on disclosure-dedication doctrine affirmed.

Summary: Eagle appealed DC judgment of non-infringement of US Pat. Nos. 9,265,831; 9,572,796; 9,572,797; and 10,010,533 (four of six Orange Book patents for Eagle’s BELRAPZO® (bendamustine for CLL and indolent B-cell non-Hodgkin lymphoma; NDA N205580). The FC panel opinion explains that all four patents “share the same specification and all independent claims recite essentially the same limitations.” Claim 1 of the ‘796 patent claims “[a] non-aqueous liquid composition comprising…bendamustine…a pharmaceutically acceptable fluid comprising a mixture of polyethylene glycol and propylene glycol…and a stabilizing amount of an antioxidant….” Slayback admitted its generic product did not literally infringe the “pharmaceutical acceptable fluid” limitation which Eagle alleged was infringed under the doctrine of equivalents (e.g., “insubstantially different from the propylene glycol (‘PG’) in the claimed composition”). Slayback argued DOE was inapplicable because “the disclosure-dedication doctrine barred Eagle’s claim…because the asserted patents disclose but do not claim, ethanol as an alternative solvent to PG.” The DC agreed with Slayback since, as explained in this opinion, expert opinion was unconvincing and “[t]he specification expressly and repeatedly identifies ‘ethanol’ as an alternative ‘pharmaceutically acceptable fluid’ to PG” (e.g., in the “Summary of the Invention” and the specification). The FC panel explained that “[t]he disclosure-dedication doctrine bars application of the [DOE]” and “reinforces ‘the primacy of the claims in defining the scope of the patentee’s exclusive right’” (Johnson & Johnston, FC 2002 (“when a patent drafter discloses but declines to claim subject matter…this action dedicates the unclaimed subject matter to the public”); PSC Comput., FC 2004 (“ask whether the specification discloses unclaimed subject matter with ‘such specificity that one of ordinary skill in the art could identify the subject matter that had been disclosed and not claimed’”); Maxwell, FC 1996). Eagle argued the doctrine does not apply to its claims because “a ‘skilled artisan would not understand that ethanol…is an alternative to PG in the separate, claimed ‘PEG/PG/antioxidant’ category of formulations” disclosed in the specification. But the FC panel explained that the doctrine does not require disclosure of “an embodiment that exactly matches the claimed embodiment”, and only needs to “disclosure the unclaimed subject matter ‘as an alternative to the relevant claim limitation’” (Pfizer, FC 2005 (microcrystalline cellulose not identified “as an alternative to ‘saccharide’ that prevents hydrolysis”)). Eagle’s specification, the FC panel found, “repeatedly identifies-without qualification-ethanol as an alternative” and does not “suggest[] that these disclosures of ethanol are limited to certain formulations, or that they do not extend to the claimed formulations.” The DC decision on this point was therefore affirmed, as was its decision as a judgment as a matter of law (“the only reasonable inference”).

Posted in Claim Construction, Doctrine of equivalents, Infringement | Leave a comment

IPR decision of no obviousness vacated and remanded; Grit found to have Article III standing based on previously dismissed (without prejudice) litigation

Grit Energy Solutions, LLC v. Oren Technologies, LLC

Docket No. 2019-1063 (IPR2017-00768)
April 30, 2020

Brief Summary: PTAB IPR decision of no obviousness vacated and remanded; Grit found to have Article III standing based on previously dismissed (without prejudice) litigation.

Summary: Grit appealed PTAB IPR decision finding claims 1-7 of US 8,585,341 directed to a “proppant discharge system” (a proppant being “a material, such as sand or other particulates, that prevents ground fractures from closing during hydraulic fracturing”) were not shown to be unpatentable for obviousness in view of a US patent (“Eng Soon”) and a French patent (“Constantin”). Grit argued that while “Eng Soon discloses the opposite of the ‘341 configuration”, Constantin discloses the ‘341 configuration in its claim 5 (obvious over these references, “either alone or in further view of additional prior art”). Grit argued that “Constantin expressly indicates that its depicted embodiment was non-limiting” (that embodiment also disclosing the opposite of the ‘341 configuration) and that because the “use of reference numerals does not limit the scope under French patent law” and “such use should also not limit what the claims disclose.” The PTAB disagreed with Grit, finding that “Constantin’s claim 5 also discloses the pin and receptacle only in the opposite configuration of the ‘341 configuration”, “[t]here is no evidence that person of ordinary skill would understand French patent law and incorporate that law into their understanding of this technical reference”, “disagree[d] with [Grit Energy’s] argument that transposing Eng Soon’s pin and receptable would have been a simple substitution to achieve predictable results”, and patentee (Oren) “present[ed] persuasive evidence that swapping the location of Eng Soon’s pin and receptacle would result in a more expensive system.” In this appeal, Oren argued Grit did not have Article III standing since it “neither committed nor plans to commit acts that create a sufficient threat of litigation” (e.g., “transferred ownership of all products accused of infringement” and “has not identified any concrete plans for future activity”). Grit argued for Article III standing because “Oren previously sued Grit Energy for infringement” (previously dismissed without prejudice) “and Oren is free to reassert those infringement claims”, and the FC panel agreed that Grit has standing (Semtek, US 2001; JTEKT, FC 2018; DuPont, FC 2011). The FC panel also agreed with Grit that the PTAB’s “determination…is unsupported by substantial evidence” as it “rests on an erroneous reading of Constantin’s claim 5” which “plainly teaches that the stud and orifice can be either in the ‘341 configuration or the opposite of the ‘341 configuration” (e.g., “substantial evidence does not support the Board’s determination that claim 5’s parenthetical reference to shutter blade ‘8’ limits its disclosure in such a manner”, the PTAB inappropriately “mapp[ed] the non-limiting example to the claims” and its denial of Grit’s request for rehearing “offered entirely new reasoning to support its conclusion”; Orthopedic Equip., FC 1983 (economic reason not to combine not the same as “some technological incompatibility that prevented their combination”)). The PTAB decision was therefore vacated and remanded. Judge Newman dissented as to the majority’s view of the Constantin reference.

Posted in Article III disputes, Claim Construction, Inter Parties Review (IPR), IPR, Obviousness | Leave a comment

DC ineligibility decision reversed as claims are directed to a (“patent-eligible improvement to computer functionality”

Uniloc USA, Inc. et al. v. LG Electronics USA, Inc. et al.

Docket No. 2019-1835
April 30, 2020

Brief Summary: DC decision of patent ineligibility under § 101 for being abstract (Alice, step one) reversed and remanded (“patent-eligible improvement to computer functionality”).

Summary: Uniloc appealed DC grant of summary judgment (SJ) to LG after finding the ‘049 patent claims directed to communication systems ineligible under § 101 as being directed to an abstract idea. The DC held the claims to be “directed to the abstract idea of ‘additional polling in a wireless communication system,’ analogizing the claims to the data manipulation claims” held ineligible in Two-Way Media (FC 2017) and Digitech Image (FC 2014), and to “fail to recite an ‘inventive concept sufficient to save the claim[s]’.” The FC panel explained that computer-related patent eligible claims are those that, e.g., “change[] the normal operation of the computer network itself” (DDR Holdings, FC 2014), “improve[] the way computers operate[] and handle[] data” (Enfish, FC 2016), “focus on a ‘specific asserted improvement in computer capabilities” (“not…categorical data storage”) (Visual Memory, FC 2017), including “non-abstract improvement to computer security” (Ancora Techs., FC 2018), “a tool able to instantly access all parts of a complex three-dimensional electronic spreadsheets” (Data Engine, FC 2018), and “an improved use interface” (Core Wireless, FC 2018). Here, the FC panel found “the claims at issue” to be “directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experienced by parked secondary stations in communication systems”, which “eliminates or reduces the delay present in conventional systems where the primary station alternates between polling an sending inquiry messages” (“like the claims in DDR, the claimed invention changes the normal operation of the communication system itself to ‘overcome a problem specifically arising in the realm of computer networks’”; “like the improvement in computer memory we held eligible in Visual Memory, enables the communication system to accommodate additional devices, such as battery-operated additional devices, without compromising performance”). Further, the FC panel explained, “[t]he claims at issue do not merely receipt generalized steps to be performed on a computer using conventional computer activity” as did the patent ineligible claims of Digitech (“gathering and combining data that does not require input from a physical device”) and Two-Way (“using ‘result-based functional language’ without the means for achieving any purported technological improvement”). Disagreeing with LG, the FC panel explained that “[c]laims need not articulate the advantage of the claimed combinations to be eligible” and that neither “[t]he claimed invention’s compatibility with conventional communication systems” nor “the fact that the improvement is not defined by reference to ‘physical’ components” renders the claims abstract. The DC decision was therefore reversed and remanded.

Posted in Patentability, Section 101 (see also Patentability), Software | Leave a comment