About bwheelock

Education J.D., Washington University in St. Louis B.S.E. in Mechanical Engineering, Duke University

Obviousness Requires a Reason, Suggestion, or Motivation

In Forest Laboratories, LLC v, Sigmapharm Laboratories LLC, [2017-2369, 2017-2370, 2017-2372, 2017-2373, 2017-2374, 2017-2375, 2017-2376, 2017-2389, 2017-2412, 2017-2436, 2017-2438, 2017-2440, 2017-2441]( March 14, 2019) the Federal Circuit vacated and remanded the district court’s validity determination, and we vacated and remanded the question of infringement under a corrected claim construction.

The district court construed claim 1 to be limited to buccal and sublingual formulations. Although claim 1 does not expressly refer to buccal or sublingual administration, the Federal Circuit noted that claims “must be read in view of the specification, of which they are a part.” The Federal Circuit held the district court properly construed claim 1 to be limited to buccal and sublingual formulations.

As to obviousness, the district court found Appellants had not established that there was a motivation to combine asenapine maleate into a sublingual or buccal form, and even if there were a motivation to combine, a skilled artisan would not have had a reasonable expectation that it would work. The Federal Circuit noted that an invention is not obvious simply because all of the claimed limitations were known in the prior art at the time of the invention. Instead, the question is whether there is a reason, suggestion, or motivation in the prior art that would lead one of ordinary skill in the art to combine the references, and that would also suggest a reasonable likelihood of success. The motivation can be found explicitly or implicitly in the prior art references themselves, in market forces, in design incentives, or in any need or problem known in the field of endeavor at the time of invention and addressed by the patent.

The Federal Circuit noted that the district court failed to make an express finding as to whether compliance concerns for patients with trouble swallowing would provide a motivation to combine, and remanded for the district court to address this question.

As to secondary considerations, the Federal Circuit found that the district court did not err in finding long felt need weighs in favor or non-obviousness. However, the Federal Circuit found that the district court did err in finding unexpected results, finding that the results were not surprising and unexpected, since one of ordinary skill in the art would not have expected differently.

On the issue of written description, the Federal Circuit held that the district court’s finding that the specification contains sufficient written description support for the claims was not clearly erroneous.

On the issue of infringement, the district court construed claim 4 to not cover the treatment of bipolar disorders. Because the district court erred in treating “excitation” as being limited to “excitation disorders,” we vacate its finding of non-infringement. We construe “excitation” to refer to a symptom and remand for the district court to assess infringement in light of this construction.

Element that is not Necessarily Present is not Inherent

In Personal Web Technologies, LLC v. Apple, Inc., [2018-1599] (March 8, 2019), the Federal Circuit reversed the PTAB determination that claims 24, 32, 81, 82, and 86 of U.S. Patent No. 7,802,310 are unpatentable.

The ’310 patent explains that in conventional data processing systems, data items such as files are typically identified by their user-created alphanumeric name and/or pathname or location. If one device transfers a data item to a second device using just the name associated with the data item, it is possible that the data item already exists on the second device, and a duplicate of the data item will be created.

The Board found the claims obvious relying on Woodhill inherently disclosing a claim element. The Federal Circuit found that because the element does not necessarily exist in Woodhill, the Board’s reliance on inherency for that element in its obviousness analysis was improper.

Fact that Invention can “result in life altering consequences,” is Laudable, but it Does not Render it any Less Abstract

In University of Florida Research Foundation, Inc., v. General Electric Company, [2018-1284] (February 26, 2019), the Federal Circuit affirmed the determination that the claims of U.S. Patent No. 7,062,251 are directed to ineligible subject matter under 35 U.S.C. § 101.

At the outset, the Federal Circuit determined that the University of Florida Research Foundation waived its sovereign immunity claims by suing General Electric in the first place.

The ’251 patent describes a method and system for integrating physiologic data from at least one bedside machine. At Alice step one, the district court determined the claims are directed to the abstract idea of “collecting, analyzing, manipulating, and displaying data.” At Alice step two, the district court found that the claims did not recite an inventive concept.

The Federal Circuit agreed that the claims were ineligible, noting the ’251 patent seeks to automate “pen and paper methodologies” to conserve human resources and minimize errors. The Federal Circuit said that it was a quintessential “do it on a computer” patent: it acknowledges that data from bedside machines was previously collected, analyzed, manipulated, and displayed manually, and it simply proposes doing so with a computer. We have held such claims are directed to abstract ideas.

The Federal Circuit noted that the fact that the automation can “result in life altering consequences,” is laudable, but it does not render it any less abstract. The Federal Circuit noted that neither the ’251 patent, nor its claims, explains how the drivers do the conversion that UFRF points to. The drivers are described in purely functional terms: they “facilitate data exchanges,” “convert received data streams to a format independent of any particular bedside machine,” “translate the data stream,” “interpret data streams,” “facilitate communications with the bedside machine,” and “interpret [discrete] segments” in a “data stream for the machine.” The Federal Circuit said that the ’251 patent “fails to provide any technical details for the tangible components, . . . instead predominately describ[ing] the system and methods in purely functional terms.” The Federal Circuit concluded that at Alice step one that representative claim 1 is directed to the abstract idea of “collecting, analyzing, manipulating, and displaying data,” and observing the claims fare no better at Alice step two.

Posted in 101

Complaint Established Sufficient Facts to Support Claim for Inventorship

In Coda Development S.R.O. v. Goodyear Tire & Rubber Company, [2018-1028](February 22, 2019), the Federal Circuit vacated the dismissal of Coda’s complaint, seeking correction of inventorship of patents on self-inflating tires and alleging misappropriation of its trade secrets.

The district court dismissed the complaint under 12(b)(6) for failing to state a claim, and denying Coda the opportunity to amend its complaint. However the Federal Circuit, accepting the complaint’s well-pleaded factual allegations as true and drawing all reasonable inferences in Plaintiffs’ favor, concluded that Plaintiffs’ claims for correction of inventorship are plausible. The Federal Circuit noted that the complaint described Goodyear’s prior failures with inflation technology; and that it described two meetings with Goodyear representatives—both arranged at Goodyear’s initiative and attended by Goodyear’s point-person on SIT technology. The Federal Circuit further noted that Goodyear sought technical information from Coda at both meetings, and Goodyear’s point person requested that he and his team be allowed to spend some time alone with Coda’s functional prototype, during which he photographed it without permission. The Federal Circuit noted that a month, Goodyear applied for the first in a series of patents covering assemblies and methods concerning self-inflating tires, with claims covering the allegedly novel, proprietary, and confidential information Coda disclosed to Goodyear.

The Federal Circuit said that construing the complaint in the light most favorable to Plaintiffs and taking these and other highly specific facts together—including, but not limited to, Goodyear’s prior failure, its eagerness to meet with Coda, its unauthorized photography of Coda’s functional prototype, the timing of its distancing itself from Coda and its filing for the ’586 patent, and a pointed accusation from one of its former employees—we conclude that Plaintiffs’ correction-of-inventorship claims are plausible.

The Federal Circuit also found that the district court also erred in dismissing Plaintiffs’ trade-secret-misappropriation claim as time-barred. The statute-of-limitations inquiry was when Plaintiffs discovered or by the exercise of reasonable diligence should have discovered their claim. The Federal Circuit rejected Goodyear’s argument that based upon the facts alleged in the complaint, plaintiff should have begun investing earlier, observing that plaintiff might have simply assumed Goodyear lost interest, or that Goodyear would honor is nondisclosure agreement. Considering only the complaint, and drawing all reasonable inferences in Plaintiffs’ favor, the Federal Circuit concluded that the district court erred in dismissing Plaintiffs’ trade-secret misappropriation claim as time-barred.

Presidents Day 2019

It’s Presidents Day, and while the USPTO is closed for the occasion, here is a look a few instances where presidents were honored in the records of the USPTO:

U.S. Patent No. D537666 covered a toy bank that celebrated the apocryphal story of George Washington and the cherry Tree:

U.S. Patent No. D537666

The presents have been remembered in a chart puzzle show in U.S. Patent No. 1148885:

U.S. Patent No. 1148885

Americans are big fans of George Washington, and in U.S. Patent No. D9138, George Washington was a big fan for the people:

U.S. Patent No. D9138.

Commemorative medals and badges were apparent a “thing” and several design patents, including D8000 and D51046:

U.S. Patent No. D8000
U.S. Patent No. D51046

A Constructive Reduction to Practice is Sufficient if it Identifies the Claimed invention in a Definite Way.

In Centrak, Inc. v. Sonitor Technologies, Inc., [2017-2510] (February 14, 2019), the Federal Circuit reversed the district court’s determination that the claims of U.S. Patent No. 8,604,909 are invalid for lack of written description, and non-infringement. The ’909 patent relates to systems for real-time location (RTL), which allow users to locate and identify portable devices in a facility.

The test for sufficiency of a patent’s written description is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. The district court determined that the ’909 patent lacked adequate written description support for an RTL system that relied on ultrasound-based communication from the base stations to the portable devices. However, the Federal Circuit found genuine issues of material fact remain as to whether disclosure of the implementation details that the district court identified is necessary to satisfy the written description requirement.

The Federal Circuit rejected the district court’s reliance on the fact that the specification devoted relatively less attention to the ultrasonic embodiment compared to the infrared embodiment, noting that in ScriptPro it explained that “a specification’s focus on one particular embodiment or purpose cannot limit the described invention where that specification expressly contemplates other embodiments or purposes.” The Federal Circuit instructed that the written description requirement does not demand either examples or an actual reduction to practice; a constructive reduction to practice may be sufficient if it identifies the claimed invention and does so in a definite way.

Valen-tech

Happy Valentine’s Day! Here is a tribute to the inventors who make Valentine’s Day, and every day better for society.

U.S. Patent No. 5,160,087 protected a drinking straw for couples.
U.s. Patent No. 7,339,449 protects a Magnetic Woven Heart.
U.S. Patent No. 1,603,592 protected a greeting card perfect for the holiday.
U.S. Patent No. 4,194,629 protected a “Love Box.”
U.S. Patent No. D85,341, protected the name plate for a Love Tester.

Description of “a” Technique for Carrying Out “The Invention” Did Not Limit Claims

In Continental Circuits LLC v. Intel Corporation, [2018-1076] (February 8, 2019), the Federal Circuit, finding that the district court erred in its claim construction, vacated judgment of non-infringement and remanded the case for further proceedings.

The four patents in suit, U.S. Patents Nos. 7,501,582, 8,278,560, 8,581,105, and 9,374,912 all are directed to the problem of preventing delamination of multilayer electrical devices by forming a unique surface structure comprised of teeth that are preferably angled or hooked like fangs or canine teeth to enable one layer to mechanically grip a second layer having a tooth structure. The district court construed the claims to require that the structure be produced by a repeated desmear process.” The district court noted that the specification not only repeatedly distinguished the process covered by the patent from the prior art and its use of a single desmear process, but also characterized “the present invention” as using a repeated desmear process. Further the district court found that the prosecution history corroborated its construction, because the applicant relied upon repeated desmear processes.

The Federal Circuit found that the district court erred in its construction. The Federal Circuit first noted that none of the claims actually recited a repeated desmear process. Turning to the specification, the Federal Circuit found that none of the statements relied upon by the district court rose to the level of a clear and unmistakable disclaimer. The specification described the repeated desmear process as only “one technique” for forming the required teeth. The Federal Circuit further noted that the specification identified the repetition as “a way” of forming the teeth. The Federal Circuit concluded: “Overall, those statements simply describe how to make the claimed invention using the preferred Probelec XB 7081 in a “new” way that is different from the prior art pro-cess and are not statements clearly limiting the claimed “electrical device” to require a repeated desmear process.”

The Federal Circuit also noted that it has express rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment. The Federal Circuit also said that distinguishing the double desmear process as “contrary to” or “in stark contrast” with the single desmear process is also not clear and unmistakable limiting statements. The Federal Circuit explained that it as held that mere criticism of a particular embodiment is not sufficient to rise to the level of clear disavowal.

As to the use of “the present invention” in the description of the preferred embodiment, the Federal Circuit found that these also were not limiting. Explaining that while descriptions of the ‘present invention as a whole could limit the scope of the invention, use of the phrase “present invention” or “this invention” is not always so limiting, such as where the references are not uni-form, or where other portions of the intrinsic evidence do not support applying the limitation to the entire patent. The Federal Circuit said that in the case before it the references to the present invention do not characterize the present invention “as a whole,” and instead only disclose one way to carry out the present invention using Probelec XB 7081.

Turning to the prosecution history, the Federal Circuit did not agree that a clear disavowal exists in this prosecution history. The expert declaration cited by the district court, explained that the written description disclosed “a technique which forms the teeth” by “performing two separate swell and etch steps.” The Federal Circuit said that describing a particular claim term to overcome an indefiniteness or written description rejection is not the same as clearly disavowing claim scope, and in any event were directed to one technique for carrying out the invention.

The Federal Circuit concluded that to read a process limitation into a product claim it must be clear that the process steps are an essential part of the claimed invention. Because the patentee had not “made clear” that the repeated desmear process is “an essential part of the claimed invention,” it was improper for the district court to read this process limitation into the product claims for this additional reason.

Lastly the Federal Circuit explained the use of extrinsic inventor notes regarding the invention did not support varying the the construction from based upon the extrinsic evidence.

Abandoning Infringing Conduct Caused Loss of Standing to Appeal IPR

Momenta Pharmaceuticals, Inc. v. Bristol-Myers Squibb Co., [2017-1694] (February 7, 2019), the Federal Circuit dismissed the appeal of the PTAB Final Written Decision sustaining patentability of claims 1 through 15 (all the claims) of United States Patent No. 8,476,239, for lack of standing/jurisdiction and for mootness.

The ‘239 patent covered compounds under the generic name “abatacept” and the BMS brand name Orencia®, used in treatment of immune system disorders such as rheumatoid arthritis. Momenta’s proposed product failed its Phase 1 clinical trials and had been withdrawn, so BMS moved to dismiss the appeal because Momenta no longer had standing. Momenta responded that it had not abandoned its intent to produce a counterpart and that the ’239 Patent is an obstacle to these activities, and that it is injured by the estoppel provision of 35 U.S.C. § 315(e). Momenta cited to the “relaxed” standard for Article III compliance when the right of appeal is established by statute.

The Federal Circuit said that Congress cannot erase Article III’s standing requirements by statute. Noting that Momenta had initially stressed that it had spent millions of dollars in its development of a biosimilar, upon Momenta’s termination of all potentially infringing activity, Momenta has not shown “an invasion of a legally protected interest” that is “actual or imminent, not conjectural or hypothetical.” The Federal Circuit concluded that upon abandoning development of this product, Momenta has no legally protected interest in the validity of the ’239 Patent, and there is no real need to exercise the power of judicial review.

The Federal Circuit rejected the Momenta’s argument that the estoppel effect of the decision created stating, noting that estoppel cannot constitute an injury-in-fact when Momenta “is not engaged in any activity that would give rise to a possible infringement suit.”

The Federal Circuit further found that Momenta’s abandonment of the development of a biosimilar made the appeal moot: the cessation of potential infringement means that Momenta no longer has the potential for injury, thereby mooting the inquiry.

Diagnostic Method Ineligible; Patent Law Once Again Fails to Promote the Progress of Science

In Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, [2017-2508] (February 6, 2019), the Federal Circuit affirmed the district court’s holding that claims 6–9 of U.S. Patent 7,267,820 (the “’820 patent”) are invalid under
35 U.S.C. § 101 and dismissing Athena’s complaint under Rule 12(b)(6).

The inventors discovered the association between MuSK autoantibodies
and Myasthenia gravis, and in the ’820 patent disclosed and claimed methods of diagnosing neurological isorders such as MG by detecting autoantibodies that bind to a MuSK epitope.

The Federal Circuit agreed that the claims were directed to a natural law, specifically, the correlation between the presence of naturally-occurring
MuSK autoantibodies in bodily fluid and MuSK related neurological diseases like MG. The Federal Circuit said “This correlation
exists in nature apart from any human action. There can
thus be no dispute that it is an ineligible natural law.”

The Federal Circuit concluded that the claims were directed to a natural law because the claimed advance was only in the discovery of a natural law, and that the additional recited steps only apply conventional techniques to detect that natural law. This finding was bolstered by the truthful but unfortunate statements in the specification that “[t]he actual steps of detecting autoantibodies in a sample of bodily fluids may be performed in accordance with immunological assay techniques known per se in the art.”

The Federal Circuit said: “The claims here are directed to a natural law because they recite only the natural law together with standard techniques
for observing it. That the routine steps are set forth with some specificity is not enough to change that conclusion.”

Finally, the Federal Circuit rejected Athena’s argument that the claims were patentable because they required labeling MuSK with a manmade
substance, finding that the use of a man-made molecule is not decisive if it amounts to only a routine step in a conventional method for observing a natural law.

At step II of the aptly named Mayo test, the Federal Circuit found that the steps of the claims not drawn to ineligible subject matter, whether viewed individually or as an ordered combination, only required standard
techniques to be applied in a standard way. This was bolstered by the specification’s description of the steps as “conventional techniques.” The Federal Circuit refused to hold that performing standard techniques in a standard way to observe a newly discovered natural law provides an inventive concept.

Posted in 101