In re Magnesita Refractories Company

Docket No. 2016-2345

Nov. 27, 2017


Brief Summary: Board decision refusing to register mark based on genericness and no acquired distinctiveness affirmed.

Summary: MRC appealed TTAB denial of its applications to register the mark MAGNESITA as “generic” or “highly descriptive for Class 19 refractory products, and highly descriptive for Class 37 services” (“online information services for refractory products”) (“refractory products” are “non-metallic, extremely heat resistant substances used to, inter alia, patch, line, or repair high temperature apparatuses, such as furnaces, kilns and reactors”). The Examiner and the Board relied on the doctrine of foreign equivalents “to ascertain the genericness or descriptiveness of a foreign-word mark from a common language by translating the mark into English” (Palm Bay Imp., FC 2005) (the applicability of which was not challenged here). It refused “registration on grounds that ‘magnesite’ and ‘magenesia’ are components of refractory products and are thus merely descriptive of MRC’s goods and services.” MRC attempted to overcome the rejection by claiming “acquired distinctiveness under § 2(f) of the Lanham Act based on substantially exclusive and continuous use of the mark in commerce.” The FC panel reviewed the Board’s legal conclusions de novo and its factual findings (genericness and acquired distinctiveness) for substantial evidence (In re La. Fish Fry Prods., FC 2015). And the PTO must show genericness “based on clear evidence, and the trademark applicant has the burden of proving acquired distinctiveness” (In re Nordic Nats., FC 2014). The FC panel first explained that MRC’s argument regarding whether the DC properly applied the proper evidentiary burden based on B & B Hardware (US 2015 (DC “should give preclusive effect to [TTAB] decisions in inter parties proceedings if the elements of issue preclusion are met”)) were “inapplicable”. Regarding the genericness of the Class 19 products, the FC panel explained that “[a] mark is generic if the relevant public primarily uses or understands the mark to refer to the class or genus of products in question” (Park N’ Fly, US 1985; Nordic Nats., FC 2014; H. Marvin Ginn, FC 1986). It affirmed the Board decision since, e.g., there is “clear evidence…that the relevant public…would primarily understand magnesia and magenesite to refer to the genus of refractory products by referring to ket aspects of those products” (“MAGNESITA is generic for the genus of refractory products set forth in MRC’s application”) (In re Cordua Rests., FC 2016). Regarding any acquired distinctiveness of the Class 37 services, the FC panel explained that this required showing “that ‘the primary significance of the term in the minds of the consuming public is not the product but the producer’” (Kellogg, US 1938; Coach Servs., FC 2012; “highly descriptive” terms “face[] an elevated burden” (La. Fish Fry); Yamaha Int’l (FC 1988 (“applicant’s claim asserting a term has acquired distinctiveness acts as an admission that the term is merely descriptive”)). MRC’s proferred evidence of distinctiveness was gross sales and declarations showing first and substantially exclusive and continuous use of the term, but the FC panel affirmed the Board’s decision as supported by “ample evidence” (e.g., “MRC did not add any evidence…showing how the public perceives the term, or how the term is otherwise source-identifying.”)

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PTO issues “Guidance on Motions to Amend in view of Aqua Products”

PTO Guidance on Motions to Amend in view of Aqua Products

Update following Oct. 4, 2017 FC (en banc) opinion (Aqua Products, Inc. v. Joseph Matal (USPTO), Docket No. 2015-1177 (IPR2013-00159): USPTO issued guidance on Nov. 21, 2017, explaining that “the Board will not place the burden of persuasion on a patent owner with respect to the patentability of substitute claims presented in a motion to amend.” Provided the “motion to amend…meets the requirements of 35 U.S.C. § 316(d)” (as well as § 42.121 and § 42.221), “the Board will proceed to determine whether the substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner” (“[I]f the entirety of the evidence of record before the Board is in equipoise as to the unpatentability of one or more substitute claims, the Board will grant the motion to amend.”) “[C]urrent briefing practice” will not change, but “if any party…believes there is need to discuss the impact of Aqua Products with the Board in a particular case”, a conference call may be arranged (before or after Due Date 1, and the Board may contact parties with pending motions to amend “to let them know that a request for a conference call is appropriate in this regard”).

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Rembrandt Patent Innovations, LLC et al. v. Apple, Inc.

Docket No. 2016-2324

November 22, 2017


Brief summary: DC claim construction and finding of no infringement by Apple affirmed.

Summary: Rembrandt appealed DC grant of SJ of noninfringement by Apple’s “mobile products” (iPhone, iPad, and iTouch) of US 6,185,679 relating to “techniques for securely initializing, or ‘bootstrapping,’ a computer system.” The FC panel opinion explains that “Apple’s noninfringement arguments hinge on whether the claimed recovery step must be performed automatically without human interaction, as Apple argues” (and the DC agreed), “or whether there is not such a requirement, as Rembrandt argues.” The DC concluded the ‘679 specification “clearly limited” manual recovery “to instances when several attempts at automatic recovery have failed”, “Apple’s recovery process did not solve the same problem purported to be solved by the ‘678 patent”, and making “Apple’s recovery procedure…equivalent to automatic recovery…would vitiate the automatic limitation”.

The FC panel explained that it reviews a grant of SJ under the law of the regional circuit (Classen, FC 2015), here the Ninth Circuit which reviews such decision de novo “in the light most favorable to the opposing party” (Matsushita, US 1986). Claim constructions based solely on intrinsic evidence, as here, are reviewed de novo for clear error (Teva, FC 2015), and “begin[] with the words of the claims themselves…read in view of the specification” (Virtnex, FC 2014; Phillips, FC 1995; Markman, FC 1995; Vitronics, FC 1996 (“specification….‘is the single best guide to the meaning of a disputed term”)). The FC panel agreed with the DC construction of the term based on the specification and its decision to disregard Rembrandt’s contrary expert testimony. Regarding the specification, the FC panel noted that the ‘679 specification (abstract, field of the invention, Summary of the Invention and Detailed Description of the Preferred Embodiment) “repeatedly characterizes the recovery process of the ‘present invention’ as being ‘automated’” (Verizon, FC 2007 (“when a patent ‘describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention”); Honeywell, FC 2006), “reinforced by its criticism of prior art recovery methods that involved human intervention” (Poly-America, FC 2016 (“an inventor may disavow claims lacking a particular feature when the specification distinguishes or disparages prior art based on the absence of that feature”) that is not “[m]ere criticism of a particular embodiment encompassed in the plain meaning of a claim term” (Thorner, FC 2012) (Straight Path IP, FC 2015 (“surrender claim scope…may be implicit, as long as it is sufficiently clear”)) Thus, “[t]he exclusion of non-automated recovery processes is inextricably interwoven into descriptions of the primary purposes of the invention and how the invention overcomes problems in the prior art.”

On infringement, the FC panel agreed with the DC that Apple’s products do not infringe the claims literally as those products require user-initiated recovery (Akzo Nobel, FC 2016) or under DOE since “the concept of equivalency cannot embrace a structure that is specifically excluded” and “fails if it ‘renders a claim limitation inconsequential or ineffective’” (Dolly, FC 1994; Ethicon, FC 1998; Akzo Nobel, FC 2016; Power Integrations, FC 2016). The FC panel explained that “Rembrandt cannot recapture under the doctrine of equivalents what the specification clearly gives up” (J&M Corp., FC 2001; Augme Techs., FC 2014).

Posted in Claim Construction, Doctrine of equivalents, Infringement | Leave a comment

Eli Lilly et al. v. Perrigo / Amneal

Docket No. 2016-2555, -2614

November 22, 2017


Brief summary: DC decision that certain claims are not obvious (e.g., the prior art does not teach away); that certain other claims are obvious (e.g., alternatives theories presented here not raised in front of the DC); and infringement by Amneal (e.g., ‘blade-like manner’…appears nowhere in the claims”) affirmed.

Summary: Lilly appealed DC conclusion that claim 20 of US 8,435,944, related to Lilly’s Axiron® testosterone transdermal applicator, is invalid for obviousness. Amneal appealed DC opinion that claims 9 and 10 of Lilly’s US 8,807,861 are not invalid for obviousness and are infringed by Amneal’s applicator (filed as an ANDA). The ‘944 and ‘861 patents are two of seven unexpired patents listed on the FDA’s Orange Book. Regarding obviousness of ‘944 claim 20, the FC panel agreed with the DC that Lilly’s secondary consideration arguments (teaching away “due to concerns over causing an undesired elevated level of dihydrotestosterone (DHT)” and unexpected results) “lacked probative weight” (e.g., “Lilly’s asserted ‘seven-fold increase’ in skin permeability was based on a flawed extrapolation of data reported in the prior art”). The FC panel also found no error with the DC’s use of the term “prima facie” since it “thoroughly considered all the arguments and evidence before reaching its decision” (In re Cyclobenzaprine, FC 2012). The FC panel refused to consider an argument raised by Amneal regarding the obviousness of the ‘861 claims because “it was not raised below” (HTC Corp., FC 2012; Microsoft, US 2011). The FC panel also found no error with the DC’s refusal to consider certain other obviousness arguments since those “are moot under the [DC’s] claim construction. And the FC panel agreed with the DC’s infringement analysis as Amneal’s argument was based on its contention that “its applicator does not infringe because it does not deform in a ‘blade-like manner’” and that term “appears nowhere in the claims and only in the context of a specific embodiment in the specification.” Thus, the DC’s decision was affirmed.

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Presidio Components, Inc. v. American Technical Ceramics Corp.

Docket No. 2016-2607, -2650

November 21, 2017

Brief summary: DC conclusion of no indefiniteness, that “ATC was entitled to the defense of absolute intervening rights”, and denial of enhanced damages affirmed. Award of lost profits and permanent injunction remanded.

Summary: ATC appealed DC determination that the claims of Presidio’s reexamined US 6,816,356 C2 directed to multilayer electrical capacitors are not indefinite and its award of lost profits and grant of a permanent injunction (which the FC previously temporarily stayed until March 17, 2017 for ATC’s customers that had already purchased infringing product). Presidio appealed DC conclusion that ATC has intervening rights and denial of its request for enhanced damages despite a jury finding of willful infringement. The disputed limitation with respect to indefiniteness is “a conductive second contact…sufficiently close to a first contact in an edge to edge relationship in such proximity as to form a first fringe-effect capacitance with a first contact that is capable of being determined by measurement in terms of a standard unit.” The FC panel explained that under the “reasonable certainty” Nautilus (US 2014) standard, “a claim is not indefinite if a person of skill in the art would know how to utilize a standard measurement…to make the necessary measurement” (Ethicon, FC 2015 (no industry standard but “the disclosure was sufficient”); Teva, FC 2015 and Dow, FC 2015 (“there were competing existing technologies that reached different results, and the patent failed to describe which…to use”); Interval Licensing, FC 2014 (the claims cannot “rely on the ‘unpredictable vagaries of any one person’s opinion”). Here, the FC panel affirmed the DC’s conclusion of no indefiniteness, finding that the “the general approach” (to the “the insertion loss testing method”) “was sufficiently well established in the art and referenced in the patent to render the claims not indefinite.”

“Intervening rights” refers to the rule that “[a]n owner of a patent that survives reexamination is not entitled to infringement damages for the time period between the date of issuance of the original claims and the date of issuance of the reexamined claims if the original and amended claims are not ‘substantially identical’” (35 U.S.C. §§ 252, 307(b); R+L Carriers, FC 2015; Bloom Eng’g, FC 1997). Here, the DC found the scope of the claims “substantially changed” following reexamination “and, therefore, ATC was entitled to the defense of absolute intervening rights.” The FC panel explained that only the question of “whether there is any product or process that would infringe the original claim, but not the amended claim” (R+L) “based on our normal claim construction analysis” (Phillips, FC 2005) is important, not “why an amended claim was narrowed” (R+L). Here, and based in part on an earlier decision (collateral estoppel), the FC panel determined that before reexamination, “theoretical calculations [were] sufficient” but not under the amended claims. Thus, the DC’s decision was correct.

“To recover lost profits, the patentee bears the burden of proof to show a ‘reasonable probability that, ‘but for’ infringement, it would have made the sales that were made by the infringer” (Crystal Semi., FC 2001) using the four factor “Panduit” test (Versata, FC 2013). Lost profits may be recovered “even if [the patentee’s] product does not practice the claimed invention, where the product directly competes with the infringing device” (Presidio, FC 2012). ATC argued the DC erroneously determined Presidio “satisfied the second prong of Panduit analysis-the absence of an acceptable, non-infringing alternative” (which may be either “not acceptable to potential customers or…not available at the time” (Grain-Processing, FC 1999)). The FC panel found the DC’s analysis flawed since “[t]he correct inquiry…is whether a non-infringing alternative would be acceptable compared to the patent owner’s product, not…the infringing product.” The DC compared ATC’s allegedly infringing capacitor (the 550) to one of ATC’s non-infringing capacitors (the 560L), instead of to Presidio’s product (the BB capacitor). As such, the FC panel reversed the DC’s denial of ATC’s request for JMOL and set aside the lost profits award and ordered “a new trial…to determine the reasonable royalty award.”

On the DC’s denial of enhanced damages for willfulness, the FC panel explained that “enhanced damages do not necessarily flow from a willfulness finding” and is determined at the DC’s discretion after “consider[ing] the overall circumstances of the case…to determine whether it is egregious” (WBIP (FC 2016) citing Halo (US 2016) (Read factor analysis is not required)). Here, the FC panel found the DC “appropriately analyzed ATC’s culpability only during the period” following reexamination and did not abuse its discretion.

Based on the evidence presented, the permanent injunction was vacated but the FC panel did “not decide whether this should be the end of the matter” as the DC’s grant of PI was based on its reversed lost profits award and it “has discretion to determine whether other evidence could support a finding of irreparable injury” (eBay, US 2006; Apple, FC 2012 (“patentee must show…absent an injunction…irreparable harm” and “sufficiently strong nexus”); Douglas Dynamics, FC 2013). The FC panel also noted that this PI “may have created the hypothetical market necessary to determine whether consumers would purchase Presidio’s BB capacitor in the absence of ATC’s 550 series capacitors” or whether they “may have turned to non-infringing alternatives…such as the 560L”.

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BASF Corporation v. Johnson Matthey, Inc.

Docket No. 2016-1770

November 20, 2017

Brief summary: DC finding of indefiniteness reversed and remanded (e.g., no “context-specific inquiry into whether particular functional language actually provides the required reasonable certainty”).

Summary: BASF appealed the “effective for catalyzing”/“effective to catalyze” claim limitation of US 8,524,185 directed to systems for performing catalytic conversion of nitrogen oxides (NOx) in an exhaust stream indefinite and therefore invalidating all of the claims. This opinion explains that “the patent claims a partly-dual-layer arrangement of coatings on a substrate” containing “composition B” and an “undercoat containing ‘a material composition A effective for catalyzing NH3 oxidation’ (ammonia oxidation, or AMOx)” which prevents the escape of unreacted ammonia from the system. In finding indefiniteness, the DC wrote that “[e]ach claim fails to limit the ‘material composition A’ or the ‘material composition B’ to any specific materials” but instead uses “functional language, specifically ‘effective’, to purportedly define them.” “Moreover,” it wrote, “none of the claims recite a minimum level of function needed to meet this ‘effective’ limitation nor a particular measurement method to determine whether a composition is ‘effective’ enough to fall within the claims.” The FC panel explained that under Nautilus (US 2014), “a patent claim is indefinite if, when ‘read in light of the specification….and the prosecution history, [the claim] fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention”, noting that “‘[r]easonable certainty’ does not require ‘absolute or mathematical precision’” (Biosig, FC 2015). And “[n]othing inherent in the standard of ‘reasonable certainty’ precludes” functional claim language (Hill-Rom, FC 2014). The FC panel concluded that the DC’s “reasoning supplies no basis to answer” the question presented (e.g., no “context-specific inquiry into whether particular functional language actually provides the required reasonable certainty”). It also disagreed with the DC’s “mere observation of information not ‘recited’” and its “immediately” following conclusion that “without such information, a person of ordinary skill in the art could not determine which materials are within” the claimed compositions A and B, “and which are not” (“an inventor need not explain every detail because a patent is read by those of skill in the art” (Wellman, FC 2011); Dow, FC 2015; Halliburton, FC 2008; Honeywell, FC 2003 (in which “reference to specification or other intrinsic evidence or by reference to extrinsic evidence” “was central” to findings of indefiniteness). And it explained that “the inference of indefiniteness” cannot be properly drawn from Johnson’s expert witness testimony that “a practically limitless number of materials’ could catalyze SCR of NOx” (“breadth is not indefiniteness” (SmithKline, FC 2005)). It was not persuaded by Johnson’s view of the specification, finding that the “advance over the prior art is in the partly-dual-layer arrangement” and “not in the choices of materials” and, “in this context…the relevant skilled artisan would be informed by the specification’s numerous examples of qualifying compositions A and B….” And it did not find any extrinsic evidence supported the DC’s finding. It therefore reversed and remanded the DC decision.

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Mexichema Amanco Holding v. Honeywell International

Docket No. 2016-2084, -2085, 2017-1050

November 17, 2017


Brief summary: PTAB decisions reversing Examiner’s definition of “azeotrope-like” affirmed as the term is explicitly defined by the specifications and the Examiner’s definition would have read the term out of the claim.

Summary: Mexichem appealed three PTAB final inter partes reexamination decisions regarding Honeywell’s US 7,524,805; 7,825,081; and 8,148,317. “The sole question” considered here is “the Board’s construction of the term ‘azeotrope-like’”. “According to the patents, combining ‘effective amounts’” of Honeywell’s heat transfer equipment (e.g., air conditioner) fluid HFO-1234 “with a component selected from the group consisting of HFC-152a, HFC-227ea, HFC-134a, and HFC-125” “results in the formation of an azeotrope-like composition.” “After granting Mexichem’s Requests for Reexamination, the Examiner construed the term ‘azeotrope-like’ to mean ‘a composition containing a mixture of trans-HFO-1234ez and one or more of HFC-152a, HFC-227ea, HFC-134a or HFC-125” and rejected the claims as anticipated or obvious. The PTAB disagreed and construed “azeotrope-like” as “constant boiling or essentially constant boiling”, and reversed the Examiner’s rejections. The FC panel agreed with the PTAB, finding its “construction [to be] consistent with the definition provided by the patentee in the patents’ specification” (Martek Biosciences, FC 2009 (“When a patentee explicitly defines a claim term in the patent specification, the patentee’s definition controls.”)) The FC panel also explained that the Examiner’s construction “would read the term ‘azeotrope-like’ out of the claims entirely, rendering the term meaningless” (Dell, FC 2016). Thus, the PTAB decisions were affirmed.

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