Pattern illustrated in design patent limited to chairs due to prosecution history


Curver Luxemborg, SARL v. Home Expressions, Inc.

Docket No. 2018-2214
CHEN, HUGHES, STOLL
September 12, 2019

Brief Summary: DC finding that Curver’s design patent claim limited the patent to chairs affirmed.

Summary: Curver appealed DC grant of HE’s motion to dismiss under FRCP 12(b)(6) since “its accused baskets could not infringe because the asserted design patent was limited to chairs only” and not “any article, chair or not, with the surface ornamentation applied to it” (the patent being D677,946). The FC panel opinion explains that “Curver originally applied for a patent directed to a pattern for ‘furniture,’ not a chair specifically” (e.g., “[t]he original claim recited a ‘design for a furniture part’” and “each of the figures was described as illustrating a ‘design for a FURNITURE PART’” (“none of the figures illustrate a design being applied to a chair”)), and that “[t]he term ‘chair first appeared through amendment during prosecution” (e.g., “part” was objected to as “too vague” and “Curver adopted the examiner’s suggestion” to amend the title to “Pattern for a Chair”, and similarly amended the claim and figure descriptions). The DC “conducted a two-step analysis” of infringement, first construing the scope of the design patent and then comparing the accused products to the claimed design using the “ordinary observer” test (“if ‘in the eye of an ordinary observer…two designs are substantially the same’ such that ‘th resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other” (Gorham, US 1871; Egyptian Goddess, FC 2008 (en banc, ordinary observer test is “the sole test for determining design patent infringement”, as it is for anticipation (Int’l Seaway, FC 2009)). Curver argued that the DC erred by relying “on claim language reciting a ‘pattern for a chair,’ rather than focusing on the figures which are devoid of any chair illustrations”. FN1 describes Curver’s argument, not considered here as waived, that under Samsung (US 2016), its illustrated “‘three-dimensional panel structure’…provides the requisite ‘article of manufacture’ because it is a ‘component’ of a product”, but the FC panel disagreed since “[i]n Samsung, the components covered by Apple’s design patents were parts of a concrete ‘multicomponent’ smartphone product, not a surface ornamentations disembodied from any identifiable product, as here.” The FC panel wrote that in this “case of first impression” it addressed “for the first time whether claim language specifying an article of manufacture can limit the scope of a design patent, even if that article of manufacture is not actually illustrated in the figures” since “[t]o define the scope of a design patent,” it has “traditionally focused on the figures illustrated in the patent” (e.g., Pac. Coast, FC 2014). And it held that it can “where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures” (e.g., “it is the application of the design to an article of manufacture that Congress wishes to promote” (Gorham), PTO “has made clear that is does not grant patents for designs disembodied from an article of manufacture” (Ex parte Cady, Comm’r Pat. 1916; pre-AIA 37 CFR 1.153; MPEP 1502-04; 35 USC 171). Given that “the pattern for a chair’ amendments were made” by Curver in order “to secure the patent”, the FC panel held “that the scope of the ‘946 patent is limited by those amendments, notwithstanding the applicant’s failure to update the figures to reflect those limiting amendments.”

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“[P]ost-interference examination period” was RCE time “attributable to Mayo” that reduced time of patent term adjustment (PTA)


Mayo Foundation v. Andrei Iancu (USPTO)

Docket No. 2018-2031
NEWMAN, LOURIE, DYK
September 16, 2019

Brief Summary: DC determination that “post-interference examination period” was “was RCE time ‘attributable to Mayo, and not the PTO’” and reduced Mayo’s PTA time.

Summary: Mayo appealed DC decision finding the PTO’s calculation of the patent term adjustment (PTA (section 154)) for US 8,981,063 relating to anti-HIV antibodies. The PTA provided under section 154 “compensates applicants for three broad classes of delay”: the “A Delay” for “when the PTO does not meet certain deadlines in the processing of patent applications”; the “B Delay” “for each day the application is pending beyond three years”; and, the “C Delay” “for each day the application is pending in an interference proceeding, a secrecy order, or a successful appeal” to the USPTO or a federal court. Section 154(b)(2) requires the PTA to be reduced “by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution”, including “RCE time” (Novartis, FC 2014; Supernus, FC 2019). The FC panel explained that “[t]his appeal concerns the calculation of [the] B Delay” (three year pendency) and that “the PTO calculated a PTA of 621 days, with no B Delay” and Mayo argued “it was due 685 days, because “[t]he examiner’s sua sponte reopening of prosecution after termination of the interference was not [RCE time under 35 U.S.C. [section] 154(b)(1)(B)(i)]”, calculating “the RCE time” (i.e., “the time between the filing of the RCE and the declaration of the interference”) as 148 days. The PTO calculated the RCE time as 342 days, “the 148 days identified by Mayo and the 194 days between the termination of the interference and mailing of the Notice of Allowance.” The DC agreed with the PTO, concluding “that the examination time after remand” (following termination of the interference) “was RCE time ‘attributable to Mayo, and not the PTO’”. The FC panel explained that “[p]atent term adjustments are reviewed in accordance with the Administrative Procedure Act (‘APA’)” and that PTO actions must be set aside…if it is, inter alia, ‘arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law’ or ‘in excess of statutory jurisdiction, authority or limitations, or short of statutory right’” (5 USC section 706), and that here “[t]he only question is one of statutory interpretation” which is reviewed de novo (Power Int., FC 2019). Mayo argued “that examination ends once the claims are ‘deemed allowable’” (which occurred in this case before the interference was declared), but the FC panel concluded that this is not indicated by the PTO’s regulations (and “[n]either does Novartis” which held “that the time between the date of mailing of a Notice of Allowance and issuance is not RCE time”). Here, “[u]pon remand” following the interference proceeding, the examiner properly “updated her search” and “issued a rejection for obviousness-type double patenting”. Therefore, “examination clearly did not end under the date the Notice of Allowance was mailed.” The FC panel therefore affirmed the DC decision. Judge Newman’s dissent argued that the “post-interference examination period…plainly is examination delay to PTO procedures.”

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DC grant of SJ of no induced infringement affirmed, exclusion of expert report proper since Phigenix did not “timely disclose its narrowed infringement theory”


Phigenix, Inc. v. Genetech, Inc.

Docket No. 2017-2617, 2018-1042
REYNA, BRYSON, STOLL
September 5, 2019
Non-Precedential

Brief Summary: DC grant of SJ of no induced infringement after exclusion of Phigenix’s expert report affirmed (e.g., “[w]ithout its expert report, Phigenix’s direct infringement case fails”).

Summary: Phigenix appealed the DC grant of summary judgment (SJ) of non-infringement (induced infringement) of US 8,080,534 (relating to the prevention and/or treatment of breast cancer) to Genentech after striking an expert report. Genentech cross-appealed the DC denial of SJ for invalidity. Phigenix alleged induced infringement by Genentech “by encouraging health care professionals to prescribe and administer Kadcyla to breast cancer patients who had previously received the chemotherapy drugs ‘trastuzumab and a taxane, separately or in combination.’” “[A]fter fact discovery had closed and expert reports had been exchanged”, and apparently related to the DC’s determination for a lack of priority of the ‘534 patent, “Phigenix narrowed the relevant population to Kadcyla patients who were pretreated exclusively with trastuzumab and a taxane”, but did not amend the complaint. The DC agreed with Genentech on failure to provide adequate notice, and then struck Phigenix’s expert infringement opinion “based on the resulting lack of direct infringement evidence” and “a lack of evidence of specific intent to induce infringement” under the narrower theory. The FC panel held that under local CA rules, the DC “was within its discretion to exclude the infringement opinion of Phigenix’s expert” since Phigenix did not “timely disclose its narrowed infringement theory” (no “deliberate action to proactively put Genentech on notice” of its narrowed infringement theory, “Genentech relied on…original infringement theory to develop noninfringement and invalidity theories that would need to be substantially revised”). The FC panel agreed “with Phigenix that narrowing the scope of accused infringement will not always result in a failure to adequately disclose” but found that it did in this case. Phigenix unsuccessfully that Genentech was on notice since its narrowed theory “falls wholly within the scope of its original contentions” (e.g., Kemin Foods, FC 2006 (“inapposite because it addresses the scope of asserted claims and does not apply patent local rules” and “the plaintiff…could have done ‘nothing more’ to keep the disputed claim in the case”; “Phigenix plainly could have done more….”)) The FC panel also explained that it “need not consider the prejudice to Genentech in evaluating whether the court abused its discretion” and “the exclusion of evidence is often an appropriate sanction for a party’s failure to comply with the patent local rules” (O2 Micro, FC 2006). Finally, the FC panel concluded that “[w]ithout its expert report, Phigenix’s direct infringement case fails”, and so it affirmed the DC grant of SJ of noninfringement and did not address induced infringement “as there can be no inducement liability without direct infringement” (Limelight, US 2014).

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DC grant of SJ to Genentech of no induced infringement affirmed, exclusion of expert report proper since Phigenix did not “timely disclose its narrowed infringement theory”


Phigenix, Inc. v. Genetech, Inc.

Docket No. 2017-2617, 2018-1042
REYNA, BRYSON, STOLL
September 5, 2019
Non-Precedential

Brief Summary: DC grant of SJ of no induced infringement after exclusion of Phigenix’s expert report affirmed (e.g., “[w]ithout its expert report, Phigenix’s direct infringement case fails”).

Summary: Phigenix appealed the DC grant of summary judgment (SJ) of non-infringement (induced infringement) of US 8,080,534 (relating to the prevention and/or treatment of breast cancer) to Genentech after striking an expert report. Genentech cross-appealed the DC denial of SJ for invalidity. Phigenix alleged induced infringement by Genentech “by encouraging health care professionals to prescribe and administer Kadcyla to breast cancer patients who had previously received the chemotherapy drugs ‘trastuzumab and a taxane, separately or in combination.’” “[A]fter fact discovery had closed and expert reports had been exchanged”, and apparently related to the DC’s determination for a lack of priority of the ‘534 patent, “Phigenix narrowed the relevant population to Kadcyla patients who were pretreated exclusively with trastuzumab and a taxane”, but did not amend the complaint. The DC agreed with Genentech on failure to provide adequate notice, and then struck Phigenix’s expert infringement opinion “based on the resulting lack of direct infringement evidence” and “a lack of evidence of specific intent to induce infringement” under the narrower theory. The FC panel held that under local CA rules, the DC “was within its discretion to exclude the infringement opinion of Phigenix’s expert” since Phigenix did not “timely disclose its narrowed infringement theory” (no “deliberate action to proactively put Genentech on notice” of its narrowed infringement theory, “Genentech relied on…original infringement theory to develop noninfringement and invalidity theories that would need to be substantially revised”). The FC panel agreed “with Phigenix that narrowing the scope of accused infringement will not always result in a failure to adequately disclose” but found that it did in this case. Phigenix unsuccessfully that Genentech was on notice since its narrowed theory “falls wholly within the scope of its original contentions” (e.g., Kemin Foods, FC 2006 (“inapposite because it addresses the scope of asserted claims and does not apply patent local rules” and “the plaintiff…could have done ‘nothing more’ to keep the disputed claim in the case”; “Phigenix plainly could have done more….”)) The FC panel also explained that it “need not consider the prejudice to Genentech in evaluating whether the court abused its discretion” and “the exclusion of evidence is often an appropriate sanction for a party’s failure to comply with the patent local rules” (O2 Micro, FC 2006). Finally, the FC panel concluded that “[w]ithout its expert report, Phigenix’s direct infringement case fails”, and so it affirmed the DC grant of SJ of noninfringement and did not address induced infringement “as there can be no inducement liability without direct infringement” (Limelight, US 2014).

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Board properly decided to deny institution and dismiss IPRs on SAS remand instead of instituting on all grounds


BioDelivery Sciences Int., Inc. v. Aquesitive Therapeutics, Inc., FKA Monsol Rx, LLC

Docket No. 2019-1643-45 (IPR2015-00165, -00168, -00169)
NEWMAN (D), LOURIE, REYNA (Order)
August 26, 2019

Brief Summary: On remand under SAS after instituting IPRs on less than all the alleged grounds, the FC panel approved the Board’s decision to deny IPR on all grounds instead of proceeding all the grounds.

Summary: BioDelivery’s previous appeal of the Board’s IPR final written decisions (FWDs) based on institution of review of the claims of US 8,765,167 on less than all of the grounds (three of 14) alleged in BioDelivery’s three petitions, was granted based on SCOTUS’s 2018 SAS decision “that IPR proceedings must proceed ‘in accordance with’ or ‘in conformance to’ the petition…including ‘each claim challenged’ and ‘the grounds on which the challenge to each claim is based’” (section 312(a)(3); BioDelivery, FC 2018). On remand, after considering whether it could deny institution and whether BioDelivery had shown a reasonable likelihood of succeeding, “the Board modified the institution decisions, denied the petitions, and terminated the proceedings”, emphasizing its “discretion to institute IPR under 35 U.S.C. section 314(a) even upon a showing of a reasonable likelihood of prevailing on at least one challenged claim” (citing SAS and section 316(b) (“efficient administration of the Office”); Medtronic, FC 2016; GNTX, FC 2015). BioDelivery argued this was improper. The FC panel first explained that “[s]ection 314(d) plainly states that the Patent Office’s decision whether to institute IPR is not appealable” and “there is no requirement that once instituted, IPRs must proceed through final written decisions” since, e.g., “administrative agencies possess inherent authority to reconsider their decisions” (Medtronic; Tokyo Kikai, FC 2008). Here, the FC panel explained, “the Board initially erred under SAS by instituting partial review instead of making yes-or-no institution decisions” and then “properly exercise[ed] its discretion not to instituted review at all” (noting the Board could have instituted review on all challenges). Thus, the FC panel dismissed BioDelivery’s appeals. Judge Newman’s dissent argued that on remand, the Board was instructed to “implement the Court’s decision [in] SAS” but instead “declined to execute our Remand Order” and improperly “discarded these three completed IPR cases as if they had never occurred.”

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Board IPR decision vacated and remanded for erroneous claim construction; negative limitation not disclosed by prior art.


WAG Acquisition, LLC v. WebPower, Inc. et al.

Docket No. 2018-1617 (IPR2016-01238)
NEWMAN, CHEN, STOLL
August 26, 2019
Non-precedential

Brief Summary: Board IPR decision finding WAG’s claims invalid for anticipation reversed due to erroneous claim construction (e.g., the definition “comes from the prior art Carmel reference”); obviousness conclusion affirmed since negative limitation not disclosed by prior art.

Summary: WAG appealed Board IPR decision finding claims 10-18 of WAG’s US 8,122,141 directed to “[a] server for distributing streaming media” invalid for being anticipated by a US patent (“Carmel”) or obviousness over Carmel in view of International Standard ISO/IEC 11172. The Board’s decision relied in large part on construction of independent claim 10 term “rate” at which “the server” sends “media data elements to the user” as not being “limited to the rate at which data are sent over an individual link” (“nothing in the express language of the claim, nor in the Specification of the ‘141 patent…compels” such a construction). The Board also found the negative limitation of dependent claim 15 (“said server does not maintain a pointer into a buffer established within said server, for each said user”) anticipated by Carmel. The FC panel reviewed the Board’s claim construction “de novo, reviewing any underlying fact findings for substantial evidence” (Teva, US 2015; Praxair, FC 2018) using the broadest reasonable construction (BRC) standard for this IPR (the Phillips standard applies for IPRs filed after Nov. 13, 2018, FN3), explaining that “a claim term is read…in the context of the entire patent” (Phillips, FC 2005). The FC panel disagreed with the DC’s construction, explaining that the revised “construction stems from the plain language of the claim” and “is further supported by the patent specification” (“consistent with the specification and the operational intent of the invention described in the specification”). The FC panel noted that the Board’s conclusion was based on its understanding of the term “link”, which “WAG’s specification does not even use” and “comes from the prior art Carmel reference”. The FC panel therefore remanded the disagreement between WAG and WebPower regarding whether Carmel disclosed “the claimed ‘rate’”. Regarding claim 15, WAG argued “that Carmel either expressly or inherently discloses the use of a pointer, and thus fails to disclose the negative limitation that the ‘server does not maintain a pointer into a buffer’” and therefore “does not disclose sufficient client-side control to render the use of a pointer unnecessary.” The FC panel was “not convinced by WAG’s arguments”, concluded that “[a] reasonable fact finder could find that Carmel does not require use of a pointer for the reasons stated by the Board” (“[w]hile Carmel does not specify that a pointer is not used, nothing in the record suggests that a pointer must be used”), and therefore found the Board’s decision to be supported by substantial evidence.

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

ITC finding of no indefiniteness or invalidity for anticipation or obviousness affirmed


Guangdong Alison Hi-Tech Co. v. Int. Trade Comm. (ITC), Aspen Aerogels, Inc.

Docket No. 2018-2042
DYK, CHEN, STOLL
August 27, 2019

Brief Summary: ITC finding of no indefiniteness or invalidity for anticipation or obviousness affirmed.

Summary: Guangdong Alison Hi-Tech Co. (“Alison”; a foreign manufacturer) appealed ITC final determination that certain claims of Aerogel’s (a domestic company) US 7,078,359 directed to improved aerogel composition products are not indefinite regarding the term “lofty…batting”, or invalid for anticipation or obviousness. Alison manufactures aerogel insulation products and is currently subject to an ITC limited exclusion order following an unfair competition investigation, the order being based in part on the ITC’s finding that Alison infringes claims 1, 7, and 9 of the ‘359 patent. The FC panel reviewed the ITC’s decision for substantial evidence (“as a reasonable mind might accept…as ‘adequate to support a conclusion’” (Dickinson, US 1999; Jacobs, FC 1994 (“Substantial evidence must also ‘take into account whatever in the record fairly detracts from its weight.’”), and noted that “a challenger at the ITC must prove invalidity by clear and convincing evidence” (section 282; One-E-Way, FC 2017; Checkpoint, FC 1995).

Claim 1 of the ‘359 patent claims “[a] composite article…comprising a lofty fibrous batting sheet” which Alison argued was indefinite. The Administrative Law Judge (“ALJ”) rejected Alison’s argument “and adopted the ‘359 patent’s express definition” of the term, and “emphasized that the ‘bulk’ and ‘resilience’ components…are further explained in the specification”, and the ITC incorporated the ALJ’s conclusions into its final determination “without modification or further comment.” The FC panel reviewed the ITC’s determination de novo under the “reasonable certainty” Nautilus standard, which it explains “mandates clarity, while recognizing that absolute precision is unattainable” (Nautilus, US 2014; Sonix, FC 2017 (“a patentee need not define his invention with mathematical precision”); Biosig, FC 2015 (“[t]he degree of precision necessary…is a function of the nature of the subject matter”); Braintree, FC 2014 (“descriptive words like ‘copius’ are commonly used…to ‘avoid[] a strict numerical boundary”)). The required “objective boundaries” can be found in the intrinsic evidence (“claims, figures, written description, or prosecution history” (Sonix; One-E-Way, FC 2017; Enzo, FC 2010), and “[e]xtrinsic evidence can also help” (BASF, FC 2017). The FC panel agreed with the ITC that the term was not indefinite since, e.g., the specification includes “express definitions” and “details the functional characteristics” and “extrinsic evidence provides further support for the objective boundaries” (e.g., a technical dictionary, expert testimony) (“Alison seeks a level of numerical precision beyond that required when using a term of degree” and “has not provided any evidence…that the different methods of measurement…lead to different results.”)

The ALJ also found no anticipation or obviousness since the ‘359 specification “expressly distinguishes” the prior art (Ramamurthi) and expert testimony, which the ITC affirmed “with only slight modifications not at issue here.” Alison relied “on the doctrine of inherent disclosure to establish” in both arguments, but the ITC and the FC panel disagreed based in part on expert testimony but also because “[t]he ‘359 patent itself expressly discusses and distinguishes Ramamurthi, which was also considered by the patent examiner during prosecution” (Sciele, FC 2012 (“Arguments and references already considered by the Patent Office may carry less weight with the fact finder.”))

Posted in Anticipation (35 USC 102), Indefiniteness, Inherency, International Trade Commission, Obviousness, Prosecution History Estoppel, Uncategorized | Leave a comment