Sharp and Vizio not shown to infringe Wi-Lan’s flicker effect patents, FC panel affirmed

Wi-Lan Inc. v. Sharp Electronics Corporation, Vizio, Inc.

Docket No. 2020-1041, -1043 (


April 6, 2021

Brief Summary:  DC grant of SJ of non-infringement and claim construction findings affirmed.

Summary:  Wi-Lan appealed DC finding that neither Sharp nor Vizio infringe US 6,359,654 and 6,490,250 directed to “interlacing video” (the “flicker” effect) and stream multiplexers, respectively.  The allegedly infringing products are “smart” televisions.  The DC granted summary judgment (SJ) to Sharp and Vizio “because Wi-LAN had failed to provide admissible evidence of the source code that Wi-LAN needed to prove its infringement theories”, source code provided by third party chip manufacturers and employee declarations were inadmissible, and “Wi-LAN had failed to raise a genuine issue of material fact as to noninfringement”.   In this appeal, Wi-LAN argued” that the source code printout constituted a business record, admissible under the business records exception to the hearsay rule” (Crash Dummy, FC 2010; Fed. Rule Evidence Rule 803(6)).  The FC panel agreed with the DC that Wi-Lan failed to comply with Rule 803(6) because it did not “establish by testimony from a ‘custodian or other another qualified witness’ that the documents satisfied the requirements of the Rule” and “that the declarants would be available to testify at trial”.  Wi-Lan also argued the source code evidence should be admissible under FRE 901(b)(4) (“all the circumstances” “support a finding that the item is what the proponent claims it is’”) and FRE 703 (material underlying expert testimony must be authenticated), but the FC panel found the DC did not abuse its discretion in excluding it.  The FC panel also concluded the DC was not required to provide Wi-Lan with “additional time to obtain an admissible version of the source code”.  Wi-Lan also disputed the DC’s construction of “output multimedia data stream” in the ‘250 claims as being limited to a “combined audio and video stream that are output from the system” but the FC panel agreed with the DC based on the patent’s specification and figures.  The FC panel also agreed with the DC’s construction of “a multimedia processor, coupled to the data rate analyzer…based on the patent’s consistent use of ‘coupled’”.  The DC judgment was therefore affirmed.

Posted in Claim Construction, Expert Testimony, Infringement | Leave a comment

Speculative arguments not enough to provide Apple with standing to appeal IPR decisions

Apple Inc. v. Qualcomm Incorporated

Docket No. 2020-1561, -1642 (IPR2018-01279, -01252) (


April 7, 2021

Brief Summary:  Apple’s appeal of two IPR decisions dismissed for lack of standing in view of license agreement and speculative arguments related thereto.

Summary:  Apple appealed IPR final written decisions (FWDs) holding Apple did show the challenged claims of US 7,844,037 and 8,683,362 obvious.  The litigation related to these patents between Apple and Qualcomm was settled, including a license, but Apple nevertheless appealed the FWDs.  Qualcomm argued waived standing to appeal “by failing to address, or submit evidence supporting, standing in its opening brief” under Phigenix (FC 2017; “an appellant must identify the relevant evidence demonstrating its standing ‘at the first appropriate’ time, whether in response to a motion to dismiss or in the opening brief’”).  The FC panel explained that “[g]iven the global settlement between the parties, Apple should have made” its arguments “in its opening brief” but also that “Phigenix is not…an inflexible rule” (Harris, FC 2005 (“case-by-case discretion”)).  Apple argued that MedImmune (US 2007) “holds that its ongoing payment obligations as a condition for certain rights provides standing, irrespective of the other patents in the license agreement”.  The FC panel disagreed in this case, writing that “Apple has not alleged that the validity of the patents at issue will affect its contractual rights (i.e., its ongoing royalty obligations)” which “is fatal to establish standing under the reasoning of MedImmune” and failed to “identify any contractual dispute involving its ongoing royalty obligations…that relates to, or could be resolved through a validity determination of, the patents at issue” (“Apple’s assertions amount to little more than an expression of its displeasure with a license provision into which it voluntarily entered.”)  The FC panel also found Apple’s arguments regarding “the possibility that Qualcomm may sue Apple for infringing the ‘037 patent or ‘362 patent after the license expires” to be “too speculative to confer standing” (“insufficient to show injury in fact” (JTEKT, FC 2018)).  And the FC panel rejected Apple’s arguments that Qualcomm’s refusal to grant “an irrevocable license or other permanent rights…provide standing” and possible litigation as speculation (“devoid of the specificity necessary to show that Qualcomm is likely to assert these particular patents against any particular products”; Prasco, FC 2008).  Apple’s argument “that its injury is compounded from the likelihood that 35 U.S.C. [section] 315€ would estop it from arguing” for obviousness of these patents “in future disputes” was also rejected as speculative (AVX, FC 2019 (“We have already rejected invocation of the estoppel provision as a sufficient basis for standing.”); Gen. Elec., FC 2019 (“Where, as here, the appellant does not currently practice the patent claims and the injury is speculative, we have held that the estoppel provision does not amount to an injury in fact.”)  Apple’s appeal was therefore dismissed.

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

Rejection of Stanford’s genotyping claims affirmed as patent ineligible under section 101

In re:  Board of Trustees of the Leland Stanford Junior University

Docket No. 2020-1288 (


March 25, 2021

Brief Summary:  PTAB decision of ineligibility under section 101 of second Stanford patent application affirmed (“patent ineligible abstract ideas in the form of mathematical concepts”, “executing a mathematical algorithm on a regular computer”).

Summary:  Stanford appealed PTAB decision affirming the final rejection of the claims as being “drawing to abstract mathematical calculations and statistical modeling, and similar subject that is not patent eligible” (“patent ineligible abstract mathematical algorithms and mental processes”).  The claims are to “computerized method for inferring haplotype phase in a collection of unrelated individuals”.  Under step one of the Alice inquiry (US 2014), “the Board determined that representative claim 1 is directed to patent ineligible abstract ideas in the form of mathematical concepts, i.e., mathematical relationship, formulas, equations, and calculations” and “two abstract mental processes” (“abstract ideas”, “inputting an initial haplotype phase” and “automatically replacing an imputed haplotype”).   Stanford argued that “as in Enfish, the application of the steps in claim 1 results in improved computer functionality” (Enfish, FC 2016) and the claims are directed to “improvements to computer implemented fields are considered technological improvements” (McRO, FC 2016) (“claim 1 is devoid of any specific step that applies the information in a useful way, such that the claimed calculations are ‘integrated’ into a practical application”).  Under Alice’s step two, “[t]he Board determined that the claim 1 steps of receiving, storing, and extracting data were well-known, routine, and conventional”, rejecting “Stanford’s argument that claim 1 does not unduly preempt use of an [‘a hidden Markov model…a statistical tool’], noting that ‘the absence of complete preemption does not demonstrate patent eligibility’” (Ariosa, FC 2015).  The FC panel agreed with PTAB’s Alice step one analysis, explaining that the “Courts have long held that mathematical algorithms for performing calculations, without more, are patent ineligible under § 101” and “the improvement in computational accuracy alleged here does not qualify as an improvement to a technological process; rather, it is merely an enhancement to the abstract mathematical calculation of haplotype phase itself” (Parker, US 1978; Gottschalk, US 1972; In re Schrader, FC 1994; McRO; Athena, FC 2016 (“[A] claim for a new abstract idea is still an abstract idea.”)).  It also agreed with the PTAB’s Alice step two analysis since, e.g., “the recited steps of receiving, extracting, and storing data amount to well known, routine, and conventional steps taken when executing a mathematical algorithm on a regular computer” and do “not transform an abstract idea into patent eligible subject matter” (In re Greenstein, FC 2019; SAP, FC 2018 (holding that an advance in financial mathematical techniques does not constitute an inventive concept)) (claims do not “require or result in a specialized computer or a computer with a specialized memory or processor”, novelty is not “the touchstone of patent eligibility”).  The PTAB decision of ineligibility under section 101 was therefore affirmed.

Posted in Inter Parties Review (IPR), IPR, Patent Eligibility (101), Patentability, Software | Leave a comment

IPR anticipation finding affirmed as negative limitation lacks support; refusal to enter amended claims as anticipated reversed due to improper analysis

Ethicon LLC v. Intuitive Surgical, Inc.

Docket No. 2020-1600 (IPR2018-00936) ( (Non-Precedential)


March 15, 2021

Brief Summary:  IPR finding of anticipation based on claim construction affirmed (e.g., negative limitation not supported); reversed and remanded as to proposed amended claims because Board “did not correctly identify the portions of Shelton I that Intuitive relied on”.

Summary:  Ethicon appealed IPR FWD finding claims 1-14 of US 9,585,658 relating to surgical staplers invalid as anticipated and the denial of its motion to amend to substitute proposed claims 20-21.  The Board construed the terms “rotary drive member”, “rotary member”, and “rotatably drive member” as “a component that rotates to drive another component” which ‘does not exclude a component regarded as a gear or a trigger’”.  Based on this construction, the Board held the claims to be anticipated by Wales (US 6,981,628).  Intuitive had proposed alternative grounds for invalidation of proposed claims 20 and 21 but the Board did not reach those arguments.  Ethicon argued to the Board and appeal that the rotary limitation should exclude “a gear or trigger” but the FC panel disagreed (e.g., “the rather generic terms…do not on their face exclude a trigger” and the specification shows “no intent by the inventors to exclude a trigger”, “the fact that every embodiment in the specification depicts a particular arrangement or structure does not necessarily support reading that arrangement or structure into the claims absent express claim language requiring as much” (Aventis, FC 2012); Innova/Pure Water, FC 2004 (“[P]articular embodiments appearing in the written description will not be used to limit claim language that has broader effect.”); Liebel-Flarsheim, FC 2004).  The FC panel also found this to be “especially true here, where Ethicon’s proposed construction includes a negative limitation”, which “must find support either in “the words of the claim” or through an “express disclaimer or independent lexicography in the written description that would justify adding that negative limitation” (Omega Eng’g, FC 2003; Vehicle IP, FC 2014).  The Board’s construction and anticipation findings were therefore affirmed. 

The Board denied Ethicon’s request to add substitute claims for being invalid under 102(e) over Shelton I as Intuitive argued, which Ethicon argued was erroneous “because it was not invented ‘by another’”.  Ethicon cited Duncan Parking (FC 2019) which held that a joint inventor must “contribute in some significant manner”, “make a contribution…that is not insignificant”, and “do more than merely explain to the real inventors well-known concepts and/or the current state of the art”.  Duncan also held that the Board must “determine what portions of the reference patent were relied on”, evaluate whether those parts “were conceived ‘by another’”, and “device whether that other person’s contribution is significant enough”.  The FC panel found that the Board “did not correctly identify the portions of Shelton I that Intuitive relied on” and reversed its finding that the proposed substitute claims are anticipated, reversing and remanding this part of the decision.

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

DC indefiniteness determination affirmed due to “inconsistent prosecution history statements”

Infinity Computer Products, Inc. v. OKI Data Americas, Inc.

Docket No. 2020-1012 (


February 10, 2021

Brief Summary:  DC indefiniteness determination affirmed due to “inconsistent prosecution history statements”.

Summary:  Infinity appealed DC indefiniteness finding regarding US Pat. Nos. 6,984,811; 7,489,423; 8,040,574; and 8,294,915 directed to methods “of creating a scanning capability from a facsimile machine to a computer…via a passive link between” the two, “passive link” being the term found to be indefinite.  The FC panel explained that “[t]he term ‘passive link’ does not appear in the ‘811 patent specification” (‘811 being representative), and was “first introduced…during prosecution of the ‘811 patent to distinguish an anticipating prior art reference” (Perkins) by amending its claim to recite (among other things) data transfer…occurs ‘without interruption’”, referred to as “intervening circuitry” in arguments.  Those arguments were not accepted by the examiner, but “[e]ventually, Infinity overcame [the prior art] by amending the claim to require a ‘passive link’” and arguments, leading to issuance of the ‘811 patent.  Three ex parte reexaminations followed in which Infinity argued its invention antedated another prior art reference (Kenmochi) in view of the “passive link”, the Board finding the claims to be patentable.  Oki successfully argued to the DC that “passive link” is indefinite “because Infinity took conflicting positions on the endpoint of the ‘passive link’ during prosecution” (e.g., “took one position to overcome Perkins and a different position to antedate Kenmochi” regarding the nature of the “passive link”).  The FC panel reviewed the decision under the “reasonable certainty” Nautilus standard (US 2014), considering “the claims, specification, and prosecution history” (Teva, FC 2015 (“molecular weight” indefinite due to three possible “different measures”; “[a] statement made during prosecution of related patents may be properly considered in construing a term common to those patents”; “The public-notice function of a patent and its prosecution history requires that we hold patentees to what they declare during prosecution.”); InTouch, FC 2014; Krippelz, FC 2012 (“A patentee’s statements during reexamination can be considered during claim construction.”)).  It explained that “[i]ndefiniteness may result from inconsistent prosecution history statements where the claim language and specification on their own leave an uncertainty that, if unresolved, would produce indefiniteness”, and that the claims in this case “do not provide reasonable certainty about a crucial aspect of ‘passive link,’ namely, where it ends” (e.g., “we hold patentees to the actual arguments made, not the arguments that could have been made” (Tech. Props., FC 2017; “the Supreme Court has warned us against “viewing matters post hoc” to “ascribe some meaning to a patent’s claims” (Nautilus, US 2014); “An applicant’s invocation of multiple grounds for distinguishing a prior art reference does not immunize each of them from being used to construe the claim language.” (Andersen, FC 2007)).  The FC panel therefore affirmed the DC’s finding of indefiniteness.

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

Rejection of Stanford’s diagnostic claims affirmed as “mental steps… not integrated into a practical application”, not including a “specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome”

In Re:  Board of Trustees of the Leland Stanford Junior University

Docket No. 2020-1012 (


March 11, 2021

Brief Summary:  Board decision finding Stanford’s diagnostic claims ineligible (“mental steps… not integrated into a practical application”, no “specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome”) affirmed. Summary:  Stanford appealed Board rejection of claims “directed to methods and computing systems for determining haplotype phase” for being patent ineligible under section 101 for “covering patent ineligible abstract mathematical algorithms and mental processes.”  The FC panel opinion explains that “[h]aplotype phasing…acts as an indication of the parent from whom a gene has been inherited.”  The Board applied the two-step Alice framework (Alice, US 2014), determining that “the eight steps in claim 1 are directed to either the ‘mental steps of receiving, storing, or providing information’ or ‘mathematical concepts’” (“receiving and analyzing information, which humans could process in their minds”) that are “not integrated into a practical application” (citing Enfish, FC 2016; McRO, FC 2016; rejected claims do not “improve computer technology”).  Under Alice step two, “[t]he Board found that the steps of receiving data, performing calculations using that data, storing the results, and providing the results upon request using a computer did not go beyond the well known, routine, and conventional” (“although the claims may provide a valuable contribution to science, that contribution does not go beyond patent ineligible mental processes and mathematical operations”).  Rejected claims include the steps of “determining a drug for treatment of at least one member of the family based on information regarding drug-variant-phenotype associations from a pharmacogenomics database” and “providing the determined drug in response to a request using a computer system”.  Dependent claims that “recite certain steps culminating in a final step of ‘providing the drug for treatment’” were also rejected and affirmed by the Board “because they ‘are not directed to a specific method of treatment, do not identify specific patients, do not recite a specific compound, do not prescribe particular doses, and do not identify the resulting outcome’”, distinguishing the claims from those in Vanda (FC 2018) that “were directed to a ‘specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome.’”  The FC panel affirmed the Board decision, concluding the independent claim is “directed to an abstract mathematical calculation” (Synopsys, FC 2016), not “an improved technological process” (Alice step one) and “recites no steps that practically apply the claimed mathematical algorithm” (Alice step two; In re TLI, FC 2016 (generic computer components); Affinity Labs, FC 2016 (explaining that novelty does not necessarily avoid abstractness); “Without further limitations, these claims do nothing more than recite the haplotype phase algorithm and instruct, “apply it,” as the Supreme Court has prohibited.”)  The Board decision was therefore affirmed.

Posted in Claim Construction, Patent Eligibility (101), Patentability, Section 101 (see also Patentability), Software | Leave a comment

DC erred in granting SJ of noninfringement as claim construction “dependent on the way the claimed cassette is put to use in an unclaimed structure and erroneous function-way-result analysis

Edgewell Personal Care Brands, LLC et al. v. Munchkin, Inc.

Docket No. 2020-1203 (


March 9, 2021

Brief Summary:  DC grant of SJ vacated-in-part, reversed-in-part and remanded (claim construction “dependent on the way the claimed cassette is put to use in an unclaimed structure”, erroneous function-way-result analysis).

Summary:  Edgewell appealed DC grant of summary judgment (SJ) of noninfringement to Munchkin regarding U.S. Pat. Nos. 8,899,420 and 6,974,029 “directed only to a cassette” of Edgewells’ Diaper Genie (which as sold includes “(i) a pail for collection of soiled diapers; and (ii) a replaceable cassette that is placed inside the pail and forms a wrapper around the soiled diapers.”)  Edgewater alleged literal and doctrine of equivalents (DOE) infringement but only DOE infringement after the DC’s claim construction.  The DC granted Munchkin SJ of noninfringement after determining “that there was no space between the cassette and the pail after the cassette was installed”.  In this appeal, Edgewood argued the DC erred in its construction of the claim term “clearance”.  The FC panel explained that “[a]n apparatus claim is generally to be construed according to what the apparatus is, not what the apparatus does” (Hewlett-Packard, FC 1990) and “it is usually improper to construe non-functional claim terms in apparatus claims in a way that makes infringement or validity turn on the way an apparatus is later put to use” (Paragon Solns., FC 2009).  As the disputed ‘420 Patent claims are directed to the cassette, the FC panel wrote that “absent an express limitation to the contrary, the term “clearance” should be construed as covering all uses of the claimed cassette” (Catalina Mktg., FC 2002).  The FC panel concluded that the DC erred by precluding in its construction “engagement when the cassette is inserted into the pail” as it is “dependent on the way the claimed cassette is put to use in an unclaimed structure.”  The ‘029 Patent claims include an “annular cover” and “tear-off section” that the DC construed to be “part of a single structure”.  The FC panel agreed with the DC’s construction based on “[t]he plain language of the claims” and the written description.  However, it agreed with Edgewell that the DC erred in granting SJ to Munchkin under the DOE “on the basis that the claimed ‘annular cover’ and ‘tear-off’ would be vitiated and rendered meaningless” (Akzo Nobel, FC 2016 (DOE “fails if it renders a claim limitation inconsequential or ineffective”); Warner-Jenkinson, US 1997 (“vitiation doctrine ensures the application of the doctrine of equivalents does not ‘effectively eliminate [a claim] element in its entirety’”); DC “erred in evaluating this element as a binary choice between a single-component structure and a multi-component structure, rather than evaluating the evidence to determine whether a reasonable juror could find that the accused products perform substantially the same function, in substantially the same way, achieving substantially the same result as the claims” (Bio-Rad, FC 2020)).  The FC panel, therefore, reversed the DC’s grant of SJ regarding the ‘029 Patent.

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

FC panel affirms DC claim construction, enablement, damages, and no willfulness findings

Bayer Healthcare LLC v. Baxalta Inc. et al. and Nektar Therapeutics

Docket No. 2019-2418, 2020-1017 (


March 1, 2021

Brief Summary:  DC claim construction, enablement, damages, and no willfulness findings affirmed.

Summary:  Baxalta/Nektar (“B/N”) appealed DC denial of its motions for judgment as a matter of law (JMOL) or a new trial on infringement, enablement, damages ($155+ million), and its award of pre-verdict supplemental damages, regarding Bayer’s US 9,364,520 directed to recombinant “polypeptide conjugate[s]” of human factor VIII (FVIII) “covalently attached” through its B domain (one of six domains) to “one or more biocompatible polymers” comprising polyalkylene oxide (“‘site-directed’ PEGylation”).  Bayer cross-appealed regarding the DC’s denial of its motion for a new trial on willfulness.   B/N’s infringing product is Adynovate, “a recombinant PEGylated FVIII product” made by “‘amine/lysine’ PEGylation”.  The DC construed “an isolated polypeptide conjugate” to mean “a polypeptide conjugate where conjugation was not random” since “Bayer…clearly and unmistakably disclaimed” randomly conjugated products.  The DC also concluded that Bayer did not disclaim “PEGylation at amine or carboxy sites”.  The FC panel found no error in these constructions based on “[t]he plain claim language” that “requires PEGylation at the B-domain as a region”, “[s]tatements in the specification support this view” and “discloses embodiments of site-directed PEGylation at cysteine amino acids within the B-domain” without stating “that this it the only embodiment or otherwise indicate that the invention is limited to site-directed PEGylation at cysteine amino acids”, and the prosecution history (no “clear and unmistakable surrender of claims directed to non-random amine/lysine PEGylation”).  Regarding the specification, B/N “present[ed] a close question as to disparagement” of “[r]andom modification of FVIII by targeting primary amines” in the Background section, citing Invidior (FC 2019 (“the specification repeatedly disparages conventional top air drying”)) and SciMed (FC 2011 (“the specification unequivocally limited ‘all embodiments’”) but the FC panel disagreed (also pointing to Gaus, FC 2004 (disavowel due to specification statements regarding what is “essential to [the] invention” and criticism of prior art); Bayer’s specification “nowhere disparages non-random” conjugation).  The FC panel also found B/N’s arguments that Bayer’s statement against the prior art that “[a]ny conjugation with these reactive groups is random” to “have some merit” but disagreed based on, e.g., “how a person of ordinary skill in the art would have understood the prosecution history as a whole”.  The FC panel also concluded the DC did not err in denying Baxalta’s motion for JMOL of noninfringement (e.g., “the jury was in the best position to determine whether it found” which of the “experts more persuasive”).  Baxalta also argued that the claims are not enabled “because it does not enable non-random lysine PEGylation” but the FC panel disagreed, finding substantial evidence (e.g., expert testimony) supported the jury’s verdict (e.g., “the specificiation need not include a working example of every possible embodiment”, DC can consider “the knowledge of an ordinary skilled artisan” (Alcon, FC 2014; Amgen, FC 2003; Falko-Gunter, FC 2006; McRO, FC 2020; Spectra-Physics, FC 1987 (“patent need not teach, and preferably omits, what is well known in the art”)).  The FC panel also found no error with the DC’s denial of Baxalta’s motion for JMOL or a new trial on damages (e.g., based on expert testimony on damages and royalties, including pre-verdict supplemental damages).  The FC panel also found no error in the DC’s grant of JMOL of no willful infringement by Baxalta since, e.g., “the record is insufficient to establish that Baxalta’s ‘conduct rose to the level of wanton, malicious, and bad-faith behavior required for willful infringement’” (SRI Int’l, FC 2019; “The evidence adduced at trial merely demonstrates Baxalta’s knowledge of the ‘520 patent and Baxalta’s direct infringement of the asserted claims.  Knowledge of the asserted patent and evidence of infringement is necessary, but not sufficient, for a finding of willfulness.  Rather, willfulness requires deliberate or intentional infringement.”  Eko Brands, FC 2020).  The DC decision was therefore affirmed.

Posted in Claim Construction, Damages, Enablement, Royalties, Willfullness | Leave a comment

DC grant of intervening rights regarding reexamined patent affirmed

John Bean Tech. Corp. v. Morris & Assoc., Inc.

Docket No. 2020-1090, -1148 (


February 19, 2021

Brief Summary:  DC grant of intervening rights to Morris affirmed.

Summary:  John Bean (JB) appealed DC decision as to equitable intervening rights and Morris cross-appeals the decision as to prosecution laches.  The dispute relates to JB’s US 6,397,622 covering an auger-type poultry chiller that issued on June 4, 2002.  On June 7, 2002, Morris wrote to JB “explaining its belief that the ‘622 patent was invalid and citing prior art to support its position” to which JB did not respond.  On December 18, 2013, JB filed a request for ex parte reexamination of the ‘622 patent, amending claims 1 and 2 and adding six additional claims, and the USPTO issued a reexamination certificate on May 9, 2014.  Six weeks later, JB filed a complaint alleging Morris infringed (including willfully) the reexamined ‘622 patent.  The DC originally granted Morris’s motion for summary judgment (SJ) with respect to the affirmative defenses of laches and equitable estoppel, which the FC panel reversed and remanded (John Bean, FC 2018).  On remand, the DC denied Morris’s motion for SJ “with respect to prosecution laches, reasoning that the laches doctrine applies to conduct of a patent applicant before the patent’s issuance, but not to conduct of a patent owner after the patent’s issuance”, but this FC opinion did not address that issue but instead affirmed the DC decision granting-in-part Morris’s motion for SJ for equitable intervening rights.  The FC panel explained that “[w]hen a defendant is accused of infringing a reissued patent, she may raise the affirmative defense of equitable intervening rights” (section 252 protects the “alleged infringer… from liability for infringement of substantively and substantially altered claims in a reissued patent”, and applies to reexamined patents (section 307(b), Marine Polymer (FC 2012) (“After a patent emerges from reexamination…makes available absolute and equitable intervening rights…with respect to ‘amended or new’ claims in the reexamined patent.”))  Intervening rights “give the alleged infringer the continued right to manufacture, sell, or use the accused product after the reexamination certificate is issued ‘when the defendant made, purchased, or used identical products, or made substantial preparations to make, use, or sell identical products, before the reissue date’” (BIC Leisure, FC 1993), and section 252 “an infringer may continue what would otherwise be infringing activity after a reissue or reexamination” (Seattle Box, FC 1985).  The DC granted Morris’s request for intervening rights because of, e.g., its “‘years of research, developments, investments, improvement, promotion, and goodwill associated with the accused product’ and…‘conversion of “nearly [two-thirds] of its business to selling the accused product.’”  The FC panel explained that the analysis of intervening rights is “broader than simply determining whether a party claiming intervening rights has fully recouped its monetary investment”, noting the DC’s finding “John Bean had engaged in bad faith and that Morris’s investment was more than just a financial” and “the broad equity powers a trial court has”, and affirmed this part of the DC decision.

Posted in Intervening Rights, Reexamination | Leave a comment

FC panel reverses IPR finding of no obviousness and vacates decision as to dependent claims that the Board did not discuss separately

Canfield Scientific, Inc. v. Melanoscan, LLC

Docket No. 2019-1927 (IPR2017-02125) (


February 18, 2021

Brief Summary:  Board IPR decision of no obviousness reversed as to independent claims and vacated the decision as to the dependent claims (e.g., ““[t]he Board did not discuss the dependent claims separately”). Summary:  Canfield appealed Board IPR decision finding it had not shown Melanoscan’s US 7,359,748 relating imaging devices “for the identification of maladies that effect human tissue” (e.g., skin) obvious in view of five references.  The FC panel considered the Board’s decision de novo (factual considerations for substantial evidence (Belden, FC 2015)), the “four primary factors” of Graham (US 1966) and “aspects such as the motivation to select and combine specified teachings of the prior art” described in KSR (US 2007).  It explained that the Board found that Canfield ‘failed to set forth any persuasive reason why a person of ordinary skill in the art would have further modified the combination of Voigt and Hurley (which already would have included three sets of imaging devices) to further include the ‘arrangement of arrays’ of Daanen’” and “that Canfield’s “Petition is devoid of any persuasive explanation of how Voigt’s position framework could have been modified to simultaneously employ both Hurley’s arrangement of imaging sensors and Daanen’s arrangement of arrays, or of why a person of ordinary skill in the art would have had reason to simultaneously use both Hurley’s imaging sensors and Daanen’s arrays.”  The FC panel disagreed, finding instead that the subject matter of independent claims 1 and 51 would have been obvious and reversed that decision (e.g., “‘The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.’ KSR.”)  The FC panel also explained that “[t]he Board did not discuss the dependent claims separately, on ruling that independent claims 1 and 51 are patentable” and therefore vacated and remanded the decision as to the dependent claims.

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