Dome Patent L.P. v. Michelle K. Lee (USPTO)

Docket No. 2014-1673

September 3, 2015

Brief Summary: DC decision that PTO correctly found patent related to methods for making contact lenses obvious after ex parte reexamination affirmed based on motivation to combine in the art and no teaching away, under a preponderance of the evidence standard.

Summary: Dome appealed DC decision affirming the USPTO’s conclusion after ex parte reexamination that US 4,306,042 relating to methods for making rigid/gas permeable contact lens materials using plastic polymers were invalid for obviousness in view of three prior art patents. Dome alleged the DC erred by only requiring the PTO to show the claims “obvious by a preponderance of the evidence, rather than by clear and convincing evidence.” The FC opinion explains, however, that clear and convincing standard relates to “a defense to an infringement action” (for which 35 USC § 282 would apply (Microsoft, US 2011)), not whether the PTO decision in a reexamination is correct. Here, the DC properly reviewed the PTO decision to determine whether it was correct under the preponderance of the evidence standard (“for ex parte reexaminations filed before November 29, 1999” (35 USC § 145); in an ex parte reexamination “there is no presumption of validity…[the PTO] reopens prosecution to determine whether the claimed subject matter should have been allowed in the first place…reexamination process [allows the PTO] to take a second look at ‘patents thought ‘doubtful’”; Rambus, FC 2013; In re Etter, FC 1985). Regarding the obviousness determination, the opinion explains that the ultimate conclusion of obviousness is reviewed de novo and the underlying factual findings for clear error. It also noted that KSR instructs the courts to “take an ‘expansive and flexible approach’ to the question of obviousness” and “[e]vidence of a motivation to combine prior art references may flow from ‘the nature of the problem to be solved’” (KSR, US 2007; Tokai, FC 2011). The evidence here (including expert testimony), it explained, “supports the [DC’s] finding that a person of ordinary skill understood that high oxygen permeability in contact-lens material was desirable” and “this…would have motivated a person of ordinary skill to combine the Tris monomer disclosed in Gaylord with the Tris-type cross-linking agent disclosed in Tanaka to increase the oxygen permeability of a contact lens.” The FC acknowledged that “teaching away” may make “discovery of a successful means of combining them more likely to be nonobvious” (KSR) but also noted “there is no rule that a single reference that teaches away will mandate a finding of nonobviousness” (Medichem, FC 2006) and “just because ‘better alternatives’ may exist in the prior art ‘does not mean that an inferior combination is inapt for obviousness purposes” (In re Mouttet, FC 2012). While one reference was found to “disclose[] potential disadvantages”, the FC panel concluded that “[t]he record…supports the [DC’s] finding that other prior art references disclose roadmaps on how to offset the disadvantages associated with using Tris-type monomers”. The FC panel also concluded the DC had properly considered all evidence relating to objective indicia of nonobviousness. The DC decision was therefore affirmed.

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