Termination of IPR outside of FC jurisdiction, including regarding sanctions

Atlanta Gas Light Company v. Bennett Regulator Guards, Inc.

Docket No. 2021-1759 (IPR2015-00826) (https://cafc.uscourts.gov/opinions-orders/21-1759.OPINION.5-13-2022_1951471.pdf)


May 13, 2022

Brief Summary:   Appeal dismissed as FC lacked jurisdiction over IPR termination. Summary:  Atlanta Gas appealed USPTO IPR decision termination of its IPR proceeding regarding US 5,810,029 directed to an anti-icing device for a gas pressure regulator.  This is the third time this case has been in front of the FC.  The USPTO Board (“Board”) issued a final written decision (FWD) rejecting patent owner Bennett’s argument that Atlanta Gas was time-barred under 35 U.S.C. § 315(b) for failing to list all real parties-in-interest (RPIs) and determined that the challenged claims were unpatentable over the prior art.  That decision was appealed to the FC which found Atlanta should have been time-barred, vacated the unpatentability determination, and remanded the decision to the Board.  Before the Board’s reconsideration SCOTUS vacated the FC panel time-bar decision (Thryv, US 2020), and the FC subsequently affirmed the Board’s unpatentability decision without addressing the time-bar and again remanded the decision.  The Board then terminated the proceeding based on its prior decision that Atlanta Gas was time barred, and Atlanta Gas filed this appeal.  This opinion explains that Atlanta Gas filed IPR petition IPR2013-00453 on July 18, 2013, “exactly one year after Bennet served” it with its infringement complaint, but this IPR was dismissed on the Board’s finding that Atlanta Gas did not list all the real parties-in-interest (RPIs) (“failed to list its parent company”), and Atlanta’s petition for rehearing was denied but not appealed.  Atlanta then filed IPR2015-00826 (the subject of this appeal) on Feb. 27, 2015 with the same unpatentability challenge as the first IPR, and naming its parent company as an RPI.  The Board found that challenge not to be time-barred because the DC dismissed the infringement action without prejudice, and therefore “treated the [DC] complaint as if it had never been filed…consistent with the [USPTO’s] understanding of § 315(b)’s time bar at that time”.  The Board concluded in a FWD the challenged claims were unpatentable.  Bennett then learned that a corporate merger involving Atlanta’s parent company had not been disclosed during the proceeding and the Board granted monetary sanctions for Bennett’s “costs and fees incurred between the final written decision and the sanctions decision.”  Atlanta appealed and the FC remanded that decision (Bennet I), but the SCOTUS Thryv decision issued before the Board acted.  The FC then affirmed the Board’s upatentability decision in Bennett II but disagreed with the sanctions.  On remand, the Board reconsidered the sanctions but also vacated its institution decision, terminated the proceedings and declined the sanctions.  In this appeal, Atlanta argued the Board abused its discretion but the FC panel disagreed, concluding it lacked jurisdiction (GTNX, FC 2015; BioDelivery, FC 2019; SAS, US 2018 (no partial institutions, “Board had only a binary choice to institute or not.”)).  Judge Newman dissented, arguing “no exception” in the statute “excludes the appeal of a sanctions order”.

Posted in Appeal, Inter Parties Review (IPR), IPR | Leave a comment

Claim construction affirmed, Hulu’s SJ grant of noninfringement vacated and remanded; damages testimony exclusion affirmed

Sound View Innovations, LLC v. Hulu, LLC

Docket No. 2021-1998 (https://cafc.uscourts.gov/opinions-orders/21-1998.OPINION.5-11-2022_1950301.pdf)


May 11, 2022

Brief Summary:   DC claim construction affirmed but SJ grant of noninfringement vacated and remanded; exclusion of certain damages testimony affirmed.

Summary:  Sound View appealed DC claim construction of claim 16 of US 6,708,213 relating to multimedia streaming technologies, the DC’s grant of summary judgment (SJ) of noninfringement to Hulu, and the damages rulings.  The disputed “downloading/retrieving limitation” “requires ‘allocating a buffer’ at a helper server ‘to cache’ at least a portion of the [streaming multimedia] SM object”, which the DC held “to require that the same buffer in the helper server—the one allocated in the preceding step—host both the portion sent to the client and a remaining portion retrieved concurrently from the content server or other helper server”.  The DC granted SJ because “it was undisputed that, in the edge servers of its content delivery networks, no single buffer hosts both the video portion downloaded to the client and the retrieved additional portion” (“a ‘cache’ could not be the ‘buffer’”).  Hulu successfully argued to the DC “that the applicants’ statements accompanying the amendment [during prosecution] disclaimed the full scope of the downloading / retrieving limitation, and that the claim required the concurrent downloading from and filling of a single buffer” (e.g., “the terms ‘buffer’ and ‘cache’ to refer to distinct physical components”).  Sound View argued the term “should be construed according to the ordinary meaning of its words” and that there was a factual dispute such that SJ was inappropriate.  The FC panel reviewed the claim construction ruling de novo as it was based only on intrinsic evidence (Intel, FC 2021) and explained that it “generally give[s] words of a claim their ordinary meaning in the context of the claim and the whole patent document” and that “even if the meaning is plain on the face of the claim language, the patentee can, by acting with sufficient clarity, disclaim such a plain meaning or prescribe a special definition” (World Class Techs., FC 2014; Phillips, FC 2005; Thorner, FC 2012; Personalized Media, FC 2020; Pause Tech., FC 2005 (“interpretation of the entire claim in context, not a single element in isolation”); Speedtrack, FC 2021; Tech. Props., FC 2017 (“what a person of ordinary skill would understand the patentee to have disclaimed during prosecution”)).  The FC panel agreed with the DC’s claim construction based on the prosecution history (e.g., “applicants in this case must be understood to have been distinguishing their invention (as newly narrowed by the added limitation) on the basis of the distinction between serial and concurrent use of a single buffer”).  It vacated and remanded the DC’s decision, however, because “‘buffer’ and ‘cache’ do not appear to be mutually exclusive, but instead seem to have at least some overlap in their coverage” (e.g., DC “did not decide, and the record does not establish, that ‘cache’ is a term of…uniform meaning in the art”; “It appears that ‘buffer’ should be given the ordinary meaning proposed by Sound View here and in the district court based on a dictionary definition….”)  The FC also affirmed the DC’s exclusion of certain damages-related testimony.

Posted in Claim Construction, Damages, Disclaimers, Expert Testimony, Prosecution History Estoppel, Software | Leave a comment

DC denial of on-sale bar defense reversed; claim construction affirmed; grant of enhanced damages reversed based on attorney opinion; reasonably royalty affirmed

Sunoco Partners Marketing & Terminals, L.P. v. U.S. Venture, Inc. et al. (“Venture”)

Docket No. 2020-1640, -1641 (https://cafc.uscourts.gov/opinions-orders/20-1640.OPINION.4-29-2022_1943607.pdf)


April 29, 2022

Brief Summary:  DC denial of on-sale bar defense reversed; claim construction affirmed; grant of enhanced damages reversed based on attorney opinion; reasonably royalty affirmed.

Summary: Venture appealed DC’s “(I) rejection of its on-sale-bar defense, (II) determination that it infringed two patents…since held invalid, (III) construction of two claim terms, and (IV) decision to enhance damages” relating to butane-blending systems for production of gasoline    Sunoco cross-appealed regarding the denial of lost-profit damages and the award of treble damages.   Regarding the on-sale bar, the FC panel explained that “[t]o prevail…Venture needed to show that, before the critical date, Sunoco’s patented invention was both (1) ‘the subject of a commercial offer for sale’ and (2) ‘ready for patenting’…by clear and convincing evidence” (Pfaff, US 1998; Helsinn, US 2019; Allen Eng’g, FC 2002; Honeywell, FC 2007), and that while “inventors may delay patenting to engage in “bona fide effort[s] to bring his invention to perfection, or to ascertain whether it will answer the purpose intended…’[a]ny attempt to use [the invention] for a profit[] and not by way of experiment’ before the critical date will ‘deprive the inventor of his right to a patent’” (City of Elizabeth, US 1877).  The FC panel reversed the DC decision “that Venture’s on-sale-bar defense is negated by the experimental use doctrine and (B) remand for the district court to evaluate the ready-for-patenting prong of the on-sale bar” because the disputed portions of Venture’s contract with alleged buyer (Equilon) “was an offer for sale made to commercially exploit the invention rather than primarily for experimental purposes” (not experimental testing but confirmation “that it is working as promised”).  The FC panel also noted that on remand it must be shown “that the system sold anticipated or rendered obvious the claimed invention and that it was ready for patenting” (Pfaff, Allen).  The infringement judgment of claims subsequently found invalid by the USPTO (affirmed by the FC in 2021; XY, FC 2018) was reversed.  The FC panel agreed with the DC that “the plain claim language” regarding ““vapor pressure of the butane stream” “strongly suggests that there is no measurement requirement” (e.g., specification expresses “a preference but not a mandatory requirement”; Intel, FC 2021; Phillips, FC 2005).  The FC panel agreed with the DC’s finding that a method claim “comprising” steps “may cover unclaimed elements” (Inivtrogen, FC 2003).  Venture also challenged the DC’s decision to enhance damages, which the FC panel explained requires consideration of nine non-exclusive factors (Halo, US 2016; Presidio, FC 2017).  It disagreed with the DC decision due “a clear factual error in the [DC’s] treatment of” a non-infringement opinion of Venture’s attorney “on which Venture relied” (Omega Pats., FC 2019 (“relevant to the infringer’s state of mind”); Comark, FC 1998 (opinion “must be competent”)).  The FC panel affirmed the DC’s denial of lost profits (Graphics, FC 2017) because, e.g., “neither butane nor blended gasoline is the patented invention” and the disputed agreements extend “beyond just the patented invention” and affirmed its reasonable-royalty calculation.

Posted in Claim Construction, Claim Differentiation, Damages, Experimental Use, Expert Testimony, Infringement, Lost Profits, On-Sale Bar, Royalties, Willfullness | Leave a comment

IPR finding of no obviousness reversed as “generic industry skepticism cannot, standing alone, preclude a finding of motivation to combine”

Auris Health, Inc. v. Intuitive Surgical Operations, Inc.

Docket No. 2021-1732 (IPR2019-1533) (https://cafc.uscourts.gov/opinions-orders/21-1732.OPINION.4-29-2022_1943629.pdf)


April 29, 2022

Brief Summary:   IPR finding of no obviousness reversed and remanded as industry skepticism was too general and not specific to the actual combination.

Summary:  Auris appealed PTAB (“Board”) IPR final written decision (FWD) that it did not show the claims of Intuitive’s US 8,142,447 relating to robotic surgery systems unpatentable as obvious.  The Board determined that the asserted prior art (Smith and Faraz) disclose each limitation of the challenged claims, with the only remaining issue was whether there was a motivation to combine the references.  This FC panel opinion explains that Smith discloses a robotic surgical system that a clinician wears to mimic the clinician’s movement and that the clinician “‘may direct [an] assistance to relocate the robot[ic] arms’ as necessary.”  Faraz, the FC panel explains, discloses an adjustable (manually or robotically) support stand for holding surgical instruments that “can support multiple surgical implements while [they] are being moved” and “provide support for a surgeon’s arms during long or complicated surgery.”  Auris argued the skilled artisan would have been “motivated to combine Smith and Faraz to decrease the number of assistants needed during surgery by roboticizing some of their tasks” while Intuitive disagreed “because ‘surgeons were skeptical about performing robotic surgery in the first place, [so] there would have been no reason to further complicate Smith’s already complex robotic surgical system with [Faraz’s] roboticized surgical stand’”.  The Board agreed with Intuitive, writing “that ‘the evidence . . . supports the position [that] there is no motivation to complicate Smith’s system when there is skepticism at the time of the invention for using robotic systems during surgery in the first place’”.  Auris argued in this appeal that the Board improperly relied “on general skepticism about the field of robotic surgery to find a lack of motivation to combine.”  The FC panel explained that “[t]he motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention’” (Belden, FC 2015) and “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason” (KSR, US 2007), but that “generic industry skepticism cannot, standing alone, preclude a finding of motivation to combine”.  Industry skepticism, the FC panel wrote, “may play a role in an obviousness inquiry—but as a secondary consideration in a significantly different context” and “even then, the evidence of skepticism must be specific to the invention, not generic to the field” (WBP, FC 2016; “while specific evidence of industry skepticism related to a specific combination of references might contribute to finding a lack of motivation to combine, that’s not what we have here”).  The FC panel therefore vacated and remanded the Board’s decision.  Judge Reyna’s dissent argued that “general skepticism toward robotic surgery, by itself, could be insufficient” but disagreed “that it could never support a finding of no motivation to combine” (citing KSR, US 2007; Kinetic Concepts, FC 2012 (no motivation to combine); Henny Penny, FC 2019; Apple, FC 2016 (en banc (must consider all four Graham factors, including secondary considerations)); Pro-Mold, FC 1996; Mintz, FC 2012 (“avoiding subconscious reliance on hindsight”)).

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

DC dismissal of Apple’s complaint for lack of personal jurisdiction over Zipit reversed and remanded

Apple, Inc. v. Zipit Wireless, Inc.

Docket No. 2021-1760 (https://cafc.uscourts.gov/opinions-orders/21-1760.OPINION.4-18-2022_1937645.pdf)


April 18, 2022

Brief Summary:   DC dismissal of Apple’s DJ action based on a lack of personal jurisdiction reversed and remanded.

Summary:  Apple appealed Northern District (ND) of CA DC dismissal of its request for a declaratory judgment (DJ) of noninfringement against Zipit wireless (a DE corporation with a principal place of business in Greenville, SC) for lack of personal jurisdiction (PJ) (unreasonable based on the nature of Zipit’s communications with Apple in the ND).  The FC panel found the DC erroneously “read our precedent as applying a bright-line rule that patent infringement notice letters and related communications can never form the basis for personal jurisdiction”.  The FC panel opinion explains that Zipit met with Apple at its ND headquarters to discuss licensing or selling the patents to Apple as well as the ongoing IPR proceedings involving the patents and technical details regarding infringement.  The parties exchanged multiple letters and emails regarding possible infringement of the patents by Apple, and Zipit sued Apple in Georgia which it voluntarily dismissed, followed by Apple’s complaint leading to this appeal.  The ND CA DC found that “Apple had established the requisite minimum contacts” with Zipit’s letters and evidence of meetings and that Zipit had not “established a ‘compelling case’ that the exercise of jurisdiction would be unreasonable” (Burger King, US 1985).  However, the DC also concluded that the FC “has held that “the exercise of personal jurisdiction . . . would be unconstitutional when ‘[a]ll of the contacts were for the purpose of warning against infringement or negotiating license agreements, and [the defendant] lacked a binding obligation in the forum” (Burger King; Breckenridge Pharm., FC 2006) and therefore found the exercise of jurisdiction would be unreasonable and dismissed Apple’s DJ action.  The FC panel reviewed the DC decision de novo and explained that it “need only consider ‘whether jurisdiction comports with due process’” (Xilinx, FC 2017).  The FC panel explained that “‘foreseeability . . . is critical to due process analysis,’ and the Supreme Court has made clear that the focus is on whether a given defendant’s “conduct and connection with the forum State are such that he should reasonably anticipate being haled into court there” (Burger King, quoting World-Wide Volkswagon, US 1980).  And “the burden is placed on the defendant to present a ‘compelling case that the presence of some other considerations would render jurisdiction unreasonable’” (Burger King; Red Wing Shoe, FC 1998 (outlining 5 factors (defendant’s burden (“a primary concern”), state’s interest, plaintiff’s interest, interstate judicial system’s interest, shared interest of states)).  The FC panel agreed with the DC on minimum contacts but disagreed that the burden placed on Zipit to litigate in CA “merely [an] inconvenience…that can be addressed by challenging improper venue” (“Zipit has not met its burden to present a compelling case that these factors in the aggregate would render the exercise of jurisdiction unreasonable.”) the DC decision was therefore reversed and remanded.

Posted in Jurisdiction, Venue | Leave a comment

Board IPR obviousness decision reversed due to erroneous claim construction

Amgen Inc. et al. v. USPTO (Intervenor)

Docket No. 2019-2171 (IPR2016-01542) (https://cafc.uscourts.gov/opinions-orders/19-2171.OPINION.4-14-2022_1936036.pdf) (Non-Precedential)


April 14, 2022

Brief Summary:   Board IPR obviousness decision reversed due to erroneous claim construction (“[a] straightforward reading of the claim language”, “the only conclusion supported by substantial evidence”).

Summary:  Amgen appealed USPTO Board Final Written Decision (FWD) finding claims 1-124 of US 8,952,138 relating to methods for producing recombinant proteins unpatentable for obviousness that turned on the Board’s claim construction of the term “final thiol-pair ratio”.  The FC panel opinion explains that the ‘138 patent provides methods for avoiding recombinant protein misfolding into “inclusion bodies…using a controlled reduction-oxidation (redox) reaction”.  Claim 1 recites the use of a ““contacting the protein with a refold buffer comprising a redox component comprising a final thiol-pair ratio. . . . to form a refold mixture,” and the Board construed “final thiol-pair ratio” “to mean ‘the relationship of the reduced and oxidized redox species used in the redox component of the refold buffer as defined by the [following] equation [reductant]2 / [oxidant]”.  Based on this construction, the Board found the claims to be unpatentable as obvious in view of two prior art references (Schleg and Hevehan).  The FC panel explained that it applied the broadest reasonable construction standard as Apotex filed the petition for IPR before November 23, 2018 (Valve Corp., FC 2021) and that there since there was “no dispute here about findings or evidence of facts extrinsic to the patent, we conduct a de novo review of the Board’s determination of the broadest reasonable interpretation of the claim language” (In re Cuozzo, FC 2015; Microsoft, FC 2015).  The FC panel reviewed the Board’s legal conclusions on obviousness de novo and its factual findings for substantial evidence (ACCO, FC 2016).  Amgen argued the Board’s construction was erroneous because it construed the “‘final thiol-pair ratio’ in the context of the ultimate solution—i.e., the refold mixture—rather than specific ingredients therein—e.g., the redox component”.  The FC panel agreed with Amgen that “claim 1’s ‘language makes clear that the redox component is a distinct volume from the refold buffer, and it is that redox component [rather than the refold buffer] that comprises the claimed ‘final thiol-pair ratio’” (e.g., “[a] straightforward reading of the claim language”) which finds additional support in the specification.  The FC panel wrote that the Board’s construction is “inconsistent with the plain language of claim 1 and the specification and is therefore unreasonably broad” (In re Smith, FC 2017 (“the Board cannot construe the claims so broadly that its constructions are unreasonable under general claim construction principles”, “giving claim terms ‘a strained breadth in the face of the otherwise different description in the specification [is] unreasonable’”).  Based on this error, the FC panel found that Apotex failed to show the claims to be unpatentable (“the only conclusion supported by substantial evidence” (Owens Corning, FC 2017)).  The Board decision was therefore reversed.

Posted in Claim Construction, Inter Parties Review (IPR), IPR, Method claims, Obviousness | Leave a comment

DC grant of SJ reversed and remanded due to improper finding of indefiniteness

Niazi Licensing Corporation v. St. Jude Medical S.C., Inc.

Docket No. 2021-1864 (https://cafc.uscourts.gov/opinions-orders/21-1864.OPINION.4-11-2022_1934126.pdf)


April 11, 2022

Brief Summary:   DC findings of indefiniteness reversed, but induced infringement, exclusion of expert witness report and damages findings affirmed.

Summary:  Niazi appealed DC indefiniteness finding of all but one claim of US 6,638,268 relating to cardiac cathers and no induced infringement of that one claim, the DC’s sanction excluding portions of Niazi’s technical and damages expert reports in part for being unreliable.  The DC found the claim terms “resilient” and “pliable” in all of the claims except method claim 11 rendered those claims indefinite.  Claim 11 survived as it does not include “resilient” or “pliable”, and “the catheter” of claim 11 was not indefinite.  The DC also found that claim 11 “is infringed only when the steps are performed in the order listed” and that finding was not disputed here.  The FC panel reviewed the indefiniteness finding de novo under the Nautlius “reasonable certainty” standard (Nautilus, US 2014 (“demands that a patentee apprise the public ‘of what is still open to them’” (citing Markman, US 1996)); Meds. Co., FC 2017 citing Geneva Pharms., FC 2003; Guangdong, FC 2018 (“mathematical precision” not required (citing Sonix, FC 2017 (“written description…provided objective boundaries” for term of degree, “examiner understood this phrase throughout prosecution, as did both parties’ experts during the course of litigation”); Braintree, FC 2014; Interval Licensing, FC 2014; Enzo, FC 2010 (“intrinsic evidence provided guideposts for a skilled artisan to determine the scope”, “evidence included certain dependent claims”); Datamize, FC 2005 (“claims drawn to the ‘look and feel’ of an interface screen invalid as indefinite”); Intell. Ventures, FC 2018 (“term of degree…’purely subjective’”)).  The FC panel found that while “resilient” and “pliable” “are broad, they are not uncertain” given the claim language, dependent claims, written description (“intrinsic record provides objective boundaries” like Sonix and Enzo, unlike Datamize, Int. Licensing, Int. Ventures I) and extrinsic evidence (dictionary definitions), and reversed the DC’s indefiniteness holding.

Reviewing the DC’s grant of SJ of no induced infringement of method claim 11 evidenced by St. Jude’s instructions for use (IFU) de novo (Eighth Circuit), the FC panel explained that the claims must be construed and compared to the alleged infringing method and it must be shown “that the alleged infringer ‘knowingly induced infringement and possessed specific intent to encourage another’s infringement’” (35 USC 271(b); Enplan, FC 2018; Adv. Steel, FC 2015 (SJ “no reasonable juror could find that every step of a properly construed method claim was performed by the accused direct infringer”)).  The FC panel disagreed with the DC’s construction of steps 1 and 5 claim 11 (e.g., “‘inserting’ or ‘withdrawing’ ‘the catheter’ do not include a temporal requirement”), but agreed with the DC regarding steps 2 and 3 that “Niazi failed to present sufficient evidence to carry its burden to prove direct infringement of these steps”.  The DC decision of no induced infringement was therefore affirmed.

As to the expert report and damages, the DC agreed with St. Jude that the report should be excluded because the expert “failed to ‘apportion’ between infringing and noninfringing uses” of claim 11’s method, and its award of costs and attorney fees to St. Jude.  The FC panel found no abuse of discretion in this decision (e.g., expert “did not address or rely on any evidence…that estimated the amount or percentage of sold devices that were actually used to infringe the claimed method”).

Posted in Claim Construction, Claim Differentiation, Damages, Expert Testimony, Indefiniteness, Inducement to Infringe, Infringement, Medical Devices, Method claims, Prosecution History Estoppel, Royalties, Written description | Leave a comment

DC grant of SJ reversed as based on improper claim construction (no clear PHE)

Genuine Enabling Technology LLC v. Nintendo Co. et al.

Docket No. 2021-2167 (https://cafc.uscourts.gov/opinions-orders/20-2167.OPINION.4-1-2022_1930021.pdf)


April 1, 2022

Brief Summary:   DC grant of summary judgment reversed as FC panel found claim construction errors. Summary:  Genuine sued Nintendo for infringement US 6,219,730 directed to combining computer data streams (e.g., a “voice mouse” as a new kind of “user input device” (“UID”)).  The apparatus of representative claim 1 includes an “input means for producing the at least one input signal” which the DC construed to mean “a signal having an audio or higher frequency”.  During prosecution, the inventor argued a prior art disclosure (“Yollin”), e.g., “does not anticipate its use with signals containing audio or higher frequencies” and “only works for slow varying signals” to obtain allowance.  Genuine argued that it is “a signal having an audio or higher frequency” (e.g., “frequencies that humans can hear”) while Nintendo argued for “[a] signal containing audio or higher frequencies” based on its belief that the inventor disclaimed lower frequencies during prosecution (prosecution history estoppel (“PHE”).  Nintendo submitted an expert declaration stating that the skilled artisan would have understood Yollin’s sensors “to teach physiological sensor signals having maximum frequencies of at least 500 Hz, and that, therefore, Mr. Nguyen had disclaimed all such signals when he distinguished Yollin from his inventions during prosecution.”  Nintendo argued that its “accused controllers produce the types of slow-varying signals that Mr. Nguyen disclaimed during prosecution when he distinguished his inventions from the Yollin reference.”  The DC agreed with Nintendo and granted its motion for summary judgment (SJ) of non-infringement, citing Anderson (FC 2007) as standing “for the proposition that ‘an 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’”, and finding Genuine did not adequately rebut Nintendo’s expert testimony.  The FC panel reviewed the DC’s claim construction and prosecution history disclaimer de novo and the underlying factual determinations for clear error (Teva, US 2015; Shire, FC 2015).  The FC panel explained that it “has long ‘emphasized the importance of the intrinsic evidence in claim construction’” with extrinsic evidence being “generally ‘less reliable’” (Phillips, FC 2005; Markman, US 1996 (“risk that it will be used to change the meaning of claims in derogation of the indisputable public records consisting of the claims, the specification and the prosecution history, thereby undermining the public notice function of patents”); Vitronics, FC 1996; Aqua-Aerobic, FC 2000; Omega Eng’g, FC 2013; U.S. Indus. Chems., US 1942; Mantech, FC 1998 (“the intrinsic record ‘must be considered and where clear must be followed’”)).  Regarding PHE, the FC panel explained that a disclaimer must be “clear and unmistakable” (Omega; Tech. Props., FC 2017) and that a disclaimer of “up to 500 Hz” is not “clear and unmistakable” but only dependent on expert testimony.  The FC panel therefore construed “input signal’…to mean ‘a signal having an audio or higher frequency’”, and reversed and remanded the DC’s grant of SJ.

Posted in Claim Construction, Expert Testimony, Prosecution History Estoppel | Leave a comment

IPR obviousness decision reversed, another affirmed along with claim construction decisions

Surgalign Spine Technologies, Inc. et al. v. LifeNet Health

Docket No. 2021-1117-18, -1236 (IPR2019-00569, -00570) (https://cafc.uscourts.gov/opinions-orders/21-1117.OPINION.4-11-2022_1934157.pdf) (Non-Precedential)


April 11, 2022

Brief Summary:   IPR obviousness decision reversed, claim construction affirmed, other no obviousness decision affirmed.

Summary:  Surgalign appealed USPTO (“Board”) IPR decision finding it failed to prove the invalidity of certain of LifeNet’s claims, and LifeNet cross-appealed the determination that others were proven unpatentable.  The patents at issue are US 8,182,532 and US 6,458,158 have “substantially identical specifications” and relating to composite bone grafts for use in spinal fusion.  “Pertinent to Surgalign’s appeal, independent claim 4 of the ’532 patent recites a composite bone graft that includes two cortical bone portions that are ‘plate-like’” (cortical bone is stronger and “less receptive to cellular growth” while “[c]ancellous bone is soft, spongy, and has properties that promote the formation of bone, such as osteoconductivity”) and “‘bone pins… generally made of allogenic cortical bone” (the latter being shared by the independent claims of the ‘158 patent).  LifeNet’s cross-appeal includes ‘532 independent claim 12 that “recites that “one or more osteoconductive substances are disposed between [a] first cortical bone portion and [a] second cortical bone portion.”  The relevant references describe “‘[a]n implant composed substantially of cortical bone’ that is machined to form a ‘substantially ‘D’-shaped’ implant that has ‘a canal running therethrough’ that may be filled with osteogenic, osteoinductive, or osteoconductive material” (Grooms), “an ‘allogenic intervertebral implant for fusing vertebrae’ having ‘top and bottom surfaces [that] can be flat planar surfaces’” (Paul), and “a ‘composite corticospongial block’ made of two or three pieces of autologous iliac crest bone, fastened together with a metal screw” (Wolter). 

The Board construed “‘plate-like’ in the ‘532 patent to mean ‘generally flat’” (as requested by Surgalign) that it found were not disclosed by Grooms and Paul resulting in its conclusion that Surgalign had not shown ‘532 claim 4 and its dependents unpatentable.  The FC panel disagreed with the Board’s construction and obviousness analysis as it “did not consider the flatness of the bone portions as they extend in the horizontal direction” and “the proper construction should consider the ‘overall shape’ of the cortical bone portion”, and therefore reversed the Board on this point.  Judge Newman dissented from this point arguing that “[t]he Board’s findings are supported by substantial evidence”, e.g., “the Grooms and Paul grafts are explicitly not plate-like, and cannot be so viewed.”

The Board also “construed the term ‘disposed between,’ as recited in claim 12 of the ’532 patent, not to require that the first and second cortical bone portions be completely separated throughout the graft” and that Grooms rendered ‘532 claims 12-21 obvious (e.g., ““[i]f ‘disposed between’ required complete separation . . . there would be no need for claims 1 and 2”, citing Columbia, FC 2019 and Stumbo, FC 2007).  In this appeal, LifeNet argued the Board “erred by giving too much weight to the language of the claims of the ’158 patent without properly analyzing the specification”.  The FC panel found no error with the Board’s construction since “unlike in Abbott [FC 2012 (“the patent ‘repeatedly, consistently, and exclusively’ depicted an electrochemical sensor without external cables or wires and disparaged sensors with external cables or wires”] and Groove [FC 2020 (“patent’s Field of the Invention described the ‘present invention’ as ‘delivering and serving local content and advertisements’”], there is both an uncontested ordinary meaning that is not limited as LifeNet urges and evidence in the form of the claims”.

The Board also concluded Wolter and combinations therewith did not render the claims unpatentable, a “conclusion hinged on its determination” of a lack of motivation “to modify Wolter in the proposed manner” (e.g., “would run counter to Wolter’s goal”, “‘technical difficulties’ in making the proposed substitution”).  In this appeal, Surgalign argued “the Board erred because it did not frame its obviousness analysis in terms of what a person of ordinary skill in the art would have been motivated to do at the time of the invention in 1999, and instead focused on Wolter’s 1987 statements” and “erroneously focused its motivation to combine analysis on whether making a Wolter-type graft from allogenic bone would have been the preferred solution”.  The FC panel found that while the Board may have “improperly analyzed [the] motivation to combine”, substantial evidence supported its conclusion of no reasonable expectation of success (Intell. Bio-Sys., FC 2016).

Posted in Claim Construction, Claim Differentiation, Obviousness | Leave a comment

DC decisions of induced infringement of patent asserted by Meso and non-infringement of non-asserted patents as requested by Roche vacated and remanded

Roche Diagnostics Corp., Bioveris Corp. v. Meso Scale Diagnostics, LLC

Docket No. 2021-1609, -1633 (https://cafc.uscourts.gov/opinions-orders/21-1609.OPINION.4-8-2022_1933410.pdf)


April 8, 2022

Brief Summary:   DC findings of induced infringement of patents asserted by Meso and non-infringement of non-asserted patents as requested by Roche vacated and remanded.  Judge Newman’s dissent argued, e.g., “Roche cannot infringe patents it owns”.

Summary:  Roche and Bioveris (Roche) appealed final DC decision that Roche infringed Meso’s exclusive license rights and award of damages.  Meso cross-appealed the DC’s non-infringement decision regarding three other patents that were not asserted against Roche. The patents relate to electrochemiluminscence (ECL) technologies to which Meso obtained rights through a 1995 “Research Program” (RP) and license agreement with IGEN.  Roche obtained a field-restricted license with IGEN when it purchased Boehringer Mannheim GmbH that had that license.  Roche’s license also “permitted sales that resulted in incidental out-of-field use” in exchange for payments to IGEN.  IGEN then transferred the disputed ECL patents to BioVeris which was subsequently acquired by Roche which “began selling the products without field restrictions”.  Meso sued Roche in 2010 alleging Roche breached the 2003 license with IGEN by violating the field restriction but that court found that “Meso was not a party to the 2003 license agreement, such that only BioVeris (as IGEN’s successor-in-interest) could enforce the field restriction.”  In 2017, Roche brought the current suit seeking a declaratory judgment (DJ) that it does not infringe Meso’s rights arising from the Research Program.  The jury that Roche willfully infringed Meso’ exclusive rights and awarded Meso over $137 million in damages and that court determined Roche did not infringe three other non-asserted patents.  While the parties disputed the meaning of “developed” in Meso’s license agreement, the FC panel did not reach a conclusion on that point as it reversed the induced-infringement of the patents that predated the RP finding on other grounds but not the patent that does not predate the RP.  On induced infringement, Roche argued “that the district court in denying JMOL ‘incorrectly applied a negligence standard rather than requiring specific intent for inducement’” and the FC panel agreed and vacated the damages award (Global-Tech, US 2011; Commil, FC 2013; Takeda, FC 2015 (“not acts of inducement where, as here, the products have both in-field (non-infringing) and out-offield (infringing) applications); Standard Oil, FC 1995 not a “‘continuing-impact’ standard”); Omega, FC 2021 (“damages attributable to the infringing features”); Commonwealth, FC 2015 “separate the value of the allegedly infringing features from the value of all other features”)).  The FC panel also vacated the noninfringement finding as to the non-asserted patents as “the best understanding of the compulsory-counterclaim rule is that it bars future claims but does not authorize rendering adverse judgment on such claims in the same action” (FRCP 13; Baker, US 1974).  Judge Newman’s dissent argued that, e.g., “Roche cannot infringe patents it owns” and there is “undisputed evidence of MSD’s acceptance of Roche’s rights” (ConocoPhillips, FC 2007).

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