In Re: Facebook, Inc.

Docket No. 2017-2524

August 14, 2018


Brief summary: PTAB decision affirming examiner’s rejection of Facebook’s claims for obviousness and anticipation reversed since prior art reference did satisfy the claim “rule requiring the image elements to be contiguous” (“[n]othing about Perrodin’s algorithm required contiguity”, although “the example depicted in Figures 18 and 19 happened to result in contiguity”).

Summary: Facebook appealed PTAB affirmance of a patent examiner’s rejection of its ‘636 application claims to “a method for arranging images contiguously in an array” (“for use, for example, in displaying a series of images on a social-networking profile”) for obviousness and anticipation. An “algorithm of the ‘636 application determines the arrangement of the image elements, and adjusts the placement ‘so as to preserve a contiguous layout’” and responds “to user actions such as resizing or resequencing images, while continuing ‘to ensure an array of contiguous image elements.’” “The examiner and the Board relied in part on” the Perrodin patent application “which disclosed a method for arranging content in a digital journal” (the reference “satisfied the ‘rule requiring the image elements to be contiguous’ limitation”). The FC panel found, however, that “[n]othing about Perrodin’s algorithm required contiguity”, acknowledging “that the example depicted in Figures 18 and 19 happened to result in contiguity.” And this, the FC panel wrote, “cannot represent a general rule that would demand contiguity for all images, as required by the claims here.” The FC panel reversed the PTAB’s decision since “Perrodin’s algorithm did not require contiguity in response to resizing or rearranging in all cases, but rather left open the possibility that cells would be left unfilled”.

Posted in Anticipation (35 USC 102), Obviousness, Software | Leave a comment

JTEKT Corporation v. GKN Automotive Ltd.

Docket No. 2017-1828 (IPR2016-00046)

August 3, 2018

Brief summary: FC panel concluded that JTEKT “failed to establish an actual injury sufficient to control Article III standing” (injury must be ‘concrete and particularized’” and not “conjectural or hypothetical”; JTEKT’s “declarations do not establish that its planned activities create a substantial risk of infringing”).

Summary: JTEKT appealed PTAB IPR decision that claims 2 and 3 of GKN’s US 8,215,440 relating to drivetrain’s for four-wheel drive vehicles are not unpatentable for obviousness. GKN’s prior motion to the FC panel to dismiss alleging JTEKT lacked standing was denied as it “deemed it the better course for the parties to address the standing issue in their briefs.” The FC panel explained that “[u]nder the IPR statutes, any person or entity may petition” for IPR under § 311(a) and “[t]here is no requirement that the petioner have Article III standing” (“[p]arties that initiate [IPRs] need not have a concrete stake in the outcome; indeed, they may lack constitutional standing” (Cuozzo, US 2016; Consumer Watchdog, FC 2014). The FC panel also explained that “an unsuccessful petition may appeal an adverse [IPR] final written decision” under § 141(c) but “that the statute cannot be read to dispense with the Article III injury-in-fact requirement for appeal to” the FC (Phigenix, FC 2017 (that “the [patent at issue] increases competition…was not enough to establish Article III standing”); Consumer Watchdog, FC 2014 (no standing where CW “did not ‘allege[] any involvement in research or commercial activities involving human embryonic stem cells” or “that it [was] an actual or prospective competitor of [the patent owner] or licensee”, not engaged or likely to be engaged “in an[ activity that would give rise to a possible infringement suit”)). The “injury”, the FC panel explained, must be “both ‘concrete and particularized’” (Spokeo, US 2016), and not “conjectural or hypothetical” (Lujan, US 1992; Medimmune, US 2007 (does not need to “bet the farm, or…risk…damages”)). And the burden to show that damage in on “the party seeking judicial review” (here, JTEKT) (DaimlerChrysler, US 2006). “JTEKT’s problem” here, the FC panel explained, “is that [its] declarations do not establish that its planned activities create a substantial risk of infringing” the disputed claims “or likely lead to charges of infringement” (PPG Indust., FC 2017 (non-precedential)) (“while JTEKT and GKN are competitors generally, JTEKT expressly conceded that ‘no product is yet finalized’”). The FC panel also rejected JTEKT’s argument that “the creation of estoppel based on its participation in the IPR constitutes a separate, and independent, injury in fact” since JTEKT “is not engaged in any activity that would give rise to a possible infringement suit” (Phigenix). Thus, the FC panel concluded that JTEKT “failed to establish an actual injury sufficient to control Article III standing”.

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

Akorn, Inc. v. Senju Pharmaceutical Co., Ltd.

IPR2015-01205 (U.S. Pat. No. 6,114,319)
FWD dated November 22, 2016

Fed. Cir. (2017-1511)

Update: Federal Circuit panel affirmed this decision on August 8, 2018 (2017-1511).

Brief Summary: PTAB final decision found all claims of US 6,114,319 relating to Alcon’s ophthalmic emulsion Durezol® unpatentable for obviousness.

Summary: This IPR relates to previously reexamined US 6,114,319 encompassing “difluprednate emulsion[s] in the form of an eye drop, a nasal drop or an ear drop”. The ‘319 patent is the only patent listed on the FDA Orange Book for Alcon’s ophthalmic emulsion Durezol® (0.5% difluprednate; Appln. No. N022212). Pending litigation (C.A. No. 2:15-cv-00285-MCA-JBC (D.N.J.) was stayed on Jan. 8, 2016 pending this IPR decision. The ‘319 patent includes two independent claims, 1 and 18, that require difluprednate, an oil selected from a Markush group (castor oil in claim 18), water, and an emulsifier (polyoxyethylene (20) sorbitan monooleate in claim 18). Akorn challenged ‘319 claims 1-4, 6-10, 12-14 and 18 as obvious over two prior art references. The US ‘848 patent was alleged to show that difluprednate was known as an anti-inflammatory for the eye. A PCT application (“Ding”)) was alleged to show that it was known to formulate steroids in emulsions using, e.g., polysorbate 80, aka polyoxyethylene (20) sorbitan monooleate. The PTAB agreed with each of these characterizations. Senju argued using an emulsion would have been “very challenging and unpredictable” and that the challenge is based on hindsight. The PTAB was “persuaded that those of ordinary skill in the art would have at least considered formulating difluprednate as an emulsion to have been obvious.” Senju also argued that “Ding only targets the lacrimal gland of the eye, which is external to the eyball, not the interior of the eyeball, where the ‘319 patent indicates difluprednate is active.” Despite expert testimony to this point, the PTAB was not persuaded “that those of skill in the art would not have considered Ding because it teaches emulsions that target areas exterior to the eyeball” and that those of skill in the art would have been motivated to combine it with the ‘848 patent because it “indicates difluprednate is useful for ailments such as types of conjunctivitis [pink eye] and blepharitis marginalis” (which, it is noted here, are also conditions on the exterior of the eye). Senju’s arguments regarding reduced particle size were also not accepted. And its arguments regarding the “countless experiments” that may have been required were rejected since “the challenged claims are not drawn to methods of treating an ailment with an emulsion of difluprednate.” Evidence unexpected results was also found to be unpersuasive because, e.g., the evidence presented did not convince the PTAB that “the emulsion formulation of the drug”, and not the known drug itself, “was responsible” or that the “improved delivery” was unexpected. The PTAB was also unpersuaded by arguments of a long-felt need (e.g., “the mere passage of time without the claimed invention is not evidence of nonobviousness”, Iron Grip, FC 2004), industry acclaim (“the record does not indicate sufficiently that the praise was based on the use of difluprednate in an emulsion, as claimed, rather than the use of difluprednate itself”), or copying. The dependent claims were separately addressed and also found to be unpatentable.

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

Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co., Ltd. et al.

Docket No. 2017-1314

August 1, 2018

Brief summary: DC’s dismissal of Advantek’s design patent infringement complaint reversed since, e.g., “a design patent may be for a component of a product” (“damages based on the value of the component, not the product as a whole”).

Summary: Advantek sued Shanghai (its former manufacturer) for infringement of Advantek’s design patent D715,006 directed to a portable animal kennel sold with the mark “Pet Gazebo”. Advantek alleged that Shanghai’s “Pet Companion” product infringed the D’006 patent. Advantek appealed the DC’s dismissal of the complaint under FRCP 12(c), “holding that prosecution history estoppel bars Advantek from enforcing the D’006 patent against Pet Companion.” After the examiner issued a restriction requirement during prosecution, Advantek elected “Group I, including corresponding Embodiment 1 and Figs. 1-4 drawn to a gazebo without a cover”. Shanghai successfully argued to the DC that Advantek “surrender[ed] the proposed kennel with a cover…to secure a patent” by “choosing one of two drawings in response to a restriction requirement.” The FC panel reviewed the DC’s dismissal “without deference” accepting “all material allegations in the complaint as true and” construing those “in the light most favorable to [the non-moving party]” (Info-Hold, FC 2015). The FC panel also explained that “[d]esign patents are for an ‘original and ornamental design for an article of manufacture” (35 USC § 171) and “that only one claim is permitted in a design patent” (37 CFR § 1.151, “the basis for the examiner’s requirement for restriction”). Under Pacific Coast Marine (FC 2014), the FC panel explained that “prosecution history estoppel in a design patent case depends on: ‘(1) whether there was a surrender; (2) whether it was for reasons of patentability; and (3) whether the accused design is within the scope of surrender’”. Advantek argued Shanghai’s design “falls outside any claim scope Advantek purportedely surrendered during prosecution” (“its elected design is the ‘skeletal structure design’”) and that its “election during prosecution broadended its ability to prevent infringement of its skeletal design, whether the skeleton was used alone or in combination with other parts.” The FC panel explained that under Samsung (US 2016; Gorham Mfg., US 1872 (finding infringement of a design patent to handles of spoons and forks)), “a design patent may be for a component of a product”. The FC panel agreed with Advantek’s arguments, noting in FN2 that “if the accused skeletal structure is only a component of an accused multicomponent product, Advantek would only be able to seek damages based on the value of the component, not the product as a whole” (citing Samsung). The DC’s dismissal was therefore reversed.

Posted in Damages, Design Patents, Infringement, Prosecution History Estoppel | Leave a comment

BioDelivery Sciences Int., Inc. v. Aquestive Therapeutics, Inc. et al. (USPTO as Intervenor)

Docket No. 2017-1265-68 (IPR2015-00165, -00168, -00169)

July 31, 2018

Brief summary: BioDelivery’s requests for remand under SAS because the PTAB instituted IPRs on less than all asserted grounds granted and the PTAB’s FWDs were vacated.

Summary: BioDelivery moved to remand the case to the PTAB “to consider non-instituted claims and non-instituted grounds” in view of SCOTUS’s SAS decision (US 2018). The FC panel explains that that the IPRs against US 8,765,167 were instituted IPR on 15 of 22 claims challenged in the ‘165 IPR, and “on less than all asserted grounds of unpatentability but…on all challenged claims” in the ‘168 and ‘169 IPRs. The PTAB “decided each petition separately, and issued separate final written decisions” (FWDs) sustaining “the patentability of all instituted claims of the ‘167 patent on all instituted grounds”. Included in the FWDs was a discussion by the PTAB “concerning the application of collateral estoppel between inter partes reexamination and inter partes review” that the PTAB subsequently “confess[ed]” was erroneous. Oral arguments too place on Feb. 9, 2018, before SCOTUS’s April 24, 2018 SAS decision which explains “that in establishing [IPR], Congress set forth ‘a process in which it’s the petitioner, not the Director, who gets to define the contours of the proceeding” and that “the PTAB review must proceed ‘in accordance with or in conformance with the petition’…including ‘each claim challenged; and ‘the grounds on which the challenge to each claim is based’” (“Nothing suggests the Director enjoys a license to depart from the petition and institute a different inter partes review of his own design.”) The FC Order explained that about when BioDelivery files its requests, “[o]rders in other cases began to issue from this court, applying the Court’s decision in SAS and outlining the contours of SAS-based requests for relief” (Ulthera, FC, May 25, 2018; Polaris, FC 2018 (declining “to find a party waived its right to seek SAS-based relief due to failure to argue against partial institution before the PTAB”); PGS Geophysical, FC 2018; Medtronic, FC 2018; Adidas AG, FC July 2, 2018; Broad Ocean, FC June 14, 2018; Nestle Purina, FC June 11, 2018; Baker Hughes, FC May 30, 2018). The FC panel explained that, as in the FC’s Polaris decision, “SAS represented a significant change in law that occurred during the pendency of BioDelivery’s appeals” and “that waiver does not apply”. The FC Order also explained that BioDelivery’s first request for “SAS-based relief” nine days after the SAS decision, and its subsequent requests “soon after this court began ordering remands”, were not untimely (“not untimely simply because BioDelivery did not predict that this court would authorize requests for remand when the PTAB instituted on less than all grounds as well as on all claims”). Also, the FC panel found that it did not need to “first decide the presently appealed issues” before deciding on the SAS-based remand issue as “precisely the type of piecemeal litigation that is historically disfavored” (W.L. Gore, FC 1992) and that Aquestive would not be prejudiced by remand. Thus, BioDelivery’s requests for remand were granted and the PTAB’s FWDs vacated.

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

GoPro, Inc. v. Contour IP Holding LLC

Docket No. 2017-1894, -1936 (IPR2015-01078, -01080)

July 27, 2018

Brief summary: Board FWDs finding that GoPro did not show Contour’s US 8,890,954 and US 8,896,694 invalid for obviousness because a GoPro catalog distributed a trade show is not a pre-AIA § 102(b) prior art printed publication vacated and remanded because, e.g., “it is more likely than not that” interested persons “at least knew about the trade show and expected to find action sports cameras” there.

Summary: GoPro appealed PTAB (“Board”) decision that it did not show Contour’s US 8,890,954 and US 8,896,694 relating to digital cameras are invalid for obviousness because “a certain GoPro catalog is not a prior art printed publication.” The pre-AIA § 102(b) one-year critical date for the patents is Sept. 13, 2009 based on the shared Sept. 13, 2010 filing date. In its decision to institute the IPRs, the Board determined “that GoPro made a threshold showing that the GoPro catalog is prior art”, based in part on a declaration by a GoPro employee regarding the distribution of the catalog at a trade show. Contour argued the catalog was not prior art since the show “was open to dealers but not the public.” In its final written decision (FWD), the Board concluded that GoPro had not shown “that the GoPro Catalog was disseminated or otherwise made available to the extent persons interested and ordinarily skilled in the subject matter or art and exercising reasonable diligence could have located it.” The FC panel reviewed the Board’s findings of fact for substantial evidence (§ 706(2)(E)) and its decision of whether the catalog was prior art de novo (In re Klopfenstein, FC 2004 (“a question of law”). The FC panel explained that it has “interpreted § 102 broadly, finding that even relatively obscure documents qualify as prior art so long as the relevant public has a means of accessing them” (Jazz, FC 2018; In re Hall, FC 1986 (single cataloged thesis in a university library was ‘sufficient[ly] accessible to those interested’”); Constant, FC 1988 (“no requirement to show that particular members of the public actually received the information”); Medtronic, FC 2018 (“The expertise of the target audience can be a factor” but “is not dispositive”.); Blue Calypso, FC 2016 (“the standard for public accessibility is one of ‘reasonable diligence’”)). The FC panel disagreed with the Board’s conclusion that the catalog was not prior art because “GoPro did not provide evidence that the dealer show was advertised or announced to the public”, explaining that “[t]he case law regarding accessibility is not as narrow as the Board interprets it”. The FC panel found “[t]he fact that the dealer show focused on action sports vehicles is not preclusive of persons ordinarily skilled from attending to see what POV digital cameras were being advertised and displayed.” “Thus,” the FC panel concluded, “it is more likely than not that” interested persons “at least knew about the trade show and expected to find action sports cameras” there. Thus, the Board decisions were vacated and remanded.

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

ZUP, LLC v. Nash Manufacturing, Inc.

Docket No. 2017-1601

July 25, 2018

Brief summary: DC conclusion of obviousness affirmed (e.g., “a strong showing of obviousness may stand ‘even in the face of considerable evidence of secondary considerations’”).

Summary: ZUP appealed DC grant of summary judgment (SJ) to Nash invalidating claims 1 and 9 of ZUP’s US 8,292,681 relating to water recreation devices as obvious or not infringed. ZUP and Nash unsuccessfully negotiated for a partnership before litigation. ZUP alleged Nash’s “Versa board” infringes the ‘681 claims, and its complaint alleged contributory infringement, induced infringement, trade secret misappropriation under the Virginia Uniform Trade Secrets Act, and breach of contract. The DC agreed with Nash that the asserted claims are invalid for obviousness in view of combinations of several US patents. The FC panel reviewed the DC’s obviousness determination de novo (Memorylink, FC 2014) using the Graham factors (US 1966 (four factual inquiries); Intercont’l Great Brands, FC 2017 “whether one of skill in the art would have had a motivation to combine pieces of prior art in the way claimed by the patent is also a factual determination”). The FC considered “whether a person of ordinary skill in the at would have been motivated to combine the prior art references” and “whether the [DC] properly evaluated ZUP’s evidence of secondary considerations.” Under Plantronics (FC 2013), the FC panel explained that “[a] ‘motivation to combine may be found explicitly or implicitly in market forces; design incentives’ the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill’”. The FC found that “[t]he record evidence supports the [DC’s] analysis” (“all the elements of the claimed invention existed in the prior art” and “one of ordinary skill in the art would have been motivated to combine the various elements from the prior art references”). ZUP unsuccessfully argued “that a person of ordinary skill in the art would have been focused on achieving rider stability in a predetermined position” but the FC panel found that “the evidence contradicts this assertion” (e.g., “ZUP even admits that achieving rider stability is an ‘age-old motivation in this field’”, “[s]uch stability was enhanced in the prior art through the same components employed in the ‘681 patent”). Thus, the FC found “no genuine dispute as to the existence of a motivation to combine” (“[a] person of ordinary skill is also a person of ordinary creativity, not an automaton”, FN2 citing KSR (US 2007)). Regarding secondary considerations, the FC panel explained that “[s]econdary considerations ‘help inoculate the obviousness analysis against hindsight’” (Mintz, FC 2012; Graham, US 1966; Rothman, FC 2009 (“a strong showing of obviousness may stand ‘even in the face of considerable evidence of secondary considerations’”)) but also found that, here, “ZUP’s minimal evidence of secondary considerations” (evidence of long-felt need by Nash’s enthusiastic description of ZUP’s board (Geo. M. Martin, FC 2010 (‘[w]here the differences…are as minimal as they are here, it cannot be said that any long-felt needs was unsolved”); “even less compelling evidence of copying”) “does not create a genuine dispute of fact sufficient to withstand” the DC’s grant of SJ (Novo Nordisk, FC 2013 (“the burden of persuasion remains with the challenger” but “a patentee bears the burden of production with respect to evidence of secondary considerations”). Thus, the FC panel affirmed the DC’s obviousness conclusion and did not reach infringement. Judge Newman argued the majority incorrectly only considered three of the four Graham factors, and the secondary considerations factor “only in rebuttal” (contrary to Apple, FC 2016).

Posted in Obviousness | Leave a comment