Can Unexpected Results Make the Obvious Non-Obvious?

In Honeywell, Int’l Inc. v. Mexichem Amanco Holdings S.A., [16-1996] (August 1, 2017). the Federal Circuit vacated the USTPO’s reexamination decision invalidating claims 1–26, 31–37, 46–49, 58, 59, 61–68, 70–75, 80, and 81 of U.S. Patent 7,534,366 on a refrigerant and lubricant composition for air conditioning systems.  The Federal Circuit found that the Board erred by improperly relying on inherency to find obviousness and in its analysis of motivation to combine the references.

First, the Board erred in relying on inherency to dismiss evidence showing unpredictability in the art.   The use of inherency in the context of obviousness must be carefully circumscribed because that which may be inherent is not necessarily known and that which is unknown cannot be obvious.  What is important regarding properties that may be inherent, but unknown, is whether they are unexpected. All properties of a composition are inherent in that composition, but unexpected properties may cause what may appear to be an obvious composition to be nonobvious.  The Board, in dismissing properties of the claimed invention as merely inherent, without further consideration as to unpredictability and unexpectedness, erred as a matter of law.

Second, the Board erred in dismissing evidence of unpredictability in the art when it stated that one of ordinary skill would no more have expected failure than success in combining the references, and thus concluded that the person of ordinary skill would be led to routine testing, which would have eventually led to the claimed combination.  The Federal Circuit found that this put the burden on the patent owner to show that a person of ordinary skill in the art would have expected failure.  The Federal Circuit said that instead the the burden is on the Office to show that one of ordinary skill would have had a motivation to combine the references with a reasonable expectation of success.

The use of unexpected results to show non-obviousness is a curious aspect of patent law.  If it truly is obvious to modify a reference, or combine two or more references, then the fact that the obvious modification or obvious combination results in something unexpected, should not change the determination of obviousness, While we might feel like rewarding someone who provides unexpected results, by giving them a patent for doing what is obvious is not what the patent laws prescribe.  In Honeywell, however, the non-obviousness did not hinge on unexpected results, but on the unpredictability of the art.

The Federal Circuit also agreed that the Board improperly relied upon a new ground of rejection, resurrecting a reference cited by the requesters, but not relied upon by the Examiner.

PTO Erred by Not Identifying Algorithm Corresponding to §112, ¶ 6 Element Before Invalidating Claims

In IPCOM GmbH & Co. v. HRC Corp., [2016-1474] (July 7, 2017) the Federal Circuit found that the Board failed to conduct a proper claim construction of the “arrangement for reactivating the link” claim limitation, and we vacate and remand the obviousness rejections based on that limitation.

The IPR challenged U.S. Patent No. 6,879,830 (’830 patent), which describes and claims a method and system for handing over a mobile phone call from one base station to another base station.  The Federal Circuit noted that while the Board correctly identified  “arrangement for reactivating the link” was a means plus function element, it failed to properly construe that limitation. The Board rejected IPCom’s proposed three-step algorithm allegedly disclosed in the ’830 specification for performing the “arrangement for reactivating the link” function, but the Board failed to identify what it believed to be the correct algorithm from the specification; that omission led to an incomplete construction of the claim limitation and is incompatible In re Donaldson.  §112, ¶ 6 [now 112(f)] applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.  The Federal Circuit said that the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.

The Federal Circuit vacated the Board’s claim construction of the “arrangement for reactivating the link” limitation, and remanded for the Board to identify the corresponding algorithm (if any) in the specification in the first instance.  The Federal Circuit further vacated the determination of obviousness because the Board never identified any algorithm for the “arrangement for reactivating the link” limitation, the Board further erred by failing to evaluate whether the prior art disclosed that algorithm (or its equivalents).

 

Make Patents Great Again (or at least Make them STRONGER)

Senators Coons, Cotton, Durbin, and Hirono have introduced the STRONGER Patents Act of 2017, proposing a large number of improvements to U.S. patent law.  While the Bill does a lot to improve patents from an inventor’s perspective, the Bill does leave undone at least a few critical issues:

  1.  The Bill does not fix the abstract idea issue under §101 created by Alice.
  2. The Bill does not fix the ambiguity in the definition of patentable subject matter under §102 recently brought to light in Helsinn.
  3. The Bill does not fix the requirement that a successful appellant still must reimburse the USPTO for unsuccessfully defending a rejection in district court, as recently explained in Nantkwest.

As shown in the summary below, what the bill primary does is bring balance to IPR/PGR proceedings.

Sections 102(a)/103(a) – Elimination of BRI

Sections 102(a)/103(a) amend 35 USC 316(a)/326(a) to construe claims in an IPR/PGR according to their ordinary and customary meaning, and considering any prior construction by a court.  The current application of “broadest reasonable interpretation” makes claims more vulnerable in an IPR/PGR.

Sections 102(b)/103(b) Clear and Convincing Evidence Standard

Sections 102(b)/103(b) amends 35 USC 316(e)/326(e) to require proof of invalidity by clear and convincing evidence.  The current burden of proof of “preponderance of evidence” makes claims more vulnerable in IPR/PGR than in a court where the burden is by clear and convincing evidence.

Sections 102(c)/103(c) Requires Standing to Initiate

Sections 102(c)/103(c) amends 35 USC 311(d)/321(d) to require that a Petitioner have standing, i.e., have been charged with infringement.  Currently anyone can bring an IPR/PGR, regardless of whether they have been charged with infringement; this section restricts who can initiate a proceeding.

Sections 102(d)/103(d) One Challenge Per Claim

Sections 102(d)/103(d) amend Amends 35 USC 314(a)/324(a) to add a subsection (2) that bars review of a claim if there has been a previously instituted IPR/PGR on that claim. This allows only one IPR or PGR on each claim.  It is not limited to the same petitioner, and is triggered by institution, not a final written decision.

Sections 102(e)/103(e) Interlocutory Appeal of Institution Decisions

Sections 102(e)/103(3) amend 35 USC 314(d)/324(c) and add 314(e)/314(f) allowing certain appeals of institution decisions.
New sections 314(e)/324(f) would permit appeals of institution decisions in procedural grounds, but not as to the substantive patent law determination of unpatentability.

Sections 102(f)/103(f) One Challenge Per Patent

Section 102(f)/103(f) amend 35 USC 315/325 to prevent a petitioner from filing a second IPR/PGR unless the patent owner has charged petitioner with infringement of additional claims. This limitation together with the new limitation in 314(a) of one IPR per claim, restricts multiple IPRs on a single patent.

Sections 102(f) Improved Estoppel in IPR’s

Section 102(f) amends 35 USC 315 to bar a petitioner after an institution decision from raising any 102 or 103 grounds in a court or ITC proceeding, unless based public use, on sale, or otherwise available to the public. This substantially strengthens estoppel, but it still leaves a gap allowing the use of non-documentary prior art that corresponds to documentary prior art,.  There is no parallel estoppel provision for PGRs.

Sections 102(g)/103(g) Defines Real Party in Interest

Sections 102(g)/103(g) amend 35 USC 315(f).325(g) to define real party in interest as anyone who directly or indirectly makes a financial contributes to the petition. This expands definition of real party in interest to anyone who funds the proceedings.

Sections 102(g)/103(g) Provides Discovery of Real Party in Interest

Sections 102(g)/103(g) amends 35 USC 316(a)(5)/326(a)(5) to add subpart (B) providing for discovery about the real parties in interest.
Expands discovery relating to real party in interest.

Sections 102(h)/103(h) Bars Institution after Final Court Decision

Sections 102(h)/103(h) amend 35 USC 315/325 by adding new subpart (c)(1) that bars institution of an IPR after final judgment by the ITC or a court as to the validity of the claim under 102 or 103.
Once the ITC or a court has ruled on the validity of a claim, no one can challenge the claim in an  IPR.  However, (c)(1) only bars institution, not maintenance of the IPR/PGR, and (c)(2) only requires termination if a validity determination is affirmed on appeal.  A losing litigant might be able to get a second shot at the patent by waiving appeal, and continuing an already instituted IPR.

Sections 102(h)/103(h) Stays Proceedings Pending Court Appeal

Sections 102(h)/103(h) amend 35 USC 315/325 by adding new subpart (c)(2) which requires that the USPTO stay any IPR after the ITC or Court has entered a final judgment, while an appeal is possible or pending.  During concurrent IPR and litigation, if the ITC or Court gets to final judgment first, the IPR must be stayed pending appeal.

Sections 102(i)/103(i) Create Expedited Reexamination

Sections 102(i)/103(i) add a new 35 USC 316A/326A with a subpart (a)(3) that gives the patent owner the option to have a reasonable number of substitute claims examined in a new expedited IPR/PGR reexamination.

Sections 102(i)/103(i) Ease Burden of Amending Claims

Sections 102(i)/103(i) add new 35 USC 316A(c)(1)/326A(c)(1) defining amendment practice before the PTAB, and provides that the patent owner need only show that the amendment addresses the unpatentability on an instituted ground, meets the written description requirement, and does not enlarge the scope of the claims. New sections 316A(c)/326A(c) would relieve patent owners of the some of the burdens imposed by the PTAB in Idle Free Sys. v. Berstrom, Inc.

Sections 102(i)/103(i) Add Structure to Amendment Process

Sections 102(i)/103(i) add new 35 USC 316A(c)(2)/316A(c)(2)/  allowing petitioners to present new evidence to respond to amendments proposed by the patent owner, and allowing patent owner an opportunity to respond to new evidence submitted by petitioner.

Sections 102(i)/103(i) add new 35 USC 316A(c)(3)/326A(c)(3) allowing the PTAB to obtain an expedited patentability report.  Any party can respond to the report and the ordering of the report constitutes good cause for extending the proceeding beyond one year.

Sections 102(i)/103(i) also add new 35 USC 316A(c)(3) allowing the PTAB to order expedited reexamination on a claim in lieu of making a Final Written Decision on that claim.

Finally Sections 102(i)/103(i) also add new 35 USC 316A(d)/326A(d) allowing the patent owner to move for expedited reexamination in lieu of continuing the proceeding.  If granted, the patent owner must replace all of the instituted claims.  The petitioner has no right of appeal.

Section 104 Separates Institution and Final Written Decisions 

Section 104 amends 35 USC 6 to add subsection (c)(2) to provide that no board member who participates in an institution decision can also participate in hearing the review.  This eliminates the potential for confirmation bias, where a Board member who decided to institute also decides whether that institution decision was correct.

Section 105 Eliminates of Anonymous Reexaminations

Section 105 amends 35 USC 302(a) to require disclosure of the real party in interest in filing a request for reexamination.  This eliminates anonymous reexaminations.

Section 105 Restricts Reexaminations bu Defendants

Section 105 amends 35 USC 302 to add a subsection (d) barring reexamination more than a year after the requester is served with a complaint alleging infringement of the patent.

Section 106 Creates Presumption in Favor of Injunctions

Section 106 amends 35 USC 283 to provide a presumption that the patent owner is entitled to an injunction.  Gives effect the Constitutional mandate of exclusive rights to authors and inventors.

Section 107 Eliminates Fee Diversion

Section 107 Eliminates the diversion of USPTO user fees from the Office.

Section 108 Eliminates Knowledge of Patent from Inducement

Section 108 Amends 35 USC 271 to define inducement in subsection (b) as causing the actions that constitute infringement regardless of knowledge of the patent.

Section 108 Expands Inducement

Section 108 amends 35 USC 271(f) to add subsection (3)(A) to make inducement by the provision of an infringing design an act of infringement.

Section 108 also amends 35 USC 271(f) to add subsection (3)(B) to make inducement by the provision of an infringing specification an act of infringement.

Section 108 also amends 35 USC 271 to add section (j) eliminating the requirement for inducement or contributory infringement that the steps be performed by a single entity.

Section 109 Clarifies that Institutions of Higher Learning are Microentities

Section 109 amends 35 USC 123(d) to clarify that institutions of higher learning and their related patent foundations and other entities are microentities.  Nothing is done about their sovereign immunity in challenges to the patent.

Section 110 Expedites Infringement Actions by Small Business

Section 110 Creates a Patent Pilot program for expediting infringement cases involving small businesses.
110

Section 110 Makes Search Information More Widely Available

Section 110 amends Section 41(i) to required that the USPTO make freely available the patent and trademark information available at its Public Search Facilities.

Sections 201-203 Regulates Rogue and Opaque Letters

Sections 201-203 empower the FTC to take action against the bad faith assertion of patent rights.

Section 204 Preempts State Anti-Troll Laws

Section 204 preempts state laws on patent demand letters, but allows the states to enforce the federal prohibition of rogue and opaque letters

Merely Because Petitioner Changes its Mind is not Enough to Stop Inter Partes Reexamination

In In Re: AT&T Intellectual Property II, L.P., [2016-1830] (May 10. 2017), the Federal Circuit affirmed the PTAB determination in inter partes reexamination, that the claims of U.S. Patent No. 7,454,071, directed to methods of compressing and transmitting digital video data, were invalid.

On appeal, AT&T argued that it was improper to institute inter partes reexamination, when the petitioner requested that its petition be denied.  The Federal Circuit found that institution was proper.  AT&T also argued that the claims were not anticipated, and the Federal Circuit concluded that the Board’s finding of anticipation is supported by substantial evidence.  Finally AT&T argued that the Examiner improperly changed the basis for the anticipation rejection.  The Federal Circuit found that AT&T had notice of the the second basis for finding anticipation, and still did not amend the claims to respond to this second basis.

Concluding that the finding of anticipation was supported by substantial
evidence, the Board affirmed.

 

Estoppel Under 317(b) Always Applies on a Claim by Claim Basis, Just Like the Statute Says

In In Re Affinity Labs of Texas, LLC, [2016-1092, 2016-1172] (May 5, 2017) the Federal Circuit affirmed the Board’s affirmance of a reexamination determination that all of the claims of U.S. Patent No. 7,324,833 was invalid.

The Board merged two inter partes reexaminations (one of which brought by Volkswagen) and an ex parte reexamination of U.S. Patent No. 7,324,833.Volkswagen subsequently received an adverse final judgment in a parallel district court proceeding, upholding the validity of claims 28 and 35 of Affinity’s ’833 patent. In response, Affinity petitioned the PTO to vacate the entire merged reexamination proceeding, arguing that the estoppel provision in pre-America Invents Act (AIA) 35 U.S.C. § 317(b)1 extends to all parties, not just Volkswagen, and all claims challenged in the three reexaminations, not just litigated claims 28 and 35.  The PTO
denied Affinity’s termination request, but it severed the Volkswagen reexamination from the merged proceeding and held that no rejection could be maintained in that reexamination as to the claims at issue in the district court.  The Examiner evaluated the Volkswagen reexamination separately from the merged King/Apple reexamination and ultimately issued a Right of Appeal Notice in each proceeding, rejecting numerous
claims of the ’833 patent as unpatentable, and the PTAB affirmed.

Affinity argued that the PTO erred in maintaining the reexaminations in light of the final decision that Volkswagen failed to prove invalidity of two of the patent’s claims, which were asserted in the co-pending litigation and, therefore, the Board’s decisions in the reexaminations should be reversed pursuant to the section 317(b) estoppel provision.

Affinity also argued that, assuming the reexaminations were properly maintained, the Board’s decisions are based on misreadings of the
asserted prior art and a misevaluation of Affinity’s objective indicia evidence of nonobviousness.

Because the plain language of pre-AIA section 317(b) precludes Affinity’s
estoppel argument and because the Board found no error in the Board Decision upholding the Examiner’s findings of unpatentability as to all claims at issue, the Federal Circuit affirmed.

Affinity argued that the decision not to terminate all three reexaminations frustrated section 317(b)’s underlying policy goal of preventing duplicative, harassing actions. The Federal Circuit concluded that a
straightforward reading of the plain language of section 317(b) precludes Affinity’s overly broad conception of the estoppel provision, and found no grounds to reverse the Board’s final decisions based on section 317(b).

The Federal Circuit observed that Section 317(b) bars a party from using the inter partes reexamination process after a final decision has been
entered against that party in a civil action. The Federal Circuit noted that (1) it applies to the party in the civil action that loses its validity attack against “any patent claim” as well as the party’s privies; (2) it applies to validity issues raised in the civil action or that could have been raised in
that action; (3) unlike section 317(a), it speaks in terms of any “patent claim,” as opposed to the “patent;” (4) it prohibits the losing party and its privies from requesting an inter partes reexamination “of any such patent claim;” and (5) “on the basis of such issues,” it prohibits the PTO from “maintain[ing]” any inter partes reexamination requested by the losing party.  The Federal Circuit disagreed with Affinity’s proposed interpretation that the estoppel provision applied differently to maintaining a pending reexamination versus requesting a new reexamination.  The Federal Circuit held that section 317(b) was plainly limited the scope of estoppel in all circumstances to only those claims actually challenged and for which the requesting party received an adverse final decision in the district court proceeding.  The Federal Circuit further found no basis in the statute for Affinity’s argument that the final decision in the Volkswagen litigation should have preclusive effect on the reexaminations requested by third parties.

The Federal Circuit concluded that substantial evidence supports the Board’s unpatentability findings as to all challenged claims in the merged third party reexaminations, and because the claims at issue in the
Volkswagen reexamination comprised only a subset of the claims in the merged third party reexamination, it declined to address the alternative grounds of unpatentability at issue in the Volkswagen reexamination appeal.

Semicolons Strongly Indicate Each Step is Separate and Distinct; Confuse Most Non-Patent Lawyers

In In re Affinity Labs of Texas, LLC, [2016-1173] (May 5, 2017), the Federal Circuit affirmed the Board’s decision that §317(b) did not bar the reexamination, and that the reexamined claims were in valid.

Affinity sued Apple for infringement of U.S. Patent No. 7,440,772, and Apple requested reexamination of the ‘772 Patent.  Apple and Affinity settled the lawsuit and filed a joint stipulation of dismissal.  Apple also filed a notice of non-participation in the reexamination, and Affinity petitioned to terminate the reexamination under 35 U.S.C. § 317(b), whihc prohibits the USPTO from maintaining an inter partes reexamination after the party who requested the reexamination has received a final decision against it in a civil action.  The USPTO denied Affinity’s petition because because the district court’s dismissal,
without prejudice did not meet section 317(b)’s required condition for terminating the reexamination.  The reexamination resulted in invalidation of all of the claims, which was affirmed by the PTAB.

The claims  the claim included a dual download feature, inter alia, requiring:

in response to receiving the request, making a first version of the piece of selectable content available for downloading to the wireless user device and a second version of the piece of selectable content available for downloading to a personal computer of the user, wherein the first version has the specific format and the second version has a different format playable by the personal computer;
sending the first version of the piece of selectable content to the wireless user device; and
sending the second version of the piece of selectable content to the personal computer.

Affinity argued that the two sending steps must occur automatically, without intervening steps, after the “in response to” language.  The Federal Circuit disagreed, noting that each of the five steps of method claim 4 —including the three steps of the dual download feature— are offset by semicolons. The Federal Circuit said: “This punctuation choice strongly indicates that each step is separate and distinct.” It would, therefore, be reasonable to conclude the fourth and fifth steps—the sending steps—are not tied to the “making . . . available” step and
not performed “in response to” the same request found in
the “making . . . available” step, as Affinity argued.  The Federal Circuit also found that while portions of specification were consistent with automatically downloading, they certain did not require it, and in fact some embodiments did not have automatic downloads.  The Federal Circuit thus affirmed the broad claim construction by the Board, and the invalidation of those broad claims.

Because the Federal Circuit agreed that the estoppel provision of § 317(b) did not prohibit the PTO from maintaining the reexamination
of the ’772 Patent’s claims, and the Board’s construction of the claims was consistent with the broadest reasonable interpretation, the Federal Circuit affirmed the Board’s decision.

 

§317(b) Resurrects Claims Invalidated in Reexamination, That Were Found Not Invalid in Litigation

In Fairchild Corporation v. Power Integrations, Inc., [2017-1002] the Federal Circuit remanded the appeal from a PTAB decision in an inter partes reexamination, with direction to vacate certain aspects of its final
decision in the underlying inter partes reexamination and issue a reexamination certificate.

Fairchild sued Power Integrations for infringement of U.S. Patent No. 7,259,972. The jury’s verdict rejected Power Integrations’s argument that the ’972 patent claims were invalid under 35 U.S.C. § 103, and found that the patent claims had been infringed. On appeal, the Federal Circuit affirmed the jury’s non-obviousness determination but reversed its findings on infringement, and remanded for further proceedings unrelated to the ’972 patent claims.

While the litigation was pending, Power Integrations requested inter partes reexamination of the ‘972 patent.  The Examiner rejected all of the claims in the reexamination under §103(a), and the Board affirmed, resulting in the instant appeal.

Fairchild argued that the results of the reexamination proceeding should be vacated under §317(b) because the final decision in the litigation bars the maintenance of the reexamination.  The Federal Circuit agreed, noting that the time for petitioning for certiorari had passed, and thus the district court’s holding that the patent was not invalid barred the maintenance of the reexamination as to the claims challenged in the litigation.

 

PTAB Needed to Do A Better Job Supporting its Obviousness Determination in Inter Partes Reexamination

In Icon Health and Fitness, Inc. v. Stava, Inc., [2016-1475] (February 27, 2017), the Federal Circuit vacated-in-part, affirmed-in-part, and remanded, the Board’s Decision in an appeal of a inter partes reexamination.

Ikon argued that the Examiner erred when he extensively cited to statements in the expert declarations submitted by Stava.  The Federal Circuit said that there is no per se prohibition against relying on an expert’s declaration in support of factual findings underlying a legal conclusion of obviousness solely because the declaration states that something “would have been obvious.”  To determine if an expert’s statement is directed to factual findings or the legal conclusion of obviousness, the court looks to the statement not in isolation, but in the context of the whole declaration.

As to claims 46, 57–62, 65, 74, 98-100, the Federal Circuit found that neither the PTAB nor the Examiner made the requisite factual findings or provided the attendant explanation, finding that both purported to incorporate by reference arguments drafted by Strava’s attorneys.  Thus the Federal Circuit vacated the decision and remanded the case for additional PTAB findings and explanation.  As to claim 43, 71, and 86, the Federal Circuit disagreed with Ikon, and found that The PTAB made the requisite factual findings with an adequate evidentiary basis and provided the attendant explanation.

This cases goes back to the Board, but O’Malley would have simply reversed, since the Board failed to meet its duty.  While certainly a pro-patentee position, it pins the fate of the challenger on the competence of the Board and the Examiner below, rather than the merits of the invalidity case.

 

BRI Does Not Apply if Patent Expires Any Time During Reexamination Proceeding

In In Re CSB-System International, Inc., [2015-1832] (August 9, 2016), the Federal Circuit held that the PTAB erred in applying a broadest reasonable interpretation claim construction, instead of a Phillips claim construction, to claims that expired during the course of the ex parte reexamination, but nonetheless affirmed the rejection of claims as obvious under the correct, narrower, standard.

The Federal Circuit said that during reexamination proceedings of unexpired patents, however, the Board uses the broadest reasonable interpretation
consistent with the specification standard, or BRI.  The rationale for permitting
this broader standard in reexaminations is that a patent owner before the Patent and Trademark Office with an unexpired patent may amend claims to narrow their scope, negating any unfairness that may otherwise result from adopting the BRI standard.  However, when an expired patent is subject to reexamination, the traditional Phillips construction standard attaches.

In the instant case, the patent expired after the Examiner issued a final rejection but before consideration of the appeal by the PTAB.  The PTAB applied BRI becaue the patent owner had the opportunity to amend its patent claims while they were pending before the examiner in the reexamination, as the patent had yet to expire.

The Federal Circuit disagreed with the Board’s approach, stating that when a patent expires during a reexamination proceeding, the PTO should thereafter apply the Phillips standard for claim construction, even if this means that the Board applies a different standard than the examiner.

The Federal Circuit held that:

BRI is not a monolithic standard that the Board can use even after a patent expires. Rather, consistent with our prior precedent and customary practice, we reaffirm that once a patent expires, the PTO should apply the Phillips standard for claim construction.