IPR decision vacated and remanded for failure to compare “purposes or problems” of patent and alleged analogous art

Donner Technology, LLC v. Pro Stage Gear, LLC

Docket No. 2020-1104 (IPR2018-00708) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1104.OPINION.11-9-2020_1682293.pdf)


November 9, 2020

Brief Summary:  Board IPR decision vacated and remanded as it “failed to properly identify and compare the purposes or problems” of the patent and the alleged analogous prior art.

Summary:  Donner appealed USPTO (“Board”) rejecting its IPR challenge of Pro Stage’s US 6,459,023 relating to guitar effects pedalboards, finding the alleged prior art US patent (“Mullen”) not to be analogous art.  The FC panel opinion explains that the ‘023 patent “explained that there was…a need for ‘an improved pedal effects board which allows easy positioning and changing of the individual guitar effects while providing a confined and secure area for cable routing and placement” and that it “describes a guitar effects pedalboard that purportedly solves these problems.”  The Mullen reference, upon which each of Donner’s alleged grounds for invalidity depends, is described in this opinion as providing “an improved support for supporting one or more relay structures and for providing wiring-channel space” which Donner “contends…depicts a structure that is analogous to the structure claimed by the ‘023 patent”.  The FC panel agreed with Donner that the Board erred in finding it “failed because Donner had not shown that Mullen falls within the scope of the prior art”.  The FC panel explained that “[i]t is undisputed that the ‘023 patent and Mullen are not from the same field of endeavor” and “[t]herefore, the question is whether Mullen is reasonably pertinent to one or more of the particular problems to which the ‘023 patent relates” (“the problems to which both relate must be identified and compared”;  Princeton Bio., FC 2005 (“The scope of the prior art includes all analogous art.”); In re Bigio (FC 2004) (“Two separate tests define the scope of analogous prior art:  (1) whether the art is from the same field of endeavor, regardless of the problem addressed and”, if not, “(2)…whether the reference is still reasonably pertinent to the particular problem.”); Wyers, FC 2010 (“dividing line…ultimately rests on the extent to which the reference of interest and the claimed invention relate to a similar problem or purpose”)).  The FC panel found that while “the Board did consider all relevant arguments and evidence”, it “failed to properly identify and compare the purposes or problems to which Mullen and the ‘023 patent relate”, “the relevant purposes of an invention” being “those relating to solving a problem” (In re Clay, FC 1992).  It found “the Board’s articulation of the purpose of or problem to be solved” to be “so intertwined with the patent’s field of endeavor that it would effectively exclude consideration of any references outside that field”, while the “analysis must be carried out from the vantage point of a PHOSITA who is considering turning to the teachings of references outside her field of endeavor” (Sci. Plastic, FC 2014; FN1 acknowledging that there can be specific problems that “rules out all art outside that field”; Heidelberger, FC 1994 (“The relevant question is whether a PHOSITA ‘would reasonably have consulted’ the reference in solving the relevant problem.”)  The Board was found to have “failed to apply the proper standard” and remanded the decision.

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

Board interference decision finding UW to be senior party affirmed based on proper claim construction

Chevron U.S.A. Inc. v. University of Wyoming Corp. et al.

Docket No. 2019-1530 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1530.OPINION.11-4-2020_1680467.pdf)


November 4, 2020

Brief Summary:  Board interference decision finding UW to be senior party affirmed based on proper claim construction.

Summary:  Chevron appealed USPTO (“Board”) interference decision finding UW to be the senior party regarding the claimed subject matter of US 8,367,425 since Chevron was unable to show a sufficiently early “corroborated conception coupled with diligence”.  The FC panel explained that Chevron presented it “only one, narrow issue:  whether the Board erred in its construction of the limitation ‘gradually and continuously changing the alkane mobile phase solvent to a final mobile phase solvent’” and that “the parties concur that if we agree with the Board’s construction of ‘gradually,’ we must affirm”.  The FC panel reviewed the Board’s construction de novo since “the intrinsic record fully governs the proper construction” of the term” (In re Power Int., FC 2018; ULF Bamberg, FC 2016 (broadest reasonable construction “[b]ecause Wyoming copies claim 1 of Chevron’s ‘814 application to provoke the interference”, “in the context of the ‘814 application”)).  Chevron argued “the specification discloses that the solvent is ‘gradually and continuously’ changed at the inlet of the column” while UW argued “that…the ‘814 application itself specifically and unambiguously provides a definition”.  The FC panel agreed with UW because, “[f]irst and most significantly, [para.] 37 of the ‘814 application…provides an express definition of ‘gradually’” that “requires ‘incremental[] remov[al]’ and ‘continuous[] adding’” and other examples did not require “the claimed ‘chang[ing]’ be limited to occurring at the column’s inlet” (“‘gradually’ ‘shall be understood to mean’”; distinguished from In re Suitco (FC 2010)).  The FC panel also found no error with the Board’s reliance solely on the specification after accepting expert testimony from both sides as it, e.g., “simply…confirm[ed] its understanding…that Wyoming’s ‘425 patent had adequate written description”, or its consideration of “ ‘gradually’ and ‘continuously’ separately” since “the ‘814 application defined ‘gradually,’ an adverb generally used to describe the pace at which something is performed, ‘[to] be understood to mean…continuously adding a final mobile phase solvent” (also distinguishing Haemonetics (D. Mass. 2007) and Bicon, both “correct[ing] claim constructions that were inconsistent with the patent’s specification”)).  The FC panel therefore affirmed the Board decision.  Judge Newman’s dissent argued that “[t]he Wyoming specification does not describe and does not support the claims copied from Chevron” (“only mention of the Chevron method is in the claims that Wyoming copied from Chevron” (Ariad, FC 2010 (written description); extensive analysis provided in the dissent).

Posted in Claim Construction, Interference | Leave a comment

SFM correctly found to have standing to bring trademark cancellation request (e.g., “reasonable belief of damage”)

Corcamore, LLC v. SFM LLC

Docket No. 2019-1526 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1526.OPINION.10-27-2020_1675813.pdf)


October 27, 2020

Brief Summary:  SFM found to have standing to bring trademark cancellation request against Corcamore’s SPROUTS registration in connection with vending machines in view of SFM’s registration for retail grocery stores (e.g., “reasonable believe of damage”).

Summary:  Corcamore appealed USPTO Board decision granting SFM’s request to cancel Corcamore’s SPROUTS registration in connection with vending machines in view of SFM’s registration of SPROUTS regarding retail grocery stores.  Corcamore argued the Board erred in applying the FC’s “analysis in Empresa Cubana, instead of the analytical framework established by the Supreme Court in Lexmark” (Empresa, FC 2014; Lexmark, US 2014).  The FC panel reviewed the Board’s decision “de novo whether SFM pleaded sufficient facts to establish entitlement to challenge Corcamore’s registered trademark under [section] 1064” (which “does not involve the traditional legal notions of Article III standing”).  The FC panel found that “[t]he Board failed to apply the Lexmark analytical framework” (its “interpretation…is unduly narrow”; “zone-of-interests and proximate-causation requirements control the statutory cause of action analysis”; “if that person ‘believes that he is or will be damaged…by the registration of a mark on the principal register”; “distinguish [parties demonstrating a real interest] from mere intermeddlers”) “but it reached the correct result”, explaining that it “see[s] no meaningful, substantive difference in the analysis used in Lexmark and Empresa Cubana” (e.g., “a party that can demonstrate a reasonable believe of damage by the registration of a mark also demonstrates damage proximately caused by the registered mark”).  And it agreed with the Board’s conclusion that “SFM pleaded allegations sufficient to demonstrate a right to challenge Corcamore’s registered mark” (e.g., “goods sold are substantially similar…an interest falling within the zone of interests protected by [section] 1064”, “purchasers will be led to the mistaken belief that SFM’s goods and [Corcarmore’s] goods originate from the same source, or that [Corcamore’s] useof SPROUT has been sponsored, authorized, or warranted by SFM”).  The Board granted a default judgment “as a discovery sanction”, which Corcamore unsuccessfully argued was an abuse of discretion (e.g., “Corcamore failed to follow Rule 2.119 and provided no explanation for why it failed to effect email service”).  The Board decision was therefore affirmed.

Posted in Trademarks | Leave a comment

Induced infringement decision reversed (“subjective bad faith”); eligibility decision affirmed (“improving a basic function of a computer”)

TecSec, Inc. v. Adobe Inc., et al.

Docket No. 2019-2192, -2258


October 23, 2020

Brief Summary:  DC incorrectly excluded evidence of induced infringement (“subjective bad faith”) but correctly found patent eligibility (“directed to improving a basic function of a computer”).

Summary:  TecSec appealed DC finding direct infringement of its US 5,369,702; 5,680,452; 5,717,755; and 5,898,781 (“DCOM patents”, expired in October 2013) relating to multi-level security systems and its reduction of the jury’s damages award ($1.75 million) “to zero on the ground that there was no proof of any damages from direct infringement and the jury had rejected induced infringement” (section 271(b)) relating to the use of PDF document, including the exclusion of certain deposition testimony regarding induced infringement after March 3, 2011 (the date the DC stayed the case as to all defendants except IBM which was found not to infringe (affirmed by FC in 2012)).  Adobe cross-appealed the DC’s ruling that the asserted claims are patent eligible under section 101.  It is noted that in TecSec I (TecSec, FC 2013), an earlier DC decision was reversed and remanded due to its erroneous construction of “multimedia”, and another reversed for an erroneous grant of summary judgment (SJ) of noninfringement (TecSec II, FC 2016).

Regarding induced infringement, the DC “explained that the March 3, 2011 claim construction and stipulation of noninfringement made it legally impossible for Adobe to have had, after that date, the knowledge-of the infringing character of the allegedly induced customer actions-required for inducement” (Global-Tech, US 2011 (“intent element…can be established by…‘willful blindness’”); Power Int., FC 2016) and “allowing either party to present evidence would substantially prejudice the other party and would confuse the jury.”  The FC panel reversed the DC’s decision to exclude evidence of inducement of infringement after March 3, 2011, explaining that “Adobe may have had the requisite knowledge of infringement if it believed (as we ultimately held in 2013) that the March 3, 2011 claim construction was incorrect, even if that construction was objectively reasonable” (Halo, US 2016 (“finding of willfulness may rest on the subjective bad faith of the infringer”); Smith & Nephew, FC 2015 (non-precedential, subject intent proven in view of DC’s prior “objectively weak” decision); Sanofi, FC 2017; AstraZeneca, FC 2010; Cheek, US 1991 (“legally unreasonable view that no tax was due”); “The Global-Tech inducement standard…can be met by proof of what Adobe in fact subjectively believed.”)  The FC panel also reversed the DC’s decision precluding “TecSec from introducing its evidence of post-March 3, 2011 inducement of infringement”.  The FC panel also found no error with the DC’s reduction of damages to zero since “TecSec presented no evidence of damages caused by Adobe’s direct infringement, which was the only form of infringement that the jury found Adobe to have committed.”

Regarding patentability (section 101), the FC panel concluded “that the claims are directed to improving a basic function of a computer data-distribution network, namely, network security” and affirmed the DC decision of patent eligibility (SRI, FC 2019; Solutran, FC 2019 (Alice Step 1 focuses on “the claimed advance over the prior art”)).

Posted in Inducement to Infringe, Patent Eligibility (101), Section 101 (see also Patentability), Software, Uncategorized | Leave a comment

IPR anticipation findings reversed due to erroneous claim construction

St. Jude Medical, LLC v. Snyders Heart Valve LLC (USPTO as Intervenor)

Docket No. 2019-2108-9, -2140 (IPR2018-00105-00106)


October 15, 2020

Brief Summary:  Board anticipation finding of certain claims reversed based on FC panel’s revised claim construction (claims “interpreted with an eye toward giving effect to all terms in the claim”).

Summary:  St. Jude appealed Board IPR-105 and IPR-106 final written decisions (FWDs) finding St. Jude had not established unpatentability (anticipation) of some of the challenged claims of SHV’s US 6,540,782 directed to an artificial hear valve and system for inserting the valve. 

In IPR-105, “the Board essentially adopted St. Jude’s proposed claim construction of ‘band’” (“a band attached to the frame limiting spacing between adjacent anchors”, broadest reasonable construction (BRC)) as “a structure generally in the shape of a closed strip or ring,’ which slightly broadened St. Jude’s language by replacing St. Jude’s ‘circular’ with ‘closed’ (thereby including ovals, for example)” and found the prior art reference (Leonhardt) did not anticipate the claims because it disclosed “a ‘sleeve’…not a ‘strip’ or ‘ring’.”  The FC panel found no error with the Board’s anticipation conclusion, rejecting St. Jude’s claim construction arguments that “a dictionary definition of ‘band’” as “[a] thin strip of flexible material” and the “explicit[] disclaim[er]” of “any restriction on the length of the band” (e.g., “dictionary definition does not exclude any width constraint from being part of the relevant understanding”, “the specification does not affirmatively specify any particular limit on a band’s width”, St. Jude did “not address the terms ‘srip’ or ‘ring’”).

In IPR-106, the Board found anticipation of ‘782 claims 1, 2, 6, and 8 but not claim 28 (“St. Jude did not prove that Bessler discloses the ‘manipulation’ required by the claim”).  SHV appealed the anticipation finding, successfully arguing the Board erroneously construed the claim term “sized and shaped” limitation (“a flexibly resilient frame sized and shaped for insertion in a position between the upstream region and the downstream region”).  The FC panel agreed with SHV due to the claim language that “provides some support for the reading advanced by Snyders in preference to the Board’s construction” (Wasica, FC 2017 (“highly disfavored to construe terms in a way that renders them void, meaningless, or superfluous”); Bicon, FC 2006 (“[C]laims are interpreted with an eye toward giving effect to all terms in the claim.”))  The FC panel also found support in the specification which includes “passages” that “make it unreasonable” to read it another way (BRC “in light of the specification” (37 CFR 42.100(b); Phillips, FC 2005 (“specification ‘is the single best guide’”)).  The FC panel also found that during the IPR St. Jude “relied only on its claim-construction argument that the ‘782 claims cover the situation of a removed native valve” and “did not dispute the express assertion by Snyders that Bessler ‘requires removal of the native heart valve” and did not “preserve[] any” other argument (Novartis, FC 2017; In re Baxter, FC 2012).  Based on its claim construction, the FC panel reversed the Board’s conclusion of anticipation of claims 1, 2, 6 and 8 and affirmed the finding of no anticipation of claim 28. The FC panel also rejected St. Jude’s challenge of the Board’s conclusion that certain claims were not shown to be obvious because it “failed to prove that a relevant artisan would have made the particular combination St. Jude proposed”, finding the Board “did not lack substantial-evidence support” (Arctic Cat, FC 2017; 35 USC 316(e); In re Magnum Oil, FC 2016).

Posted in Anticipation (35 USC 102), Claim Construction | Leave a comment

IPR FWD invalidating Immunex’s “human antibody” claims invalidated (“nothing in the claim’s language restricts ‘human antibodies’ to those that are fully human”)

Immunex Corp. v. Sanofi-Aventis U.S. LLC et al. (USPTO as Intervenor)

Docket No. 2019-1749, -1777 (IPR2017-01879, -01884)


October 13, 2020

Brief Summary:  Immunex appealed two IPR final written decisions (FWDs) invalidating the challenged claims of US 8,679,487 directed to human anti-IL4R antibodies (“”[a]n isolated human antibody…wherein the light chain…comprises the amino acid sequence of SEQ ID NO:10 and the heavy chain…comprises the amino acid sequence of SEQ ID NO:12”).  The FC panel opinion explains that “[t]his appeal concerns what ‘human antibody’ means in this patent…must a ‘human antibody’ be entirely human?  Or may it also be ‘partially human,’ including ‘humanized’?”  In the ‘884 FWD, the USPTO (“Board”) invalidated the ‘487 claims for obviousness in view of the Hart, Schering-Plough and Hoogenboom references disclosing “fully murine” antibodies, “‘grafting’…CDRs onto an otherwise fully human antibody”, and closing the “gap between ‘humanized’ and ‘fully human’”, respectively, concluding “that the ‘humanized’ antibody met its construction of ‘human antibody.’”  Immunex argued the Board’s construction was erroneous.  In the ‘879 IPR, the Board “concluded that Sanofi had not shown by a preponderance of the evidence that claims 1-14, 16, and 17 were anticipated by one of Immunex’s own publications”.  Sanofi’s appeal argued the Board erred in determining that “the disclosure was not § 102(e) prior art ‘by another.’”

Immunex filed a terminal disclaimer (TD) “[a]fter appellant briefing was complete” and the ‘487 patent “therefore expired on May 26, 2020, just over two months before oral argument.”  The Board applied the Broadest Reasonable Interpretation (BRI) standard to these IPRs, while “in all newly filed IPRs, the Board applies the Phillips district-court claim construction standard” (37 CFR 42.100(b), Phillips (FC 2005) (“ordinary meaning”)).  Immunex argued the Phillips standard should apply but the FC panel disagreed since “when Sanofi filed its IPRs, the Board applied” the ordinary meaning “standard only to expired patents” (In re CBS-Sys., FC 2016; Wasica, FC 2017; Andrea Elecs., FC 2020 (does not “mean that whenever a patent expires on appeal, at any time and for any reason, Phillips applies”)) and “the patentee shortened the term abruptly after the parties had already fully briefed claim construction under the BRI standard” (In re Thorington, CCPA 1969 (“Our predecessor court has refused to consider terminal disclaimers filed after the Board’s decision.”)) 

The FC panel reviewed the “Board’s evaluation of the intrinsic record de novo” (Kaken, FC 2020; Teva, FC 2015) and found it to support “the correctness of the Board’s construction” (e.g., “the language of the claim itself” (Allergan Sales, FC 2019), “nothing in the claim’s language restricts ‘human antibodies’ to those that are fully human”, no “express definition” of “human antibody” in the ‘487 specification (“makes clear that ‘human antibodies’ is a broad category encompassing both partially and completely human antibodies”), and the prosecution history shows the “two terms…are not interchangeable” (the claims of a related patent, “strong presumption against a claim construction that excludes a disclosed embodiment” (Nobel Biocare, FC 2018), claim amendments, “examiner expressly wrote that the amended ‘human’ antibodies encompassed ‘humanized’ antibodies”).  The FC panel was unpersuaded by Immunex’s proposed extrinsic evidence including expert testimony since “the intrinsic evidence here decides the issue” (Helmsderfer, FC 2008).  The FC panel also explained that the Board did not err in departing from a DC interpretation of “human antibody” from “litigation that prompted this IPR” (Power Integrations, FC 2015 (“the Board ‘is not generally bound by a previous judicial construction of a claim term”); Board required “to provide ‘reasoning in sufficient detail to permit meaningful appellate review”).  The Board decision was therefore affirmed.

Sanofi’s cross-appeal regarding the ‘879 IPR was dismissed since the Board’s ‘884 IPR FWD was affirmed.

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

Teva’s ANDA carve-out does not save it from induced infringement (“when the provider of an identical product knows of and markets the same product for intended direct infringing activity, the criteria of induced infringement are met”)

GlaxoSmithKline LLC, et al. v. Teva Pharmaceuticals USA, Inc.

Docket No. 2018-1976, -2023


October 2, 2020

Brief Summary:  GSK appealed DC judgment of a matter of law (JMOL) finding no induced infringement of RE40,000 by Teva’s Coreg® (carvedilol) ANDA.  GSK’s RE40,000 issued on Jan. 8, 2008 following reexamination of US 5,760,069 (issued in 1998) directed to “[a] method of decreasing mortality caused by congestive heart failure”, RE’000 adding the limitation “wherein the administering comprises administering to said patient daily maintenance dosages for a maintenance period to decrease a risk of mortality caused by congestive heart failure, and said maintenance period is greater than six months.”  Teva’s original 2007 ANDA label (“full label”) did not mention congestive heart failure (a “carve-out”, “skinny label”) but revised its label in 2011 to include the CHF indication as directed by the FDA.  The DC instructed the jury that “GSK must prove that Teva’s actions led physicians to directly infringe a claim of the ’000 patent” and “proof…may be based on circumstantial evidence.”  The jury found that Teva induced infringement of certain claims starting January 8, 2008 (the date the RE‘000 patent issued) to April 30, 2011 (the last day before Teva amended its label) and some during the amended label period starting May 1, 2011 and ending June 7, 2015 (the date of expiration of the ’000 patent).  The DC, however, granted Teva’s JMOL of no induced infringement by either the skinny or full labels.  The FC panel disagreed, explaining that “[p]recedent has recognized that the content of the product label is evidence of inducement to infringe” (Vanda, FC 2018) and that the DC “applied an incorrect legal standard, for precedent makes clear that when the provider of an identical product knows of and markets the same product for intended direct infringing activity, the criteria of induced infringement are met” (e.g., “There was ample record evidence of promotional materials, press releases, product catalogs, the FDA labels, and testimony of witnesses from both sides, to support the jury verdict of inducement to infringe the designated claims for the period of the ’000 reissue patent.”)  The jury-calculated damages award was sustained, the FC panel writing that the DC “correctly instructed the jury that the availability of carvedilol from other generic producers is not a ‘non-infringing substitute’” (Micro Motion, FC 1990 (“There is precedent for finding causation despite an alternative source of supply if that source is an infringer….”)   The DC grant of JMOL was vacated and remanded for “consideration of GSK’s post-trial motion based on the verdict of willful infringement”.  Judge Prost dissented, writing, e.g., “Congress provided for skinny labels for exactly these circumstances…[a]nd Teva acted exactly as Congress intended” (“Teva’s skinny label did not even suggest using its product according to the patented method”, “there was still no inducement via the full label”).

Posted in Damages, Generics / ANDA, Inducement to Infringe, Willfullness | Leave a comment

DC claim construction reversed; joined party in IPR can raise new obviousness arguments; no improper broadening during reissue

Network-1 Techs., Inc. v. Hewlett-Packard Co. et al.

Docket No. 2018-2338-39, -2395-96


September 24, 2020

Brief Summary:  DC claim construction affirmed and reversed (“ordinary meaning”); joinder rule did not prevent HP from raising new obviousness arguments that could have been raised during IPR; no improper broadening during reissue.

Summary:   Network-1 appealed DC finding that HP does not infringe US 6,218,030 relating to methods for “remotely powering access equipment in a data network” and the DC’s construction of the claim terms “low level current” and “main power source”.  HP cross-appealed the DC’s finding that Network-1 did not improperly broaden the ‘030 claim term “secondary power source” during reexamination (two reexaminations of the ‘030 patent).  In a previous IPR proceedings filed by Avaya and joined by HP (after being denied its own IPR as time-barred (“§ 315(b) creates an exception from the time bar for joinder under 35 U.S.C. § 315(c)”), ‘030 claims 6 and 9 were not held to be unpatentable.  The DC also granted JMOL to Network-1 regarding some of HP’s obviousness arguments that were not but “‘reasonably could have been raised’ in the Avaya IPR.”

The FC panel agreed with the DC’s construction of “low level current” but not “main power source”.  “Low level current” was found to include a “lower bound” of the current indicated “by use of the word ‘low’” in order “to give meaning to the term ‘current’” (“the delivered ‘low level current’ is current that is sufficient to begin start-up”; e.g., “[e]ven Network-1 admits that the term ‘current’ necessarily requires some flow of electric charge because ‘[i]f there is no flow, there is no ‘current’”).  Relying on expert testimony and Talbert Fuel (FC 2002 (“[a] construction that renders the claimed invention inoperable should be viewed with extreme skepticism”)), the DC “construed ‘main power source’ as ‘a DC power source,’ and thereby excluded AC power sources from its construction”.  But the FC panel disagreed, finding that “the correct construction…include[s] AC and DC power sources” as consistent with the ordinary meaning but “neither the claims nor the specification…require a departure from this ordinary meaning” (Starhome, FC 2014 (“In the absence of an express intent to impart a novel meaning to claim terms, an inventor’s claim terms take on their ordinary meaning.”)), “[t]he specification likewise never expresses a preference for DC power sources, much less a suggestion that DC power is an ‘essential’ feature of the main power source” (GE Lighting, FC 2014), and “the ‘930 patent’s disclosure of a preferred embodiment” (MBO Labs., FC 2007 (“A claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.”)).  The FC panel also found the DC erred “by adding a limitation to the claims to carve out certain inoperable embodiments” but also “excluded operable embodiments” (Cordis, FC 2008). 

The DC also found HP to be estopped under § 315(e) from raising obviousness arguments that “‘reasonably could have been raised’ in the IPR”.  The FC panel explained that under Facebook (FC 2020) joined party HP could not “bring into the proceeding new grounds that were not already instituted” and was therefore “not statutorily estopped”.  The DC decision was therefore vacated and remanded on this ground. HP also argued that certain claims are invalid due to improper broadening during reissue (§ 305; Creo Prods., FC 2002; Predicate Logic, FC 2008 (“broader in scope…if it contains within its scope any conceivable apparatus or process which would not have infringed the original patent”)).  The FC panel disagreed that the scope of the disputed claim was changed during reexamination (Creo; Enzo, FC 2017 (“dependent claims cannot broaden an independent claim”); ArcelorMittal, FC 2015 (AK Steel) (rejecting “the argument that a defective reissue application invalidates…[the] original claims carried over from the original application”)).

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

Grant of JMOL reversed as “an old method of administration of an old product made by a new process is not novel and cannot be patented”

Biogen MA Inc. v. EMD Serono, Inc. et al. (Pfizer Inc., Bayer, Novartis)

Docket No. 2019-1133


September 28, 2020

Brief Summary:  DC instructed to reinstate jury verdict of invalidity for anticipation of Biogen’s IFN-b method of treatment claims that include product-by-process limitations (e.g., “an old method of administration of an old product made by a new process is not novel and cannot be patented”). Summary:   Serono appealed DC judgment as a matter of law (“JMOL”) ruling Biogen’s claims (US 7,588,755) directed to methods of treatment using recombinant interferon b (“IFN- b”, sold as Rebif for multiple sclerosis (MS)) not anticipated and not invalid based on written description or enablement, overturning the jury verdict of no induced infringement and sustaining the verdict of contributory infringement, and that the claims were not patent ineligible.  The only issue addressed in this opinion is anticipation.   The claims include “the step of administering to a patient” recombinant IFN-b “produced by a non-human host transformed by a recombinant DNA molecule…capable of hybridizing to” specified DNA sequences.  The DC, “focusing on the process of making IFN-b, concluded it need not analyze whether native IFN-b and recombinantly produced IFN-b were identical” because the prior art did not teach “a method of treatment using recombinant IFN-b” and “categorized the ‘produced’ and ‘transformed’ limitations as meaningful ‘source limitations.’”  The DC also concluded that a product-by-process analysis “did not apply to the claims here because the ‘product’ itself was sufficiently described”.  The FC panel disagreed and explained that “the recombinant IFN-b composition that is administered…is claimed in terms of the process by which it is manufactured” which is a “product-by-process limitation within a method of treatment claim” that does not “change how novelty of that limitation is evaluated” (Purdue Pharma, FC 2016 (“conversion of oxycodone free base” a product-by-process limitation)).   It agreed with Serono “that a source limitation alone cannot confer novelty unless the product itself is novel” since “an old product is not patentable even if it is made by a new process” (Amgen, FC 2009 (“simply because prior art urinary EPO was not made recombinantly was not enough to avoid anticipation”).  “The key question” here, the FC panel wrote, “as in Amgen, is…whether the recombinant product is identical to the prior art product-not whether the prior art product was made recombinantly.”  Addressing Biogen’s arguments, the FC panel stated that “an old method of administration of an old product made by a new process is not novel and cannot be patented.”  Biogen was also found to have defined IFN-b as a linear amino acid sequence in the specification and that “the claimed antiviral activity limitation” is not defined in the claim by “any specific three-dimensional structure that gives rise to that activity.”  The FC panel found the DC “erred in concluding the mere absence of recombinantly produced IFN-b in the prior art was sufficient to grant JMOL of no anticipation.”  The FC panel also disagreed with the DC’s “conditional grant of a new trial” on anticipation and reversed and remanded the decision “with instructions to reinstate the jury verdict” of invalidity for anticipation.

Posted in Anticipation (35 USC 102), Product-by-Process, Uncategorized | Leave a comment

IPR claim construction and obviousness findings affirmed (insufficient evidence of nexus between claims and license agreements)

Siemens Mobility, Inc. v. USPTO

Docket No. 2019-1732, -1752 (IPR2017-01669, -02044
September 8, 2020

Brief Summary: Board IPR claim construction and obviousness conclusions affirmed (e.g., insufficient evidence nexus between claims and secondary considerations (license agreements)).

Summary: Siemens appealed two IPR final written decisions (FWDs) holding certain claims of US 6,609,049 and US 6,824,110 directed to methods and systems for automatically activating a train warning device unpatentable for obviousness. The method claims included “maintaining a database of locations…and corresponding regulations”, “obtaining a position of the train” (and speed in ‘049 claims), “select[ing] a next upcoming location”, “determining a point at which to activate the warning device”, “and activating the warning device at the point.” The system claims include a “control unit” that carries out the method steps and “further require that the database receive wireless updates.” Westinghouse challenged the claims as obvious in view of the Byers and Michalek US patents. Siemens argued the Board misconstrued “corresponding regulations”. The FC panel explained that “[t]he Board…declined to import from the specification that would require multiple regulations for individual locations” and relied on the “plain language of the claims” (“nothing in the claim language restricting the form or nature of correspondence between regulations and locations”) which it concluded the Byers patent “discloses, teaches, or suggests”. The FC panel agreed with the Board’s claim construction since, e.g., requiring “multiple regulations per location would eliminate the option of one regulation encompassed by the use of the article ‘a’” (N. Am. Vaccine, FC 1993 (“explaining that ‘a’ has a ‘normal singular meaning’ but can mean one or more”)) and is supported by the specification (e.g., “Figure 2 clearly contemplates locations for which only one regulation is stored and applied.”) Siemens also argued “the Board misinterpreted the law regarding secondary considerations”. The FC panel explained that effective evidence of secondary considerations must show a “nexus…between the merits of the claimed invention and the evidence offered” (Stratoflex, FC 1983) and “[t]he patentee bears the burden of establishing” that nexus (WMS Gaming, FC 1999). Siemens submitted evidence of licensing which the FC panel explained “is not an ‘infallible guide to patentability’” (EWP, FC 1985) and that here “the licenses are of little evidentiary value” (DyStar, FC 2006; Agrizap, FC 2008) (e.g., “employee testimony…related to…a ‘horn sequencing patent’ or addressed ‘automatic horn activation,’ without any connection to the language of the claims”). The FC panel also agreed with the Board’s conclusions of invalidity for obviousness.

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