About bwheelock

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

Federal Circuit Affirms Board’s Determination of No Interference in CRISPR-Cas9 Technology

In Regents of the University of California v. Broad Institute, Inc., [2017-1907](September 10, 2018), the Federal Circuit affirmed the PTAB’s determination that there was no interference-in-fact between the University of California’s Application No. 13/842,859, and the claims of twelve patents and one application owned by the Broad Institute,
Inc., Massachusetts Institute of Technology, and the President and Fellows of Harvard College.  The involved claims relate to the use of a CRISPR-Cas9 system for the targeted cutting of DNA molecules.

The Board applies a two-way test to determine whether the claims are patentably distinct, asking whether “the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa.” 37 C.F.R. § 41.203(a). If the two-way test is not met, no interference-in-fact exists.

This Federal Circuit said that the case turns in its entirety on the substantial evidence
standard. It noted that the Board found a person of ordinary skill in the art would not have had a reasonable expectation of success in applying the CRISPR-Cas9 system in
eukaryotic cells. Given the mixture of evidence in the record, the Federal Circuit found that substantial evidence supports the Board’s finding that there was not a reasonable
expectation of success, and affirmed.

UC argued that the Board: (1) improperly adopted a rigid test for obviousness that required the prior art contain specific instructions, and (2) erred in dismissing evidence of simultaneous invention as irrelevant. However the Federal Circuit found no error in the Board’s analysis. After a detailed review of the evidence, the Federal Circuit concluded that in light of the record evidence, which includes expert testimony, contemporaneous statements made by skilled artisans, statements by the UC inventors themselves, and prior art failures, the Board’s fact finding as to a lack of reasonable expectation of success is supported by substantial evidence.  The Federal Circuit said that the Board did not adopt a test requiring there be specific instructions in the art in order to make a finding of a reasonable expectation of success, and thus found no error in the Board’s analysis.

On the issue of simultaneous invention, the Federal Circuit acknowledged that simultaneous invention may serve as evidence of obviousness when considered in light of all of the circumstances.  First, it is evidence of the level of skill in the art, and second it constitutes objective evidence that persons of ordinary skill in the art understood the problem and a solution to that problem. However in the context of interferences, evidence of simultaneous invention cannot alone show obviousness, otherwise any claims involved in an interference would be unpatentable for  obviousness. Thus, the Federal Circuit instructed, the weight of evidence of simultaneous invention must, therefore, be carefully considered in light of all the circumstances.  Noting that the Board explained that each case must be decided in its particular context, including the characteristics of the science or technology, its state of advance, the nature of the known choices, the specificity or generality of the prior art, and the predictability of results in the area of interest, the Federal Circuit found no error in the Board’s analysis.

 

Petitioner Bears the Ultimate Burden of Persuasion With Respect to Real Party in Interest

In Worlds Inc. v. Bungie, Inc., [2017-1481, 2017-1546, 2017-1583](September 7, 2018), the Federal Circuit vacated the Final Written Decision in three inter partes reviews because the Board erred in its real party in interest analysis, and remanded.  The appeal involved three related patents: U.S. Patent Nos. 7,945,856, 8,082,501, and 8,145,998, relating to the computer-generated display of avatars in a virtual world, including methods and systems to determine which particular avatars are displayed
in a given situation.

Worlds sued Activision on the patents, and while the suit was pending indicated that it was going to add products developed by Bungie, but distributed by Activision to the suit.  Bungie filed the three petitions for IPR challenging Worlds’ patents more than a year after Activition was served with the Complaint, and Bungie did not name Activision as a real party in interest.

The Federal Circuit pointedly observed that absent from the Board’s analysis of the real-party-in-interest issue is any clear statement of what, if any, burden framework the Board used to analyze the evidence presented in these IPRs, including an identification of which party the Board viewed as bearing the burden of persuasion.   The Federal Circuit largely agreed with the burden framework used in Atlanta Gas Light. The Federal Circuit said that the IPR petitioner bears the burden of persuasion to demonstrate
that its petitions are not time-barred under § 315(b) based on a complaint served on a real party in interest more than a year earlier, and the petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner.  The patent owner must produce some evidence to support its argument that a particular third party should be named a real party in interest. The Federal Circuit rejected the Board’s practice of creating a “presumption” that the petitioner’s initial
identification of the real parties in interest is correct.  While the patent owner must produce some evidence that tends to show that a particular third party should be named a real party in interest.  A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.

The Federal Circuit then turned to the question of who should bear the burden of persuasion, noting a complete absence of any statement as to which party should bear the burden of persuasion.  The Federal Circuit could not discern whether the Board placed the burden on Worlds, the patent owner, to persuade the Board that Bungie failed to list a real party in interest that would render the petitions time barred under § 315(b), which would have been improper.  Moreover, the Federal Circuit was concerned that the Board may have relied on attorney argument as evidence that Activision was not controlling or funding these IPRs.

In light of these concerns, the Federal Circuit found it appropriate to remand the case to the Board for further consideration of the real-party-in-interest issue.

 

Posted in IPR

Clearly Defining A Term Without Providing Any Way to Determine When it has Been “Optimized” as Claimed Dooms Claims Under 112

In Intellectual Ventures I LLC v. T-Mobile USA, Inc., [2017-2434, 2017-2435](September 4, 2018), the Federal Circuit affirmed the district court’s determination that the claims of U.S. Patent No. 6,640,248 were indefinite, and vacated and remanded summary judgment of non-infringement because of erroneous claim construction.

At issue was the term “Application-Aware Resource Allocator.”  The district court  adopted T-Mobile’s construction of “application-aware resource allocator” as requiring that when allocating bandwidth, the application-aware resource allocator must take into account information obtained from the application layer 7. However the Federal Circuit determined that  application awareness requires only that the resource allocator allocate resources based on application type, which can be discerned using information obtained from any of network layer 3, transport layer 4, or application layer 7.  The plain language of the claims, the specification, and the prosecution history all support this
construction. The Federal Circuit rejected T-Mobile’s arguments about disavowal, noting disavowal is an “exacting” standard under which it must be established that the
patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term through expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope, and the statements in the prosecution history did not meet this exacting standard.

On the definiteness issue, the Federal Circuit found that the district court did not erroneously fail to consider the structure after determining that the function was indefinite.  The Federal Circuit concluded that the claim requirement of optimizing QoS requirements was entirely subjective and user-defined. The Federal Circuit pointed out that the ’248 patent analogizes QoS to “a continuum, defined by what network performance characteristic is most important to a particular user” and characterizes it as “a relative term, finding different meanings for different users.” The patent concluded that ultimately,“the end-user experience is the final arbiter of QoS.”  Thus while specification clearly defines that the QoS relates to the end-user experience, it fails to provide one of ordinary skill in the art with any way to determine whether QoS has
been optimized.

 

 

 

Change In Construction of Claims from Petition Required Board to Allow Petitioner to Respond

In Ericsson Inc. v. Intellectual Ventures I LLC, [2017-1521] (August 27, 2018), the Court of Appeals for the Federal Circuit held that the PTAB did not consider portions of Ericsson’s Reply, and vacated and remanded the Final Written decision that claims 1–3, 6–9, and 12–14 of U.S. Patent No. 5,602,831 were not unpatentable under 35 U.S.C. § 103.

Under PTO regulations, the Board is entitled to strike arguments improperly raised for the first time in a reply. Such decisions related to compliance with the Board’s procedures are reviewed for an abuse of discretion.  An abuse of discretion is found if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.

Ericsson argued on pages 13 and 14 of its Reply that, given the admitted state of the art regarding interleaving disclosed in the patent at issue, the prior art’s teachings render obvious the claimed invention.  The Board characterized this portion of Ericsson’s Reply as raising a new theory of obviousness, one that was not addressed in the Petition or
responding to arguments raised in the Patent Owner Response, but the Federal Circuit disagreed, noting the portions of the Reply the Board declined to consider expressly follow from the contentions raised in the Petition.

The Federal Circuit found that the Board’s error was parsing Ericsson’s arguments
on reply with too fine of a filter. The error was exacerbated by the fact that the significance arose after the Petition was filed, in that the Board adopted a different
construction of the terms after the Petition instituting inter partes review was granted, and the issue was the essential basis of the Board’s decision in concluding that  the claim had not been shown unpatentable, Ericsson should have been given an opportunity to respond.  Undoubtedly, this was a special case in which Petitioner, Patent Owner, and the Board all initially applied the broadest reasonable interpretation claim construction standard (despite the fact that the patent had expired when it filed the petition), and only after institution applied Phillips instead. In light of these changed circumstances, the Board revisited its approach to the claims in light of this error, and Ericsson likewise deserved an opportunity to do the same.

The Federal Circuit said that its decision should not be viewed as changing or challenging the Board’s practice of limiting the scope of replies pursuant to its regulations; precedent supports the Board’s discretion to reject arguments raised for the first time in a reply.

If the Drawing is Sufficient to Determine Infringement, it Complies with 35 USC §112

In In Re Maatita, [2017-2037] (August 20, 2018), the Federal Circuit reversed the PTAB affirmance of the rejection of Maatita’s design patent application on the design of an athletic shoe bottom.

The Examiner rejected Maatita’s application containing a single two-dimensional plan-view drawing to disclose a shoe bottom design and left the design open to multiple interpretations regarding the depth and contour of the claimed elements. and indefinite under 35 U.S.C. § 112, and the PTAB affirmed.

The Examiner hypothesized four different designs, each of which were patentably distinct and therefore could not be covered by a single claim. Thus, the Examiner concluded that Maatita’s single claim was indefinite and not enabled, as one would not know which of the many possible distinct embodiments of the claim is applicant’s
in order to make and use applicant’s design.  The Board concluded that because the single view does not adequately reveal the relative depths and three dimensionality between the surfaces provided, the Specification does not reveal enough detail to enable the claimed shoe bottom, under 35 U.S.C. § 112, first paragraph, and that the same lack of clarity and detail also makes the scope of the claim indefinite under 35 U.S.C. § 112, second paragraph.

The Federal Circuit noted that because patent claims are limited to what is shown in the application drawings, there is often little difference in the design patent context between the concepts of definiteness (whether the scope of the claim is clear with reasonable certainty) and enablement (whether the specification sufficiently describes the design to
enable an average designer to make the design).  The Federal Circuit said that a visual disclosure may be inadequate—and its associated claim indefinite—if it includes multiple, internally inconsistent drawings.  However errors and inconsistencies between drawings do not merit a § 112 rejection, however, if they do not preclude the overall understanding of the drawing as a whole.  It is also possible for a disclosure to be inadequate when there are inconsistencies between the visual disclosure and the claim language.  However, the Federal Circuit said the present case does not involve inconsistencies in the drawings, or inconsistencies between the drawings and the verbal description, but rather a single representation of a design that is alleged to be of uncertain scope.  The Federal Circuit said the question was whether the disclosure sufficiently describes the design.

The purpose of § 112’s definiteness requirement, then, is to ensure that the disclosure is clear enough to give potential competitors (who are skilled in the art) notice of what design is claimed—and therefore what would infringe.  With this purpose in mind, it is clear that the standard for indefiniteness is connected to the standard for infringement.  Given that the purpose of indefiniteness is to give notice of what
would infringe, we believe that in the design patent context, one skilled in the art would assess indefiniteness from the perspective of an ordinary observer. Thus, a
design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.  So long as the scope of the invention is clear with reasonable certainty to an ordinary observer, a design patent
can disclose multiple embodiments within its single claim and can use multiple drawings to do so.

The fact that shoe bottoms can have three-dimensional aspects does not change the fact that their ornamental design is capable of being disclosed and judged from a
two-dimensional, plan- or planar-view perspective—and that Maatita’s two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom should
be viewed. A potential infringer is not left in doubt as to how to determine infringement. In this case, Maatita’s decision not to disclose all possible depth choices would
not preclude an ordinary observer from understanding the claimed design, since the design is capable of being understood from the two-dimensional, plan- or planar-view
perspective shown in the drawing.

Because a designer of ordinary skill in the art, judging Maatita’s design as would an ordinary observer, could make comparisons for infringement purposes based on the
provided, two-dimensional depiction, Maatita’s claim meets the enablement and definiteness requirements of § 112. The Federal Circuit reversed the decision of the Board.

It seems that the Federal Circuit is exempting design patent inventors from their part of the quid pro quo for protection — a complete disclosure of the invention.  Will the Supreme Court bother with another design patent case?

What has been Served Cannot Be Unserved: §315(b) Time Bar Applies Even if the Suit is Subsequently Withdrawn

In Click-to-Call Technologies, LP v. Ingenio, Inc., [2015-1242] (August 16, 2018), the Federal Circuit concluded that the Board committed legal error in rendering its § 315(b) determination, and vacated the Board’s Final Written Decision and remanded with instructions to dismiss IPR2013-00312.

With respect to the § 315(b) issue, the Board acknowledged that Ingenio was served with a complaint alleging infringement of the ’836 patent on June 8, 2001.  The Board nonetheless concluded that Ingenio had not been served more than a year before the May 28, 2013, filing of the Petition because the Federal Circuit consistently has interpreted the effect of such dismissals as leaving the parties as though the action had never been brought.  The issue before the Federal Circuit was whether the Board
erred in interpreting the phrase “served with a complaint alleging infringement of [a] patent” recited in § 315(b) such that the voluntary dismissal without prejudice of the
civil action in which the complaint was served “does not trigger” the bar.

The Federal Circuit’s analysis began with the language of §315(b), noting that the plain and unambiguous language stated an IPR “may not be instituted if the petition
requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.  The Federal Circuit observed that the statute does not contain any exceptions or exemptions for complaints served in civil actions that are
subsequently dismissed, with or without prejudice. Further the statute does it contain any indication that the application of § 315(b) is subject to any subsequent act or ruling. Instead, the provision unambiguously precludes the Director from instituting an IPR if the petition seeking institution is filed more than one year after the petitioner, real party in interest, or privy of the petitioner “is served with a complaint” alleging patent infringement.  The Federal Circuit concluded: “Simply put, § 315(b)’s time bar is implicated once a party receives notice through official delivery of a complaint in a civil
action, irrespective of subsequent events.”

The Federal Circuit said that courts must avoid adding conditions to the applicability of a statute that do not appear in the provision’s text. The Federal Circuit noted that Congress specifically addressed the effect of a dismissal of an IPR petitioner’s district court action in § 315(a)(2), but did not include any similar language in § 315(b). Congress also demonstrated that it knew how to provide an exception to the time bar by
including a second sentence in the provision: “The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).” 35
U.S.C. § 315(b). Similarly, Congress could have chosen to include a variation of the phrase “unless the action in which the complaint was served was later dismissed
without prejudice,” but it did not do so. The Federal Circuit rejected the Board’s effort to graft this additional language into § 315(b).

The Federal Circuit further said that the legislative history of § 315(b) further supports the understanding that its time bar concerns only the date on which the complaint was formally served.

Considering Chevron deference, the Federal Circuit found that the text of the statute answers the question — § 315(b) clearly and unmistakably considers only the date
on which the petitioner, its privy, or a real party in interest was properly served with a complaint — there is no need to  proceed to Chevron’s second step.

The Federal Circuit rejected the Board’s interpretation of the text of § 315(b) for failing to recognize the statute was agnostic as to the “effect” of the service—i.e., what events
transpired after the defendant was served.

The Federal Circuit also rejected the Petitioner’s arguments that, because the claims of
the ’836 patent were materially changed during a subsequent ex parte reexamination, neither they nor any other entity was served with a complaint alleging infringement
of this patent more than one year before the IPR petition was filed.  The Federal Circuit pointing out that unlike reissue, reexamination does not result in the surrender of the original patent and the issuance of a new patent.

The Federal Circuit also rejected the Petitioner’s argument that some of the petitioners were not barred, noting four entities declared themselves as “the Petitioner” in their sole IPR petition, and certified that each was a “real party in interest.” The Federal Circuit said that under these circumstances, under current law, Petitioners are properly treated as an undifferentiated unit that filed an untimely petition.”

Federal Circuit Remands After Patentee Failed to Disclose Application to Standards Organization

In Core Wireless Licensing S.A.R.L. v. Apple Inc., [2017-2102] (August 16, 2018), the Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded, the district court decision that Apple infringed U.S. Patent Nos. 6,477,151 and 6,633,536, and that these patents were not invalid.

With respect to the ’151 patent: Apple challenged the finding of infringement, of no invalidity, and of no unenforceability.  The Federal Circuit found the determination of infringement was supported by substantial evidence, and that the determination of validity came down to a disagreement between the experts, and the jury could reasonably credit the testimony of Core Wireless’s expert over that of Apple’s expert.  Apple’s theory of unenforceability was based on actions taken by Nokia, the original assignee of the ’151 patent, during its participation with ETSI, the standards-setting organization referenced in the ’151 patent.  Apple arguesd that Nokia had an obligation to disclose the priority application to the ‘151 patent when it advanced
its proposed revision of the GPRS standard and that, in breaching that obligation, Nokia waived its right to enforce the ’151 patent.  While the district court did not find waiver, the Federal Circuit noted that none of the stated reasons supports the district court’s conclusion. The Federal Circuit found that the district court’s finding that Nokia
did not have a duty to disclose its patent application because its proposal was rejected, was unsupported by the evidence.  Nonetheless, the Federal Circuit remanded rather than reversing, because it was possible to interpret the district court’s ruling as being
based on the conclusion that, because Nokia’s proposal was not adopted, no inequitable consequence flowed from Nokia’s failure to disclose its patent application. The Federal Circuit noted that equitable defenses seek to prevent a party from unfairly benefiting from its wrongful actions, and in some circumstances courts have held that an equitable defense will not be recognized if the offending party did not gain a benefit
from its wrongdoing.

You Can’t Sidestep Nonappealability of Institution Decisions with Mandamus

In re: Power Integrations, Inc., [2018-144, 2018-145, 2018-146, 2018-147] (August 16, 2018), the Federal Circuit denied Power Integrations, Inc. petitions for writs of mandamus, challenging . The petitions challenge the decisions of the Patent Trial and Appeal Board denying the institution of inter partes review of claims from three patents owned by Semiconductor Components Industries, LLC.

The Federal Circuit noted that the statute prohibits appeals of Board decisions not to institute, and said that Power Integrations was seeking to obtain review of the non-institution decisions through petitions for mandamus covering all four of the Board’s orders. However, a writ of mandamus is not intended to be simply an alternative means of obtaining appellate relief, particularly where relief by appeal has been specifically prohibited by Congress.  To obtain the remedy of mandamus, a party must show that its right to issuance of the writ is “clear and indisputable,” and that there are no adequate alternative legal channels through which it may obtain that relief. Moreover, “even if the first two prerequisites have been met, the issuing court, in the exercise of its discretion,
must be satisfied that the writ is appropriate under the circumstances.”

The Federal Circuit held that mandamus does not lie in this case, both because Power Integration has not shown a clear and indisputable right to issuance of the writ and because relief by way of mandamus would not be appropriate here. The statutory prohibition on appeals from decisions not to institute inter partes review cannot be sidestepped simply by styling the request for review as a petition for mandamus.

While Power Integration complained the Board did not explain itself well enough, the Federal Circuit said that Power Integration understands perfectly well what the Board did, but it regards the Board’s actions as legally and factually incorrect, and it seeks this
court’s intervention to overturn the Board’s decisions not to institute inter partes review. The Federal Circuit found what Power Integration ultimately wants is not just to be given a more complete explanation of the Board’s action, but for the Federal Circuit to review that decision on the merits.  The Federal Circuit said that the essence of Power Integration’s claim— that the Board’s analysis “is premised on an incorrect legal standard or a misapplication of that standard”—is nothing more than a challenge to the Board’s conclusion that the information presented in the petitions did not warrant review.

A disappointed petitioner cannot by-pass the statutory bar on appellate review simply by directing its challenge to asserted procedural irregularities rather than to the substance of the non-institution ruling.  This is not to say that mandamus will never lie in response to action by the agency relating to the noninstitution of inter partes review. The circumstances described by the Supreme Court in Cuozzo as illustrations of issues for which an appeal might be justified (e.g., constitutional issues, issues involving questions outside the scope of section 314(d), and actions by the agency beyond its statutory limits) would be potential candidates for mandamus review as well.  However this case involved no issues extraneous to the application of patent law principles of unpatentability based on printed publications, nor does it involve any “shenanigans” on the part of the Board that might justify appellate review or review by mandamus.

Federal Circuit Vacates Another IPR as Time-Barred

Luminara Worldwide, LLC v. Iancu, [2017-1629, 2017-1631, 2017-1633] (August 16, 2018), the Federal Circuit affirmed the PTAB’s invalidation of claims of two of Luminara’s patent, and as to the third, it vacated the Final Written Decision, and remanding for dismissal of that IPR, because of the section §315(b) time-bar.

In instituting the IPR, the Board rejected the argument was untimely under §315(b) because the first action had been voluntarily dismissed without prejudice.  Because the section 315(b) time-bar applies when the underlying complaint alleging infringement has
been voluntarily dismissed without prejudice, the Federal Circuit said the Board erred in instituting the IPR challenging the ’319 patent, vacating the Board’s final written decision as to the ’319 IPR and remand for dismissal of that IPR.

As to the obviousness in the other two IPRs, the Federal Circuit found that these were supported by substantial evidence.

There Must be at least Some “Causal Connection” Between the Misconduct and the Fee Award

In In re Rembrandt Technologies LP Patent Litigation, [2017-1784] (August 15, 2018), the Federal Circuit held that the district court did not abuse its discretion in deeming this case exceptional, but that the court erred by failing to analyze fully the connection between the fees awarded and Rembrandt’s misconduct, and vacated the district court’s fee award, and remanded for further proceedings.

Rembrandt asserted two patents that were revived improperly; allowed spoliation of evidence; improperly gave consultants an interest contingent on the litigation outcome; and threatened AOPs with a baseless injunction demand.  The district court determined that the case was “indeed exceptional” for three reasons. First, the court found that “the evidence shows that Rembrandt improperly compensated its fact witnesses, in violation of ethical rules of conduct.” Second, the court was “convinced that Rembrandt engaged in (or failed to prevent) widespread document spoliation over a number of years.”  Finally, the court found that “Rembrandt should have known that the ‘revived patents’ were unenforceable.”  The district court ultimately ordered Rembrandt to pay more than $51 million in fees to all Appellees.

On the exceptionality finding, The Federal Circuit said that Rembrandt raised strong arguments with respect to the district court’s factual findings. The Federal Circuit said that the district  court’s remarkably terse orders (four pages) shed little light on its justifications for its decisions on these fact-intensive issues. But abuse of discretion is a deferential standard. On the record before it, the Federal Circuit could not say that any of the district court’s findings was based “on an erroneous view of the law or on a clearly erroneous assessment of the evidence.”

On the issue of the amount of the award, Rembrandt raised no specific objections to Appellees’ tabulations of the hours they expended; nor did Rembrandt contend that
Appellees should have calculated fees using a lower hourly rate. Rembrandt instead argued that the fee award is excessive and unreasonable because the district
court failed to establish a causal connection between the claimed misconduct and the fees awarded, and the Federal Circuit agreed.  The district court did not explain why
an award of almost all fees was warranted or whether it had accepted appellee’s argument that the pervasive misconduct justified an award of all fees.  The district court, by and large, did not even attempt to assess which issues the claimed misconduct affected.

Even if Rembrandt’s misconduct, taken as a whole, rendered the case exceptional, the district court was required to establish at least some “causal connection” between the misconduct and the fee award.  What the district court did —award all fees with
no explanation whatsoever of such a causal connection—was not enough.  The Federal Circuit thus vacated the district court’s fee award and remanded for the district court to conduct the appropriate analysis in the first instance.