Federal Circuit Holds that a Basket is Not a Chair

In Curver Luxembourg, SARL v. Home Expressions Inc., [2018-2214] (September 12, 2019), the Federal Circuit affirmed the dismissal of an action alleging Home Expressions baskets infringed U.S. Patent No. D677946 on a Pattern For a Chair.

The application that resulted in the ‘946 patent was filed as a “design for a Furniture Part,” although none of the drawings illustrate a chair, any furniture, or any furniture part. The USPTO objected to the title because PTO regulations require that the title designate a “particular article,” and the use of “Part” was too vague to constitute an article of manufacture. The Examiner suggested that the title be amended to “Pattern for a Chair,” and the applicant complied.

U.S. Patent No. D677946, Fig. 1

The district court construed the scope of the ’946 patent to be limited to the design pattern illustrated in the patent figures as applied to a chair, explaining that “[t]he scope of a design patent is limited to the ‘article of manufacture’—i.e., the product—listed in the patent,” and granted Home expressions motion to dismiss.

The Federal Circuit noted that Curver’s appeal was essentially a request for a patent on a surface ornamentation per se. The Federal Circuit said that Curved acknowledged that the law has never sanctioned granting a design patent for a surface ornamentation in the abstract such that the patent’s scope encompasses every possible article of manufacture to which the surface ornamentation is applied, and the Federal Circuit declined to construe the scope of a design patent so broadly merely because the referenced article of manufacture appears only in the claim language, rather than the figures.

The Federal Circuit, pointing out that it was a case of first impression, addressed the question whether claim language specifying an article of manufacture can limit the scope of a design patent, even if that article of manufacture is not actually illustrated in the Figures. Given that long-standing precedent, unchallenged regulation, and agency practice all consistently support the view that design patents are granted only for a design applied to an article of manufacture, and not a design per se, the Federal Circuit held that claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.

Objective Indicia Supported PTAB’s Finding of Non-Obviousness

In Henny Penny Corporation v. Frymaster LLC, [2018-1596] (September 12, 2019), the Federal Circuit affirmed the PTAB determination that claims 1–3, 5–12, 17–21, and 23 of U.S. Patent 8,497,691 were not unpatentable as obvious.

The ‘691 Patent relates to deep fryers, and in particular to TPM sensors that detect accumulating impurities in the cooking oil, and alert the operator when to change oil.

Henny Penny originally argued the claims were the obvious result of replacing the Kauffman analyzer with the Iwaguchi sensor. However, Henny Penny changed its position arguing that Kauffman’s analyzer could simply be modified. The Board refused to consider this impermissible new theory of unpatentability raised for the first time on reply.

As to Henny Penny’s original argument the Board found that the disadvantages from the proposed modification out-weighed the uncertain benefits of the modification. The Board further found that evidence of secondary considerations supported nonobviousness. Frymaster sub-mitted evidence that it marketed a product called the “Oil Quality Sensor” (“OQS”) that won praise from two industry organizations and one customer. The Board also determined that each award specifically praised the TPM sensor in the OQS. While the Board recognized that the individual claim elements were in the prior art, it found that the praise was directed to the claimed combination as a whole. Accordingly, the Board found that the two industry awards weighed in favor of patentability, as did, to a lesser extent, the customer award.

The Federal Circuit found that the Board did not abuse its discretion by holding Henny penny to the obviousness theory in its petition. Because of the expedited nature of IPR proceedings, it is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify “with particularity” the ‘evidence that supports the grounds for the challenge to each claim. Accordingly, an IPR petitioner may not raise in reply an entirely new rationale for why a claim would have been obvious.

As to the original obviousness contention, the Federal Circuit noted that the benefits, both lost and gained, should be weighed against one another, and found that the Board’s analysis was consistent with these principles. As to the secondary considerations supporting non-obviousness, the Federal Circuit rejected Henny Penny’s argument that there was no nexus between the evidence and the claimed invention. The Federal Circuit agreed that the identified objective indicia must be directed to what was not known in the prior art, and what was not known in the prior art may well be the novel combination or arrangement of known individual elements.

The Federal Circuit concluded that substantial evidence supported the Board’s determination of non-obviousness.

Celebrating Labor Day in Patents

A number of patents mention Labor Day, most of these relate to calendars or calendar-based games.

U.S. Patent No. D34888 on a Design for Medal
celebrates the laborer
U.S. Patent No. 2,284,256 covers on a Card Game features a Labor Day Card
U.S. Patent No. 3,565,437 on a Discount Store Board Game Apparatus, features a Labor Day sale card (68).

Trick Question: How Many Utility Patents has the USPTO issued?

The as of last Tuesday, August 20, 2019, the USPTO issued U.S. Patent 10,390,470. That would seem to be the answer. A patent nerd would remember, however, that before patents were numbered about 9,957 patents — called the X patents — issued. A serious patent nerd would further know that as of August 20, 2019, for one reason or another, more than 48721 numbers did not correspond to issued patents. An uber patent nerd would know about factional patents, patents with fractional numbers issued between patents with whole numbers. There are at least four fractional patents in the era when patents were numbered.

So as of August 20, and until the next batch on August 27, the number may be 10,351,710.

Patent Eligibility Can be Determined on the Pleadings, Provide Claim Construction is Not at Issue

In Mymail, Ltd. v. Oovoo, LLC, [2018-1758, 2018-1759] (August 16, 2019), the Federal Circuit vacated and remanded judgment on the pleadings, the district court erred by declining to resolve the parties’ claim construction dispute before adjudging patent eligibility.

The district court found U.S. Patent Nos. 8,275,863 and 9,021,070 were directed to patent ineligible subject matter under 35 U.S.C. § 101. The district court concluded that the MyMail patent claims are directed to an abstract idea because they “fall within the category of gathering and processing information” and “recite a process comprised of transmitting data, analyzing data, and generating a response to transmitted data.” At Alice step two, the district court concluded that the claims fail to provide an inventive concept sufficient to save the claims.

The Federal Circuit said that Patent eligibility may be determined on a Rule 12(c) motion, but only when there are no factual allegations that, if taken as true, prevent resolving the eligibility question as a matter of law. The Federal Circuit said that determining patent eligibility requires a full under-standing of the basic character of the claimed subject matter. As a result, if the parties raise a claim construction dispute at the Rule 12(c) stage, the district court must either adopt the non-moving party’s constructions or resolve the dispute to whatever extent is needed to conduct the § 101 analysis.

Before the district court, the parties disputed the construction of “toolbar,” a claim term present in the claims of both MyMail patents. MyMail directed the district court to a construction of “toolbar” rendered in another case involving the MyMail patents. The Federal Circuit noted that the district court never addressed the parties’ claim construction dispute. Nor did the district court construe “toolbar” or adopt MyMail’s proposed construction of “toolbar” for purposes of deciding ooVoo’s and IAC’s Rule 12(c) motions.

The Federal Circuit concluded that the district court erred by failing to address the parties’ claim construction dispute before concluding, on a Rule 12(c) motion, that the MyMail patents are directed to patent-ineligible sub-ject matter under § 101, and vacated and remanded for further proceedings consistent with this opinion.

Posted in 101

Liberal Application of Relation Back Doctrine Saved Infringement Claims from Being Time Barred

In Anza Techttp://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1045.Opinion.8-16-2019.pdfhnology, Inc. v. Mushkin, Inc., [2019-1045](August 16, 2019), the Federal Circuit reversed in part, vacated in part, and remanded, the district court determination that Anza’s second amended complaint was time barred by 35 U.S.C. § 286’s six year statute of limitations.

The district court granted Mushkin’s motion, ruling that the new infringement claims did not relate back to the date of the original complaint. The court explained that new infringement claims relate back to the date of the original complaint when the claims involve the same parties, the same products, and similar technology—i.e., when the claims are “part and parcel” of the original complaint. The court ruled that newly asserted claims of infringement do not relate back if the new claims are not an integral part of the claims in the original complaint and if proof of the new claims will not entail the same evidence as proof of the original claims. Because Anza acknowledged that Mushkin’s allegedly in-fringing activity all took place more than six years before the filing date of the second amended complaint, the court held that the effect of ruling that the second amended com-plaint did not relate back to the filing date for the original complaint was that all the asserted claims in the second amended complaint were time-barred.

At the outset, the Federal Circuit adopted the majority rule that the application of the relation back doctrine is reviewed de novo, while any underlying facts are reviewed for clear error.

The Federal Circuit notes that the Supreme Court interprets the relation back doctrine liberally, applying if an amended pleading relates to the same general conduct, transaction and occurrence as the original pleading, and that its predecessor, the Court of Claims, embraced a liberal, notice-based interpretation of Rule 15(c). The Federal Circuit said that that pertinent considerations bearing on whether claims are logically related include the overlap of parties, products or processes, time periods, licensing and technology agreements, and product or process development and manufacture. In determining whether newly alleged claims, based on separate patents, relate back to the date of the original complaint, the Federal Circuit said it would consider the overlap of parties, the overlap in the accused products, the underlying science and technology, time periods, and any additional factors that might suggest a commonality or lack of commonality between the two sets of claims.

The Federal Circuit rejected Mushkin’s argument that the withdrawal of all claims of infringement of the ‘927 patent indicates that the claims address different bonding techniques, noting that the asserted patent all share “the same underlying technology, . . . solving the same problem by the same solution.”

The Federal Circuit said that amended claims do not have to be the same as the original claims to relate back. Rather, the claims must arise out of the same conduct, transaction, or occurrence. The Federal Circuit concluded that the products implicated by all three complaints did relate back, but that the newly added products may not, unless they are sufficiently related. The Federal Circuit reversed as to the six products implicated by the original complaint, and remanded as to the two products added by the Second Amended Complaint.

“Rigidity Should Yield to Flexible, Sensible Interpretation;” Written Description Satisfied

In Nalpropion Pharmaceuticals, Inc. v. Actavis Laboratories FL, Inc., [2018-1221] (August 15, 2019), the Federal Circuit held that the district court did not err in finding claim 11 of the U.S. Patent 8,916,195 patent not invalid for lack of written description, but did err in finding that claim 1 of the ’111 patent and claims 26 and 31 of the U.S. Patent 7,462,626 patent would not have been obvious in view of the prior art.

The ’195 patent is also directed to methods of treating overweight or obesity, but the claims are drawn to specific dosages of sustained-release naltrexone and bupropion that achieve a specific dissolution profile. The Federal Circuit conclude that the district court did not clearly err in finding that the inventors had possession of the invention consisting of treating overweight and obesity with the stated amounts of bupropion. The district court found that irrespective of the method of measurement used, the specification shows that the inventors possessed the invention of treating overweight or obesity with naltrexone and bupropion in particular amounts and adequately described it. The Federal Circuit concluded that this finding did not present clear error.irrespective of the method of measurement used, the specification shows that the inventors possessed the invention of treating overweight or obesity with naltrexone and bupropion in particular amounts and adequately described it.

The test for sufficiency 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. It is not necessary that the exact terms of a claim be used in haec verba in the specification, and equivalent language may be sufficient. The Federal Circuit noted that while as a general matter written description may not be satisfied by so-called equivalent disclosure, in the present case, buttressed by the district court’s fact-finding, and where the so-called equivalence relates only to resultant dissolution parameters rather than operative claim steps, the Federal Circuit affirmed the district court’s conclusion, noting “rigidity should yield to flexible, sensible interpretation.

The ’111 patent is directed to a composition of sustained-release bupropion and naltrexone for affecting weight loss, and the ’626 patent is drawn to a method for treating over-weight or obesity comprising. Although the district court found the claims non-obvious, in the Federal Circuit’s view, the prior art disclosed the claimed components of the composition claims and the steps of the method claims including the use claimed by the method.

Nalpropion argued that bupropion does not possess sufficient weight loss efficacy to obtain FDA approval by itself, but the Federal Circuit said that motivation to combine may be found in many different places and forms; it cannot be limited to those reasons the FDA sees fit to consider in approving drug applications. Instead, the court should consider a range of real-world facts to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.

The Federal Circuit said that the inescapable, real-world fact here is that people of skill in the art did combine bupropion and naltrexone for reductions in weight gain and reduced cravings—goals closely relevant to weight loss. Contrary to Nalpropion’s view, persons of skill did combine the two drugs even without understanding bupropion’s mechanism of action but with an understanding that bupropion was well-tolerated and safe as an antidepressant. Thus, the Federal Circuit concluded that skilled artisans would have been motivated to combine the two drugs for weight loss with a reasonable expectation of success. The Federal Circuit examined the claims, and concluded that every limitation in the claims at issue was met by the prior art.

The Federal Circuit then examined objective indicia of nonobviousness. Nalpropion argues that many others tried and failed to find a combination effective for weight loss and that the claimed combination exhibited un-expected results, but the Federal Circuit found that a combination drug that affected weight loss—could not have been unexpected. The Federal Circuit said that the failure of others alone cannot overcome the clear record that the combination of the two drugs was known and that both drugs would have been understood to be useful for claimed purpose.

The Federal Circuit affirmed the district court’s decision on written description, but reversed the district court’s decision that the claims were not obvious.

“Any Compound May Look Obvious Once Someone Has Made it,” But Federal Circuit rejects “Convoluted” Obviousness Argument

In Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Laboratories, Inc., [2018-1804, 2018-1808, 2018-1809] (August 14, 2019), the Federal Circuit affirmed the determination that claims 1 and 2 of U.S. Patent No. 5,847,170 were not invalid for obviousness.

The Federal Circuit noted that in cases involving new chemical compounds, it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound. The reason need not be the same as the patentee’s or expressly stated in the art, but charting a path to the claimed compound by hindsight is not enough to prove obviousness. The Federal Circuit observed that any compound may look obvious once someone has made it and found it to be useful, but working backwards from that compound, with the benefit of hindsight, once one is aware of it does not render it obvious.

In its obviousness analysis, the district court considered the testimony of seven witnesses and seventeen prior art references and ultimately concluded that Defendants failed to prove that claims 1 and 2 of the ’170 patent would have been obvious. In addition, the district court found that some secondary considerations evidence supported nonobviousness and that there was a nexus between claims 1 and 2 and the marketed product Jevtana®. The Federal Circuit agreed with Sanofi and concluded that Fresenius’s “convoluted” obviousness theory lacks merit. The Federal Circuit concluded that the district court did not clearly err in its assessment of these references or in finding that they would not have motivated a skilled artisan to modify the lead compound to achieve the claimed compound.

Arguments Regarding Enablement Confirm Narrow Scope of Claims

In Iridescent Networks, Inc. v. AT&T Mobilitiy, LLC, [2018-1449] (August 12, 2019), the Federal Circuit affirmed judgment of non-infringement of U.S. Patent No. 8,036,119, on System and Method of Providing Bandwidth on Demand, affirming the district court’s construction of “high quality of service connection.”

The ’119 patent discloses a system and method for managing network traffic routes and bandwidth availability to minimize adverse network conditions and to assure that the network connection maintains a requested minimum level of one of these three parameters. Iridescent proposed broadly construing the claim term “high quality of service connection” to mean “a connection in which one or more quality of service connection parameters, including bandwidth, latency, and/or packet loss, are assured from end-to-end based on the requirements of the application.” The magistrate judge, however, largely adopted AT&T’s proposed construction, construing the term to mean “a connection that assures connection speed of at least approximately one megabit per second and, where applicable based on the type of application, packet loss requirements that are about 10-5 and latency requirements that are less than one second.”

The Federal Circuit began with the language of the claims. The district court found that “high quality of service connection” is a coined term that has no ordinary meaning in the industry, and the Federal Circuit agreed. Because the claim was silent as to what amount of quality is sufficient to be “high,” the Federal Circuit looked first to the specification, followed by the prosecution history, to determine the meaning of the term “high quality of service connection.”

The applicant of the ’119 patent relied on Figure 3 during prosecution to support an amendment that gave rise to the term “high quality of service connection.” Figure 3 indicates minimum requirements for connection speed, packet loss, and latency. During prosecution of the parent application, the applicant argued that “the various connection parameters illustrated for high quality of service enabled bandwidth applications in Fig. 3” supported the term “high quality of service connection.” The Federal Circuit found the applicant relied on the minimum connection parameter requirements described in Figure 3 to overcome the examiner’s §112 enablement rejection.

The Federal Circuit rejected the patent owner’s argument that the prosecution history was not relevant in the absence of clear disavowal, noting that any explanation, elaboration, or qualification presented by the inventor during patent examination is relevant, for the role of claim construction is to capture the scope of the actual invention that is disclosed, described, and patented. The Federal Circuit said that where there is no clear ordinary and customary meaning of a coined term of degree, it may look to the prosecution history for guidance without having to first find a clear and unmistakable disavowal.

The Federal Circuit also rejected the argument that statements made in response to an enablement rejection do not affect claim scope. Noting that the enablement requirement prevents claims broader than the disclosed invention.

The Federal Circuit affirmed the District Courts claim construction.

Board Erred in Failing to Apply § 112, ¶ 6 to “Mechanical Control Assembly”

In MTD Products Inc. v. Iancu, [2017-2292] (August 12, 2019), the Federal Circuit vacated the Board’s obviousness determination, finding that the Board erred in finding that the term “mechanical control assembly” was not a means-plus-function term governed by § 112, ¶ 6.

U.S. Patent No. 8,011,458 discloses a steering and driving system for zero turn radius (“ZTR”) vehicles. Both of the independent claims contain the phrase “mechanical control assembly.”

The “essential inquiry of whether a claim element invokes § 112, ¶ 6. is not merely the presence or absence of the word ‘means’ but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. One way to demonstrate that a claim limitation fails to recite sufficiently definite structure is to show that, although not employing the word “means,” the claim limitation uses a similar nonce word that can operate as a substitute for “means” in the context of § 112, para. 6.” Generic terms like “module,” “mechanism,” “element,” and “device” are commonly used as verbal con-structs that operate, like “means,” to claim a particular function rather than describe a sufficiently definite structure. Even if the claims recite a nonce term followed by functional language, other language in the claim might inform the structural character of the limitation-in-question or otherwise impart structure to the claim term.

In assessing whether the claim limitation is in means-plus-function format, we do not merely consider an introductory phrase (e.g., “mechanical control assembly”) in isolation, but look to the entire passage including functions performed by the introductory phrase. The ultimate question is whether the claim language, read in light of the specification, recites sufficiently definite structure to avoid § 112, ¶ 6.

The Federal Circuit agreed with the Board that the term “mechanical control assembly” is similar to other generic, black-box words that it has held to be nonce terms similar to “means” and subject to § 112, ¶ 6 because the term does not connote sufficiently definite structure to one of ordinary skill in the art. The Federal Circuit further agreed that the rest of the claim language of the disputed phrase is primarily, but not entirely, functional. However the Federal Circuit said that the Board erred when it relied on the specification’s description of a “ZTR control assembly” to conclude that the claim term “mechanical control assembly” had an established structural meaning. The fact that the specification discloses a structure corresponding to an asserted means-plus-function claim term does not necessarily mean that the claim term is understood by persons of ordinary skill in the art to connote a specific structure or a class of structures.

The Federal Circuit found that the Board’s analysis implied that so long as a claim term has corresponding structure in the specification, it is not a means-plus-function limitation. This view would leave § 112, ¶ 6 without any application, because any means-plus-function limitation that met the statutory requirements, i.e., which includes having corresponding structure in the specification, would end up not being a means-plus-function limitation at all.

The Federal Circuit also disagreed with the Board’s interpretation of the prosecution history, finding that arguing that a limitation connotes structure and has weight is not inconsistent with claiming in means-plus-function format since means-plus-function limitations connote structure.

Given the lack of any clear and undisputed statement foreclosing application of § 112, ¶ 6, we conclude that the Board erred in giving dispositive weight to the equivocal statements it cited in the prosecution history.