Docket No. 2017-1855 (IPR2015-01524)
REYNA, BRYSON, HUGHES
June 27, 2018
Brief summary: Board IPR FWD finding Elbrus’s claims obvious affirmed (e.g., no teaching away as “nothing in Sukegawa discourages precharging”).
Summary: Elbrus appealed Board IPR final written decision (FWD) finding certain claims of US 6,366,130 regarding a “metal-oxide semiconductor…data transfer arrangement” invalid for obviousness. Elbrus first argued “that the Board adopted an erroneous construction of the claim term ‘bus’ as ‘one or more conductors that are used for the transmission of signals, data, or power’”, and that it should be defined as “a common path along which power or signals travel from one or several sources to one or several destinations”. The FC panel opinion explained that “[t]he meaning of the term ‘bus’ bears on whether Samsung’s lead prior art reference…’Sukegawa’, discloses a ‘differential data bus,’ as recited in claim 1.” The Board concluded that Sukegawa discloses the claimed “‘differential data bus’ under both Samsung’s and Elbrus’s proposed constructions” (e.g., “the portion of figure 1 identified by Samsung satisfies Elbrus’s construction of ‘bus’”). The FC panel found “no error in the Board’s analysis”, noting that, e.g., “the Board cited testimony from both Samsung’s and Elbrus’s experts”, and therefore affirmed the Board’s construction. Elbrus also argued that the Board erred in its obviousness conclusion because “Sukegawa teaches away from precharging the bus to half the supply voltage” as taught in the other cited reference (“Lu”), and that the combination of Sukegawa and Lu “would lead to an inoperable circuit absent significant additional design work”. The FC panel reviewed the Board’s conclusion that Sukegawa does not teach away (a question of fact) for substantial evidence, and explained that “[a] reference ‘that ‘merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into’ the claim invention does not teach away” (Meiresonne, FC 2017; Galderma Labs., FC 2013). The FC panel concluded “that substantial evidence supports the Board’s factfinding” since, e.g., “nothing in Sukegawa discourages precharging” and Elron’s counsel could not explain why Sukegawa “charged to Vdd as opposed to some intermediate charge” (e.g., stating “we can only infer that he must have had a reason”; In re Haase, FC 2013 (“a particular reference’s mere silence about a particular feature does not tend to teach away from it”); FN1: In re Urbanski, FC 2016 (“[i]f references taken in combination would produce a seemingly inoperative device…such reference teaches away” but the Board rejected Elbrus’s inoperative device argument)). Regarding Elbrus’s inoperative device argument, the FC panel explained that “it is not necessary that [Sukegawa and Lu] be physically combinable to render [a claim] obvious” (Allied Erecting, FC 2016 (“‘[t]he test…is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference’, but rather whether ‘a skilled artisan would have been motivated to combine the teachings”) (citing In Keller, CCPA 1981 and Pfizer, FC 2007)). And the FC panel found “the Board’s conclusion” (based the Board’s “weighing of the expert evidence”) that any operability hurdles…would be overcome by a person of ordinary skill” to be supported by substantial evidence. The FC panel also concluded that substantial evidence supported the Board’s conclusion that the inclusion of a third reference (“Hardee”) rendered claim 7 invalid for obviousness (e.g., “the mere possibility of having to boost voltages above Vdd does not detract from the aforementioned advantages associated with modifying Sukegawa in view of Hardee’s teachings”).
Docket No. 2017-1827
REYNA, SCHALL, STOLL
June 20, 2018
Brief summary: Board finding of patent ineligibility under § 101 affirmed as Mr. Wang’s claims “contain ‘additional features’ that embody an ‘inventive concept,’ so as to nevertheless make them patent-eligible” under Alice (US 2014).
Summary: Mr. Wang appealed Board final decision of his appeal of the Examiner’s rejection of his claims as being directed to non-statutory subject matter under § 101, indefiniteness, and anticipation. “The invention claimed in the ‘680 application relates to ‘[a] phonetic symbol system formed by phonetic symbols using letters of [the] English alphabet” which the Examiner and the Board “agreed…that ‘defining phonetic symbols in language, using strings of English letters,’ is an unpatentable abstract idea.” The FC panel reviewed the Board’s decision de novo (“a pure question of law” (Genetic Techs., FC 2016). It explained that “[f]or all categories except process claims, the eligible subject matter must exist in some physical or tangible form” (Digitech, FC 2014 (“must be a ‘concrete thing, consisting of parts, or of certain devices and combination of devices’” (citing Burr, US 1863), “a tangible article that is given a new form, quality, property, or combination through man-made or artificial means” (citing Diamond, US 1980)). The FC panel also explained that “the claimed invention” also does not “qualify as a process under section 101” as “none of the application claims on appeal requires an act or step or anything that must be performed” (35 USC § 100(b); “an act, or series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing” (Gottschalk, US 1972; In re Nuijten, FC 2007)). In addition, the FC panel wrote that “where, as here, claims of a patent application recite an abstract idea, the question becomes whether they contain ‘additional features’ that embody an ‘inventive concept,’ so as to nevertheless make them patent-eligible” (Alice, US 2014), and that “there is no inventive concept that rescues them from patent ineligibility.”
Docket No. 16-1011
PROST, MOORE, STOLL
June 22, 2018
Brief summary: SCOTUS reversed the FC, holding that WG’s “award for [extraterritorial] lost profits was a permissible domestic application of §284”.
Summary: WesternGeco (WG) sued Ion Geophysical (ION), alleging ION infringed claims of four patents under §§271(f)(1) and (f)(2) (“address[ing] the act of exporting components that are specially adapted for an invention”; enacted as “a direct response to a gap in our patent law” (Microsoft, US 2007)) by selling a competing system for surveying the ocean floor “built from components manufactured in the [US], shipped to companies abroad, and assembled there into a system indistinguishable from” WG’s. The jury found ION liable and awarded [WG] damages in royalties and lost profits under §284”, the DC denied ION’s motion to set aside the verdict “arguing that [WG] could not recover damages for lost profits because §271(f) does not apply extraterritorially”, and in 2015 an FC panel reversed (stating that “§271(a), the general infringement provision, does not allow patent owners to recover for for lost foreign sales” (citing Power Integrations, FC 2013)). SCOTUS remanded the FC’s decision under Halo (US 2016) and in 2016 the FC “reinstated the portion of its decision regarding §271(f)’s extraterritoriality.” In this decision, SCOTUS reversed the FC, holding that WG’s “award for [extraterritorial] lost profits was a permissible domestic application of §284”. SCOTUS explained that “[t]he presumption against extraterritoriality assumes that federal statutes ‘apply only within the territorial jurisdication of the” US, and whether that presumption has been rebutted is determined by asking “whether the case involves a domestic application of the statute” (“identifying ‘the statute’s ‘focus’”). That question is answered by “asking whether the conduct relevant to that focus occurred in [US] territory”, which is “not analyzed in a vacuum” (“If it works in tandem with other provisions, it must be assessed with those provisions.”) “Here, §271(f)(2) was the basis for WG’s infringement claim and lost-profits damages” and “the focus of §284 in a case involving infringement under §271(f)(2) is on the act of exporting components from the” US (“[p]atent owners who prove infringement under §271 are entitled to relief under §284”) (Microsoft, US 2007; Life Tech., US 2017). And “the conduct of this case that is relevant to the statutory focus clearly occurred in the” US, “[t]he award of damages…not” being “the focus here”. Instead, SCOTUS wrote, “[t]he damages themselves are merely the means by which the statute achieves its end of remedying infringements,” (“‘the infringement’ is the focus of this statute”) “and the overseas events giving rise to the lost-profit damages here were merely incidental to the infringement.” SCOTUS explained that “[i]n asserting that damages awards for foreign injuries are always an extraterritorial application of a damages provision, ION misreads a portion of RJR Nabisco that interpreted a substantive element of a cause of action, not a remedial damages provision” (RJR, US 2016; General Motors, US 1983 (“the overriding purpose’ of §284 is to ‘affor[d] patent owners complete compensation’ for infringements”)). Justice Gorsuch (joined by Justice Breyer) dissented, arguing, e.g., that “[a] U.S. patent provides a lawful monopoly over the manufacture, use, and sale of an invention within this country only” but WG “seeks lost profits for uses of its invention beyond our borders.”
PGR2017-00008 (US 9,283,239 B2)
Final Written Decision
June 22, 2018
Brief summary: FWD decision following PGR finding AB’s method of treatment claims invalid for lack of written description (claimed dosage range not described).
Summary: Grünenthal’s petition for post-grant review (PGR) of AB’s US 9,283,239 B2 alleged that claims 1-17 are unpatentable for lack of written description (WD). Sole independent claim 1 is described in the FWD as illustrative, and claims “[a] method of treating complex regional pain syndrome comprising orally administering zoledronic acid” at “about 80 to about 500 mg…within a period of six months.” The FWD explains that “[i]n a [PGR], the claims of an unexpired patent are interpreted using the broadest reasonable construction [BRC] in light of the specification” (37 CFR § 42.200(b); Cuozzo, US 2016; In re Translogic, FC 2007 (under BRC, “claim terms are given their orindary and customary meaning” as understood in view of “the entire disclosure”); In re Paulson, FC 1994 (“special definition…must be set forth in the specification”)). The Board did not construe any of the claim terms (Wellman, FC 2011). Grünenthal argued that the claims did not provide a WD for the “about 80 to about 500 mg…within six months” limitation, and separately challenged claim 17 for lacking WD of “an oral dosage form containing ‘at least 10% zoledronic acid’”. The FWD explained that the WD “does not have to provide exact or verbatim textual support” (Fujikawa, FC 1996) but must “reasonably convey…that the inventor has possession at that time of the later claimed subject matter” (Vas-Cath, FC 1991; Capon, FC 2005 (neither examples nor an actual reduction to practice are required, “determined on a case-by-case basis”)). Grünenthal argued that the ‘239 specification “describes the administration of virtually any amount of zoledronic acid over virtually any period of time” and “does not clearly disclose…that the inventors considered the claimed range to be part of their invention” (citing Vas-Cath, FC 1991; Purdue, FC 2000; In re Ruschig, CCPA 1967 (“no guide or indicating or directing that this particular selection should be made”)). AB argued the specification describes “about 50 mg to about 500 mg”, and separately disclosed the lower end of the range (e.g., 10 mg/day for eight days, repeated “once every six months”) and the higher end (e.g., 10 mg/day for eight days “repeated once monthly”), and in ‘239 Examples 3 and 7. The Board found the specification “does not clearly allow persons of ordinary skill in the art to recognize the ‘about 80 mg’ endpoint as part of the invention” (no “description suggesting the importance or criticality of the ‘about 80 mg’ endpoint”). The Board disagreed that “one of skill in the art could derive the claimed ranges from the specification” as “a non-original claim recites a dosage regimen range with endpoints derived from an inordinate amount of picking an choosing from disparate disclosures of various embodiments reciting broader ranges” (e.g., Ralston, FC (“disclosure of 25%-27% water…did not support “at least 20%,” “between 20% and 40%,”, or “in the range of 20%-30%”); Purdue, FC 2000 (“no blaze marks directing the skilled artisan to the Cmax/C24 ratio”)). The Board also found that the “at least 10%” limitation of claim 17 was properly described and “that the ‘inventor’…did not overreach” (Univ. Rochester, FC 2004).
Docket No. 2016-2375
NEWMAN, O’MALLEY, TARANTO
June 20, 2018
Brief Summary: FC panel concluded “the Board applied the incorrect legal standard in assessing whether TCCC’s ZERO marks are generic”, and vacated and remanded the dismissal of RCC’s oppositions.
Summary: RCC appealed TTAB (“Board”) decision dismissing its opposition to registration of The Coca-Cola Company’s (“TCCC’s”) trademarks including the term ZERO for various soft and sports drinks (used as an element of at least 12 different beverages sold in the US, e.g., SPRITE ZERO). The FC panel opinion explains that “[m]any other soft drink companies have applied to register ZERO-inclusive marks for various types of soft drinks”, including RCC which “disclaimed the term ZERO apart from the marks as a whole.” TCCC responded to an office action “requesting that TCCC disclaim the term ‘zero’ because…the term merely ‘describes a feature of the applicant’s goods’”. TCCC argued that “each of its marks using the term ZERO had acquired distinctiveness under Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f), as part of a ‘family of ZERO marks,’ and refused to disclaim ZERO.” The PTO accepted TCCC’s arguments. RCC opposed the marks, arguing that “the term ZERO was merely descriptive” and “generic”, and therefore “cannot indicate the source of the goods.” The Board concluded that RCC failed to demonstrate genericness and “that TCCC had established, by a preponderance of the evidence, that is had acquired for soft drinks and sports drinks, but not energy drinks. The FC panel reviewed whether the Board applied the correct legal standard to the facts de novo (Princeton Vanguard, FC 2015; Hewlett-Packard, FC 2002) and its factual findings (“[w]hether an asserted mark is generic or descriptive”) for substantial evidence (Princeton Vanguard; Consol. Edison, US 1938). The FC panel concluded that “the Board erred in its legal framing and “should have first assessed the level of the mark’s descriptiveness” (i.e., generic, “whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question” (H. Marvin Ginn, FC 1986; In re Merrill Lynch, FC 1987; In re Cordua, FC 2016 (“if the relevant public…understands the term to refer to a key aspect of that genus” even without “understand[ing] the term to refer to the broad genus as a whole”)) “before determining whether TCCC satisfied its burden of establishing acquired distinctiveness” (In re Northland, FC 1985). The FC panel explained that the Board should have “consider[ed] whether the relevant consuming public would consider the term ZERO to be generic for…the subcategory…of drinks with few or no calories”. Since the Board did not do so, the FC panel wrote that “it is not possible for us to review on appeal whether the evidentiary record can support the Board’s finding of acquired distinctiveness” (“the applicant’s burden of showing acquired distinctiveness increases with the level of descriptiveness” (Steelbuilding.com, FC 2005)). The FC panel also concluded that the Board did not consider all of the evidence properly (e.g., “[s]ales and advertising figures do not…demonstrate that a term is not” generic, questioned the value of TCCC’s expert survey of the public).
Docket No. 2017-1341, -1403 (IPR2015-01190)
PROST, MOORE, STOLL
June 19, 2018
Brief summary: Board’s finding of obviousness of claims 1-8, and non-obviousness of claims 9-10 affirmed. Board found to have erred because the pre-Aqua (FC 2017) FWD “improperly placed the burden on Sirona to demonstrate that the proposed substitute claims were patentable.”
Summary: Sirona appealed Board final written decision (FWD) finding claims 1-8 of US 6,319,006 relating to “a method for producing a [dental] drill assistance device” obvious over the combination of the “Bannuscher” (DE 195 10 294) and “Truppe” (US 5,842,858) and denying its contingent motion to amend the claims. ISA cross-appealed FWD holding claims 9-10 patentable. The FC panel reviewed “the Board’s legal determination of obviousness de novo” (Arctic Cat, FC 2017) “and its factual findings for substantial evidence” (Outdry, FC 2017) and “its procedures for compliance with the [APA] de novo”, explaining it “must set aside Board decisions if they are ‘arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law’” (5 USC § 706; EmeraChem, FC 2017). Challenged claim 1, upon which patentability for claims 2-8 depends because “Sirona did not raise separate patentability arguments” for those claims, includes the limitation of “carrying out a three-dimensional optical measuring of the visible surfaces of the jaw and of the teeth and compiling a corresponding measured data record”. The FC panel explained that the parties “filed different translations of Bannuscher”, both describing “inputting plaster models from impressions taken of the ‘patient’s oral situation’ into a computer, but do so differently”, and therefore “dispute whether Bannuscher digitally inputs structures of the mouth or movements of the jaw into the simulation.” Truppe is explained to relate to planning for surgery that “incorporates ‘representations from imaging methods.’” Sirona did not challenge the Board’s legal analysis but argued the combination of references did not disclose the “three dimensional optical measuring…and compiling a corresponding measured data record”, and whether there was a motivation to combine the references. The Board found “that Bannuscher digitally inputs the structures from the plaster model for correlation and not simply jaw movement”, and the FC panel concluded this was supported by substantial evidence. The FC panel also found that substantial evidence supported the Board’s finding that Truppe discloses “three-dimensional optical measuring”, and not just 2-D as Sirona argued. The FC panel also found substantial evidence supported the Board’s finding that there was a motivation to combine the references, based in part on expert testimony. The Board’s conclusion of obviousness of claims 1-8 was therefore affirmed. Sirona also argued “that the Board relied on theories that first appeared in the” FWD (SAS, US 2018 (Director does not “enjoy a license to depart from the petition and institute a different [IPR] of his own design”), but the FC panel disagreed (e.g., “[t]he Board did not change theories simply because the petition did not use the exact words ‘geometery data’” (Rambus, FC 2013). Sirona also argued the Board erred in denying its contingent motion to amend, and the FC panel agreed since the pre-Aqua (FC 2017) FWD “improperly placed the burden on Sirona to demonstrate that the proposed substitute claims were patentable.” The FC panel also concluded that the Board did not err in not applying “findings from its analysis of Sirona’s motion to amend to its analysis of claims 9-10” and therefore affirmed the Board’s decision that claims 9-10 are patentable.
Docket No. 2017-1984
LOURIE, CLEVENGER, REYNA
June 12, 2018
Brief summary: Board decision following inter partes reexamination affirming the examiner’s rejection of Mobileye’s claim for estimating a time-of-contact between a moving vehicle and an obstacle” as obvious affirmed.
Summary: Mobileye appealed Board decision following inter partes reexamination (requested by iOnRoad) affirming the examiner’s rejection of claims 1-7 of US 7,113,867 “directed to a system for estimating a time-of-contact between a moving vehicle and an obstacle” as obvious. The decision was only appealed with respect to ‘867 claim 6. The system functions “by recording successive images and analyzing ‘the rate at which the separation between the vehicle and obstacle’ is changing”, relying on “the lateral displacement” which “will ‘uniformly approach zero’…indicating that the vehicle and obstacle will collide” (claimed in appealed claim 6). iOnRoad argued that claim 6 would have been obvious over three references: “Matthews” (1994), “Lee” (1976), and “Goodrich” (US 4,257,703). Mobileye only appealed the Board’s findings regarding Goodrich, which the FC panel opinion explained “teaches a collision avoidance system that uses the ‘lateral translation of the block’ to predict ‘whether or not at its current lateral velocity, the block will clear or intersect [with] the vehicle’” (and the Board found “substantially uniformly approaches zero”). The FC panel reviewed the Board’s decision de novo (In re Elsner, FC 2004; Randall Mfg., FC 2013 citing KSR, US 2007 (obviousness)) and its underlying factual findings for substantial evidence (In re Gartside, FC 2000; Consol. Edison, US 1938 (evidence that “a reasonable mind might accept the evidence to support the finding”)). The FC panel concluded that “the Board’s finding that Goodrich teaches the ‘substantially uniformly approached zero’ limitation is supported by substantial evidence”. Mobileye’s argument that claim 6 relates to “lateral displacement” while Goodrich only teaches “collision avoidance based on a lateral velocity” was found by the FC panel to be “a distinction without a difference.” Thus, the Board’s decision was affirmed.