Board denial of IPR dismissal after Arthrex II, claim construction, and invalidity decisions affirmed

Polaris Innovations Limited v. USPTO

Docket No. 2019-1483 (IPR2017-01500), 2019-1484 (IPR2017-00901) (


September 15, 2022

Brief Summary:   Board denial of join request to dismiss IPRs following Arthrex II, claim construction (BRC as pre-Nov. 23, 2018), and invalidity decisions affirmed. Summary:  This decision relates to appeals of two PTAB (“Board”) IPR findings that NVIDIA shows Polaris’ US 6,532,505 and 7,405,993 relating to computer memory unpatentable.  The FC remanded the original decisions based on the Appointments Clause and its Anthrex (FC 2019, “Anthrex I”) decision that was subsequently vacated by SCOTUS (US 2021, “Anthrex II”). Between the Anthrex I and Anthrex II decision, the Board administratively suspended the IPRs and Polaris and NVIDIA jointly requested termination of the proceedings.  After Anthrex II, the FC “asked Polaris to explain ‘how it believes its case should proceed in light of Arthrex [II]’” and Polaris asked for it to be vacated and returned to the Board for termination.  The Board disagreed and the FC panel remanded “for the limited purpose of allowing the parties to seek further action by the Director.”  The Board then decided termination was not appropriate because “the ‘final written decision in each of these cases is not vacated, and it is not necessary for the Board to issue a new final written decision in either of these cases’”, effectively denying the termination motions.  The Director then denied Polaris’ requests for rehearing, which Polaris appealed to the FC.  In this appeal, Polaris “argues that the Board erred by failing to grant the joint motions to terminate filed in both proceedings before the Board on remand”, “misconstrued the term ‘memory chip’ in the IPR involving the ’993 patent”, and “misconstrued the term ‘resource tag buffer’ in the IPR involving the ’505 patent.”  The FC panel explained that “[t]he motion-to-terminate issue ultimately turns on interpretation of 35 U.S.C § 317—which governs settlement of IPRs at the Board—and is therefore a question of law that we review de novo” (VirnetX, FC 2019), it ““set[s] aside actions of the Board that are arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law” (In re Sullivan, FC 2004; 5 USC section 706(2)(A)), and the IPRs are were filed before November 13, 2018 and therefore reviewed under the broadest reasonable claim construction standard (post-Nov. 13 IPRs are reviewed under Phillips, FC 2005) (Microsoft, FC 2015; Realtime Data, FC 2019).  The FC panel found the Board “properly exercised its discretion to terminate” under section 317 of Title 35 and “is only mandatory so long as the request for termination is filed before ‘the Office has decided the merits of the proceeding’” (“the Board correctly identified Polaris’s motion as untimely”; e.g., “at best, the statute provides for mandatory termination with respect to a petitioner, not termination of the proceeding itself”).  Regarding the Board’s claim construction decisions, the FC panel agreed Polaris did not present intrinsic evidence supporting its position “to limit the broad claim language” (Thorner, FC 2012 (disclosure of single embodiment not enough, “patentee must ‘clearly express an intent’ to redefine the term”); Liebel-Flarsheim, FC 2004 (cannot read limitations from preferred embodiment); Board did not violate the principle of claim differentiation).  The FC panel also found the Board’s invalidity decision to be supported by substantial evidence.  It therefore affirmed the Board’s decision.

Posted in Appeal, Claim Construction, Claim Differentiation, Expert Testimony, Inter Parties Review (IPR), IPR, Obviousness | Leave a comment

DC and USPTO decisions not to grant patent term adjustments to SawStop’s patents affirmed (type C delay extensions)

SawStop Holding, LLC vs. USPTO

Docket No. 2021-1537, -2105 (


September 14, 2022

Brief Summary:   DC and USPTO decision not to grant patent term adjustments to SawStop’s patents affirmed (type C delay extensions).

Summary:  SawStop appealed DC grant of summary judgment (SJ) to the USPTO for denying SawStop any prosecution-related patent term adjustment (PTA) under the American Inventors Protection Act of 1999 to the term of US 9.552,476 and 9,927,796.  There PTA is based on three categories of prosecution delays:  (A) when the PTO fails in certain specified ways to timely respond to the applicant; (B) when the PTO fails to issue a patent within a certain time from filing; and, (C) an extension of one day for each day the issue of an original patent is delayed due to appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was [1] issued under a decision in the review [2] reversing an adverse determination of patentability.  The type C delay is at issue in this appeal, specifically the meaning of “issued under a decision in the review” and “reversing an adverse determination of patentability”.  The DC denied SawStop’s motion, finding “the ’476 patent application was not ‘issued under a decision in the review reversing an adverse determination of patentability,’ and thus was not eligible for PTA under § 154(b)(1)(C)(iii).”  The DC also “held that the ’796 patent was not entitled to PTA for Sawstop’s appeal to the District Court for the District of Columbia because the appeal did not ‘revers[e] an adverse determination of patentability’ as required by 35 U.S.C. § 154(b)(1)(C)(iii), as claim 1 remained subject to the outstanding provisional double patenting rejection and was thus unpatentable both before and after the appeal.”  The FC panel wrote that “Type C adjustments are for delays that are…due to…successful appeals” (Supernus, FC 2019), of which “unambiguous language imposes two requirements: that an adverse determination of patentability be reversed, and that the application reviewed in that appeal issue as a patent as a result of that reversal.”  And that did not apply here because, e.g., for the ‘476 patent, “the Board in the same review found claim 11 unpatentable, albeit for a different reason” (Mayo, FC 2019) and the DC’s decision that “the claim as issued was not the same as the claim ‘under a decision in the review’” (e.g., “the claim was subject to a year of additional substantive prosecution and amendments to address the Board’s new ground of rejection”) was correct.  The FC panel similarly found the DC’s decision regarding the ‘796 patent decision was correct as “the singular reversal referenced in the statute is the determination of patentability of the claim under appellate review, not a basis for a rejection or number of rejections” (“the plain meaning of the statute”, and, e.g., “[t]he act giving rise to (A) delay is the PTO’s failure to act after an appellate decision “in a case in which allowable claims remain in the application”, “a wholly different context than that of the (C) delay provision”; and “[t]he ’796 patent, as issued, did not include claim 1 as appealed”).  The DC and USPTO decisions were therefore affirmed.

Posted in Claim, Claim Construction, Patent Term Adjustment (PTA) | Leave a comment

ITC decision of non-infringement of functional/capability-type computer claims affirmed; decision as to expired patent found moot

INVT SPE LLC v. Int. Trade Commission (ITC), HTC America, Inc. et al. (Intervenor)

Docket No. 2020-1903 (


August 31, 2022

Brief Summary:   ITC decision finding no infringement of functional computer claims affirmed; decision regarding expired patent dismissed. Summary:  INVT appealed ITC decision finding that HTC et al. did not violate 19 USC section 1337 (section 337) by importation and sale of smartphones, smart watches, and tablets due to failure “to meet the technical prong of the domestic industry requirement of” (ALJ decision not reviewed by the ITC) and non-infringement of five INVT patents, two of which are at issue in this appeal (US 6,760,590 and 7,848,439).  The FC panel affirmed the ITC’s “determination that there was no section 337 violation with respect to the ’439 patent because INVT failed to show infringement and the existence of domestic industry” and “INVT’s argument on appeal that the asserted ’439 claims are drawn to ‘capability’” but disagreed with INVT on infringement.  INVT argued that “(1) the ’439 claims are essential to the practice of the LTE standard, see id. at *58– 63, and (2) the accused products practice the asserted claims”.  The ALJ disagreed with both arguments (e.g., “the plain language dictated the result… Claim 1 is silent on the operation of the communicating party”, ““patent essentiality cannot, as a matter of law, be established merely by showing that the asserted standard is capable of meeting the claim, as mere capability of a claimed feature is ipso facto not tantamount to the requirement that the claimed feature must be mandatory”, “mere capability in this instance does not equate to infringement” (Finjan, FC 2010)).  The FC panel explained that that “[f]or infringement purposes, a computer-implemented claim drawn to a functional capability requires some showing that the accused computer-implemented device is programmed or otherwise configured, without modification, to perform the claimed function when in operation” and that “INVT failed to introduce any evidence to establish that the accused devices, when put into operation, will ever perform the particular functions recited in the asserted claims.” It “agree[d] with INVT that the asserted ’439 claims are drawn to “capability,” and not to actual operation as the ALJ found” but also found that INVT “failed to show that the accused LTE-compliant devices have the capability required by the claims” and therefore did not show infringement.  The FC panel explained that “sometimes a device only needs to be “capable of operating” according to a claimed limitation, for a finding of infringement” (Finjan; Silicon Graphics, ), but also that “[o]ther times, a device does not infringe unless it actually operates as claimed” (ParkerVision, FC 2018; Ball Aerosol, FC 2009), the “the most straightforward example of this [being] the common distinction between method claims and apparatus claims” (e.g., Finjan’s “non-method claims describe capabilities without requiring that any software components be ‘active’ or ‘enabled’” but “method claims…not infringed” as “actual performance of each claimed step” required; Cross Medical, FC 2005 (“limitation…could be met merely by an interface that was capable of contacting bone”), Ball Aerosol, FC 2009 (“configuration-type claim…required showing that the candle holder was actually placed on its cover” and “no evidence that the Travel Candle was in fact ever placed in such a configuration”), and Silicon Graphics (FC 2010) (“claim directed to a computer, claimed in functional terms” infringed if unmodified product could operate as claimed (“capability-type language”)).  But, again, infringement was not found here as INVT did not show evidence that all of the devices, including external devices (e.g., “base station”), needed to carry out the claimed function were present in the accused devices.  The FC panel also found “the Commission’s determination with respect to the ’590 patent moot based on the patent’s expiration” and vacated and remanded the decision as to that patent (Tex. Instr., FC 1988; 19 USC section 1337(d)-(f)).

Posted in Claim Construction, Functional limitations, Importation, International Trade Commission, Method claims, Software | Leave a comment

Board IPR obviousness decisions affirmed, appeal regarding canceled claim dismissed

Best Medical Int., Inc. v. Elekta Inc.

Docket No. 2021-2099, -2100 (IPR2020-0070-72) (


August 26, 2022

Brief Summary:   Board IPR obviousness decisions affirmed, appeal regarding canceled claim dismissed. Summary:  BMI appealed two IPR Board decisions finding the challenged claims of US 6,393,096 directed to methods and apparatus for radiation therapy of tumors based on the Board’s conclusion “that a person having ordinary skill in the art would have had formal computer programming experience” and discounting BMI’s expert testimony.  Two IPR petitions were filed by Varian Medical Systems and two “copycat petitions” were filed by Elekta, and the Board instituted two of those and joined Elekta as a party to Varian’s proceedings, but Varian eventually withdrew from the appeal.  While these IPRs were ongoing, a parallel ex parte reexamination of claims 1 and 18 initiated by Varian; in both the reexamination and IPR proceedings BMI canceled claim 1.  However, the Board nevertheless found claim 1 unpatentable in the IPR.  The FC panel explained that is has jurisdiction to consider the Board’s unpatentability decision regarding claims 43, 44 and 46 but not claim 1 because it became moot before BMI filed its appeal (Munsingwear, US 1950; Appeal, FC 2021 (Apple II); “no case or controversy” under Article III (Spokeo, US 2016)).  The FC panel also found the Board “reasonably concluded that it was required to address patentability of claim 1 absent any final cancelation” (SAS, US 2018; 35 USC section 318(a)), and found no error with the Board’s consideration of claim 1.  BMS argued in this appeal that “it suffered an injury in fact based on alleged collateral estoppel effects resulting from the Board’s unpatentability determination for claim 1 sufficient to confer us with Article III jurisdiction”.  The FC panel stated it saw no reason “why BMI could not challenge the Examiner’s findings and conclusions” by appealing the reexamination decision, knows of “no cases that would apply collateral estoppel in these circumstances, nor has BMI cited any” (SkyHawke, FC 2016), and “the potential for collateral consequences” is insufficient, on its own, to confer standing upon BMI” (Hyosung, FC 2019; ala. Mun., DC Cir 2002).  Regarding claims 43, 44 and 46 that were found obvious by the Board during the IPR proceedings, the FC panel first reviewed the Board’s characterization of the level of skill in the art as a question of fact for substantial evidence (Innovention Toys, FC 2011 (not “reweigh evidence”, acceptable if “reasonable mind might accept as adequate”)).  The FC panel reviewed a “non-exhaustive list of factors” for determining the level of skill in the art (e.g., educational level, type of problem, prior art solutions, rapidity of innovation, sophistication of technology, and “[t]he patent’s purpose” (Daiichi, FC 2007; DyStar, FC 2006)) and noted that “[b]efore the Board, the parties presented little evidence relating to these factors.”  The Board concluded an expert should have “computer programming experience” and that BMI’s expert did not and therefore did not credit his testimony, and the FC panel did not find this conclusion to be unreasonable or unsupported.  The FC panel also found no error with the Board’s claim construction based on the “plain claim language and written description” (Teva, US 2015 (intrinsic evidence)).  The FC panel also found no error with the Board’s conclusion of a motivation to combine the prior art with a reasonable expectation of success (“[t]he Board’s well-reasoned analysis” of Graham factors).  The Board’s decisions were therefore affirmed-in-part and dismissed-in-part.

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

Board decision finding ineligibility under section 101 affirmed (abstract idea, generic computer)

In Re:  Jeffrey A. Killian

Docket No. 2021-2113 (


August 23, 2022

Brief Summary:   Board decision finding claims ineligible under section 101 affirmed. Summary:  Mr. Killian appealed USPTO Board decision affirming the examiner’s rejection of certain claims of US Ser. No. 14/450,042 under 35 USC section 101 (Appeal No. 2020-003680, Feb. 1, 2021).  “The ‘042 application relates to a system and method “for determining eligibility for Social Security Disability Insurance [SSDI] benefits through a computer network” which includes obtaining information “from two sources: (1) a Federal Social Security database; and (2) a State database containing records for patients receiving treatment for developmental disabilities or mental illness” and then using “relevant information to determine if a given patient is entitled to receive SSDI benefits.”  Representative claim 1 is directed to “[a] computerized method for determining overlooked eligibility for social security disability insurance (SSDI)/adult child benefits through a computer network” including providing access to the databases, selecting a person who is receiving treatment, creating an electronic record, retrieving the person’s SSDA status, determining whether the person is receiving SSDI benefits, and ultimately indicating in an electronic record whether the person is eligible for SSDI benefits.  The examiner rejected the claims under section 101 as being “directed to the abstract idea of “determining eligibility for social security disability insurance . . . benefits” and lacking “additional elements amounting to significantly more than the abstract idea because the additional elements were simply generic recitations of generic computer functionalities”, and the Board agreed (““an abstract mental process”, “insignificant extra-solution activity”, “primitive computer operations found in any computer system” without integration” into a ‘practical application,’ and which do not recite an ‘inventive concept’”).  The FC panel reviewed the Board ultimate conclusion de novo and its factual findings for substantive evidence (In re Marco Guldenaar, FC 2018; Customedia, FC 2020).  It also explained that under Alice (US 2014) and Mayo (US 2012), it first must “‘determine whether the claims at issue are directed to a patent-ineligible concept,’ such as an abstract idea” and then determine whether the claims “contains an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.”  The FC panel found that “[t]he claims of the ’042 application do not pass this threshold test” (CyberSource, FC 2011; Elec. Power, FC 2016; Affinity Labs, FC 2016) as the collection and understanding of the information “can be performed by a human, using ‘observation, evaluation, judgment, [and] opinion” that “are performed on a generic computer” which “does not save the claims from being directed to an abstract idea” (Fair Warning, FC 2016).  Mr. Killian argued, e.g., that “the standard promulgated in Alice and Mayo is indefinite”, improper under the APA, “arbitrary and capricious”, and the court has not provided proper guidance on what is an abstract idea or an inventive concept, but the FC panel disagreed, citing, e.g., Ericsson, FC 2020; Finjan, FC 2018; BASCOM, FC 2016).  The Board decision was therefore affirmed.

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

DC decision of no infringement by Eagle’s ANDA specification and denial of DJ affirmed

Par Pharmaceutical, Inc. et al. v. Eagle Pharmceuticals, Inc.

Docket No. 2021-2342 (


August 18, 2022

Brief Summary:   DC finding of no infringement under 271(e)(2) affirmed based on Eagle’s ANDA specification to which Eagle is bound, and its denial of DJ affirmed. Summary:  Par appealed DC finding that Eagle’s ANDA regarding Par’s Vasostrict® product (a vasopressin injection product used to treat patients with critically low blood pressure) does not infringe the claims of US 9,744,209 or 9,750,785 under 35 USC section 271(e)(2).  Eagle’s ANDA was filed before the ‘209 and ‘785 patents expired, and the Orange Book (OB) lists eight patents expiring in 2035 under NDA204485 and ANDA filings by several additional companies.     The FC panel opinion explains that the ‘209 patent is directed to methods of treatment and the ‘785 patent is directed to compositions but “[t]he claims of both patents require the vasopressin composition to have a rounded pH between 3.7–3.9, i.e., a pH between 3.65–3.94 before rounding.”  Eagle’s ANDA included non-infringement / invalidity certifications.  Par sued Eagle in DE for infringement of the patents under 35 USC section 271(e)(2) and sought a declaratory judgment (DJ) that Eagle’s product would infringe under 35 USC section 271(a) and (b).  At the DC, “Eagle stipulated that its proposed product would meet all asserted claim limitations except the claimed pH range of 3.7–3.9.”  Par argued that “‘real-world’ evidence shows the pH of Eagle’s product drifts up over time”, “sought authority to release products into the marketplace with a pH of 3.64, just 0.01 beneath the infringing range”, and that “these facts taken together compelled a finding that Eagle’s proposed product would more likely than not infringe since a product released at a pH of 3.64 would inevitably drift into Par’s claimed range.”  The DC disagreed, finding Par’s “facts ‘neither undisputed nor correct’” (e.g., “the minor fluctuations in pH value identified by Par did not reveal any discernible trend, let alone ‘a steady and inevitable’ upward drift” and “while the release specification alone required a pH range between 3.4–3.6 (i.e., up to 3.64 before rounding) only at the time of distribution, the stability specification imposed an additional constraint that Eagle’s proposed product maintain a pH between 3.4–3.6 from the time of its distribution through the entirety of its shelf life”).  The FC panel reviewed the DC’s “conclusions of law de novo and its factual findings for clear error”, deferring to the DC’s findings “in the absence of a definite and firm conviction that a mistake has been made” (Allergan, FC 2015; Scanner Techs., FC 2008; Alza, FC 2006).  The FC panel explained that “[u]nder § 271(e)(2), it is an act of infringement to submit an ANDA seeking FDA approval to make and sell a patented drug” (35 USC section 271(e)(2); Warner-Lambert, FC 2003), but also that “courts must conduct an inquiry to determine whether the probable ANDA product would infringe once it is made, used, or sold” (Glaxo, FC 1997) which “is controlled by the ANDA specification itself” (Abbott, FC 2002; Ferring, FC 2014).  “Here,” the FC panel wrote, “the inquiry begins and ends with Eagle’s ANDA specification” which “restrict the pH of the proposed product to a pH range between 3.4–3.6 at release and throughout the products’ shelf life—outside the infringing range”, and Par “Par cites no evidence that Eagle would not comply with its stability specification.”  The FC panel therefore affirmed the DC’s finding of no infringement under 271(e)(2).  The FC panel also affirmed the DC’s denial of Par’s request for DJ and that the finding relied on (i.e., “no upward pH drift in Eagle’s post-release pH data”) “was not clear error” (Teva, FC 2015; “Eagle is bound by its representations to the FDA that it will manufacture its products in accordance with the optimized process and that the pH of its products will remain between 3.4–3.6.”)  The DC’s denial of DJ was therefore affirmed.

Posted in Claim Construction, Generics / ANDA, Infringement, Method claims, Safe Harbor, FDA exemptions (271(e)(1)) | Leave a comment

Board IPR decision of no anticipation affirmed (untimely arguments, portions of prior art relied upon not “by another”)

LSI Corporation and Avago Techs. U.S. Inc. v. Regents of the University of Minnesota

Docket No. 2021-2057 (IPR2017-01068) (


August 11, 2022

Brief Summary:   Board decision that LSI did not timely raise arguments or show portions of prior art patent relied upon was “by another” affirmed.

Summary:  UMN sued LSI and Avago (“LSI”) for infringement of US 5,859,601 and LSI petitioned the USPTO (“Board”) for IPR of the ‘601 patent naming inventors J. Moon and B. Brickner relating to computer storage devices using maximum transition run (“MTR”) coding.  The Board instituted IPR of claims 13, 14 and 17 on anticipation theories based on US 5,392,270 (“Okada” (“Ground 1”)) and US 5,731,768 (“Tsang” (“Ground 2”)), and found claim 13 unpatentable in view of Okada but claims 14 and 17 not unpatentable.  The Board held “LSI failed to timely raise its theory that Tables 8 and 9 of Okada anticipate claims 14 and 17 and that, in any event, Tables 8 and 9 did not anticipate” (it first relied on different tables) and that Tsang was not “by another” under 35 USC section 102(e).  The FC panel affirmed the Board’s conclusion that LSI’s arguments based on Okada were not timely raised and therefore forfeited (Intell. Bio-Sys., FC 2016; Gen. Access, FC 2020; SmithKline, FC 2006).  The FC panel opinion explains that the ‘601 patent embodied material in the “Seagate Annual Report” listing only Dr. Moon and Dr. Brickner as authors but also that “[i]t is not clear whether the Seagate Annual Report was publicly available before the ’601 patent’s priority date”, although since both have the same authors “it is not ‘by another’ under § 102 even if it were publicly available before the priority date.”  Thus, LSI relied on Tsang to anticipate claims 14 and 17.  It also explained that “[a]bout four months after receiving the Seagate Annual Report from Dr. Moon and Dr. Brickner and before the earliest filing date of the ’601 patent (April 5, 1996), Dr. Kinhing P. Tsang, an employee at Seagate, filed an application on January 31, 1996, that would later mature into the Tsang patent” that does not list Dr. Moon and Dr. Brickner as inventors.  Therefore, the Tsang patent “is prior art on its face” under section 102(e).  Tsang did revise the MTR coding in a manner “not disclosed or specifically claimed in the ’601 patent” (see FN2 explaining the FC did not “decide whether the claims of the ’601 patent are sufficiently broad to cover Tsang’s specific embodiments”).  During the IPR, “UMN moved to dismiss LSI’s petition on the ground of state sovereign immunity” which the Board denied, after which SCOTUS denied UMN’s certiorari petition.  The Board concluded LSI’s petition based on Tang “relies solely on material disclosed in the Seagate Annual Report for anticipation of the challenged claims” and did not therefore show it was the work “of another” as that report was prepared by Dr. Moon and Dr. Brickner.  The FC panel explained that a patent applicant/patentee may overcome anticipation by “establish[ing] that the relevant disclosure [in the prior-art reference] describes their own invention” (Duncan Parking, FC 2019; Google, FC 2022 (regarding obviousness)).  The FC panel agreed with the Board that the portions of the Tsang patent on which LSI relied were from the Seagate Report (not the work “of another”) and affirmed the Board decision.

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

Assigned claim not broader than asserted claim, DC assignor estoppel decision affirmed

Hologic, Inc., et al. v. Minerva Surgical, Inc.

Docket No. 2019-2054, -2081 (


August 11, 2022

Brief Summary:   On remand from SCOTUS, assignor estoppel decision affirmed as asserted claim not broader than assigned claim. Summary:  This case is on remand from SCOTUS which vacated the FC’s prior judgment affirming the DC’s grant of summary judgment (SJ) of no invalidity of claim 1 of US 9,095,348 to Hologic based on the doctrine of assignor estoppel, which precludes an assignor from challenging the validity of an assigned patent.  Here, the FC was required to “determine whether claim 1 is ‘materially broader’ than the claims assigned to Hologic such that assignor estoppel should not apply”.  The technology-at-issue relates to a device used to treat abnormal uterine bleeding (menorrhagia) (an endometrial ablation device) that was owned by NovaCept, Inc.  In 1998, a NovaCept founder (Mr. Truckai) filed the’072 patent application directed to the device with some claims reciting “a ‘fluid permeable elastic member’ to pass moisture away from the tissue, while on claim-claim 31- did not.”  Mr. Truckai’s interest was assigned to NovaCept which was then acquired by Cytyc Corp. in 2004 with a warranty from NovaCept that “it had ‘no present knowledge from which it could reasonably conclude’ that the assigned intellectual property rights were invalid or unenforceable”.  Hologic, the current assignee of the ‘348 patent, acquired Cytyc in 2007.  Mr. Truckai left NovaCept and founded Minerva in 2008 which developed the Endometrial Ablation System (EAS) that was approved by the FDA in 2015 and began to be commercially distributed.  Hologic asserted Minerva infringed ‘348 claim, which in this opinion the FC compared to claim 31 of the ‘072 application to determined whether assignor estoppel applied.  The DC found that assignor estoppel applied, prevented Minverva from asserting its “various invalidity defenses, including lack of enablement and written description”, and granted SJ of no invalidity and infringement of ‘348 claim 1 to Hologic (“Hologic I”).  In 2020, the FC affirmed the DC’s findings (Hologic, FC 2020 (“Hologic II”)).  Minerva petitioned SCOTUS, “arguing that the doctrine of assignor estoppel ‘finds no support in the statute, [the Supreme] Court’s decisions, or the policies the Patent Act serves’” and “the Court to consider “not only whether to abandon the doctrine entirely, but also whether to retain the doctrine with clearly defined, narrow limits.”  SCOTUS “granted certiorari and declined Minerva’s request to ‘discard this century-old form of estoppel,’ but in doing so clarified that assignor estoppel ‘comes with limits’” and that “‘there is no ground for applying assignor estoppel’ ‘when the assignor has made neither explicit nor implicit representations in conflict with an invalidity defense’” (Minerva, US 2021 (“Hologic III”) (“If Hologic’s new claim is materially broader than the ones [Mr.] Truckai assigned, then [Mr.] Truckai could not have warranted its validity in making the assignment. And without such a prior inconsistent representation, there is no basis for estoppel.”))  The FC panel considered the ‘348 claim 1, the specification, and the prosecution history to determine whether “claim 1 of the ’348 patent is ‘materially broader’ than claim 31 of the ’072 application” and found that it is not, and therefore affirmed the DC decision.

Posted in Assignment / Ownership, Claim Construction, Prosecution History Estoppel, Written description | Leave a comment

Artificial intelligence cannot be an inventor under the Patent Act, Fed. Cir. holds

Stephen Thaler v. Vidal/USPTO

Docket No. 2021-2347 (


August 5, 2022

Brief Summary:   FC panel affirms ED VA and USPTO findings that only human beings and not computers (i.e., artificial intelligence) can be inventors under the Patent Act.

Summary:  Stephen Thaler appealed USPTO and DC denials of his patent applications “which failed to list any human as an inventor” because “the Patent Act defines ‘inventor’ as limited to natural persons; that is, human beings.”  The ED VA agreed with the USPTO, and Mr. Thaler appealed to the FC.  In the patent applications to a “Neural Flame” and a “Fractal Container”, Thaler wrote that “the invention [was] generated by artificial intelligence”, “DABUS” (“Device for Autonomous Bootstrapping of Unified Science”), “a collection of source code or programming and a software program.”  Thaler also submitted a “supplemental ‘Statement of Inventorship’ explaining that DABUS was ‘a particular type of connectionist artificial intelligence’ called a “Creativity Machine’” and “a document purporting to assign himself all of DABUS’ rights as an inventor.”  The USPTO sent a Notice to File Missing Parts requesting Thaler to “identify valid inventors” which Thaler unsuccessfully asked the PTO director to “vacate…based on his Statement of Inventor”.  Thaler requested judicial review under the APA and the DC granted to USPTO’s motion for summary judgment, denying Thaler’s request for reinstatement of his applications as lacking a human inventor.  The FC panel reviewed the DC’s grant of SJ de novo (under the Fourth Circuit regional law; Supernus, FC 2019; 5 USC 706; Facebook, FC 2020).  The FC panel began its analysis with the statute (the Patent Act; BedRock, US 2004) and found “no ambiguity: the Patent Act requires that inventors must be natural persons; that is, human beings.”  Noting that “[t]he Patent Act does not define ‘individual’”, it also explained that “the Supreme Court has explained, when used ‘[a]s a noun, ‘individual’ ordinarily means a human being, a person’…unless there is ‘some indication Congress intended’ a different reading” (Mohamad, US 2012) which “[d]ictionaries confirm”.  The FC panel also rejected Thaler’s section 101-based arguments regarding the term “whoever” as well as his section 103-based arguments as “not about inventorship”.  The FC panel therefore agreed with the USPTO and DC, “holding…that an ‘inventor’ must be a human being is supported by our own precedent” (Univ. Utah, FC 2013 (“[I]nventors must be natural persons and cannot be corporations or sovereigns.”); Beech Aircraft, FC 1993 ((“[O]nly natural persons can be ‘inventors.’”)).  The FC panel also rejected Thaler’s arguments “that inventions generated by AI should be patentable in order to encourage innovation and public disclosure” (Sw. Airlines, US 2022) and his invocation of “the canon of constitutional avoidance” as, e.g., “Congress has chosen to act pursuant to that power by passing the Patent Act” and he did not “(and cannot) argue that limiting inventorship to human beings is unconstitutional” (Veterans4You, FC 2021; Warger, US 2014)).  The fact “that South Africa has granted patents with DABUS as an inventor” was also not persuasive as that “foreign patent office was not interpreting our Patent Act”.

Posted in Inventorship | Leave a comment

Board IPR obviousness decision vacated-in-part and remanded due to incorrect claim construction

TalexMedical, LLC v. Becon Medical Limited, et al.

Docket No. 2021-2069-70, 2021-2109-10 (IPR2020-0028, -00030) ( (Non-Precedential)


July 22, 2022

Brief Summary:   Board IPR obviousness decision vacated-in-part and remanded due to incorrect claim construction. Summary:  TalexMedical appealed two USPTO (“Board”) IPR decisions holding claims 4-7 of US 8,167,942 and claim 16 of US 8,853,277 (both Becon patents) relating to “correcting misshaped ears using a molding device” not unpatentable for obviousness.  Becon cross-appealed decisions of holding claims 1-3 and 9 of the ‘942 patent and claims 1-2 and 9-10 of the ‘277 patent invalid for obviousness.  The FC panel explained the Board “declined Becon’s request to construe ‘mold’ and ‘molding device’ to require reshaping an ear” and found , “construed ‘scaphal mold’ to mean ‘mold at the end of the one or more braces that is positionable in the scaphal area’”, “construed the ‘reversibly engage’ limitation to mean ‘to engage a surface on a reverse side facing away from the ear’”, and applied these constructions to its conclusions regarding obviousness or non-obviousness (e.g., “Dancey and Yotsuyanagi each independently disclose an ear molding device as recited in the ’942 patent claims and the ’277 patent claims”, “Talex failed to show that Dancey’s foot member includes a ‘broad flat surface’”, Dancy does not disclose the “reversibly engage” limitation).  The Board also “concluded that Becon failed to establish that it was entitled to a nexus between secondary considerations and the asserted claims, or a presumption of a nexus, for any of the challenged claims” (““[Becon’s] briefing and cited evidence lack sufficient specificity”) and “even if Becon had established a nexus, the Board would have found the strength of the obviousness allegations greater than the indicia of nonobviousness (e.g., copying and industry praise).”  The FC panel reviewed the Board’s obviousness decision (legal) de novo (In re Elsner, FC 2004; Graham, US 1966; Meiresonne, FC 2017; Apple, FC 2016 (en banc); In re Mouttet, FC 2012) and the factual findings for substantial evidence (In re Gartside, FC 2000; Consol. Edison, US 1938; In re Warsaw Orthopedic, FC 2016).  It first found that the Board could not discern whether the prior art showed the “semi-cylindrical extension” limitation of ‘277 claim 16 and Talex “did not use the opportunity to address its confusing annotations in its reply before the Board.”  The FC panel similarly found substantial evidence supporting the Board’s conclusion regarding ‘942 claim 4 (e.g., “Talex failed to show that the portion of Dancey’s foot adjacent to the patient’s head is broad or flat.”)  The FC panel found the Board erred in construing “reversibly engage” by failing to “consider the possibility that both [parties’] constructions are inconsistent with the intrinsic evidence” (Phillips, FC 2005; Hill-Rom Servs., FC 2014; Thorner, FC 2012; Liebel-Flasheim, FC 2004 (Embodiments cannot limit the scope of the claims absent the patentee’s “words or expressions of manifest exclusion or restriction.”))  The FC panel agreed with the Board’s construction of the “mold” limitation as not “require[ing] reshaping” and its obviousness conclusion.  The FC panel also agreed that Becon did not show a nexus between the success of its EarWell product and the claims (Henny Penny, FC 2019; Fox, FC 2019; Polaris, FC 2018).  It also found the Board did not err in denying Becon’s motion to amend its claims.  The Board’s decisions were therefore affirmed-in-part, vacated-in-part (patentability of ‘942 claims 5-7), and remanded.

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