Board IPR claim construction “in the context of this patent” and anticipation/obviousness determinations affirmed

CCS Technology, Inc. v. Panduit Corp.

Docket No. 2018-1733, -1734 (IPR2016-01647, -01648)
July 19, 2019

Brief Summary: Board’s IPR claim construction (broadest reasonable construction) and findings of invalidity for anticipation and obviousness affirmed.

Summary: CCS appealed Board IPR decision for certain claims of US 6,869,227 and 6,758,600 (identical specifications) related to systems for managing bi-directional fiber optic communications (“universal breakout harness”) invalid for anticipation or obviousness. Each of the challenged claims include the terms “optical ribbon” and “optical fiber ribbon”, which the Board construed under the broadest reasonable construction (BRC; Cuozzo, US 2016; Teva, US 2015) to “encompass[] optical fibers that are bonded together in a generally planar array or optical fibers that are grouped and aligned in a generally planar array” (In re Varma, FC 2016 (“the same limitation in different claims of the same patent should carry the same construed meaning…overcome only if it is clear that the same limitation has different meanings in different claims”)). CCS argued that the Board erred in concluding that the fibers “are not necessarily bound together”, which would avoid the prior art, based on the specification statement that “[a]n optical ribbon includes a group of optical fibers that are coated with a ribbon common layer.” The FC panel, “[u]pon reading the entire patent”, disagreed since “[t]he claims do not recite a ribbon common layer coating”, “other references in the specification indicate that the fibers…do not need to be bound together”, and CCS’s definition “would improperly exclude the disclosed embodiment of Figure 2” which is “rarely, if ever, correct” (Accent Pkg., FC 2013; Phillips, FC 2005) (e.g., “‘includes’ is best understood as introducing an illustrative example, in the context of this patent”). The FC panel also disagreed with CCS’s argument “that the Board’s construction…eliminates two supposed ‘key advantages of the invention[]’” as CCS did not provide “any compelling reason why the claims are limited to embodiments with this optional feature”, and CCS’s reliance on technical dictionaries. Based on this construction, the FC panel also found the Board’s anticipation and obviousness conclusions to be supported by substantial evidence.

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

Board IPR obviousness finding affirmed, TQ Delta had “opportunity to be heard”

TQ Delta, LLC v. Dish Network LLC

Docket No. 2018-1799 (IPR2016-01470)
July 10, 2019

Brief Summary: Board IPR FWD finding TQ Delta’s communications systems claims obvious affirmed.

Summary: TQ Delta appealed Board IPR Final Written Decision (FWD) finding the challenged claims of US 8,611,404 relating to power management systems for telephone services unpatentable as obvious. TQ Delta argued the Board violated its “procedural rights by relying on a new claim construction” for the “‘without needing to reinitialize limitation as being ‘satisfied if any step of initialization is avoided’…because neither party advocated for a new claim construction and the PTAB sua sponte construed” the term such that it “was denied a proper chance to respond”. The FC panel disagreed, finding that “the PTAB did not ‘change course’” since the term was not construed in its Decision to Institute and TQ Delta “had notice” before the FWD was issued (e.g., at the Oral Hearing, the Board “repeatedly asked TQ Delta about its narrow construction…and explained it disagreed”) (HTC, FC 2017 (claim construction in the context of the prior art, “establish[ing] the scope and boundaries of the subject matter that is patented”); Intell. Ventures, FC 2017; SAS (US 2018 (Board “cannot change theories midstream”); Hamilton Beach, FC 2018 (“opportunity to be heard”)). The FC panel also agreed with the Board’s construction of the term under the broadest reasonable construction (“[a]t the time of the” FWD; In re Power Int., FC 2018 (“begin with the words of the claims”); Phillips, FC 2005 (“surrounding claims and broader specification”); Wenger, FC 2001 (dictionary definition of “the prefix ‘re-‘ as ‘again, anew, over again’”)). TQ Delta also argued the obviousness decision is not supported by substantial evidence, arguing the prior art does not “teach avoiding any steps” and teaches away from that limitation. The FC panel disagreed since the prior art “teaches ways to reduce power”, specifies initialization parameters, provides a motivation to combine, and does not teach away (Redline, FC 2015; In re NuVasive, FC 2016; Elbit, FC 2018 (Board may select one of “two inconsistent conclusions” if supported by substantial evidence); In re ICON, FC 2007 (teaching away where “combination would produce an inoperative result”)). Thus, the Board decision was affirmed.

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

GE’s “purported competitive injuries” found not to provide standing to appeal IPR

General Electric Company (GE) v. United Technologies Corporation (UTC)

Docket No. 2017-2497 (IPR2016-00531)
July 10, 2019

Brief Summary: GE appealed Board IPR finding claims 7-11 of UTC’s US 8,511,605 relating to gear fan gas turbine engines not invalid for obviousness (UTC disclaimed claims 1 and 2 which were challenged for anticipation). On Dec. 29, 2017, UTC argued that GE lacked standing to appeal the Board decision “because it failed to demonstrate a sufficient injury in fact”. GE argued in the “First Long Declaration” “that the ‘605 patent impedes its ability to use its 1970s geared-fan engine design…and its ability to compete in a highly regulated industry.” The FC denied UTC’s motion with addressing the merits and ordered that the issue be briefed by the parties. UTC argued GE has not suffered any “injury in fact because it had not threatened GE with litigation, GE did not show “a concrete and particularized economic injury because it has not developed an engine that implicates” the challenged claims, and “statutory estoppel and the competitive standing doctrine do not apply to GE.” The parties then submitted additional declarations, in which the FC panel explained GE contended “only that to maintain GE’s competitive position, it needs to be able to meet customer needs with a geared-fan engine design that may implicate the ‘605 patent.” The FC panel explained that “[t]o establish standing” to appeal an IPR decision, “an appellant must” show that is has “suffered an injury in fact that has a nexus to the challenged conduct” (Phigenix, FC 2017 (“real or imminent” injury); Cuozzo, US 2016; JTEKT, FC 2018 (“injury in fact must be ‘concrete and particularized,’ not merely ‘conjectural or hypothetical’”); DaimlerChrysler, US 2006). The FC panel rejected GE’s arguments as being “purported competitive injuries…too speculative to support constitutional standing” (e.g., declarations did “not assert that GE lost bids”, did not submit “a direct-drive engine design to Boeing because of the ‘605 patent”, did not shown “lost business or lost opportunities”, or “that GE is in the process of designing an engine” covered by the claims or “definite plans to use the claimed features”, and only asserted “speculative harm untethered to the ‘605 patent”; AVX (FC 2019 (no Article III standing where “no present or nonspeculative interest in engaging in conduct even arguably covered by the patent claims…competitor standing has been found when government action alters competitive conditions.”)). “Here,” the FC panel wrote, “the Board’s upholding of” UTC’s claims “did not change the competitive landscape for commercial airplane engines” and the competitor standing doctrine does not therefor apply. And GE’s argument “that estoppel under section 315(e) creates injury in fact” was also rejected (as in AVX, Phigenix, and Watchdog (FC 2014)). GE’s appeal was therefore dismissed. Judge Hughes concurred but wrote “that precedent has developed an overly rigid and narrow standard for Article III standing” and AVX was incorrectly decided.

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

Federal Circuit vacates and remands IPR decisions based on public accessibility

Samsung Electronics Co., Ltd. v. Infobridge PTE. Ltd.

Docket Nos. 2018-2007, -2012 (IPR2017-00099, -00100)
Newman, Schall, O’Malley
July 12, 2019

Brief Summary: Board IPR decisions based on no public accessibility vacated and remanded (e.g., “a petitioner need not establish that specific persons actually accessed or received a work to show” accessibility).

Summary: Samsung appealed two Board IPR decisions finding that it failed to show that the prior art cited against Infobridge’s US 8,917,772 related to encoding and decoding data was publicly accessible before the ‘772 patent critical date. The “WD4 reference” (Working Draft 4 of the H.265 standard), cited by Samsung in different combinations in each IPR, was developed by the Joint Collaborative Team on Video Coding (“JCT-VC”) at meetings and stored various materials on a website. The FC panel opinion explains that a user could access the WD4 reference by “follow[ing] at least four steps”: “navigate to the JCT-VC website”; “select a menu option to view information about ‘All meetings’ held by the JCT-VC”; “select ‘Torino’ from the list of available meeting options which were not identified by subject matter”; and then “select the WD4 reference” “from “a list of ‘hundreds’ of documents organized by an identifying number rather than subject matter”; or using a website maintained by a JCT-VC parent organization (MPEG) “arranged in a manner similar to the JCT-VC website”. Further, the WD4 reference was emailed “to a JCT-VC listserv” which “included JCT-VC members show had attended the Toronto meeting as well as other ‘interested individuals’”. The Board concluded Samsung presented “insufficient competent evidence” of public accessibility, finding the WD4 reference author’s testimony to be “‘conclusory and insufficiently factually supported’ because [h] could not testify about whether others would have navigated to the JCT-VC website to learn about developments in video coding” or the MPEG website, and “even if someone found the MPEG website, they would not have been able to reasonably find the WD4 reference.” The FC panel first considered whether Samsung had standing to appeal the decisions (raised by Samsung), which it explained “turns on its relationship to Infobridge and the ‘772 patent” (Phigenix, FC 2017 (standing must “apply at every stage of a case before a federal court, including on appeal”; Lujan, US 1992 (“‘concrete and particularized’ injury”)). The FC panel agreed with Samsung it has standing (e.g., Chou, “deprived of an interest in proceeds from licensing”). On public accessibility, the FC panel explained that accessibility “is the ‘touchstone’” and that “public accessibility requires more than technical accessibility” (Acceleration Bay, FC 2018 (affirmed as not publicly accessible as reference uploaded to university website was not “meaningfully indexed”); Voter Verified, FC 2012 (skilled artisan “could have reasonably found the website and then found the reference”)). The FC panel first agreed with the Board that the WD4 reference was neither publicly accessible based on its distribution at the JCT-VC meetings (waived certain arguments) nor from the JCT-VC and MPEG websites (e.g., “a work is not publicly accessible if the only people who know how to find it are the ones who created it” (SRI, FC 2008)). But the FC panel disagreed with the Board’s decision regarding public accessibility based on the JCT-VC listserv since “a petitioner need not establish that specific persons actually accessed or received a work to show” accessibility (Lister, FC 2009; Constant, FC 1988). The Board decision was therefore vacated and remanded.

Posted in Anticipation (35 USC 102), Obviousness, Public Accessibility, Public Use | Leave a comment

DC decision that Invidior’s Suboxone® sublingual film patents are infringed by certain parties and not invalid for obviousness affirmed

Invidior Inc. et al. v. Dr. Reddy’s Labs. (DRL), Actavis/Watson, Teva, Par, Intelgenx, Alvogen Pine Brook, LLC

Docket Nos. 2017-2587, 2018-1010, -1058, -1062, -1114, -1115, -1176, -1177
Newman, Mayer (D), Lourie
July 12, 2019

Brief Summary: DC findings that Invidior patents relating to its Suboxone® sublingual film are infringed by certain parties and not invalid for obviousness affirmed.

Summary: DRL et al. appealed several DC decisions regarding exclusive licensee (from Aquestive Ther., Inc.) Invidior’s US 8,603,514; 8,900,497; and 8,017,150; relating to Invidior’s Suboxone® sublingual film (combination of the opioid buprenorphine and the opioid antagonist naloxone; previously sold as a tablet; NDA N022410; ‘514 and ‘150 patents on Orange Book (OB), ‘497 is not). The FC panel opinion explains that the parties’ arguments are focused on the OB patents (‘514 and ’150; “the parties do not distinguish” the ‘497 patent, directed to film manufacturing, “from the ‘514 patent with respect to the issues on appeal”). The ‘514 patent requires uniform distribution of active ingredient a “viscosity sufficient to aid in substantially maintaining non-self-aggregating uniformity”, and “capable of being dried without loss of substantial uniformity”. The ‘150 patent claims the films by the components therein (e.g., “the water-soluble polymer component comprises greater than 75% polyethylene oxide and up to 25% hydrophilic cellulosic polymer”, including low molecular weight PEO (L-PEO) and high molecular weight PEO (H-PEO)).

Regarding the ‘514 patent, the FC panel agreed with the DC’s conclusion that Invidior “disclaimed drying wet cast films using solely convection air drying from the top…based on the ‘514 patent specification’s express statements of what the invention is, its repeated disparagement of conventional top drying methods, and the patent applicants characterization of the invention during prosecution” (Phillips, FC 2005 (“[t]he specification ‘is the single best guide to the meaning of a disputed term’”); SciMed, FC 2001 (“where it ‘makes clear that the invention does not include a particular feature’”); Openwave, FC 2015 (“A specification may disclaim an embodiment by repeatedly disparaging it.”)). The FC panel also agreed with the DC’s decision that DRL’s and Alvogen’s drying processes do “not meet the drying limitation” and do not therefore infringe the ‘514 patent. The FC affirmed the DC’s decision that Watson infringed the ‘514 patent and disagreed with Watson that the DC should have let it argue its revised process does not infringe (e.g., “Watson acknowledges that it can still seek a judgment of noninfringement based on the amended ANDA process even if it fails to secure Rule 59 relief.”) The FC panel also disagreed with Watson’s ‘514 indefiniteness argument that since “a cast film in its final dosage form is not flowable”, the claim “required a physical impossibility” (i.e., “a product claim ‘comprising’ certain elements must contain those elements simultaneously”), finding that the ‘514 patent properly “makes clear that the matrix is flowable only are a certain time-before drying” (Gemtron, FC 2009 (“the specification made clear that the [claimed] resilience only referred to resilience during assembly”). The FC panel found no error with the DC’s conclusion of no invalidity of ‘514 claims for obviousness (e.g., no error in “adopting a compromise measure of the level of ordinary skill”, reliance on expert testimony regarding what the prior art taught and a motivation to combine (“adjusting the various factors” that affect uniformity “would have been unintuitive, and that that field was still emergent”), Aquestive was first to obtain FDA approval).

Regarding the ‘150 patent, claim 1 recites that the film includes hydrophilic cellulosic polymer (‘HCP’) while DRL used polyvinyl pyrrolidone (PVP). The DC held no infringement under the doctrine of equivalents since the ‘150 patent “disclosed PVP as an alternative to HCP but did not claim it” and “thereby dedicate[ed] it to the public.” The FC panel agreed (Johnson & Johnson, FC 2002; Mahn, US 1884 (“the essential notice function of claims”)). DRL also alleged obviousness, and the FC explained that determination is based on whether the ‘150 patent can properly claim priority to the ‘902 provisional application, which turns on written description (section 112 and Lockwood (FC 1997)). The FC panel agreed with the DC that the provisional application properly described the claimed films and therefore its finding of no obviousness.

Invidior also requested that the DC’s decision finding claims 15-19 of Invidior’s US 8,475,832 obvious be vacated as moot (also held unpatentable in IPR2014-00325, affirmed by the FC). The FC panela greed with Invidior.

Posted in Claim Construction, Doctrine of equivalents, Generics / ANDA, Obviousness, Written description | Leave a comment

Federal Circuit affirms Board decision finding chromosomal abnormality testing claims lack written description affirmed

Stephen Quake, et al. v. Yuk-Ming Dennis Lo, et al.

Docket Nos. 2018-1779, -1780, -1782
Reyna, Chen, Hughes
July 10, 2019

Brief Summary: Board finding of no WD of chromosomal abnormality testing claims affirmed.

Summary: Quake appealed Board decision finding four claims to methods for identifying chromosomal abnormalities (fetal aneuploidy) using “random” massively parallel sequencing of DNA in cell-free fetal DNA (cff-DNA) (“meaning that all of the DNA in a sample is sequenced, as opposed to sequencing specific, targeted sequences”) invalid for lack of written description (WD, section 112). Quake’s US 8,008,018 is involved in an interference with Lo’s applications to determine who first invented the random MPS method, during which proceeding the Board made the finding of insufficient WD. This issue was previously addressed by the Board and FC to correct the Board’s prior errors, but the Board again found the claims invalid for lack of WD (note: Biogen, FC 2015 held that the FC “has exclusive appellate jurisdiction over Board decisions”)). The Board concluded that the ‘018 specification “describes some of the elements” but “does not tie the elements together”, “explain how to use the data…to determine fetal aneuploidy”, or “suggest[] to a skilled artisan to adjust for chromosome size when doing the comparison claimed in step D” (a “necessary” step). Quake appealed both the Board’s WD decision and its decision not to enter evidence from district court (DC) proceedings. The FC panel explained the inventor must “convey with reasonable clarity…that…he or she was in possession of the invention” (Centocor, FC 2011 (“not a ‘mere wish or plan’”), and is “particularly important when, as here, claims are added later during prosecution in response to development by others” (Agilent, FC 2009) (e.g., “the first time Quake tried to cover random MPS…was after the publication of Lo’s patent application”). The FC panel also explained that “ipsis verbis disclosure is not necessary” to satisfy the WD requirement (Fujikawa, FC 1996; In re Ruschig, CCPA 1967 (“mark[ing] blaze marks on…trees’ to ‘find[] one’s way through the woods’ of a specification such that a skilled artisan would be able to follow that trail and understand what the inventors had invented”)). But the FC panel agreed with the Board’s WD decision “given the specification’s repeated discussion of targeted sequencing, a bare citation to” a reference relating to MPS, “and use of the phrase ‘about 30 bp of random sequence”, summarized as “a highly elliptical, cryptic way to communicate possession of a second method of sequencing” (e.g., “at most…faint ‘blaze marks’”, “only expressly describes detection of target sequences”). The FC panel rejected Quake’s arguments regarding whether step D was sufficiently disclosed (e.g., “conducting statistical analysis on random MPS data was known and predictable”, “unclaimed limitations…did not need to be described”, normalizing chromosomal size “more of an enablement issue”, “need to normalize random MPS results was known…and therefore not necessary to describe”, burden of proof not shifted from Lo to Quake). The FC panel also found no error with the Board’s decision not to enter evidence from the DC proceeding (Redline, FC 2015; Ultratec, FC 2017).

Posted in Interference, Written description | Leave a comment

Board written description decision vacated as conflicting with Ariad (predictability relevant to WD analysis)

In re: Global IP Holdings, LLC

Docket Nos. 2018-1426
Moore, Reyna, Stoll
July 5, 2019

Brief Summary: Board decision affirming rejection of broadening reissue claims for lacking written description vacated and remanded (e.g., Board’s statement “that the ‘233 patent’s specification was insufficient ‘regardless of the predictability of results…” conflicts with Ariad).

Summary: Global IP appealed the Board’s decision affirming the examiner’s rejection of its broadening reissue claims of its US 8,690,233 directed to automotive vehicle load floors for lacking written description (pre-AIA section 112, first paragraph (“WD”)). Global IP sought to amend its claims from reciting “thermoplastic skins” and “thermoplastic cellular core” to “plastic skins” and “plastic cellular core”, respectively. ‘233 inventor Mr. Preisler filed the required reissue oath/declaration “identifying the error relied on as the basis for the reissue”, noting that “at the time of the invention, he was aware of the use of plastics other than thermoplastics” and citing other patents and patent applications “disclosing the use of thermoset plastics (instead of thermoplastics)”. The examiner rejected the request as lacking WD and introducing new matter because “the specification indicates that the first and second skins and core are only described as being formed from thermoplastic materials and are not described as being formed generally from plastic materials”, and the Board affirmed this decision (e.g., “regardless of the predictability of results of substituting alternatives, or the actual criticality”, the specification “as a whole, indicates to one skilled in the art that the inventors had possession only of the skins and core comprising specifically thermoplastic”). The FC panel reviewed “the Board’s legal conclusions de novo and its fact findings for substantial evidence” (Belden, FC 2015; Consol. Edison, US 1938 (that which “a reasonable mind might accept…as sufficient to support the finding”)), explaining that “the test for sufficiency” of the WD “is whether the specification ‘reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date’” (Ariad, FC 2010 (“persons of ordinary skill” would “recognize that the inventor ‘invented what is claimed’”, “level of detail required…varies depending on the…claims and on the complexity and predictability of the relevant technology”)). The FC panel concluded that the Board’s statement “that the ‘233 patent’s specification was insufficient ‘regardless of the predictability of results…” conflicts with Ariad and is erroneous (“the predictability…is relevant”). The FC panel also explained that “[i]n addition to predictability, we have held that the criticality or importance of an unclaimed limitation to the invention can be relevant to the written description inquiry” (In re Peters, FC 1983 (claimed tapered shape “not critical because no prior art was overcome based on the tip shape and ‘one skilled in the art would readily understand that in practicing the invention it is unimportant whether the tips are tapered…We see nothing in Ariad rejecting the analysis in Peters.”)) The Board’s decision was therefore vacated.

Posted in Reissue, Written description | Leave a comment