DC decision invalidating claims for indefiniteness of the term “half-liquid” affirmed


IBSA Institut Biochimique, S.A. et al. v. Teva Pharmaceuticals USA, Inc.

Docket No. 2019-2400
PROST, REYNA, HUGHES
July 31, 2020

Brief Summary: DC finding of invalidity for indefiniteness of the term “half-liquid” affirmed.

Summary: IBSA appealed DC decision finding claims 1, 2, 4, and 7-9 of Orange Book patent US 7,723,390 relating to “[a] pharmaceutical composition comprising thyroid hormones” invalid for indefiniteness because “the meaning of ‘half-liquid’ was not otherwise reasonably ascertainable from the record” (the claim recites “a soft elastic capsule consisting of a shell of gelatin material containing a liquid or half-liquid”). IBSA filed suit against Teva regarding ANDA No. 211369 for a generic version of Tirosint®. In its decision, the DC acknowledged the parties agreement “that the intrinsic record does not define ‘half-liquid’” (including the claims). The ‘390 patent issued from the US ‘467 application and claimed priority to an Italian application that is written in Italian. IBSA argued “that the Italian application used the term ‘semiliquido’ in the same places where the ‘390 patent used ‘half-liquid,’ and where a certified translation of the Italian Application prepared for IBSA in 2019 used ‘semi-liquid’” and “that there is a link between these terms such that a person of ordinary skill in the art (‘POSA’) would understand ‘half-liquid’ and ‘semi-liquid’ to be synonyms”, but the DC gave the translation “no weight in its analysis”. Instead, the DC found “that the document that best reflected the applicant’s intent was the document submitted for examination-the ‘467 application.” The DC also concluded the prosecution history provided “evidence that the application did not mean ‘semi-liquid’ when he used the term ‘half-liquid’” and that the specification indicated in its references to “pharmaceutical references…did not show that ‘half-liquid’ meant ‘semi-liquid’” (i.e., “the applicant knew of the term ‘semi-liquid’ yet intentionally chose not to use it”). The DC also concluded that “it is ‘exceedingly unlikely that [‘half-liquid’] was a term of art at the relevant date” and “afforded” IBSA’s expert opinion “no weight” as it was “exclusively based on evidence that the court already found unpersuasive”. The FC panel explained that “[t]he definiteness requirement…’must take into account the inherent limitations of language’” but also that “a patent must be precise enough to afford clear notice of what is claimed” (Nautilus, US 2014). The FC panel agreed with the DC that the specification did not clarify the meaning of the term, “that a POSA would likely consider the discrepant usage of ‘half-liquid’ and ‘semiliquido’ between the ‘390 patent and the Italian Application to be intentional, implying that the different word choice has a different scope”, and that this “does not amount to a refusal to consider a foreign priority document” (Abbott, FC 2009 (“when discrepancies between a foreign priority document and the U.S. filing exist, it may be proper to view the discrepancies as intentional”)). The FC panel also noted that during prosecution “the applicant had a pending claim using ‘half-liquid’ and another claim, depending from that claim, using the term ‘semi-liquid’”, providing “additional evidence that the application knew the term ‘semi-liquid’ yet elected to use ‘half-liquid’ to mean something different.” The FC panel also agreed with the DC that the extrinsic evidence does not supply a definite meaning for “half-liquid”.

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UT cannot be involuntarily joined due to state sovereignty, but DC incorrectly analyzed whether case could proceed without UT


Gensetix, Inc. / Univ. Texas v. Baylor College of Medicine

Docket No. 2019-1424
NEWMAN (D/C), O’MALLEY, TARANTO (C)
July 24, 2020

Brief Summary: DC correctly found UT could not be involuntarily joined under Eleventh Amendment but abused its discretion in finding suit could not proceed without UT.

Summary: Gensetix is the University of Texas’s (UT) exclusive licensee of US 8,728,806 and 9,333,248 directed to methods for modifying a patient’s immune system to fight cancer. Gensetix sued Baylor for infringement and named UT as an involuntary plaintiff pursuant to Rule 19(a). The DC determined that UT could not be added as an involuntary plaintiff under the Eleventh Amendment (at UT’s request) and that the suit could not proceed without UT. This opinion explains that “[t]he license agreement provides that, Gensetix, at its own expense, must enforce any patent ‘covered by the license and is entitled to retain recovery from such enforcement’” and that “UT retained a secondary right to sue if Gensetix fails to file suit against a substantial infringer within six months” of knowing of the infringer. Gensetix and UT also agreed to full cooperation in a suit and “that nothing in the agreement shall be deemed a waiver by UT of its sovereign immunity.” UT refused to be joined to the suit and Gensetix added it as an involuntary plaintiff. The inventor is former UT employee William Decker who moved to Baylor and, according to Gensetix, “published content while at Baylor that ‘gives Gensetix reason to believe’ that Decker has practiced methods infringing at least claim 1 of each of the patents-in-suit.” The FC panel concluded that “Rule 19(a)(2) cannot be used to drag an unwilling UT into federal court” because “UT did not voluntarily invoke federal court jurisdiction” (“the key distinction between Regents of UC and the present case” (Regents, FC 1997) and Gensetix “agreed to terms” in the license “expressly stating that UT was not waiving its sovereign immunity, and terms that allow UT to initiate suit on behalf of Gensetix, but not the other way around” (“in the absence of a state voluntarily availing itself of federal court jurisdiction, or an express waiver of sovereign immunity, Rule 19(a) must yield to the state’s assertion of sovereign immunity”). The FC panel therefore affirmed the DC’s “conclusion that UT may not be jointed as an involuntary plaintiff”. However, the FC panel also concluded that the DC abused its discretion in finding that the case cannot proceed without UT. This opinion explains that “Rule 19(b) provides that, where joinder of a required party is not feasible, ‘the court must determine whether, in equity and good conscience, the action should proceed among the existing parties or should be dismissed”, including consideration of four factors (whether: it might prejudice a party, could be lessened, judgment in the required party’s would be adequate, and plaintiff would have an adequate remedy). The FC panel agreed with Gensetix that the DC “abused its discretion by failing to meaningfully analyze each of the Rule 19(b) factors…by collapsing the…inquiry into one dispositive fact: UT’s status as a sovereign” and “dismissed the lack of an adequate remedy for Genestix…as simply ‘an inherent risk’” of contracting “with a sovereign entity.”

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DC decision of no invalidity including no common ownership regarding double-patenting affirmed


Immunex Corporation, Amgen Manuf., Ltd., Hoffman La-Roche Inc. v. Sandoz Inc., et al.

Docket No. 2020-1037
O’MALLEY, REYNA (D), CHEN
July 1, 2020

Brief Summary: DC finding of no invalidity for obviousness-type double-patenting (no common ownership), written description or obviousness affirmed.

Summary: Sandoz appealed abbreviated Biological License Application (“eBLA”)-related DC judgment that Sandoz has failed to prove the Enbrel® (an anti-TNF antibody) patents-in-suit (US 8,063,182 and 8,163,522) were invalid for obviousness-type double patenting, lack of written description, or obviousness. Immunex (which was acquired by non-party Amgen and was the original licensee) is Roche’s exclusive licensee of the patents-in-suit. Sandoz argued for invalidity under obviousness-type double patenting based on “several patents filed by Immunex Corp. in the years leading up to and shortly after the approval of Enbrel®” but the DC concluded “(1) that Sandoz’s proposed test for common-ownership does not apply; (2) even that test applies, the patents-in-suit and the asserted double-patenting reference patents are not commonly owner; (3) even if they are commonly owned, the two-way, rather than the one-way test…applies as to come of the double-patenting references; and (4) the patents-in-suit are patentably distinct from each of the asserted double patenting references.” The FC panel determined that the Roche-Immunex exclusive license “did not transfer all substantial rights” from Roche to Immunex, and therefore there was no common ownership of the patents cited by Sandoz. In reaching its decision, the FC panel rejected Immunex’s “time of invention” arguments (i.e., issue “arises only where the relevant inventions were owned by the same entity at the time of the invention”) since, e.g., it could “lead to the absurd result where, even if originally applied for by inventors working under an obligation of future assignment to an employer, patents may not be considered ‘commonly owned’ because, at the ‘time of invention,’ the assignment had not been effectuated” (In re Longi, FC 1985; Geneva Pharm., FC 2003; Ex Parte Maurice, BPAI 2005). And it found “Roche did not transfer all substantial rights in the patents to Immunex” because “although Immunex obtained the first right to sue, Roche retained the secondary right to sue” (Alfred E. Mann, FC 2010; Lone Star, FC 2019; Speedplay, FC 2000 (“a licensee’s right to grant royalty-free sublicenses to defendants sued by the licensor rendered illusory the licensor’s right to sue”, “precisely what Immunex cannot do here”)). It therefore concluded that “obviousness-type double patenting does not apply”. Judge Reyna disagreed, writing in the dissent that “Roche’s retained rights are illusory”. The FC panel affirmed the DC’s finding that the patents were adequately described (e.g., “[i]t is well-established that a patent specification need not re-describe known prior art concepts” (Capon, FC 2005; Zoltex, FC 2016; e.g., prior art referenced in priority application “shows that a POSA would have known the entire p75 sequence at the time of the invention”, “POSA would have followed [Example 11] to create” the antibody). The FC panel also affirmed the DC’s finding of no invalidity for obviousness (e.g., no error in finding “a POSA would be dissuaded from selecting or combining the components as claimed”, no persuasive secondary considerations evidence).

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DC decision adding Dana Farber/GI (Pfizer) inventors to Ono/BMS anti-PD1 patents affirmed

Dana-Farber Cancer Institute, Inc. v. Ono Pharm. Co., et al. (Bristol-Myers Squibb)
Docket No. 2019-2050
NEWMAN, LOURIE, STOLL
July 14, 2020

Brief Summary: DC order to add Dana Farber and GI/Pfizer inventors to the Ono/BMS relating to the use of anti-PD1 antibodies affirmed.

Summary: Ono/BMS appealed DC order requiring Dr. Gordon Freeman and Dr. Clive Wood to be added as co-inventors to U.S. Pat. Nos. 7,595,048; 8,168,179; 8,728,474; 9,067,999; 9,073,994; and 9,402,899, each relating to methods for treating cancer using anti-PD1 antibodies. Dana Farber successfully alleged to the DC that its employee Dr. Freeman and Genetics Institute/Pfizer employee Dr. Wood should be named inventors on the patents that only name Ono’s Drs. Honjo, Minato, and Iwai. Drs. Freeman and Wood collaborated with Dr. Honjo before the JP priority application to which the disputed patents claim priority was filed. The FC panel reviewed the DC inventorship decision de novo and the underlying findings of fact for clear error (Vapor Point, FC 2016; 35 U.S.C. § 116(a) (joint inventorship)). Ono argued Drs. Freeman and Wood “were too far removed from the claimed subject matter of the patents”, their “contributions were public and were hence in the prior before the alleged conception”, and the Ono inventors’ work “performed independently of Drs. Freeman or Wood, were what led directly to the conception of the claimed inventions, and the previous work was at most speculative because it was not in vivo.” Dana-Farber argued that “Ono offers an erroneous view of the law” since that “would require each joint inventor to individually have conceived the complete invention and have participated in a particular moment of conception, which is inconsistent with the law.” The FC panel agreed with Dana-Farber that Ono proposed an “unnecessarily heightened inventorship standard” (Fina, FC 1997 (“[A] joint invention is simply the product of a collaboration between two or more persons working together to solve the problem addressed.”); Pannu, FC 1998 (e.g., “contribute in some significant manner”, “do more than merely explain to the real inventors well-known concepts and/or the current state of the art”); Eli Lilly, FC 2004 (“may be joint inventors even though they do not physically work on the invention together or at the same time”); Burroughs Wellcome, FC 1994 (“An inventor need not know…that an invention will work for its intended purpose in order for conception to be complete…”)). Ono also unsuccessfully argued that the contributions of Drs. Freeman and Wood were not significant because “the Honjo patents were issued over” that provisional application, the FC panel explaining that whether their “contributions to the inventions are co-extensive with…their provisional application” is factually unclear and “joint inventorship does not depend on whether a claimed invention is novel or nonobvious over a particular researcher’s contribution” (“Collaboration and concerted effort are what result in joint inventorship.” (citing Eli Lilly)). The FC panel also rejected Ono’s argument “that research made public before the date of conception of a total invention cannot qualify as a significant contribution to conception of the total invention.” The FC panel also agreed that “knowing the structure and function of PD-L1 was essential to all the claimed inventions”, which was contributed by Drs. Freeman and Wood. The DC decision was therefore affirmed.

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IPR obviousness decision based on common sense modification of prior art affirmed


B/E Aerospace, Inc. v. C&D Zodiac, Inc.

Docket No. 2019-1935, -1936 (IPR2017-01275, -01276)
LOURIE, REYNA, HUGHES
June 26, 2020

Brief Summary: Board IPR obviousness decision based in part on common sense affirmed.

Summary: B/E appealed Board final written decision (FWD) finding certain claims of US 9,073,641 and 9,440,742 related “to space-saving technologies for aircraft enclosures such as lavatory enclosures, closets, and galleys” invalid for obviousness. Representative claim 1 of the ‘641 patent recites “a lavatory unit including a forward wall portion” including “a first recess” and a “second recess”. The Board concluded obviousness because the prior art shows a “contoured wall design” that meets “the ‘first recess’ claim limitation” and that the “second recess”, while not explicitly disclosed, “is nothing more than the application of a known technology…for its intended purpose with a predictable result”; agreed with Zodiac that a skilled artisan would have been motivated to include the second recess (“interested in maximizing space in airplane cabins”); and that “‘it would have been a matter of common sense’ to incorporate a second recess”. The FC panel reviewed “the Board’s legal conclusions of obviousness de novo and its factual findings for substantial evidence” (HTC, FC 2017; Consol. Ed., US 1938). The FC panel agreed with the Board that “modifying” the prior art “to include a second recess was nothing more than the predictable application of known technology…because a person of skill in the art would have applied a variation of the first recess and would have seen the benefit of doing so” (KSR, US 2007 (“combination of familiar elements according to known methods”, “no more than yield predictable results”); also supported by expert testimony). The FC panel also affirmed the Board’s conclusion that “it would have been a matter of common sense” to incorporate the second recess, and disagreed with B/E’s assertion that the Board relied “on ‘an unsupported assertion of common sense’ to ‘fill a hole in the evidence formed by a missing limitation in the prior art” (“failed to provide a ‘reasoned explanation and record evidence to support its position” (Arendi, FC 2016)). The FC panel explained that “[i]n KSR, the Supreme Court opined that common sense serves a critical role in determining obviousness” and “teaches that familiar items may have obviousness uses beyond their primary purposes, and in many cases, a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle”, also noting that “common sense cannot be used as a ‘wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art” (KSR, US 2007; Perfect Web, FC 2009 (“affirmed a [DC’s] invocation of common sense to supply a missing claim limitation…[t]he record showed that the technology was simple and that ‘step (D) merely involves repeating earlier steps’ until success is achieved”)). “Here,” the FC panel wrote, “just like in Perfect Web, the evidence showed the technology…is simple” and “[t]he missing claim limitation (the ‘second recess’) involves repetition of an existing element (the ‘first recess’) until success is achieved.” The FC panel also found that the Board did not rely on certain “design drawings” and did not reach B/E’s § 311(b) arguments.

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IPR obviousness determinations affirmed; preamble limiting due to reliance for antecedent basis


Shoes By Firebug LLC v. Stride Rite Children’s Group, LLC

Docket No. 2019-1622, -1623 (IPR2017-01809, -01810)
LOURIE, MOORE, O’MALLEY
June 25, 2020

Brief Summary: Board finding that preamble do not limit the claims affirmed for one patent but not the other; obviousness conclusions affirmed.

Summary: Firebug appealed Board IPR decisions finding the claims of US 8,992,038 and 9,301,574 directed to illumination systems for shoes unpatentable as obvious. The Board concluded that the preamble term “textile footware” was not limiting to the claim body describing the components and function of the illumination system. The Board also found “the disclosure of the references is not outweighed by Firebug’s evidence of secondary considerations of nonobviousness.” The FC panel reviewed the Board’s claim construction de novo as it was “based solely on evidence intrinsic to the patent” (Shire Dev., FC 2015). The FC panel also explained that “[w]hether to treat a preamble as a limitation is a determination ‘resolved only on review of the entire[]…patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim” and generally “limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim” (e.g., “dependence on a particular disputed preamble phrase for antecedent basis may limit claim scope”), but not if the “patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention” (Catalina Mktg., FC 2002). It concluded “that the body of the ‘038 patent recites a structurally complete invention” and the preamble is “merely an intended purpose that does not limit the claims” (e.g., “the same element-the footwear-is independently recited in the body of the claim” that “does not go on to expressly impose any further limitation on the footwear requiring use of a specific material”; supported by written description stating “textile materials…are just one possible material type”). In contrast, the ‘574 claim was found to rely “on the instance of ‘footwear’ introduced in the preamble for ‘antecedent basis’” and to be limiting on the claim body (such reliance “can evince an inventor’s intent that the preamble limit the scope of the claim”) and the Board erred its analysis of this claim. However, that error was found to be “harmless” (In re Watts, FC 2004; Getcher, FC 1997) because its ultimate conclusion of obviousness was correct (also correct regarding the ‘038 patent; e.g., “[t]he Board was within its discretion to weigh the credibility of expert testimony” (Yorkey, FC 2010)). Firebug also argued “that the Board erred by failing to consider two license agreements” and testimony regarding those licenses that “establish a nexus between Firebug’s products and the challenged claims, which the Board otherwise found lacking.” Other expert testimony was struck by the Board because the expert refused to be deposed and had little weight. But the FC panel agreed with the Board that the evidence was weak and found no error in the Board’s determination. The Board’s decisions were therefore affirmed.

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Patent ineligibility decision affirmed as claims “recite no technological solution”


Dropbox, Inc. et al. v. Synchronoss Technologies, Inc.

Docket No. 2019-1765, -1767, -1823
PROST, WALLACH, HUGHES
June 19, 2020
Non-precedential

Brief Summary: DC holdings of patent ineligibility affirmed as claims did not, e.g., “describe how to solve the problem in a manner that encompasses something more than the ‘principle in the abstract’”.

Summary: Dropbox appealed DC decision holding US 6,178,505, 6,058,399 and 7,567,541 relating to delivery, upload and backup of computer data ineligible under § 101. The DC found “that the patents claim abstract ideas, and…provide no inventive concept transforming the abstract idea into patentable subject matter.” The FC panel agreed with the DC that under step one of the Alice framework “access checker element” of the ‘505 patent “offers nothing but a functional abstraction” and “[t]he specification…does little to instead define this abstraction as a technological solution” (“The technical aspects of the access filter, where present, are discussed only in terms of non-limiting embodiments” which “is not enough to modify the focus of the claims.”; Alice step one “look[s] at the focus of the claimed advance over the prior art to determine if the claim’s character as a whole is directed to excluded subject matter”. (Alice, US 2014; Koninklijke, FC 2019; Affinity Labs., FC 2016)). The FC panel also explained that certain other limitations “redirect the focus of the claims towards a technological problem” but “still recite no technological solution” (Ancora, FC 2018 (“Improving security…can be a non-abstract computer functionality improvement if done by a specific technique that departs from earlier approaches to solve a computer problem.”)). Further, it explained that an assertion that the patent “solved a technological problem…is not enough” and it “has to describe how to solve the problem in a manner that encompasses something more than the ‘principle in the abstract’”, and “that solution has to be evident from the claims” (ChargePoint, FC 2019). The FC panel also agreed the ‘505 claims did not provide an “inventive concept” under Alice step two since “[a]t best, the claims recite the application of an abstract idea using conventional and well-understood techniques specified in broad, functional language” (BSG Tech, FC 2018). Similar conclusions were reached regarding the ‘399 and ‘541 patents (e.g., claim “only discloses generalized steps to carry out generic computer functions” and “there are long-standing practices analogous to the claimed steps”; claim elements “arranged in a conventional manner”; “the purported improvements over the prior art have not been captures in the claim language”). The DC decisions were therefore affirmed.

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IPR obviousness and non-obviousness findings affirmed (e.g,. the Board “explained why”)


Boston Scientific Neuromodulation Corp. v. Nevro Corp., Andrei Iancu (USPTO, intervenor)

Docket No. 2019-1582, -1635 (IPR2017-01812, -01920)
LOURIE, MOORE, O’MALLEY
May 29, 2020
Non-precedential

Brief Summary: Board IPR final written decisions finding certain of Boston’s claim unpatentable for obviousness and others patentable affirmed.

Summary: Boston appealed Board IPR decision finding certain claims of US 6,895,280 relating to “[a] spinal cord stimulation system”, methods for using, and recharging a battery used in the same unpatentable as obvious. Nevro cross-appealed Board IPR decision that certain ‘280 method claims are not unpatentable as obvious. The FC panel first concluded that the Board’s findings that the cited prior art discloses “detachable leads” are supported by substantial evidence (e.g., inventor testimony that “all SCS systems known to them employed detachable leads”, similar expert testimony, and the Board “explained why”). FN1 explains that while the Board’s conclusion did not “rest[] on a conclusion” of inherent disclosure in its obviousness conclusions, but noted that, even if it did, “substantial evidence supports such a finding” (Finnigan, FC 1999). The FC panel also reviewed the Board’s construction of “aligning” and “alignment” under the broadest reasonable interpretation standard (“applies in this IPR proceeding” (Personalized Media, FC 2020; “Changes to Claim Construction Standard…”, 83 Fed. Reg. 51,340 (Oct. 11, 2018; 37 CFR 42.100(b)) “in light of the specification, prosecution history, and the understanding of one skilled in the art” (Microsoft, FC 2015). The FC panel found no error in the Board’s construction since it is supported by intrinsic evidence, e.g., “[t]he plain language of the claims does not require positioning that achieves optimal charging efficiency” which is supported by the specification, as well as extrinsic evidence (“dictionary definitions”). The FC panel also found no error with the Board’s construction of “back telemetry receiver” as it is supported by the claim language and the specification. The FC panel also concluded that substantial evidence supports the Board’s finding of a motivation to combine the cited prior art “based on the disclosures in those references” and expert testimony. The Board’s exclusion of an exhibit from an expert declaration was found not be an abuse of discretion since 37 CFR 42.6(a)(3) does not allow arguments to be “incorporated by reference from one document into another document” (e.g., “certain elements of claims 8, 18, and 22-24 that are not present in exemplary claim 27” are “only address in Exhibit C” and not the Patent Owner’s Response). Regarding Nevro’s cross-appeal, the FC panel agreed with the Board’s construction requiring that “the ‘waiting’ limitation must occur after the first programming step (e) and before the second ‘re-programming’ step (f)” because, e.g., holding “otherwise would render the ‘waiting’ element superfluous and effectively obviate the need to ‘re-program’ the stimulation parameters”. The Board decisions were therefore affirmed.

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IPR obviousness decision affirmed; Board’s real-party-in-interest determination not appealable under § 314(d)


ESIP Series 2, LLC v. Puzhen Life USA, LLC

Docket No. 2019-1659 (IPR2019-02197)
LOURIE, REYNA, HUGHES
May 19, 2020

Brief Summary: Board IPR obviousness decision affirmed. Board’s real-party-in-interest determination not appealable under § 314(d).

Summary: ESIP appealed Board IPR decision finding the claims of US 9,415,130 relating to systems and methods for “germicidal protection and aromatic diffusion in enclosed habitable spaces” (“[a] method for introducing a scent into breathable air”) invalid for obviousness in view of two different combinations of prior art (Sevy and Cronenberg, Sevy and Giroux). The Board determined that “Sevy discloses every element of the challenged claims except for the ‘arcuate channel’ limitation of the ‘separating’ claim element” which are disclosed by the other references and that “a skilled artisan would have been motivated to combine the teachings”. ESIP argued Sevy does not teach the “separator” but the FC panel found “no error with the Board’s decision to credit the opinion of one expert over another” (Impax, FC 2018). The FC also found no error with the Board’s finding that ESIP’s expert testimony was “‘conclusory and unsupported’ and thus ‘unhelpful and unpersuasive’”. ESIP also argued that “a skilled artisan would have been motivated to substitute” the methods of Sevy with those of Cronenberg since, e.g., this “would require ‘substantial reconstruction’”. But the FC panel explained that for this proposition ESIP “relies solely on the discredited testimony of Dr. Bell”, found no error with the Board’s reliance on “the disclosures” per se and another expert’s testimony, and concluded that “[s]ubstantial evidence supports the Board’s finding” of a motivation to combine the references. For similar reasons, the FC panel agreed with the Board’s obviousness conclusions regarding the combination of Sevy and Giroux. ESIP also argued the Board erred “by failing to expressly define the applicable level of ordinary skill in the art” but the FC panel explained that “ESIP fails to make the requisite showing that there are ‘any meaningful differences’ between the parties proposed definitions or that ‘the outcome of [the] case would have been different based on which definition the Board used” (Genyzme, FC 2016) and reached a similar conclusion regarding ESIP’s claim construction arguments (Fresenius, FC 2009 (“no record support regarding why a modified claim construction would affect the [judgment]”)). ESIP also argued “that Puzhen failed to identify ‘all real parties in interest’ and the Board erred” in instituting the IPR but the FC panel explained that “the Board’s § 312(a)(2) real-party-in-interest determination is final and non-appealable” (Cuozzo Speed, US 2016 (§ 314(d) bars appellate review of…decision to initiate” IPR); Thryv/Click-To-Call, US 2020 (§ 314(d) also precludes judicial review of the…one-year time bar”)), and found “no principled reason why preclusion of judicial review under § 314(d) would not extend to…the ‘real parties in interest’ requirement of § 312(a)(2).” The Board decision was therefore affirmed.

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Fox Factory, Inc. v. SRAM, LLC

Docket No. 2019-1544 (IPR2017-01440)
NEWMAN, O’MALLEY, TARANTO
May 18, 2020
Non-precedential

Brief Summary: Board IPR obviousness FWD affirmed based on SRAM’s secondary evidence (e.g., “industry skepticism and subsequent praise and long-felt need”).

Summary: Fox appealed Board IPR final written decision (FWD) holding claims 1-26 of SRAM’s US 9,291,250 directed to the arrangement of teeth that engage a bicycle chainring set-up (“X-Sync chainring”) were not shown to be unpatentable for obviousness. The ‘250 patent states a wherein clause including an “axial fill limitation” requiring “widened teeth” that “‘fill[] at least 80 percent of [the width of] the outer link spaces’ at the midpoint of the tooth”. A parent patent (US 9,182,027) not including the “maximum axial width” limitation was previously disputed and the FWD and remanded to the Board (not at issue here (Fox, FC 2019)). In this IPR, the Board concluded that the axial fill limitation was “unmet by any of Fox Factory’s evidence” and that SRAM’s evidence of secondary considerations overcame Fox’s arguments that modifying the “chainring’s teeth to meet the axial fill limitation” would have nevertheless been obvious. Fox argued “that the Board’s conclusion of nonobviousness is in error because the only difference between the prior art and the claimed invention is the degree to which the widened teeth should fill the outer chain link spaces, measured halfway up the tooth”, “misapplied our precedent on secondary consideration, erroneously granting SRAM a presumption of nexus between the claimed invention and evidence of the success of the X-Sync chainring”, and “that various unclaimed aspects of the X-Sync chainring, such as its tall, asymmetric, and hooked teeth, were the real driver of its success.” While the FC panel agreed with Fox that “‘a mere change in proportion…involve[s] no more than mechanical skill,’ rather than the level of invention required by 35 U.S.C. 103” (Powers-Kennedy, US 1930), it also agreed with the Board’s conclusion that “SRAM’s optimization…displayed significant invention” based on SRAM’s secondary consideration evidence (e.g., “industry skepticism and subsequent praise and long-felt need to solve chain retention problem”; “such evidence defeated…contention of routine optimization”). The FC panel also agreed with the Board’s “determination of nexus, based on its finding that the X-Sync chainring’s success is largely due to its teeth profile, which is ‘essentially the claimed invention’”. The Board decision was therefore affirmed.

Posted in Inter Parties Review (IPR), IPR, Obviousness, Obviousness (Secondary Considerations) | Leave a comment