Netlist, Inc. v. Diablo Technologies, Inc.

Docket No. 2016-1742, -1743, -1744 (IPR2014-00882, -00883, -01011)

July 25, 2017


Brief summary: Board’s anticipation/obviousness conclusions following IPR vacated as based on incorrect claim constructions (remanded).

Summary: Netlist appealed PTAB IPR final written decision finding certain claims of US 7,881,150 and 8,081,536 relating to a memory module in a computer system unpatentable. Netlist argued the PTAB incorrectly construed “selectively electrically coupling,” “selectively isolating/isolate,” and “circuit configured to be mounted on a memory module.” The FC panel explained it reviews PTAB “ultimate claim constructions de novo and its underlying factual determinations involving extrinsic evidence for substantial evidence” (Microsoft, FC 2015), and that “[i]n an IPR for an unexpired patent, the Board must construe terms according to their broadest reasonable construction” (Cuozzo, US 2016). Netlist argued “‘circuit configured to be mounted on a memory module’ means the entire circuit must be on a single memory module” and that “allowing any portion of the circuit to be mounted elsewhere would undermine the ability to easily swap out memory modules in the computer system.” The FC panel disagreed with Netlist because, e.g., “Netlist does not provide any compelling reason why the claim is limited to embodiments with that feature”, and agreed with the PTAB. Netlist also argued the Board incorrectly found “selectively electrically coupling” refers to the overall process of selecting components. It argued the term should be construed to refer to coupling or decoupling specific data lines, and the FC panel agreed based on the use of the term within the claims (Phillips, FC 2005 (“the context in which a term is used in the asserted claim can be highly instructive”)). Netlist also argued the PTAB misconstrued “selectively isolating/isolate”, which was construed differently for the ‘150 and ‘536 patents. Regarding the ‘150 patent, the FC panel found the Board erred in construing “selectively electrically coupling”, upon which “selectively isolating/isolate” “seems to be based”. The FC panel concluded “it is unclear if the Board intended to give this term a different meaning”. It therefore vacated the Board’s anticipation/obviousness conclusions as based on incorrect claim constructions.

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HTC Corporation et al. v. Cellular Communications Equipment, LLC

Docket No. 2016-1858

July 17, 2017


Brief summary: PTAB rejection of IPR challenge affirmed based on claim construction (e.g., “[t]he separate naming of two structures in [a] claim strongly implies that the named entities are not one and the same structure”).

Summary: At the request of several parties including HTC, the PTAB instituted IPR of certain claims of CCE’s US 7,218,923 realting to preventing third-part software from sending fraudulent and other problematic messages on smartphones. Review was instituted on anticipation (UK 2,376,766 (“D’Aviera”)) and obviousness (US 2002/0065869 (“Calder”) and US 7,836,494 (“Richardson”)) grounds. The challenges were rejected and HTC appealed. The FC panel opinion explained that “[w]ith one small exception”, “HTC’s entire argument…rests on its contention that the Board erred, as a matter of claim construction, in ruling that the ‘diverting’ and ‘controlling’ steps must be performed by separate components.” It first agreed with HTC that while “the Board stated that ‘no claim terms require express construction’” the Board nonetheless construed the claims on this point (“it ‘establish[ed] the scope and boundaries of the subject matter that is patented’” (Netword, FC 2001)). And in an IPR the Board “must adopt the broadest reasonable interpretation [BRI] in light of the specification” (37 CFR § 42.100(b); Cuozzo, US 2016)). The Board’s conclusions relied on intrinsic evidence only and were therefore reviewed by the FC panel de novo (Microsoft, FC 2015). The FC panel agreed with the Board’s conclusions regarding “diverting” and “controlling” steps in claim 24 (determined not to have a different scope than claim 1) since “[t]he separate naming of two structures in [a] claim strongly implies that the named entities are not one and the same structure” (Becton Dicksinson, FC 2010, quoting Gaus, FC 2004), which is “reinforce[d] by the specification (acknowledging that “in some patents, ‘a single prior art structure that performs two functions can satisfy two functional Claim elements’” (the FC panel noting here that “ ‘can satisfy’ does not mean ‘always satisfies’” (In re Kellly, CCPA 1962 (“the claims of any given patent must be evaluated in light of the specification to determine whether their scope requires more than one structure”)). The FC panel also found that HTC waived “the issue of differentiating claim 1’s scope from claim 24’s” (Interactive Gift Express, FC 2001) and its argument that “the ‘structure’ may be a single instruction”. Regarding obviousness, the FC panel concluded HTC did “not point to any argument in its petition that certain claim requirements, including the separate-component one, would be obvious in light of prior art even if no prior art disclosed that element.” The PTAB rejection of the IPR challenge was affirmed.

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

Millenium Pharmaceuticals, Inc. v. Sandoz Inc. et al.

Docket No. 2015-2066 (several others)

July 17, 2017

Brief summary: DC decision that claims related to Millenium’s Velcade® are invalid for obviousness vacated and remanded.

Summary: Millenium appealed DC decision that claims 20, 31, 49 and 53 of US 6,713,446 relating to Velcade® (for treatment of multiple myeloma and mantel cell lymphoma) are invalid. Sandoz and several other parties filed ANDAs, and Millenium filed suit in DE. The ‘446 patent relates to the discovery that mannitol and the bortezomib formed an ester during lyophilization (Velcade®) and that it could act as a prodrug. The FC opinion explains that Velcade® followed many failed attempts to produce a stable liquid formulation and, citing Millenium’s brief, “became ‘a cancer treatment that changed the decades-old standard of care for multiple myeloma and has saved thousands of lives” approved by the FDA “in record time, despite its novel structure and mechanism of action.” The DC “held that the claims were obvious because they were the inherent result of an allegedly obvious process” (“an obvious option ‘from which the prior art did not teach away’…the Adams Patent ‘pointed directly to mannitol’”; relying in part on Sandoz’s witness testimony; Par Pharm., FC 2014). The DC also “found that Millenium did not establish unexpected results because it did not compare the claimed invention to a glycerol ester of bortezomib” and rejected its arguments regarding a long-felt need because the ester “did not solve any problem having persisted over a long period of time without resolution by the prior art.” After reviewing the DC’s factual findings for clear error and its determination of obviousness de novo (Allergan, FC 2003; Microsoft, US 2011 and In re Cyclobenzaprine, FC 2012 (“plenary review” regarding whether “the evidence satisfies the clear-and-convincing standard”)), the FC panel disagreed with the DC’s conclusion. It concluded, even though “mannitol was a known bulking agent, and lyophilization was a known method of drug formulation”, the ester is a “new compound with distinct chemical properties” that was not taught or suggested by the prior art and “Sandoz identifies no reference or combination of references that shows or suggests a reason to make the claimed compound” (Otsuka, FC 2012; Bristol-Myers, FC 2014; In re Rosuvastatin, FC 2012; Par Pharm., FC 2014; Pfizer, FC 2007). Further, the FC panel explained “[n]o reference teaches or suggests that such a new compound would have the long-sought properties of stability and solubility, and sufficiently dissociate to release bortezomib at an effective rate in the bloodstream, all critical to effective use for treating multiple myeloma.” It concluded the Adams Patent neither mentioned mannitol nor tought or suggested “the esters provide a solution to the problems of instability and insolubility of bortezomib” (“[N]either the requisite motivation nor expectation of success is found in the prior art…Sandoz provides no reason why a person of ordinary skill who is seeking to make esters of bortezomib would look to lyophilization bulking agents.”) The FC panel also found the DC erred in teaching away analysis since, e.g., “Millenium offered persuasive evidence that the chemical modification of bortezomib would have been unattractive” (In re Urbanski, FC 2016 (skilled artisan “would be discouraged…or led in a [divergent] direction”)). It found the DC’s consideration of inherency (Par Pharm.; In re Oelrich, CCPA 1939) to be flawed as well since, e.g., “[t]he mere fact that a certain thing may result from a given set of circumstances in not sufficient’ to render the result inherent” (In re Oelrich, CCPA 1939; Par Pharm.), “invention is not a matter of what the inventor intended when the experiment was performed”, and “[t]he inventor’s own part itself never leads to a conclusion of obviousness; that is hindsight” (Otsuka; In re Kratz, CCPA 1979; Life Techs., FC 2000)). The FC panel also found error in the DC’s consideration of the Millenium’s evidence of unexpected results (“unexpectedly superior stability, solubility, and dissolution”) and a long-felt need (DC “conclusion…was both perfunctory and clearly erroneous” since, e.g., “bortezomib alone…is not a viable commercial product” and “[t]he D-mannitol ester was responsible for Velcade®’s successful results”) (Leo Pharm., FC 2013 (“objective indicia enable ‘the court to avert the trap of hindsight’…Unexpected results are useful to show the improved properties by the claimed compositions are much greater than would have been predicted.”)). The DC decision was therefore vacated and remaned, as was litigation with Apotex and Teva.

Posted in Generics / ANDA, Obviousness, Obviousness-Teaching Away | Leave a comment

ContentGuard Holdings, Inc. v. Apple Inc.

Docket No. 2016-1916, -2007

July 12, 2017


Brief summary: DC construction of “usage rights” and denial of CG’s Motion for a New Trial regrading to multiple patents relating to digital rights management for computers and other devices affirmed.

Summary: ContentGuard (CG) appealed DC construction of “usage rights” and its denial of its Motion for a New Trial regarding CG’s multiple patents relating to digital rights management for computers and other devices. The jury determined Apple did not infringe the Asserted Claims but that Apple had not shown the claims are invalid as patent ineligible. Apple argued the FC lacked jurisdiction “‘[b]ecause claims and counterclaims remained unresolved’ when ContentGuard filed its notice of appeal” (“patents and claims that neither [party] pursued at trial”), “such that ‘there was no final and appealable judgment at that point.’” The FC disagreed, however, finding the DC “evince[ed] a clear intent to resolve or dispose of all claims and end the case” and therefore rendered a “final judgment” (Pandrol, FC 2003; 28 USC § 1295(a)(1)[2012]). Under Fifth Circuit rules which this decision was reviewed, the denial of a motion for a new trial is reviewed for abuse of discretion which is found when there is a “complete absence of evidence to support the verdict”. On claim construction, CG argued the DC’s findings were “inconsistent with the claims, the specification, the prosecution history, and the commercial embodiment [CG] built.” The FC panel began its review with the claims, explaining that neither party contended “that a ‘usage right’ has a plain and ordinary meaning to” one of ordinary skill in the art, finding the claim language not to be dispositive as to its meaning. It therefore “turn[ed] to the specification” ((Marine Polymer, FC 2012 (“the signle best guide to the meaning of a disputed term”)), finding it “removes all doubt that the usage right must be ‘attached to’ the digital content” and accordingly finding no error to the DC on this point. CG also argued the DC erred in its “evidentiary ruling that prevented [CG’s] expert from arguing that the ‘mere association between the content and the usage rights is enough to meet the requirement that the usage rights be ‘attached’ to the content”. The FC panel reviewed this decision for abuse of discretion (Ericsson, FC 2014) and found none (“the [DC’s] decision ‘avoided possible jury confusion’ stemming from the parties’ introduction of terms outside the [DC’s] claim construction” (TiVo, FC 2008)). The FC panel also found CG’s arguments that the DC committed other evidentiary rulings “that ‘had a substantial effect on the outcome of the trial’ sufficient to constitute an abuse of discretion” unconvincing since it did not “identify the [DC] rulings purportedly requiring reversal or to apply the appropriate legal framework in its analysis”.

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Genband US LLC v. Metaswitch Networks Corp., et al.

Docket No. 2017-1148

July 10, 2017

Brief summary: DC denial of preliminary injunction vacated and remanded as it was not clear it applied the appropriate standards regarding the “‘causal nexus’ between the infringing features of the infringer’s products and the sales lost to the patentee” (“‘some connection’ between the patented features and the demand for the infringing products”).

Summary: Genband appealed DC denial of its request for a permanent injunction (PI) because “Genband had not established irreparable harm from the infringing activities” following the jury finding that Metaswitch infringed the claims and that those claims are not invalid (awarding over $8 million in damages). The patents at issue relate to voice-communications services over Internet Protocol networks (“voice over IP” or “VoIP”). The DC denied Genband’s request for PI because: 1) “Genband did not demonstrate a causal nexus between the alleged irreparable harm (based on lost sales) and the presence of the infringing features in Metaswitch’s infringing products”; and, 2) “although Genband did not unreasonably delay in suing Metaswitch for infringement, it did delay in suing for several years”, weighing against irreparable harm. The FC panel opinion explained that a DC grant or denial of an injunction is reviewed for abuse of discretion (Ecolab, FC 2009 (“clear error in judgment in weighing relevant factors”); Cooter, US 1990 / Highmark, US 2014 (“erroneous view of the law or…clearly erroneous assessment of the evidence”)). It also explained that “[i]n this case, the sole basis for denial of the requested injunction” was that “Genband did not show irreparable injury…, one precondition to issuing the requested injunction” (eBay, US 2006). The DC held that Genband did not show “‘some causal nexus’ between the infringing features of the infringer’s products and the sales lost to the patentee” (Apple I, FC 2012; Apple II, FC 2012; Apple III, FC 2015; Apple IV, FC 2015). The FC panel found the that the DC’s “opinion, however, leaves us uncertain whether the court relied on too stringent an interpretation of the causal-nexus requirement” by requiring Genband “to prove that ‘the patented features drive demand for the product”. It explained that “Genband specifically invoked the standards laid out in Apple III (“proving a causal nexus requires the patentee to show ‘some connection’ between the patented features and the demand for the infringing products”) and Apple IV (“causal-nexus requirement ‘just means that the must be proof that infringement causes the harm’ that the patentee alleges is irreparable”) but it saw “no sufficient basis for inferring the [DC] actually used those standards”. The FC panel therefore vacated and remanded the DC’s decision for reconsideration on this point (it also found the issue of Genband’s litigation delay “call[s] for an evidentiary judgment”).

Posted in Damages, Infringement | Leave a comment

Outdry Technologies Corp. v. Geox S.P.A.

Docket No. 2016-1769 (IPR2914-01244)

June 16, 2017

Brief Summary: Board obviousness decision based on reasoning adopted from Geox’s arguments affirmed. The FC panel also explained that “[t]he Board was not required to limit its motivation to combine inquiry to the problem faced by the inventor of the ‘171 patent”.

Summary: Outdry appealed PTAB IPR decision that claims 1-15 of US 6,855,171 claiming a method for waterproofing leather would have been obvious over US 5,244,716 (“Thornton”) and two other prior art references (“Scott” and “Hayton”). The Board found Thornton, “directed to ‘waterproof but breathable articles of clothing” disclosed “all elements of claims 1 an 9” (the only ‘171 independent claims) “except the density of the dots (claims 1)” (“wherein the glue pattern is formed of a multiplicity of dots having a density included between 50 dots/cm2 and 200 dots/cm2”) “and the sizes of the dots (claim 9)” (“a multiplicity of dots having a diameter included between 0.1 mm and 0.8 mm”). The ‘171 patent is described as overcoming prior art methods in which “‘water penetrates the leather and becomes trapped between the membrane and interior surface of the leather’…by ‘directly pressing’ a semi-permeable onto the leather via [the] dotted glue pattern”. The Board defined “directly pressing” as meaning “applying pressure without any intervening materials or layers other than the recited adhesive” under the broadest reasonable interpretation (BRI; In re Cuozzo, FC 2015) and concluded Thornton describes that concept. It relied on Scott and Hayton for disclosure of “the density and sizes of the dots”. In this appeal, Outdry argued “directly pressing” should be construed as meaning “applying pressure to create a ‘uniform, sealed sheet of waterproof leather so that a water cushion cannot develop’” and that this is not disclosed by Thornton. The FC panel agreed with the Board, however, because the specification “uses the term ‘directly’ only once” consistent with the Board’s definition (also agreeing Outdry’s proposed construction lacks support in the specification). Outdry also argued that the preamble phrase “‘process for waterproofing leather’” is a “limitation is not disclosed in Thornton” but the FC panel found that to be “simply a statement of use, not a separate claim limitation” (Boehringer Ingelheim, FC 2003) “that must be disclosed in Thornton in order to uphold the Board’s obviousness determination.” Outdry also argued “the Board failed to adequately articulate” the motivation to combine the references by relying “solely on Geox’s petition…without making any explicit findings of its own” and “failed to identify a reason why one of skill in the art would have been motivated to combine” the references “to solve the problem identified by the ‘171 patent-the development of water cushions in leather shoes” as, it alleged, is required by KSR (US 2007; citing Apple, FC 2016). The FC panel found “[n]either argument has merit” since this is not a case in which the Board did not cite “evidenece, reasoned explanations, or explicit findings” in its decision (Rovalma, FC 2017; Van Os, FC 2016 (finding that it would have been intuitive to combine prior art lacked the requisite reasoning because “[a]bsent some articulated rationale, a finding that a combination of prior art would have been ‘common sense’ or ‘intuitive’ is no different than merely stating the combination ‘would have been obvious” (also citing Arendi, FC 2016; Cutsforth , 2016 (“references to ‘common sense’…cannot be used a wholesale substitute for reasoned analysis and evidentiary support”), In re Nuvasive, FC 2016; and ICON Fitness, FC 2017). Here, the FC panel concluded “[t]he Board clearly articulated Geox’s arguments…and expressly adopted Geox’s rationale” (without incorporating it by reference) as showing the motivation to combine. The FC panel also explained that “[t]he Board was not required to limit its motivation to combine inquiry to the problem faced by the inventor of the ‘171 patent” (KSR (“the problem motivating the patentee may be only one of many addressed by the patent’s subject matter”); Par Pharm., FC 2014; Alcon, FC 2012). Thus, the Board’s obviousness decision was affirmed.

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IPCom GmbH & Co. v. HTC Corporation

Docket No. 2016-1474 (PTAB No. 95/001,192)

July 7, 2017

Brief summary: Board’s claim construction of means-plus-function claims (the Board did not ““look to the specification and interpret that language in light of the corresponding structure”) and conclusions of obviousness vacated and remanded.

Summary: IPCom appealed Board reexamination (RE) decision that claims of its US 6,879,830 relating to a method and system for handing over a mobile phone call from one base station to another were obvious in view of various combinations of references (“McDonald”, “Anderson”, “GSM”, and “PACS”). The RE went through two rounds; in the first the Examiner found the claims to be patentable but HTC appealed to the Board which issued new grounds of rejection. In the second, the Board found IPCom’s amended claims obvious. IPCom unsuccessfully argued that the Board lacked jurisdiction to review the Examiner’s patentability determination of the amended claims (“[T]he Board properly considered HTC’s challenge…after IPCom had reopened prosecution and amended those claims.”) IPCom also argued “the Board failed to conduct a proper claim construction of the ‘arrangement for reactivating the link’ claim limitation” and the FC panel agreed. That limitation was previously determined by the FC to be a means-plus-function limitation (HTC, FC 2012). “[T]he Board recognized that ruling” but “failed to properly construe” it by rejecting “IPCom’s proposed three-step algorithm allegedly disclosed in the ‘830 specification” and failing “to identify what it believed to be the correct algorithm”, leading to “an incomplete construction of the claim limitation…incompatible with our holding in In re Donaldson” (FC 1994 (“the agency must follow the plain language of § 112 [para.] 6” and “look to the specification and interpret that language in light of the corresponding structure, or acts described therein, and equivalents thereof…whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.”)) The Board was required “to perform a two-step analysis”: 1) “identif[y] the particular claimed function”; and, 2) “look[] to the specification and identif[y] the corresponding structure, material, or acts that perform that function” (“It was not enough for the Board to rejected the individual steps of IPCom’s proposed three-step algorithm…Like Donaldson, the Board here impermissibly treated the means-plus-function limitation in its patentability analysis as if it were a purely functional limitation.”) Based on this error, the FC panel vacated and remanded “the Board’s finding of obviousness of claims 1, 18, 30, and 34, and their corresponding dependent claims.” Regarding obviousness, the FC panel first concluded the Board properly considered new prior art after IPCom’s amendment of its claims (§ 41.77(c); Proxyconn, FC 2015). The FC panel also found that, together, the prior art disclosed each of the limitations of the disputed claims and that there would have been a motivation to combine the same, except for the “arrangement for reactivating the link” limitation. It therefore vacated and remanded the Board’s findings on that limitation.

Posted in Claim Construction, Obviousness, Reexamination | Leave a comment