Phil-Insul Corp., DBA IntegraSpec v. Airlite Plastics Co., Formtech, LLC


Docket No. 2015-2037

O’MALLEY, BRYSON, WALLACH
April 14, 2017

Brief Summary: DC decision of collateral estoppel (CE) affirmed. Rule 36 judgment can serve as a basis for CE decisions. The FC panel also declined IS’s “request to reconstrue” the disputed claim limitations here since the “arguments were either made or could have been made” during a previous litigation regarding “substantially the same” products, “and they cannot preclude the application of estoppel in this case.”

Summary: Airlite argued to the DC that IntegraSpec has previously asserted and lost (Reward Wall Sys., FC 2014) on the same infringement claims asserted here (twice reexamined US 5,428,933 directed to expanded polystyrene foam blocks used as molds to cast concrete walls (termed “ICFs”)), and the DC granted its motion for SJ of noninfringement. This opinion regards IntegraSpec’s (IS) appeal of that decision. In the two Reward Wall DC decisions, independent claims 1 and 19 were at issue and two claim terms relevant to this appeal (“adjacent” and “substantially the same dimension”) were construed and “the parties agreed that these limitations should be construed the same way in both claims.” Following these constructions (and one other not relevant here), the Reward Wall defendants were granted SJ that the accused products did not infringe, either literally or under the DOE. In the first decision, the DC found no literal infringement or under DOE because “there was a narrowing amendment that limited the scope of the patent such that an ICF with less than two rows of alternating projections and recesses on a given panel or sidewall cannot infringe.” The second decision also found no infringement literally or under DOE because “to gain issuance of the ‘933 Patent, [IntegraSpec] limited its claims to ICFs with projections and recesses having ‘the same measurable length, breadth, area, and volume.” IS appealed, “challenging only the court’s construction of the terms ‘adjacent’ and ‘dimension’.” The FC “summarily affirmed the [DC’s] judgment pursuant to” FCRP 36, taking “judicial notice of the results of the reexamination proceedings.” IS filed its complaint against Airlite “while the Reward Wall action was pending”, alleging infringement by Airlite’s Fox Block ICFs and the Fox Block 1440 ICFs. It was undisputed that the Fox Block ICF’s “have only one row of alternating projections and recesses on the top and bottom edges of each sidewall.” It was also undisputed that “the Fox Blocks 1440 ICFs include projections that do not have the same measureable length, breadth, area, and volume, and that the differences are greater than 10%.” The FC panel opinion explains that “[c]ollateral estoppel [CE] ‘precludes a plaintiff from relitigating identical issues by merely ‘switching adversaries’ and prevents a plaintiff from ‘asserting a claim that the plaintiff had previously litigated and lost against another defendant’” (Parklane Hosiery, US 1979). The FC decides such issues under the law of the regional circuit (here, the Eigth Circuit) although FC precedent applies…to aspects of the…analysis that are particular to patent law” (Aspex Eyewear, FC 2013; Roche, FC 2008 (“‘same claim’…if the accused products in the two suits are ‘essentially the same’…differences between them are merely colorable or unrelated to the limitations in the claim of the patent”)). IS first argued “that a Rule 36 judgment can never serve as a basis for” CE but the FC panel disagreed (Rates Tech., FC 2012 (“simply confirms that the trial court entered the correct judgment” and “does not endorse or reject any specific part of the court’s reasoning”; Anderson, US 1983). And, here, IS conceded “that the accused products…are substantially the same as those at issue in Reward Wall” and the FC panel found no error in the DC’s conclusions. The FC panel also declined IS’s “request to reconstrue” the disputed claim limitations here since the “arguments were either made or could have been made in Reward Wall, and they cannot preclude the application of estoppel in this case.”

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Rembrandt Wireless Technologies L.P. v. Samsung Electronics Co., Ltd. et al.


Docket No. 2016-1729

TARANTO, CHEN, STOLL
April 17, 2017

Brief Summary: DC claim construction based on prosecution history estoppel affirmed (“patentee’s use of ‘i.e.,’ in the intrinsic record…is often definitional”). DC non-obviousness conclusion affirmed. Royalty calculation affirmed. FC found “disclaimer cannot serve to retroactively dissolve the § 287(a) marking requirement for a patentee to collect pre-notice damages” and remanded the “novel legal issue” of whether § 287 “should attach on a claim-by-claim, rather than on a patent-by-patent, basis”.

Summary: Samsung appealed DC denial of its request for JMOL after it was found to infringe Rembrandt’s wireless device-related patents (US 8,023,580 and 8,457,228, which share the same specification), which were also found not to be invalid for obviousness (pre-AIA), and award of $15.7 million in damages. This opinion also addresses the DC’s claim construction and its denial of Samsung’s motion based on the marking statute. The claims require at least two “different type[s]” of “modulation methods” which the DC construed to mean “different families of modulation techniques, such as FSK family of modulation methods and the QAM family of modulation methods.” The DC relied on Rembrandt’s insertion of the “different types” limitation into the “claims after the examiner had already issued a notice of allowance…to ‘more precisely claim the subject matter’” and defining the term “[f]or example” essentially as it was construed by the DC. Samsung argued that “the plain claim language requires only that the different types of modulation methods be ‘incompatible’ with one another” but the FC panel disagreed since “the clearest statement in the intrinsic record” is the above-described post-allowance statement (“While the specification is the principal source of the meaning of a disputed term, the prosecution history may also be relevant.” Vitronics, FC 1996). Samsung’s argument was based in part on the use of “i.e.” in the statement which it argued was not definining, but the FC panel concluded “[t]he context here strongly supports the conclusion that Rembrandt used ‘i.e.’ to define the ‘different types’ limitation” (“A patentee’s use of ‘i.e.,’ in the intrinsic record…is often definitional”, Edwards Lifesciences, FC 2009 (“[U]se of ‘i.e.,’ signals an intent to define the word to which it refers.”); Abbott Labs., FC 2003 (“explicitly defined’ a term by using ‘i.e.,’”); compared to Pfizer (FC 2005) (“internally inconsistent”) or Dealertrack (FC 2012) (“would read out preferred embodiments”); Braintree, FC 2014 (“clear and unmistakable disavowel”)). The FC panel also disagreed there was a claim differentiation issue (ERBE, FC 2010), “that the specification is at odds with the prosecution history definition”, or that the broader construction adopted during IPR was binding on it (Cuozzo, US 2016).

Regarding obviousness, the FC panel agreed with the DC that “any dispute regarding whether particular modulation techniques are in different familes is a factual one” which is reviewed for substantial evidence (present here). The FC panel also noted that some “ambiguity” in claim construction is allowed (Eon Corp., FC 2016) and concluded that the jury’s determination of no motivation to combine was proper (“the absence of a formal teaching away in one reference does not automatically establish a motivation to combine it with another reference in the same field” (Apple, FC 2016 (teaching away is “doctrinally distinct from whether there is no motivation to combine”)).

Rembrandt alleged, and the jury agreed, that “Samsung devices incorporating the Bluetooth enhanced data rate (‘EDR’) standard infringed its patents” and Samsung challenged the damages award. But the FC panel found the expert witness’s “royalty calculations were properly ‘based on the incremental value that the patented invention adds to the end product” (Ericsson, FC 2014) and its consideration of another agreement in the calculation to be allowable (Summit 6, FC 2015).

Samsung also alleged that the DC improperly refused “to bar Rembrandt’s recovery of pre-notice damages based on Rembrandt’s failure to mark products covered by a claim Rembrandt later disclaimer” (35 USC § 287). Samsung alleged Zhone Technologies, Inc. sold unmarked products embodying claim 40 of the ‘580 patent and, therefore, Samsung argued damages should be limited to after it received notice (i.e., Rembrandt’s complaint). After filing suit, Rembrandt withdrew claim 40 from its infringement allegations and filed a statutory disclaimer to that claim (35 USC § 253(a)). The DC denied Samsung’s motion to bar pre-notice damages, concluding that under FC precedent “a disclaimed patent claim is treated as if it never existed” (Genetics Inst., FC 2011). The FC panel explained that while marking under § 287 is “permissive, not mandatory”, the failure to mark (including by a licensee, as here (Amsted Indus., FC 1994)) means no damages can be recovered “except on proof the infringer was notified…and continued to infringe thereafter, in which even damages may be recovered only for infringement occurring after such notice” (Bonito Boats, US 1989). And “[a]llowing Rembrandt to use disclaimer to avoid the consequence of its failure to mark undermines the marking statute’s public notice function.” Thus, “disclaimer cannot serve to retroactively dissolve the § 287(a) marking requirement for a patentee to collect pre-notice damages.” Rembrandt also argued § 287 “should attach on a claim-by-claim, rather than on a patent-by-patent, basis” and the FC panel remanded this “novel legal issue” to the DC “to address in the first instance”.

Posted in Claim Construction, Damages, Inter Parties Review (IPR), Obviousness, Patent Marking, Royalties | Leave a comment

Core Wireless Licensing S.A.R.L. v. Apple Inc.


Docket No. 2015-2037

O’MALLEY, BRYSON, WALLACH
April 14, 2017

Brief Summary: DC/jury finding of noninfringement by Apple affirmed based on construction of Core Wireless’s means-plus-function claims.

Summary: Core Wireless (CW) appealed jury finding that Apple did not infringe claim 17 of US 6,978,143 (jury found Apple did not infringe any of the claims) relating to a means for sending packet data from a mobile station (e.g., mobile telephone) to a network using a selected channel. The DC denied Core Wireless’s JMOL. Claim 17 includes three “means for” limitations (§ 112, para. 6, not AIA § 112(f) for this patent): a “means for receiving a threshold value”, a “means for storing said threshold value”, and a “means for comparing said thereshold value”. A magistrate judge construed the “‘means for comparing’…to have the function of ‘comparing said threshold value of the channel selection parameters to a current value of the channel selection parameter for basis of said channel selection’” and “the corresponding structure for performing that function to be [a] control unit 803 [in the mobile station] programmed to control the comparison…in accordance with the algorithm shown in Fig. 6, step 650” and described in certain other parts of the specification (Pennwalt, FC 1987). The FC panel explained that “he focused primarily on whether control unit 803 was a general purpose processor within the meaning of WMS Gaming” (FC 1999) (see also Ergo Licensing, FC 2012 (“Requiring disclosure of an algorithm properly defines the scope of the claim and prevents pure functional claiming.”)) At trial, “Apple’s evidence showed that the network, not the mobile station, is responsible” for this function. In denying CW’s request for JMOL, the DC held that “the mobile station ‘must have the capability to perform ‘channel selection,’ even if that capability was not used during the actual alleged performance of the claimed method” and “that there was sufficient evidence from which a reasonable jury could find noninfringement”. CW first argued that the DC “in effect alter[ed] the magistrate judge’s claim construction” but the FC panel disagreed. It found that “[i]n addition to the portions of the specification that describe the algorithm depicted in Figure 6, each description of the structure that performs the recited function depicts the mobile station as making the channel selection decision” (reviewing, e.g., the Abstract, the summary of the invention, and several embodiments). CW argued its use at one point in the specification stating that “[c]hannel selection is advantageously performed in the control unit 803…shows that the patent may prefer embodiments in which the mobile station makes the channel selection, but that the patent is not limited to such embodiments.” The FC panel disagreed, finding “[t]he more natural reading of the passage in question is that the function” is performed in control unit 803 “as opposed to some other component of the mobile station that is controlled by control unit 803” and “supports the inference that the mobile station must be capable of channel selection”. The FC panel also disagreed that dependent claim 18 supported its argument. The FC panel also found the patent, the prosecution history and extrinsic evidence supported the DC finding “that the mobile station must have the capability to make channel selection decisions”. It also found that Apple’s system “it is up to the network to decide what to do with the transmitted information, if anything” and therefore found the jury’s noninfringment finding reasonable.

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Novartis AG, et al. v. Torrent Pharmaceuticals Limited et al.


Docket No. 2016-1352 (IPR2014-00784, IPR2015-00518)

TARANTO, CHEN, STOLL
April 12, 2017

Brief Summary: Board decision of invalidity for obviousness of Novartis’ ‘283 patent relating to fingolimod (marketed as Gileyna® for treating MS) affirmed (Novartis had a chance to be heard on prior art even though separate challenges based on that prior art were dismissed; there is “no requirement that the Board expressly discuss each and every negative and positive piece of evidence”; and, there is no nexus “[w]here the offered secondary consideration actually results from something other than what is both claimed and novel in the claim”).

Summary: This appeal relates to a Final Written Decision (FWD) regarding two consolidated IPRs against Novartis’ US 8,324,283 (relating to compositions of a Markush group of sphingosine-1 phosphate (S1P) receptor agonists and a sugar alcohol for treatment of autoimmune conditions) in which all original claims and Novartis’ substitute claims were found unpatentable as obvious (see September 24, 2015 post on this blog for a review of the original IPR decision). Claim 19 is directed to one S1P receptor agonist (fingolimod, marketed as Gileyna® for treating MS) and a sugar alcohol. The FC panel explained that it reviews the Board’s legal conclusions de novo but any underlying factual determinations for substantial evidence (“as a reasonable mind might accept as adequate” (Consol. Edison, US 1938). In this appeal, Novartis argued the Board violated the “notice and opportunity to be heard” provisions of the APA when it relied on a reference (Sakai) without affording it proper notice and a chance to be heard, and erred in its analysis of the motivation to combine and treatment of alleged secondary considerations.

Regarding Sakai, Novartis argued “the Board ruled Sakai entirely out of the case” by denying “institution of the two proposed grounds based on Sakai” which caused Novartis to submit a “‘vastly different’ record that it would have if it had known Sakai was still a live issue.” The FC panel disagreed because the Board reliance on Sakai in its FWD “was not inconsistent with its review of Sakai in the Institution Decision” (“Sakai merely reinforced its finding that the person of ordinary skill in the art would have expected mannitol to be compatible with fingolimod because Sakai discloses a stable combination of these two ingredients suitable for long-term preservation.”) And “[t]he parties debated Sakai at length throughout the proceeding and in the same context that it was discussed by the Board in the” FWD. FN2 notes that “had Novartis believed the Board eliminated Sakai from the proceeding, it had various procedural mechanism at its disposal to respond” such as moving to exclude Sakai (Genzyme, FC 2016). Novartis also argued the Board “failed to read the prior art as a whole and overlooked critical evidence of mannitol’s known disadvantages as an excipient for solid compositions”, citing Medichem’s (FC 2006) “‘apparently conflicting’ teachings” principle (“consider the degree to which one reference might accurately discredit another”). The FC panel disagreed that the Board failed to consider all of the evidence relating to mannitol (“at least commensurate with Novartis’ presentation of those issues to the Board…there is no requirement that the Board expressly discuss each and every negative and positive piece of evidence lurking in the record to evaluate a cursory argument” (Carolina Tobacco, FC 2005)). It concluded that substantial evidence supports the Board’s finding that, despite mannitol’s potentially negative characteristics, it was nevertheless a valid consideration as an excipient” and therefore the requisite motivation was present. The FC panel also found Novartis’ unexpected success arguments waived except as to claim 19.

The FC panel also rejected Novartis’ commercial success arguments (“Gileyna being the first commercially-available solid oral” MS treatment) since treatment of MS “with a solid oral composition…was indisputably known in the prior art” and there is no nexus “[w]here the offered secondary consideration actually results from something other than what is both claimed and novel in the claim” (In re Kao, FC 2011; Tokai, FC 2011; Asyst, FC 2008 (“proferred evidence lacked a nexus to any feature of the invention’s commercial embodiments that was not already disclosed in a prior art patent”)). Thus, the Board decision was affirmed.

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The Medicines Company v. Mylan, Inc. et al.


Docket No. 2015-1113, -1151, -1181

DYK, WALLACH, HUGHES
April 6, 2017

Brief Summary: DC’s finding of infringement of the ‘727 patent reversed based on FC’s reading its construction of “efficient mixing” into the claims, thereby requiring infringing batches to “be compounded using a process that employs the efficient mixing conditions of Example 5”, and no showing in Mylan’s ANDA that it does so. DC conclusion of noninfringement of the ‘343 patent (including the term “efficient mixing” and particular conditions) affirmed.

Summary: As background, the patents disputed here were previously held invalid under the § 102(b) on-sale bar (Medicines Co., FC 2015) but on rehearing en banc found not invalid (Medicines Co., FC 2016) since its “relationship with BVL did not give rise to an invalidating ‘commercial offer for sale’ under Pfaff” (US 1998). Here, the Medicines Company (MC) appealed DC holding on SJ that Mylan’s ANDA product did not satisfy the specific “efficient mixing” limitations of the claims of US 7,598,343 relating to bivalirudin (Angiomax®). The DC also found Mylan infringed the asserted claims of US 7,582,727 since its claims do not include the “efficient mixing” limitation. As discussed below, the FC panel concluded here that both patents “include a ‘batches’ limitation that requires batch consistency, which, according to the patents in suit, is achieved through efficient mixing” and therefore reversed the DC ‘727 infringement finding (i.e., the ‘727 patent effectively included the “efficient mixing” limitation).

The FC opinion explains that both patents “are directed to minimizing impurities in batches of bivalirudin that have been compounded with a base” which is required in commercial forms since, without a base (e.g., using only “an aqueous solvent such as water or saline”), it forms “an acidic solution not suitable for injection”. In its approval, MC was “required to reject any…batch determined to have an” Asp9-bivalirudin (an impurity) “level higher than 1.5 percent.” While MC could produce acceptable batches using its “old” process, the new process was found to result in batches that “consistently satisfied the FDA’s” requirement (the batches “never exceeded 0.6 percent” as claimed in the ‘727 and ‘343 patents). The FC panel opinion noted that the claim term “pharmaceutical batches” was defined by the patents’ specifications. MC and Mylan disputed the claim terms “pharmaceutical batches” (DC construction: “single batch…made by a compounding process” or “all batches prepared by a same compounding process”, limiting both patents) and “efficiently mixing” (DC construction: “not using inefficient mixing conditions such as described in Example 4”, determined not to be a limitation of the ‘727 patent). The FC panel pointed out that in the DC’s ‘727 infringement finding, it “appeared to assume that any batch with an Asp9 level below 0.6 percent would infringe the claims, even though the court had earlier determined that the prior art disclosed such batches.” It disagreed, explaining that “what the batches limitation requires is the use of a process that achieves batch consistency…between batches produced from the ‘same compounding process’”. MC “agree[d] that batch consistency is…what ‘distin[guishes] [them] from the prior art” but disagreed “that the claims…require use of a particular process that achieves batch consistency.” The FC panel disagreed with MC because that “interpretation…would yield an unworkable claim construction” since “proof of infringement would necessitate forward-looking assessments of whether an accused infringer’s production of future or ‘potential’ batches would be likely to generate Asp9 levels greater than ‘about 0.6%’” (e.g., if the defendant made 50 batches, he “would not know whether any of the batches infringed until all fifty batches had been produced” which would not provide “‘reasonable certainty’ regarding” claim scope (Nautilus, US 2014; Geneva Pharms., FC 2003)).

It also found MC’s interpretation to be inconsistent with the specification and prosecution history (e.g., in distinguishing pre-critical date sales, it stated that the batches were “prepared by the new process of the present invention” and admitted to the DC that the term “refers to the compounding processes described in the patents-in-suit”). And in its accelerated prosecution petitions, MC stated that the process of the invention “involves efficiently mixing the pH-adjusting solution and the dissolved bivalirudin solution, which is not performed in the Applicants’ prior compounding process.” The FC panel also wrote that MC’s “construction…amounts to a mere recitation of the results obtained from ‘efficient mixing’ rather than a definition of what the efficient mixing process is” and conceded this to the DC (MC “construe[d] the term functionally-i.e., by its intended result.”) Noting that “functional limitations…are not per se objectionable”, it explained that MC was attempting “to claim all solutions to the identified ‘impurities’ problem, without describing the entire range of solutions to that problem…efficient mixing must be defined in terms of the particular process or processes identified in the specification” (in this case, based on the patent’s Example 5 (“the only embodiment of ‘efficiently mixing’” (Johns Hopkins, FC 1998)) as the term does not “carr[y] an accepted meaning to one of ordinary skill in the art” (Ariad, FC2010 (en banc); Bayer, FC 2013; Phillips, FC 2005). Based on this construction, the FC panel concluded batches infringing the ‘727 patent, which does not include the term “efficient mixing” in the claims, must nevertheless “be compounded using a process that employs the efficient mixing conditions of Example 5” (Abbott Labs., FC 2009 (en banc)). And it was not shown that Mylan uses “efficient mixing” (“nothing in the ANDA speakes to whether Mylan uses” that process (Ferring, FC 2014 (“[w]hen an ANDA is silent…the correct analysis is…[whether] the ANDA applicant would likely sell an infringing product pursuant to the approved ANDA”)). The FC panel therefore reversed the DC’s finding of infringement of the ‘727 patent (affirmed noninfringement of the ‘343 patent).

Posted in Claim Construction, Generics / ANDA | Leave a comment

Novartis AG et al. v. Noven Pharmaceuticals Inc.


Docket No. 2016-1678, -1679 (IPR2014-00549 and -00550; IPR2015-00265 and -00268)

PROST, WALLACH, STOLL
April 4, 2017

Brief Summary: PTAB decisions that claims related to Novartis’s Exelon® patch for treatment of dementia are unpatentable for obviousness affirmed because, e.g., “a motivation to combine the relevant prior art teachings does not have to be found explicitly in the prior art”.

Summary: Novartis appealed two separate final written decisions (FWDs), each finding various claims of US 6,316,023 and US 6,335,031 (‘023 issued as a CON of ‘031) relating to rivastigmine (sold as the Exelon® patch for treatment of dementia) invalid for obviousness (pre-AIA § 103). The FC panel first explained that it “review[s] the PTAB’s factual findings for substantial evidence and its legal conclusions de novo” (Redline Detection, FC 2015), “substantial evidence” being “evidence as a reasonable mind might accept as adequate” (In re Nuvasive, FC 2016). It also explained that “[i]nstead of raising arguments on the basis of a specific claim, patent, or Final Written Decision, Novartis raises broad legal and factual arguments with application to both of the” FWDs. Novartis’ main allegation is the the PTAB committed a “fundamental legal error” by “unlawfully reach[ing] different conclusions than” the FC and the DE DC (Novartis, FC 2015 (v. Watson) and Novartis, D. Del. 2015 (v. Noven)), relying “substantially on a single sentence from” In re Baxter (FC 2012). However, the FC panel did not accept this argument because “Watson…does not control here because…Noven…has presented additional prior art…and declaratory evidence that was not before the [c]ourt” and some that was not before the DE DC (and “Novartis tacitly concedes that the record here is different.”) The FC panel also concluded, however, that “even if the record were the same, Novartis’s argument would fail as a matter of law” because in an IPR unpatentability must only be shown “by a preponderance of the evidence (see 35 U.S.C. § 316(e)) rather than by clear and convincing evidence” as required in DC litigation. Thus, “the PTAB properly may reach a different conclusion based on the same evidence” (Cuozzo, US 2016). The FC panel also explained that although in Baxter it “stated that the USPTO ‘ideally should not arrive at a different conclusion’ if it faces the same evidence and argument as a” DC, its use of the term “‘ideally’…recognized that Congress has provided a separate review mechanism before the USPTO with its own standards.” The FC panel first confirmed that the PTO correctly determined “what [the references] disclose”, which Novartis did not challenge. Novartis argued “that the record contains no evidence that a PHOSITA ‘would have been motivated to add an antioxidant’ to rivastigmine ‘absent evidence of oxidative degradation.” The FC panel disagreed, writing that “Novartis ignores the PTAB’s findings as to the PHOSITA’s skill in the art” (“knowledge of organic chemistry and been able to analyze…a compound based on its chemical structure” and understand “‘that the presence of particular functional groups in a molecule has consequences,’ such as degradation”). As to the art’s failure to mention rivastigmine, the FC panel explained that “a motivation to combine the relevant prior art teachings does not have to be found explicitly in the prior art” (In re Kahn, FC 2006). And it would not “give greater weight to the testimony of” Novartis’s expert “than did the PTAB” (In re Warsaw, FC 2016). Thus, the PTAB decisions were affirmed.

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

Intellectual Ventures II LLC, et al. v. Commerce Bankschares, et al. and IBM Corp.


Docket No. 2016-1519, -1520, -1528 (IPR2014-00682 and IPR2014-00801)

PROST, WALLACH, CHEN
March 27, 2017

Non-precedential

Brief Summary: Board determination that the claims did not “require the ‘data collection and processing center’ to directly analyze some data that enters the network” and were therefore invalid for obviousness affirmed.

Summary: IV appealed Board determinations that certain claims of US 6,715,084 driected to systems and methods for “broad scope” network-intrusion detection (as compared to detection in a single computer) were unpatentable. Commerce cross-appealed Board determination rejecting their challenge that ‘084 claim 33 was unpatentable but this was dismissed as it was one of the claims found to be unpatentable. In IPR ‘682 the Board concluded the claims would have been obvious in view of two prior art references (Porras and Cheswick). Porras was found to “describe[] a hierarchical system of ‘surveillance monitors’ (or ‘modules’), one at the enterprise level, others at individual gateways.” The Board found that under the broadest reasonable construction (Cuozzo, US 2016) the claims did not “require the ‘data collection and processing center’ to directly analyze some data that enters the network” and were thus disclosed by Porras. The FC panel explained that it reviewed the construction de novo “because there was no factual evidence introduced that is pertinent to the construction” (Teva, US 2015; D’Agostino, FC 2016). It agreed with the Board’s claim construction “in light of the specification and prosecution history”. IV argued the cited part of the specification “describes an unclaimed embodiment” but the FC panel found “no basis for treating [that] passage as unclaimed except for [IV’s] prior conclusion that the orindary meaning of the claim language simply cannot include the described arrangement” which was not accepted by the court. The FC panel also disagreed with IV’s arguments that “detecting an anomaly” limitation cannot include indirect analysis because the specification distinguishes between “detecting” and “classifying” anomalies. The prosecution history was found to “suggest[] that the claimed systems differed from the prior art because they were limited to broad-scope detection, i.e., collecting data from multiple hosts, not because the claimed systems were limited to direct analysis of raw data.” Thus, the Board’s construction was affirmed. And since IV did “not argue that Porras fails to disclose the required claim elements under the Board’s construction”, the FC panel affirmed the obviousness decision of IPR ‘682. This left “no live issue” in IPR ‘081 and it was therefore dismissed (Synopsys, FC 2016). In IPR ‘801, the Board found claims 26, 28 and 30-32 but not claim 33 to be anticipated by “Aucsmith” but this was not addressed in this opinion.

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