A Defined Numerical Parameter Can Still Be Indefinite, If It’s Not Clear How to Measure It

In The Dow Chemical Co. v. Nova Chemicals Corporation (Canada), [2014-1431, 2014-1462] (August 28, 2015) the Federal Circuit applied the change of law exception to reject Dow’s bid for supplemental damages for infringements occurring after the original judgment — the change of law being the change of the standard of indefiniteness resulting from the Supreme Court decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014).

The Federal Circuit found that its original decision would have been different under the new Nautilus standard.  The claims at issue require “a slope of strain hardening coefficient greater than or equal to 1.3.”  The patent explained that the slope of strain hardening
coefficient was a new Dow construct not previously known in the prior art, and is calculated by a given formula from the slope of strain hardening curve.  However, it turns out that the strain hardening curve is in fact curve, meaning it does not have a single slope.  .Nova complained that the patent fails to teach where and how the slope of strain hardening should be measured.  The Federal Circuit found that there were four ways to measure the slope, and that each of these four methods may produce different results, and because the methods do not always produce the same results, the method chosen
for calculating the slope of strain hardening could affect whether or not a given product infringes the claims.

Under Nautilus a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty,those skilled in the art about the scope of the invention.  The Federal Circuit held that “the required guidance is not provided by the claims, specification, and prosecution history.”  The Federal Circuit said that a claim term is indefinite if it “leave[s] the skilled artisan to consult the ‘unpredictable vagaries of any one person’s opinion.’” The Federal Circuit concluded that the claims here are invalid as indefinite, and the award of supplemental damages must be reversed.

While measured parameters with numerical values at first appear to be definite, patent drafters must be clear about how those parameters are measured — at least where the value can vary depending upon the method used.


Avoid Saying Anything About the Prior Art Except How it Differs from the Claims

In Inline Plastics Corp. v. EasyPak, LLC, [2014-1305] August 27, 2015, the Federal Circuit vacated the district court’s claim construction of “frangible section” as being improperly limited to the preferred embodiment, and therefore reversed the district court’s judgment of non-infringement.

The preferred embodiment of the “frangible section” is described as having a pair of parallel score lines, although an alternative embodiment is described as having a single score line.  EasyPak argued that the prosecution history supports construing frangible section as requiring at least two score lines, but the Federal Circuit disagreed,  noting that the examiner did not require such limitation, and it was not a condition of patentability.

in distinguishing a prior art reference, the applicant described the prior art as having a single score line, but the Federal Circuit observed that this was not the basis for distinction.  The Federal Circuit further found that claim differentiation also supported the broader construction of frangible section, because the alternative embodiment specifically mentioned a single score line.

Although all’s well that ends well, the patent applicant’s description of the prior art formed the basis for the iinfringer’s claim construction arguments.  When characterizing and distinguishing prior art, it is probably best not to mention any aspect of the prior art that is not necessary to the basis for distinguishing the prior art.



He Fought the Law, and the Law Won

The most remarkable thing about Hyatt v Lee, [2014-1596], (August 20, 2015), is that the plaintiff Mr. Hyatt has 400 pending patent applications that were filed before June 8, 1995.  This means that any patent that issues on one of this applications will have a 17 year term from issuance, expiring a minimum of 37 years after they were filed.  Each of these applications averages 116 independent claims, and 299 total claims, which if filed electronically today would cost $35620 in filing fees per application.  The Patent Office estimates that combined, Mr. Hyatt’s 400 applications include 45,000 independent claims and 115,000 total claims.

It is not surprising that the USPTO is not amused with Mr. Hyatt, and in August 2013, the began to issue “Requirements” in each of the application families, asking Mr. Hyatt to select a number of claims from each family (not to exceed 600), identify the earliest applicable priority date and supporting disclosure for each selected claim; and 3) present a copy of the selected claims to the USPTO.

Mr. Hyatt’s concern was that as patents issued, this could make information about unpublished applications public to his detriment.  This seems a legitimate concern, but facing the examination of 115,000 total claims, the USPTO was not sympathetic, and the Federal Circuit backed them up.

You can buck the system, but you have to remember that the system bucks back.


Obviousness is Alive and Well

In ABT Systems, LLC v. Emerson Electric Co., [2014-1618, 2014-1700] (August 19, 2015), the Federal Circuit reversed the district court’s denial of Emerson’s motion for JMOL that the claims of the patent in suit were invalid for obviousness.

Rather than mounting a strong challenge to the merits of Emerson’s theory of obviousness based on the disclosures of the prior art references, ABT takes the position that Emerson’s argument is flawed because the references upon which it relies are either non-enabled or teach away.  The Federal Circuit said that the references do not “teach away,” as ABT argues, because it is clear that none come near to criticizing, discrediting, or otherwise discouraging investigation into the claimed invention.  The Federal Circuit also rejected ABT’s argument that the references were not enabled because even “[a] non-enabling reference may qualify as prior art for the purpose of determining obviousness,” Symbol Tech., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991), and even “an inoperative device . . . is prior art for all that it teaches,” Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989).

In looking for a reason to combine the references, the Federal Circuit said that it was well settled that even where references do not explicitly convey a motivation to combine, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”  The Federal Circuit said that a court may find a motivation to combine prior art references in the nature of the problem to be solved, particularly with simpler mechanical technologies.  The Federal Circuit the references themselves and the nature of the problem provided the required reason to combine.

ABT also tried to rely upon commercial success, but the Federal Circuit said that its case was undermined by the failure to establish a nexus between the invention and the commercial success of the products embodying the invention.  Advertisements and press releases were not a substitute for market share information or industry praise or recognition for the novelty of the invention.  The Federal Circuit further found the number of licenses was insufficient to overcome a convincing case of invalidity without showing a clear nexus to the claimed invention.

No Liability for Inducing Non-Infringement

In JVC Kenwood Corporation v. Nero, Inc., 2014-1011 (August 17, 2015), the Federal Circuit held that if what the end user is doing does not constitute infringement (because of standards essential patents licensed to the end users), the inducing those end users to do something that is not infringement, is not inducing patent infringement.

JVC’s patents were part of a patent pool licensed to the manufacturers of DVD discs and disc drives.  Nero’s software helps the end users of licensed DVD discs and disc drives to burn and play the discs.  The end user’s use of the DVD discs and disc drives was not infringement because of a pool license to the manufactures of the discs and disc drives, so Nero’s actions in selling the software did not induce infringement.


Non-Analogous Art is Not Prior Art

In Circuit Check Inc. v. QZQ Inc., [2015-1155] (July 28, 2015), the Federal Circuit revered the district court grant of JMOL, restoring the jury verdict that three patents on systems and methods for marking interface plates used in the testing of circuit boards were not invalid for obviousness.

The Federal Circuit reasoned that by finding the claims nonobvious, the jury presumably found that the disputed prior art is not analogous and therefore not within the scope of the prior art, and concluded that substantial evidence supports the jury’s presumed finding.  The Federal Circuit explained whether a reference is analogous art depends upon whether it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve.

The Federal Circuit agreed that the asserted prior art — rock carvings, engraved signage, and Prussian Blue — was is not part of the field of circuit board testers and test figures, which meant that the art was only prior art if it was reasonably pertinent to the particular problem solved by the inventor.  The Federal Circuit said that although familiar items may have obvious uses beyond their primary purposes, a reference is only reasonably pertinent when it “logically would have commended itself to an inventor’s attention in considering his problem.”

The jury heard testimony that a person of ordinary skill in the art would not have thought about rock carvings, engraved signage, or Prussian Blue in considering how to mark interface plates, and was entitled to weigh this testimony, find that an ordinarily skilled artisan would not find that the disputed prior art “logically would have commended itself to an inventor’s attention,” and thus find the disputed prior art not analogous.

The Federal Circuit said that:

[a]n alleged infringer should not be able to transform all systems and methods within the common knowledge into analogous prior art simply by stating that anyone would have known of such a system or method. The question is not whether simple concepts such as rock carvings, engraved signage, or Prussian Blue dye are within the knowledge of lay people or even within the knowledge of a person of ordinary skill in the art. Rather, the question is whether an inventor would look to this particular art to solve the particular problem at hand.

 Even if the prior art were analogous, the Federal Circuit went on to find that a  reasonable jury could have concluded that QXQ did not prove by clear and convincing evidence that the differences between the prior art and the claimed invention were insignificant.

The Federal Circuit concluded that the jury’s presumed findings regarding the scope and content of the prior art, differences between the claimed invention and the stipulated prior art, and objective considerations of nonobviousness were supported by substantial evidence, and from these a reasonable jury could have concluded that the subject matter as a whole would not have been obvious at the time of the invention. Thus, the district court erred by granting judgment as a matter of law.

Just Because You Believe A Patent is Invalid Doesn’t Mean You Can Believe You Don’t Infringe It

In a 6-2 decision Commil USA, LLC v. Cisco Systems, Inc, the Supreme Court held that a good-faith belief that a patent is invalid is not a defense to inducement of patent infringement under 35 U.S.C. § 271(b).

 Commil USA, which holds a patent for a method of implementing wireless networks, sued respondent Cisco Systems, a maker and seller of wireless networking equipment. A jury found Cisco liable for both directly infringing Commil’s patent as well as “inducing” others to infringe by selling them the infringing equipment.  The Supreme Court had previously held that for liability for inducement under 271(b) to attach, the defendant must know that its induced acts are infringing, that is, inducement liability requires knowledge of patent infringement. See, e.g., Global-Tech Appliances v. SEB S.A., 563 U.S. __, __ (2011); Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488 (1964).

The District Court had instructed the jury that it could find inducement if Cisco “knew or should have known that its actions would induce actual infringement,” and the jury found for Commil on the induced infringement charge. The Federal Circuit reversed the District Court in part, holding that Cisco should have been allowed to present evidence of its good-faith belief that Commil’s patent was invalid.  The Federal Circuit reasoned that one cannot infringe an invalid patent, and therefore a good faith belief that a patent is invalid translated into a good faith believe that the patent is not infringed,

The Supreme Court started with the premise that liability for inducing infringement attaches only if the defendant knew of the patent and that the induced acts constitute patent infringement.  The Supreme Court provided four arguments why belief about the validity does not negate the scienter required by 271(b):  First, the court found that when infringement is the issue the validity of the patent is not the question to be confronted, noting that a declaratory judgment of invalidity presents an independent claim from the patentee’s charge of infringement, and that issues of validity and infringement are in separate parts of the patent act.  Second, the Supreme Court said that allowing a defense of invalidity would “undermine” the statutory presumption of validity. Third, the Supreme Court asserted that invalidity is not a defense to infringement, it is a defense to liability, and thus it cannot negate the scienter required for inducement.  Fourth and finally, the Supreme Court identified “practical reasons” not to create a defense based upon the good faith belief of invalidity, including the fact that there are various ways to obtain an invalidity ruling, and recognizing the defense would render litigation more burdensome, and because it is harder to determine validity, it would be easier to prevail on a defense based upon belief of invalidity, and it would burden the jury to separate issues of invalidity from belief of invalidity.

The dissent by Justice Scalia started with the observation that anyone with a good-faith belief in a patent’s invalidity necessarily believes that patent counsel cannot be infringed.  The dissent then went on to address the majority’s four arguments, observing that while it was true that the patent act treats infringement separately from validity, it is irrelevant.  Recognizing infringement requires validity is entirely consistent with their separate nature.  The dissent next observed that the presumption is not weakened by treating a good-faith belief as a defense.  While if successful the defense avoids liability, it in no way undermines the patent’s presumed validity.  The dissent called “invalidity is not a defense to infringement, it is a defense to liability” as a mere assertion, asserting instead that an invalid patent confers no rights.  Finally, the dissent rejected the majority’s “practical reasons”  not to create a defense to inducement  as flawed because it wasn’t up to the Court to create or not create defenses, but to interpret the patent act.

 A good faith, but incorrect, belief that the patent is invalid is no defense to a claim for inducement.  However a good faith, but incorrect belief that the patent is not infringed is a defense to a claim of inducement. But non-infringement depends upon claim construction, which in turn is pressured by validity considerations.  Does an opinion that the claims are not infringed because they cannot be validly construed to cover the accused device protect the manufacturer from a claim of inducement?  After Commil a business without a clear non-infringement position should consider preemptively test the validity of the patent, or risk subsequently being liable for inducement if the patent is later found not invalid.

Clear and Unmistakeable Disavowal Found in an IDS

In Golden Bridge Tech v. Apple, [2013-1496] (Fed. Cir. 2014), the Federal Circuit affirmed the district court’s grant of summary judgment that Apple does not infringe the asserted claims of U.S.Patent Nos. 6,574,267 and 7,359,427.

The Federal Circuit concluded that the patent owners submissions during prosecution of its stipulated construction for the term preamble constituted a disclaimer. The Federal Circuit said that while it generally construes terms according to their plain and ordinary meanings to one of ordinary skill in the art, it departs from that meaning where there is disclaimer.  As parts of an Information Disclosure Statement filed in a reexamination and in patent application, the patent owner submitted a stipulation from prior a litigation as to the meaning of the claim term “preface.”

The patent owner argued that the mere submission of an IDS did not work a disclaimer, by the Federal Circuit disagreed, noting that the patent owner submitted the information with a request that the PTO “expressly consider” it.

TIPAn Information Disclosure Statement should perhaps include a statement that the submission of the information does not effect any express or implied disclaimer.  It may also be a good practice of included a statement in all continuations and divisionals rescinding express or implied disclaimer made in any parent or related application.


Any [Tangible] Thing Under the Sun Made by Man

In Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., [2013-1600](Fed. Cir. 2014), the Federal Circuit held that to qualify as a manufacture, the invention must be a tangible article that is given a new form, quality, property, or combination through man-made or artificial means.  The Federal Circuit affirmed the district court’s determination that a device profile (essentially a data set] for describing properties of a device was not patentable subject matter under 35 U.S.C. §101, saying “[d]ata in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.”

Mayo, Myriad, and Multi-factor balancing tests

Updated subject matter eligibility guidance from the USPTO

On the same day that the Supreme Court’s opinion was handed down in Assoc. for Mol. Pathology v. Myriad Genetics, 133 S. Ct. 2107 (2013), the U.S. Patent Office issued a “memorandum… to provide preliminary guidance” (“memorandum”) for Examiners to use in light of the Myriad holding. This memorandum indicated that further guidelines would be coming in the future, and on 4 March 2014 they finally arrived (“guidelines”). These guidelines apply most particularly to inventions that might fall into the “product of nature” and “law of nature” exceptions to subject matter eligibility; the guidelines are careful to make clear (pg. 1) that “[t]here is no change to examination of claims reciting an abstract idea, which should continue to be analyzed for subject matter eligibility using the existing guidance in MPEP § 2106(II),” (emphasis in original). The guidelines supersede the previous memorandum, and answer important questions that the memorandum left unaddressed. The following points are worth noting:

(1)  Although the holding of Myriad only specifically addressed “naturally occurring DNA,” (Id. at 2111), the logic by which the Court arrived at this conclusion would appear to apply with equal force to other naturally occurring substances, such as proteins, lipids, viruses, etc. The initial post-Myriad memorandum was careful to confine itself only to the subject of nucleic acids (pg. 1, “Examiners should now reject product claims drawn solely to naturally occurring nucleic acids or fragments thereof…” emphasis in original). Indeed, the PTO evidently still believes that Myriad’s holding applies only to nucleic acids (guidelines, pg. 1 “the holding in Myriad was limited to nucleic acids…”).

      Nevertheless, the new guidelines make clear that they apply beyond just nucleic acids (pg. 3, “If the claim recites or involves… something that appears to be a natural product (e.g., a citrus fruit, uranium metal, nucleic acid, protein, etc.), then the claim only qualifies as eligible subject matter if the claim as a whole recites something significantly different than the judicial exception itself,” bold/italic in original, underlining added).

(2) The new guidelines provide a flow chart for determining subject matter eligibility, which ends with a multi-factor balancing test that the guidelines liken to the Wands factors for enablement determination. The guidelines strongly favor use of these Wands-like factors (pg. 3, “If there is any doubt as to whether the claim recites a judicial exception… the claim requires further analysis under Question 3. For example, if the claimed product is a protein or a mineral, then the analysis must proceed to Question 3…” emphasis in original).

Myriad chart

This is true even when the analysis arguably could stop at Question 2. For example, page 5 of the new guidelines give the example of a claim “A bacterium from the genus Pseudomonas containing therein at least two stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative pathway.” It is at least possible that such a Pseudomonas exists in nature, but the guidelines are careful to make clear (pg. 6) that this possibility is not enough to sustain a §101 rejection. In this respect, the guidelines are following Myriad, where the court indicated in dictum that the mere theoretical possibility that something exists in nature is not enough to bring a claim into the “product of nature” exception. Myriad, 133 S. Ct. at 2119 n.8.

The multi-factor balancing test gives a number of points to consider, no one of which is supposed to be determinative. The points include:
Factors that weigh toward eligibility:

a) Claim is a product claim reciting something that initially appears to be a natural product, but after analysis is determined to be non-naturally occurring and markedly different in structure from naturally occurring products.
b) Claim recites elements/steps in addition to the judicial exception(s) that impose meaningful limits on claim scope, i.e., the elements/steps narrow the scope of the claim so that others are not substantially foreclosed from using the judicial exception(s).
c) Claim recites elements/steps in addition to the judicial exception(s) that relate to the judicial exception in a significant way, i.e., the elements/steps are more than nominally, insignificantly, or tangentially related to the judicial exception(s).
d) Claim recites elements/steps in addition to the judicial exception(s) that do more than describe the judicial exception(s) with general instructions to apply or use the judicial exception(s).
e) Claim recites elements/steps in addition to the judicial exception(s) that include a particular machine or transformation of a particular article, where the particular machine/transformation implements one or more judicial exception(s) or integrates the judicial exception(s) into a particular practical application. (See MPEP 2106(II)(B)(1) for an explanation of the machine or transformation factors).
f) Claim recites one or more elements/steps in addition to the judicial exception(s) that add a feature that is more than well-understood, purely conventional or routine in the relevant field.


Factors that weigh against eligibility:

g) Claim is a product claim reciting something that appears to be a natural product that is not markedly different in structure from naturally occurring products.
h) Claim recites elements/steps in addition to the judicial exception(s) at a high level of generality such that substantially all practical applications of the judicial exception(s) are covered
i) Claim recites elements/steps in addition to the judicial exception(s) that must be used/taken by others to apply the judicial exception(s).
j) Claim recites elements/steps in addition to the judicial exception(s) that are well-understood, purely conventional or routine in the relevant field.
k) Claim recites elements/steps in addition to the judicial exception(s) that are insignificant extra-solution activity, e.g., are merely appended to the judicial exception(s).
l) Claim recites elements/steps in addition to the judicial exception(s) that amount to nothing more than a mere field of use.

As with most multi-factor tests, some factors appear in practice to matter more than others. For composition claims, all the work is done by factors (a) and (g) in the examples. For method claims, factors (b), (c), (h), and (i) appear to do most of the work. In the examples given, factor (e) appears somewhat superfluous (see, e.g. Example E, claim 2, pg. 13 and Example F, claim 1, pg. 14).

(3) Perhaps most significantly, the PTO has reaffirmed that the subject matter eligibility analysis must be conducted on the claim as a whole (guidelines pg. 3, “Question 3”). This is important, because some District Courts read Mayo Serv. v. Prometheus Labs, 132 S. Ct. 1289 (2012) to hold that claims should be broken up into “routine” and “novel” elements, with the “routine” elements playing no role in the §101 determination. See, e.g., Ariosa Diagnostics v. Sequenom, Inc., No. C11-06391, 2013 U.S. Dist. LEXIS 156554, at *27–30 (C.D. Cal. Oct. 30, 2013).

(4) Finally, it is worth considering two examples that the guidelines provide of claims that the PTO considers subject-matter eligible, even in view of Mayo. On pages 7 and 15 the following exemplary claims are provided:

A method of treating colon cancer, comprising:
administering a daily dose of purified amazonic acid to a patient suffering from colon cancer for a period of time from 10 days to 20 days,
wherein said daily dose comprises about 0.75 to about 1.25 teaspoons of amazonic acid.

A method for treating a mood disorder in a human patient, the mood disorder associated with neuronal activity in the patient’s brain, comprising:
providing a light source that emits white light;
filtering the ultra-violet (UV) rays from the white light; and
positioning the patient adjacent to the light source at a distance between 30–60 cm for a predetermined period ranging from 30–60 minutes to expose photosensitive regions of the patient’s brain to the filtered white light, wherein the exposure to the filtered white light alters the neuronal activity in the patient’s brain and mitigates the mood disorder.

The guidelines provide that both of these claims are patent eligible, despite the fact that at their inner-most core, the claims involve a law of nature (viz., the ability of amazonic acid to combat cancer in the first example, the ability of light exposure to treat a mood-disorder in the second). The guidelines explain that the additional limitations, in particular “10 days to 20 days,” “0.75 to about 1.25 teaspoons,” and “colon cancer” (as distinct from “cancer” more generally) (pg. 8) in the first example and “distance between 30–60 cm” and “filtering the ultra-violet (UV) rays” (pg. 17) in the second example create a significant difference between the claim and the bare recitation of the law of nature.

Therefore, when facing a subject matter eligibility rejection predicated on a law of nature exception, it seems worthwhile to add details such as dosage and disease to the independent claim (provided, of course, that there is written description support for the limitation). Ideally, one could create a series of independent claims that would dominate the entire field, even though each single independent claim would be restricted enough to be subject matter eligible. That is to say, instead of claiming a “method of treating cancer,” one can write the application to disclose every known cancer individually, and then claim different cancers in different claims.