Board reexamination decision vacated and remanded for reconsideration of its analogous art analysis (“reasonably pertinent”)

Airbus S.A.S. v. Firepass Corporation

Docket Nos. 2019-1803
November 8, 2019

Brief Summary: Board reexamination decision vacated and remanded for reconsideration of its analogous art determination (i.e., “whether the reference…is reasonably pertinent”).

Summary: Airbus appealed Board reversal of rejection of new claims presented by Firepass during inter partes reexamination of US 6,418,752 relating to fire prevention and suppression systems. The prior art reference is an earlier-issued US patent (“Kotliar”) with the same inventor as the ‘752 patent, and “discloses equipment for providing hypoxic air in an enclosed area for the purposes of athletic training or therapy” (simulating “low-oxygen mountain air for training at different elevations”, a “hypoxicator”). FN1 explains that “[t]he ‘752 patent expressly acknowledges that its invention is ‘related in part’ to Kotliar-at least in a subject matter sense” (e.g., Kotliar’s system is “similar to the ‘hypoxic generator’ of the ‘752 patent. During reexamination and “[o]n remand from this court”, the Examiner also considered four other references considered in this appeal (Gustafsson, the 1167 Report, Luria, and Carhart). “Before the examiner, Firepass disputed whether Kotliar disclosed certain claim limitations and a motivation to combine” the references, but “did not dispute Kotliar’s status as analogous art” and the examiner did not consider that issue or the other four references “as background references establishing the knowledge and perspective of a person of ordinary skill in the art at the time of the invention.” Firepass first argued Kotliar was non-analogous art on appeal of the examiner’s rejection to the Board, which was not addressed by the Board but was addressed by Airbus (which did not argue Firepass had waived this argument by not raising it in front of the examiner). “The Board found that Kotliar was not analogous art and reversed the examiner” (“no articulated rational underpinning that sufficiently links the problem of fire suppression confronting the invention” and “Kotliar, ‘which is directed to human therapy, wellness, and physical training’”), and “declined to consider Airbus’s argument that ‘breathable fire suppressive environments [were] well-known in the art’”. The FC panel explained that “[t]wo separate tests define the scope of analogous prior art: ‘(1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved’” (In re Bigio, FC 2004 (“consider each reference’s disclosure in view of ‘the reality of the circumstances’” weighed “from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor”); In re Clay, FC 1992 (“logically would have commended itself to an inventor’s attention in considering his problem”); In re GPAC, FC 1994 (“would reasonably have consulted those references”)). The Board concluded that Kotliar is not within the same field of endeavor at the ‘752 patent due ‘752 claim 1 preamble, title, and Field of the Invention section “unreasonable” (the first analogous art test) and, although the FC panel agreed that with Airbus “the knowledge of” a POSA “as demonstrated by” the prior art “could be relevant”, it also found any error by the Board on this point to be “harmless” (e.g., the Board’s position is not “unreasonable”). However, the FC panel found error in the Board’s refusal to consider the references under the second analogous art test (“reasonably pertinent”), citing Randall Manuf. (FC 2013 (“KSR requires consideration of the ‘background knowledge’”)). The FC panel therefore vacated the Board decision for reconsideration of its analogous art determination.

Posted in Analgous Art, Reexamination, Uncategorized | Leave a comment

Board construction of “wherein” clause affirmed; remanded for review of non-instituted grounds

Alere, Inc. v. Rembrandt Diagnostics, LP

Docket Nos. 2018-1812 (IPR2016-01502)
October 29, 2019

Brief Summary: Board’s claim construction of the “wherein” clause affirmed; decision remanded for consideration of non-instituted grounds.

Summary: Alere appealed Board IPR final written decision (FWD) finding certain challenged claims of Rembrandt’s US 6,548,019 regarding “[a] device for collecting and assaying a sample of biological fluid” not unpatentable for obviousness. Claim 1 of the ‘019 patent includes a “wherein” clause describing the position of the “flow control channel” and how liquid flows through the device. Alere petitioned for IPR challenging claims 1-6 and 9-15 on 13 grounds, and the Board instituted review of claims 1-5, 9 and 11-15 on certain grounds but not others. Rembrandt then disclaimed claims 1, 9, and 11-15, leaving claims 2-5 in the IPR. The Board concluded that Alere had shown claim 2, but not claims 3-5 to be unpatentable. Alere argued this is incorrect since the Board erred in its construction of the “wherein” clause, which the Board found to be “consistent with the plain language of the claim and disclosures in the specification.” The FC panel agreed with the Board’s claim construction under the Phillips (FC 2005) or broadest reasonable interpretation standards (see FN1), and found it to be consistent with the “functional language that informs us of the structural requirements of the claim” (K-2 Corp., FC 1999) as well as the specification (“apparent from the figures and corresponding portions of the written description…No figure shows a device incapable of having fluid added after a flow control channel is placed inside…nothing in the specification is inconsistent”). The FC panel also explained that “[t]he Board’s construction is also consistent with the title and the abstract…which describe the invention as a ‘single-step’ collecting and assaying device” and “the claim language does not create a process limitation” (“As the Board pointed out, the claim recites a device, not a method-an important distinction.” (IPXL Holdings, FC 2005; Hewlett-Packard, FC 1990 (“apparatus claims cover what a device is, not what a device does”)). The FC panel therefore affirmed the Board’s claim construction of the “wherein” clause. Altere and Rembrandt agreed that Alere is entitled to remand under SAS (US 2018) “in order for the Board to consider the non-instituted claims and grounds in the petition”, and the FC panel concluded “that the better course of action in this case is to remand without addressing the merits of the patentability challenges” (BioDelivery, FC 2018 (not addressing the merits); Medtronic, FC 2018 (addressing the merits)).

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

Fed. Cir. finds APJ’s overseeing IPRs to be unconstitutionally appointed, but suggests remedy

Arthrex, Inc. v. Smith & Nephew (USPTO as Intervenor)

Docket Nos. 2018-2140 (IPR2017-00275)
October 31, 2019

Brief Summary: Board IPR FWD vacated and remanded as APJs are “principal officers” that must be appointed by the President (as opposed to the Secretary of Commerce), suggesting that “severing the portion of the Patent Act restricting removal of the APJs is sufficient” to remedy the issue.

Summary: Arthrex appealed Board IPR decision finding the claims of its US 9,179,907 unpatentable as anticipated. The merits of that decision was not reached in this opinion. Instead, the opinion is focused on whether the Administrative Law Judges (ALJs) overseeing the IPR were properly appointed under the Appointments Clause of the U.S. Constitution. It is noted that Arthrex did not raise this issue during the IPR and the USPTO argued the argument was therefore waived. The FC panel, however, determined this case to “one of the ‘rare cases in which we should exercise our discretion to hear petitioners’ challenge to the constitutional authority” (Freytag, US 1991; Cascades Projection, FC 2017 (“like Freytag, this case implicates the important structural interests and separation of powers concerns protected by the Appointments Clause”)). The FC panel determined that the ALJs are “principal officers” that must be appointed “by the President as opposed to the Secretary of Commerce”, concluding that “severing the portion of the Patent Act restricting removal of the APJs is sufficient to render the APJs inferior officers and remedy the constitutional appointment problem.” Since the final written decision (FWD) “on appeal issues while there was an Appointments Clause violation,” the FC panel vacated and remanded the decision. Reasoning supporting this decision includes the fact that IPR “is a ‘hybrid proceeding’ with ‘adjudicatory characteristics’ similar to court proceedings” (Saint Regis, FC 2018; Oil States, US 2018 (“[t]he government itself has recognized” this); “APJs exercise significant discretion when carrying out their function of deciding” IPRs; no “appointed official has the power to review and reverse the” APJs decision, “appointed official has very little oversight” over APJs, and an appointed official does not have the power to remove an APJ (the remedy suggested by this FC panel). Thus, this decision was vacated and remanded (“a new panel of APJs must be designated and a new hearing granted”, although it may proceed “on the existing written record”). This opinion also states that the FC panel “see[s] the impact of this case as limited to those cases where [FWDs] were issued and where litigants present an Appointments Clause challenge on appeal.”

In separate orders (Customedia Technologies, LLC v. Dish Network Corp., et al., Docket No. 2019-1000, CBM2017-0032; Customedia Technologies, LLC v. Dish Network Corp., et al., Docket No. 2019-1001-3, -1027, -1029, CBM2017-00019, IPR2017-00717, IPR2017-00724), FC panels rejected Customedia attempts to have the Board decision in those cases removed based on the Arthrex decision, concluding that Customedia had “forfeited its Appointments Clause challenges” by “not rais[ing] any semblance of” such a “challenge in its opening briefs or…in a motion filed prior to its opening briefs” (SmithKline, FC 2006).

Posted in Appeal, Covered Business Method Reviews, Inter Parties Review (IPR), IPR, Uncategorized | Leave a comment

Board PGR obviousness decision vacated for disregarding evidence of copying as irrelevant

Liqwd, Inc. v. L’Oreal USA, Inc.

Docket Nos. 2018-2152 (PGR2017-00012)
October 30, 2019

Brief Summary: Board PGR obviousness decision vacated for error in disregarding evidence of copying as irrelevant.

Summary: Liqwd appealed Board post-grant review (PGR) decision finding Liqwd’s keratin treatment-related formulation and method claims (“method for bleaching hair”) of US 9,498,419 unpatentable for obviousness. L’Oreal’s PGR request alleged anticipation and obviousness. The Board found no anticipation because although the prior art “disclosed all the limitations of the challenged claims”, those were “not as arranged in the claims as required for anticipation” (not at issue in this appeal). However, the Board concluded the challenged claims to be invalid for obviousness in view of three prior art references (Ogawa, Berkemer, and a Korean patent application (KR ‘564)), and in its analysis “considered arguments and evidence related to objective indicia of non-obviousness-in particular, long-felt need and copying.” Regarding copying, Liqwd argued “that the Board erred by ruling that L’Oreal’s copying of Liqwd’s unpublished ‘885 patent application ‘did not qualify as an objective indicium of nonobviousness’ despite the Board’s factual finding that ‘[L’Oreal] used maleic acid because of [L’Oreal’s] access to [Liqwd’s] non-public information, rather than because of [L’Oreal’s]…independent development.” L’Oreal argued that “Liqwd did not show replication of any specific product embodying the claimed invention, so there is no evidence of copying by L’Oreal” (relying on Iron Grip, FC 2004). The FC panel explained that it has “consistently held that objective indicia ‘may often be the most probative and cogent evidence’ of nonobviousness” (Advanced Display, FC 2000; In re Cyclobenzaprine (FC 2012 (“Objective indicia are essential safeguards that protect against hindsight bias.”); W.L. Gore, FC 1983; Stratoflex, FC 1983), and that “copying by a competitor is a relevant consideration” (Iron Grip; Vandenberg, FC 1984; Institut Pasteur, FC 2013 (e.g., “more than twenty later-published articles demonstrating that other scientists had adopted the patented method”)). In Iron Grip, the FC “stated that ‘copying requires the replication of a specific product” and here explained that “more is needed than merely showing that similarity exists between the patent and the competitor’s accused product” (also citing Wyers, FC 2010; Tokai, FC 2011 (emphasizing the difference between infringement and copying); DuPuy Spine, FC 2009 (“defendant’s initial attempts at one design together with ‘prompt adoption of the claimed feature soon after the patent issued, are relevant indicia of nonobviousness’”); Apple, FC 2016 (must be a nexus to the claimed features)). The FC’s “primary concern in each of [those] cases has been to avoid treating mere infringement as copying simply because the claims of a patent arguably read on a competitor product.” The FC panel found that substantial evidence supported the Board’s factual finding that L’Oreal copied Liqwd’s patented method. However, the FC panel also found the Board erred is disregarding that evidence as irrelevant and therefore vacated and remanded the decision for reconsideration of this evidence (Knoll Pharm., FC 1983).

Posted in Anticipation (35 USC 102), Obviousness, Post-grant review, Uncategorized | Leave a comment

HCV method of treatment claims invalid for lack of enablement and written description

Idenix Pharmaceuticals LLC et al. v. Gilead Sciences Inc.

Docket Nos. 2018-1691
October 30, 2019

Brief Summary: DC grant of JMOL to Gilead finding HCV treatment patent invalid for enabled affirmed; FC panel also finds lack of written description.

Summary: Idenix appealed DC grant of a judgment as a matter of law (JMOL) to Gilead that Idenix’s US 7,608,597 directed to a method for treating hepatitis C virus (HCV) infection using nucleoside compounds (“2’-methyl-up nucleosides”) is invalid for lack of enablement. Gilead appealed the DC’s decision that the ‘597 patent is not invalid for a lack of written description (WD). The FC panel opinion explains that Idenix argued “the key to its invention, and to treatment of HCV, is the use of 2’-methyl-up nucleosides” (“having a methyl substitution (‘CH3’) at the 2’ ‘up’ position of the molecule’s sugar ring”, an argument Gilead argued “is overly broad, as the ‘597 patent provides no guidance in determining which of the billions of potential 2’-methyl-up nucleosides are effective in treating HCV.” Gilead argued that the ‘597 patent “primarily describes” nucleosides having “a hydroxyl group (OH) at the 2’-down position” while its “accused product has fluorine (F), not OH” at that position, which the ‘597 patent does not disclose or enable. “At Idenix’s urging”, the FC panel explained, the DC “construed the preamble, ‘[a] method for the treatment of a [HCV] infection,’ as a narrowing functional limitation” and that combined “with the requirement to administer an ‘effective amount,’…limits the scope of the claims to the use of some set of compounds that are effective for treatment of HCV.” The FC panel wrote that “[c]laim 1, therefore, encompasses any -D nucleoside meeting both” the structural and functional limitations, of which “[i]t is undisputed…there are billions of potential 2’-methyl up nucleosides”, and that “[t]he key enablement question is whether a person of ordinary skill in the art would know, without undue experimentation, which…would be effective” (In re Wands, FC 1988; Wyeth, FC 2013 (millions of possible compounds “while only a ‘significantly smaller’ subset…would have the claimed ‘functional effects’”)). After considering the Wands factors, the FC panel “conclude[d] that they would not” (e.g., “quantity of experimentation…is very high” which “weighs in favor of non-enablement”, “[i]t is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention” (Genentech, FC 1997), that synthesis of many nucleosides was necessary but routine weighs against non-enablement (Wyeth, FC 2013), working examples “exceedingly narrow relative to the claim scope” (Enzo Biochem., FC 2009; Enzo Life Sci., FC 2019) and unpredictable art (In re Fisher, CCPA 1970) favor non-enablement).

On WD, the FC panel explained that the parties focused “in particular on whether the specification demonstrates possession of the 2’-methyl-up 2’-fluoro-down nucleosides that are the basis of Gilead’s accused product”. It agreed with Idenix “that generally a genus can be sufficient” if “a representative number of species” or “structural features common to the members of the genus” are disclosed (Ariad, FC 2010 (“nucleotide-by-nucleotide recitation of the entire genus” not required); Carnegie, FC 2008; Fujikawa, FC 1996; Bos. Sci., FC 2011), but concluded the ‘597 patent was invalid for lack of WD (“fails to provide sufficient blaze marks” (Fujikawa); discloses “not method of distinguishing effective from ineffective compounds reaching beyond the formulas disclosed”). The FC panel therefore reversed the DC’s finding of no invalidity for lack of WD.

Judge Newman’s dissent argued the decision holds “that validity under section 112 is determined based on whether unclaimed subject matter is described and enabled, provides a new path of uncertainty and unreliability of the patent grant” (FN3 noted that the dissent reached this conclusion “only by disregarding” the DC’s “binding claim construction”).

Posted in Claim Construction, Enablement, Uncategorized, Written description | Leave a comment

Board decision finding Google did not show anticipation or obviousness affirmed

Google LLC v. Kininklijke Philips, N.V.

Docket Nos. 2018-2213 (IPR2017-00437)
Moore, Bryson, Chen
October 23, 2019

Brief Summary: Board IPR decision that Google did not show the challenged claims to be anticipated or obvious affirmed.

Summary: Google appealed Board IPR final written decision (FWD) finding that Google failed to show the challenged claims of US 6,772,114 relating to a transmission system including a “high-pass filter” for transmitting audio signals was not anticipated by “Tucker” (WO 98/52187) or obvious “over Tucker in view of well-known art”. The Board construed the “high-pass filter” to be a filter that “transmits frequencies above a given cutoff frequency and substantially attenuates all others”, which Google argued was disclosed by “Tucker’s low-pass filter and reflection steps together”. The Board and the FC panel disagreed with Google, finding instead “that Tucker’s low-pass filter transmits frequencies below a given cutoff frequency” and its “reflection step merely takes the low-frequency band output of its low-pass filter and moves that content to the high-frequency band” without “transmit[ting] the input signal’s high-frequency content” (e.g., “Google’s expert admitted as much.”) The FC panel was also unpersuaded by Google’s arguments that Tucker’s steps are anticipatory “because they achieve the same result as a high-pass filter” because “[t]he similarity of the resulting information…does not covert Tucker’s” disclosure “into a high-pass filter” (e.g., “the inclusion of a low-pass filter does not alter the functionality of the high-pass filter”). The Board’s conclusion of no anticipation was therefore found to be supported by substantial evidence (Synopsys, FC 2016). Google also argued the Board “abused its discretion in failing to consider Google’s” obviousness argument. The FC panel disagreed since “this argument was raised for the first time in Google’s Reply briefing, and thus patent owner Koninklijke did not have a fair and meaningful opportunity to respond”, and found the Board did not abuse its discretion (Synopsys, FC 2016; Int. Biosys., FC 2016; “Google concedes it never raised this theory…in its petition for” IPR.) Thus, the Board’s decision was affirmed.

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

PTAB denies institution of IPR against PureCircle’s steviol process claims

Sweegen, Inv. v. PureCircle USA Inc., et al.
IPR2019-01017 (US 9,243,273B2)
October 24, 2019
Decision not to institute IPR

Brief Summary: Petition for IPR denied as PTAB determined Sweegen did not present a reasonable likelihood of prevailing on obviousness or anticipation grounds.

Summary: Sweegen petitioned for IPR of PureCircle’s US 9,243,273B2 directed to methods for preparing steviol glycosides from other steviol glycosides (i.e., Revaudioside X (“Reb X”) from Revaudioside D (“Reb D”) using a UDP-glycosyltransferase (“UGT”) enzyme (e.g., UGT76G1) where “the conversion…is at least about 50% complete”). The Reb D to Reb X conversion occurs “through the addition of a glucose unit to the disaccharide at the C19 position of Reb D” (illustrated on p. 4 of decision and Fig. 2 of the ‘273 patent). Sweegen alleged obviousness over Ohta (a non-patent publication) in view of WO378 (WO 2011/153378A1) and over WO227 (WO 2014/122227A2). Sweegen argued the Ohta disclosed C19 is “essential for sweetness”, that RebX “possesses [a] superior taste profile”, a reasonable expectation of success in using a UGT enzyme to convert Reb D to Reb X (from WO378), and that “increasing the conversion” (to “at least about 50% complete”) “would have required only routine optimization.” PureCircle argued (with expert testimony) that “at the time of the invention, Reb X was not a compound of interest because Ohta showed that Reb X was only present in small amounts in” the plants studied, Ohta’s observed “slightly latent sweetness’…is a negative characteristic because rapid onset sweetness (as in natural sugars) is preferred”, Sweegen’s “calculated conversion rate of Reb D to Reb X as disclosed in Ohta is incorrect”, “it was an ‘open question’ as to whether the UDP-glycosyltransferases would be efficient at the C-19 position and, thus, ‘there was no reasonable expectation of success’”, and the claimed reaction “is an entirely different reaction from the reactions disclosed in WO378”. The PTAB concluded that Sweegen did not “present[] sufficient information to show that there was a motivation to combine Ohta with WO378” (InTouch Techs., FC 2014) or a reasonable expectation of success (e.g., “We are not persuaded that Dr. Walter’s calculated 32.3% conversion rate…is correct.”) The PTAB was also “not persuaded…that achieving at least about 50% conversion…would have required only routine experimentation and optimization” (e.g., WO378 shows UGT testing with different compounds, “not for converting Reb D to Reb X”). Sweegen also alleged obviousness in view of WO227, arguing that “WO227 is entitled to the effective filing date of its provisional application, and the ‘272 patent is not entitled to the effective filing date of its provisional application.” The PTAB explained that “[a] threshold issue” here was whether Sweegen had “met its initial burden to show that WO227 is prior art”, and the PTAB agreed regarding WO227 (“provisional provides a sufficiently enabling written description”) but not the ‘272 patent (e.g., “provisional describes the invention in ‘sufficient detail’ such that ‘one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought” (Tech. Licensing, FC 2008; Dynamic Drinkware, FC 2015; In re Gosteli, FC 1989). As WO227 was concluded not to be prior art, the PTAB also found no anticipation by WO227.

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