Petitioner should discuss the prosecution history of all relevant related patents when arguing that an issue was not previously considered by the Office
Petitioner should discuss the prosecution history of all relevant related patents when arguing that an issue was not previously considered by the Office
The Board has discretion to deny institution of an inter partes review under 35 U.S.C. 325(d) when “the same or substantially the same prior art or arguments previously were presented to the Office.” In SMR Automotive Systems USA, Inc. (“SMR Auto”) v. Magna Mirrors of America, Inc. (“Magna Mirrors”), IPR2018-00536 (PTAB Dec. July 9, 2018), the Board denied institution of an inter partes review, in part, because Petitioner did not include any discussion about the prosecution history of a related patent that the Board considered relevant to the § 325(d) inquiry.
In January 2018, SMR Auto filed a Petition for inter partes review for review of claims 1-11 of U.S. Patent No. 8,550,642 (“the ‘642 patent”). The ‘642 patent is directed to an exterior rearview mirror that includes a plano reflective element and an auxiliary reflective element mounted adjacent to each other (Decision, page 3).
In Ground 1, SMR Auto asserted that claims 1-11 are unpatentable under 35 U.S.C. §§ 102(a), (b), and (e), as being anticipated by U.S. Publication No. 2002/0072026, filed Dec. 20, 2000, published June 13, 2002 (“the ’026 publication”). The ’026 publication lists Niall R. Lynam, John O. Lindahl, and Hahns Y. Fuchs as inventors. The application that issued as the ’642 patent lists Niall R. Lynam as the sole inventor, and was filed August 21, 2012. (Id., pages 10-11).
SMR Auto alleged the ‘026 publication is prior art under 35 U.S.C. § 102(b) because the ‘642 patent should not be entitled to the May 20, 2003 priority date of the ‘872 provisional application, but rather is entitled only the priority date of its great grandparent U.S. Patent No. 7,934,843 (“the ‘843 patent”), which was filed on August 5, 2010. (Id., page 11). Further, SMR Auto alleged the ‘026 publication is prior art under 35 U.S.C. §§ 102(a) and 102(e) because the ‘026 publication is “by another” and was published on June 13, 2002, which is prior to the earliest possible effective filing date of May 20, 2003. (Id.).
In response, Magna Mirrors argued that the above issues of (1) whether the ‘642 patent is entitled to the May 20, 2003 priority date, and (2) whether the ‘026 publication qualifies as prior art because it is not the work of another were considered repeatedly during prosecution of the ’642 patent and its family. (Id.). During the prosecution of the ‘642 patent and the great grandparent ‘843 patent, the Examiner alleged that the claims were not entitled to the benefit of an earlier filing date. (Id., page 13). In response, Applicant submitted a Declaration from Niall R. Lynam declaring that the invention of the independent claims of the ‘843 patent was reduced to practice prior to June 13, 2002. Based on the Declaration, the Examiner allowed the claims. (Id., page 13).
Based on the prosecution history of the ‘843 patent, Magna Mirrors argued the Board should deny institution under 35 U.S.C. § 325(d) (Id., page 15). The Board agreed with Magna Mirrors that the issues of (1) whether the ‘642 patent is entitled to the May 20, 2003 priority date, and (2) whether the ‘026 publication qualifies as prior art were previously considered by the office. In explaining its reasoning, the Board stated that it was fatal to SMR Auto’s argument to not discuss the prosecution history of the ‘843 patent because the ‘843 patent is nearly identical to the ‘642 patent. (Id., pages 18-19).
Thus, the Board exercised its discretion under 35 U.S.C. § 325(d) and declined to institute inter partes review of claims 1-11 on the ground that the claims are unpatentable under 35 U.S.C. §§ 102(a), (b), and (e) as being anticipated by the ’026 publication. (Id., page 19).
In Ticketnetwork, Inc. v. Ceats, LLC, CBM2018-00004 (PTAB 2018) (Final Written Decision), the Patent Trial and Appeal Board (“the Board”) held that Ticketnetwork failed to establish standing under 37 C.F.R. § 42.302, and accordingly did not institute a covered business method (“CBM”) review of U.S. Patent No. 8,229,774 (the “’744 Patent”).
In 2010, Ceats sued Ticketmaster and others for infringement of a patent related to the ‘744 Patent. While the case ultimately resulted in the Federal Circuit affirming invalidation of the related patent, the parties to the instant CBM settled – Ticketmaster was granted a license to certain Ceats patents including the ‘744 Patent, wherein Ticketmaster was to pay a royalty to Ceats. (Decision, pages 6-7).
About a year and a half after the Federal Circuit affirmance, Ticketmaster sent a letter to Ceats purporting to terminate the license agreement. Ceats responded in a July 2015 letter and noted that they “have determined that [Ticketmaster is] . . . infringing on CEATS’ patent rights, including. . . [the ‘744 Patent]” . . . “. (Id., page 7).
Ticketmaster subsequently filed a declaratory judgment action against Ceats, arguing that: (1) the license agreement was unenforceable; (2) Ticketmaster does not infringe any of the patents referenced in Ceats ‘ letter; and (3) that the patents referenced in Ceats’ letter were invalid. (Id., page 7).
In June 2017, Ticketmaster moved to voluntarily dismiss the claims regarding non-infringement and invalidity. ((Id., pages 8-9).
Finally, in November 2017, Ticketnetwork filed a petition to instate CBM review on all eight claims of the ‘744 Patent. (Id., page 9).
Under § 42.302, only parties who “have been sued or charged with infringement . . . are permitted to file a petition seeking a CBM  review”. The Board defines “charged with infringement as ”a real and substantial controversy regarding infringement . . .[,] such that the petitioner would have standing to bring a declaratory judgment action in Federal court”. (Id., pages 4-5).
In support of their standing position, Ticketnetwork argued that at the time of filing the CBM petition (November 2017), Ceats’ July 2015 letter, coupled with Ceats’ statements in a summary judgment hearing for claims related to the licensing dispute, show that, under the totality of the circumstances, Ticketmaster was “charged with infringement” of the ‘744 Patent by Ceats. (Decision, pages 9-10).
Ceats on the other hand argued that “the letter and the statement at the summary judgment hearing [(wherein Ceats conceded that if the agreement was held unenforceable, Ticketnetwork would infringe]) are together or apart, not specific enough to meet the “charged for infringement” prong for CBM standing.” (Id., page 10).
Regarding Ceats July 2015, letter the Board held that since nearly 28 months had passed since Ceats sent the letter and when Ticketmaster filed the instant CBM petition, “whatever weight in favor of standing the July 2015 Letter had . . . has been considerably diminished”. The Board also gave little weight to the letter since the letter didn’t assert infringement of specific patent. (Id., page 14; see id., page 12; see also, Hewlett-Packard Co. v. Acceleron LLC, 587 F.3d 1358, 1362 (Fed. Cir. 2009)).
As to Ceats statements at the Summary Judgment hearing, the Board explained that although Ceats indicated that it could sue for infringement if the agreement was terminated, Ceats never indicated that it actually planned to sue if the agreement was terminated. (Decision, page 15).
The Board also briefly touched upon a covenant not to sue provided by Ceats after the filing of the petition. Without reaching the issue of whether post petition filing conduct is relevant to the standing issue, the Board noted in apparent dicta that it does “not believe offering of a covenant not to sue weighs in favor of standing.” (Id., page 14).
Thus, the Board held that under the totality of the circumstances, Ticketnetwork had failed to demonstrate a “real” and “substantial” controversy sufficient to bring a declaratory judgment action or in this case, to file a CBM review petition.
In Campbell Soup Company, et al. v. Gamon Plus, Inc., IPR2017-00087, Paper 75 (PTAB 2018) (Final Written Decision), the Patent Trial and Appeal Board (“PTAB”) found that “an appreciable amount of Campbell’s increased commercial success of soup” was attributable to Gamon’s product covered by the claims and, thus, found claim 27 of U.S. Patent 8,827,111 B2 (“’111 patent”) patentable in view of this commercial success.
Campbell purchased from Gamon approximately $31 million of its iQ Maximizer gravity feed display racks over a seven-year period. The parties agreed that these display racks fell within the scope of at least claim 27 of the ‘111 patent, of which Gamon was the owner. During this seven-year period, Campbell noted a year-over-year positive sales lift in its condensed-soup brand by maintaining the same level of productivity while reducing inventory in stores of the products by 15%, thereby cutting costs to the stores. In a 2005 report to its investors, Campbell touted the benefits of the iQ Maximizer, reporting increased sales of soup by 8% by using gravity-feed shelving systems such as the iQ Maximizer. Campbell’s investor reports in subsequent years showed further sales increases and attributed these sales increases, at least partially, on gravity feed shelving display racks.
In an attempt to invalidate the claims of the patent, Campbell set forth several grounds of unpatentability, alleging the claims were invalid under 35 U.S.C. § 103(a). Ultimately, the Board relied on the Graham factors, in particular the commercial success factor, in determining that the claims were not obvious over the combination of references set forth by Campbell.
In asserting that the claims were nonobvious based on commercial success, Gamon relied on both its sales of the iQ Maximizer gravity feed display racks and Campbell’s increased sale of soup that was displayed using the iQ Maximizer racks. Campbell argued, however, that Gamon was required to show a nexus “directly attributable” to one or more limitations of claim 27 that were allegedly novel to succeed on its commercial success argument. The Board did not find Campbell’s argument persuasive, citing the Federal Circuit’s holding in WBIP, LLC v. Kohler Co. that “there is a presumption of nexus for objective considerations when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘is the invention disclosed and claimed in the patent.’” 829 F.3d 1317, 1329 (Fed. Cir. 2016). The Board found that Gamon tied the objective evidence to a specific product, i.e., the iQ Maximizer gravity feed display racks, and Campbell failed to rebut the presumption of a nexus.
Notably, the Board relied on Campbell’s expert that at least some of the increased soup sales were attributable to the iQ Maximizer gravity feed display racks. While it agreed that other factors impacted the commercial sales of the soup, the Board found that Gamon’s sales of the iQ Maximizer gravity feed display racks to Campbell and Campbell’s attribution of some increased soup sales to these gravity feed display racks provided a strong showing of commercial success, thereby finding claim 27 of the ‘111 nonobvious.
In view of the Board’s decision, it is clear that the commercial success is not limited to commercial success of the product within the scope of the claim at issue. Rather, if a patent owner can show that increased sales of another product are attributable to the product within the scope of the claim at issue, this may be sufficient to show commercial success of the product. Further, to rebut a patent owner’s “nexus” argument, a petitioner must show that the objective considerations are not tied to the entire product, not certain limitations within the claim(s) at issue.
OBJECTIVE EVIDENCE OF NON-OBVIOUSNESS OUTWEIGHS WEAK MOTIVATION TO COMBINE
Author: Hui Wauters
In Fox Factory Holding Corp. v. SRAM, LLC, Case No. IPR2016-01876 (April 2, 2018), the Patent Trial and Appeal Board (PTAB) found that Patent Owner’s extremely strong overall showing of objective indicia of non-obviousness overcomes Petitioner’s, at best, weak motivation to combine the references. Patent Owner has made a strong overall showing of objective indicia of non-obviousness, including industry praise, skepticism, and long felt need for all challenged claims 7–12 and 20–26, and a strong showing on commercial success for claims 11, 12, 25 and 26. Weighing all four Graham factors, the PTAB found that Petitioner has not shown, by a preponderance of the evidence, that the challenged claims would have been obvious over the combination of Hattan (US 3,375,022) and JP-Shimano (JP S56-442489).
The subject U.S. Patent No. 9,182,027 relates to a solitary chainring for use with a conventional chain in a bicycle drivetrain system that includes a bicycle crank.
Combining/Modifying Prior Art Elements
Petitioner argued that a person of ordinary skill in the art “would have known that it is critical to the operation of a bicycle for a bicycle chain to remain engaged with the bicycle chainring.” Petitioner contended that a person of ordinary skill in the art would have modified the offset-teeth sprocket wheel/deflector of Hattan, to include the alternating narrow and wide teeth of JP-Shimano, in order to “improve chain engagement and retention to the maximum extent possible, particularly for a solitary front chainring such as in Hattan.” Decision p. 14.
Patent Owner argued that Petitioner’s rationale does not make sense, because Hattan already purports to solve completely the problem of chain retention for all operating conditions and that the combination of Hattan and JP-Shimano would have rendered Hattan unsatisfactory for its intended purpose. Decision pp. 15-16.
The PTAB were not persuaded that modifying Hattan in view of JP-Shimano would render Hattan unsuitable for its intended use, but the PTAB did find that the potential for problems in the operation of Hattan resulting from such combination weighs against the combination. The PTAB determined that Petitioner has only shown, at best, that the evidence weighs slightly in favor of making the above modification of Hattan in view of JP-Shimano. Decision p. 22.
Patent Owner puts forth evidence (including articles, photographs and experts’ Declarations, etc.) of commercial success, licensing, copying, praise by others, and long-felt, unresolved need.
To be accorded substantial weight, there must be a nexus between the merits of the claimed invention and the evidence of secondary considerations. There is a “presumption of a nexus” when a product is “coextensive” with a patent claim. Decision p. 23.
In this regard, Petitioner argued that the patent owner’s chainring is not coextensive with the claimed invention because the Patent Owner’s chainring includes “hundreds of features” not claimed in the ’027 patent, many of which are instead claimed by other Patent Owner’s patents. Decision pp. 24-25.
However, according to the PTAB, “Unclaimed features do not prevent the presumption of a nexus, but they may be the basis for rebutting the presumption. To do so, a person challenging patent validity must show that the commercial success, or other objective evidence of non-obviousness, was due to ‘extraneous factors’ including ‘additional unclaimed features.’ ” Decision p. 25.
Having reviewed Patent Owner’s evidence, the PTAB found that the patent owner’s evidence supporting secondary considerations of non-obviousness had sufficient nexus to the challenged claims. Decision p. 34.
As to commercial success, the PTAB found that Patent Owner has presented extensive evidence that its chainrings have achieved significant sales volumes, have achieved large sales growth, have grown to a majority of their chainring sales, and have allowed them to grow from a small share to a significant share of the single chainring market. Decision pp. 35-36.
As to industry praise and skepticism, the PTAB found that Patent Owner has presented extensive evidence of industry praise and awards that its chainring products have received and that Patent Owner has made a significant showing of skepticism within the industry towards the effectiveness of the chainring regarding chain retention as provided by the challenged claims. Decision pp. 40-41.
As to long-felt need, the PTAB found that Patent Owner has shown strong evidence that a long-felt need existed in the bicycle industry for improved chain retention that did not increase the known problems of complexity, weight, and/or drivetrain friction. Decision p. 44.
As to licensing, the PTAB found that licenses explicitly mentioning the ‘027 patent and not entered into to settle litigation are entitled to some weight. Decision p. 47.
As to copying, the PTAB found that Patent Owner has shown some copying of its chainring product, which is covered by the ’027 patent, and thus this evidence of copying overall is entitled to some weight. Decision p. 51.
In conclusion, the PTAB found that the case of obviousness here is easily outweighed by the strong objective evidence of non-obviousness. Decision p. 52.
Hui Chen Wauters
Mrs. Wauters is a member of firm’s chemical/pharmaceutical practice group. Her experience includes client counseling, and preparation and prosecution of patent applications pertaining to chemical matters, materials science, pharmaceuticals and medical devices. Hui is fluent in Mandarin Chinese.
To view her full bio, click here.
PTAB Holds that a Merger Completed After the filing of Petition Can Create a Real Party-in-Interest Relationship
In Cisco Systems v. Hewlett Packard Enterprise Company, IPR2017-01933, Paper 9 (PTAB 2018) (Decision Denying Institution of Review), the Patent Trial and Appeal Board (“the Board”) held that a merger between Cisco and another company called Springboard that was completed after Cisco filed a petition for inter partes review (IPR) created a real party in interest relationship, and subsequently denied institution of the IPR.
On September 15, 2015, Hewlett Packard (HP) served Springpath with a complaint for patent infringement. On September 14, 2016, one day before the statutory deadline set forth in 35 U.S.C. § 315(b), Springpath filed a petition for IPR.
Cisco Systems filed a petition for IPR against HP on August 11, 2017, after Springpath had already filed for IPR. Subsequently, Cisco announced its intent to acquire Springpath on August 21, 2017, and completed the acquisition of Springpath on September 22, 2017, more than one month after Cisco’s petition had been filed.
The Board found that Springpath was a real party in interest, and that Cisco was merely acting as a proxy for Springpath. The PTAB then denied institution of the IPR for the following reasons. First, Cisco never disclosed the ongoing merger with Springpath in its petition or via updated mandatory disclosures. Although the merger was not yet complete at the time Cisco’s petition was filed, the Board found that Cisco should have advised the Board of the ongoing acquisition as well as the completion of the acquisition.
Second, the Board also found that Cisco could not provide any specific reasons why Cisco wanted to file for IPR independently of Springpath. Although Cisco stated that it filed the petition “for its own reasons,” the Board found this argument to be conclusory and unpersuasive. Also, since Cisco was not a party to the district court litigation, Cisco had no clear reason to file for IPR. Thus the Board concluded that Cisco was merely acting as a proxy for Springpath, which was barred under §315(b) from filing for IPR.
Cisco Systems v. Hewlett Packard Enterprise Company departs from previous Board decisions in two ways. First, prior Board decisions have heavily relied on the control factor to determine who is or is not a real party in interest. The control factor asks the question: does the party alleged to be a real party in interest have control over the petitioner, for the purpose of the IPR? In Cisco Systems, the petitioner was Cisco, a large publically-traded company, and the alleged real party in interest was Springpath, a much smaller company that Cisco acquired for $320 million. Presumably, Springpath was not exercising any control over Cisco. Instead, the Board’s decision hinged on whether Cisco was acting as a proxy for Springpath, regardless of the level of control Springpath had over Cisco.
Secondly, the Board’s decision in Cisco Systems might be construed as being inconsistent with the Board’s prior case of Synopsys v. Mentor Graphics Corp, IPR2012-00042, Paper 60 (PTAB 2014). In Synopsys, the Board held that it is “only privity relationships up until the time a petition is filed that matter; any later-acquired privies are irrelevant.” Paper 60 at 12.
In Synopsys v. Mentor, the patent owner Mentor Graphics had previously settled a patent infringement lawsuit with a company called EVE in 2006. Id. at 11-16. The petitioner Synopsys filed a petition on September 26, 2012, and subsequently Synopsys entered into an agreement to acquire EVE on September 27, 2012, one day after the petition was filed. Id. at 11-16. The Board held that the petition was not barred because there was neither a real party in interest relationship nor a privity relationship between Synopsys and EVE at the time the petition was filed, citing to 37 C.F.R. § 42.101(b). Id. at 11-16.
Accordingly, if the holding from Synopsys had been applied to the case of Cisco Systems, the result in Cisco Systems might have been quite different, because Cisco’s merger with Springpath was completed after Cisco filed a petition for IPR.
However, in Synopsys, Synopsys had an ongoing patent licensing dispute with Mentor Graphics prior to filing the IPR, and Synopsys therefore had a clear reason to file the IPR before acquiring EVE. See Mentor Graphics Corp. v. EVE-USA, 851 F.3d 1275, 1280-81 (Fed. Cir. 2017). In contrast, in Cisco Systems, Cisco could not explain why it had filed the IPR, and therefore the Board seemed to infer that Cisco’s reason for filing the IPR was to act as a proxy for Springpath, thus indicating that the real party in interest was Springpath, not Cisco.
Arun A. Shome
Email: email@example.comArun Shome is an associate in the firm’s Electrical/Mechanical Group. He practices in all areas of patent law, including the preparation and prosecution of patent applications. He has experience across a broad range of technologies, such as implantable medical devices, automotive braking systems, valves, electronic cigarettes, manufacturing systems, and electrical motors.
Mr. Shome previously served as a Patent Examiner at the United States Patent and Trademark Office, where he examined medical device patent applications. He also has experience conducting prior art searches for patentability, invalidity, and freedom to operate purposes.
Two decisions regarding whether the same or substantially the same prior art or arguments have already been considered by the USPTO have been designated as “Informative”
Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (Decision, Institution of Inter Partes Review) (Informative).
Kayak Software Corp. v. IBM Corp., CBM2016-00075, Paper 16 (PTAB Dec. 15, 2016) (Decision, Declining to Institute Covered Business Method Patent Review) (Informational).
In two decisions, designated as informative on March 21, 2018, the Board has offered guidance on when the Board will exercise its discretion, under 35 U.S.C. § 325(d), to deny institution of a post-grant proceeding because the USPTO has already considered the same or substantially the same prior art or arguments. “Informative” decisions provide the Board’s guidance on an issue but are not binding authority.
In Becton, Dickinson and Co., the Board identified six factors commonly considered when evaluating whether to deny institution under § 325(d):
(a) the similarities and material differences between the asserted art and the prior art involved during examination;
(b) the cumulative nature of the asserted art and the prior art evaluated during examination;
(c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection;
(d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art;
(e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and
(f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.
Becton at 17-18.
The Board was careful to note this list is “non-exclusive” and merely a list of commonly considered factors. Becton at 17 (emphasis in original).
In applying the factors, the Board gave little weight to the Petitioner’s use of a new reference, finding the new reference was mostly cumulative. The Board also gave little weight to the Petitioner’s submission of an expert declaration because the declaration did not: why the new reference would not be cumulative; explain how the Patent Owner’s previous arguments, made during prosecution, were in error; or offer sufficient underlying facts or data to support its position. Becton at 25, 27, 28. Accordingly, the Board found the factors weighed in the Patent Owner’s favor and denied institution on that ground. Becton at 28.
In Kayak Software Corp., the Board considered the effect of at patent’s prosecution history on determinations under 35 U.S.C. § 325(d). The patent at issue was filed over 12 years before it was issued which led to an extensive prosecution history including seven Office Actions and two decisions by the Board, both of which entered new grounds for rejection. See Kayak at 6-7; see also U.S. Patent No. 7,072,849.
The Petition was based on various combinations of four prior art references. However, three of these references had been thoroughly considered during the patent’s prosecution by both the Examiner and the Board. Kayak at 8. The prosecution history contained dozens of pages devoted to each reference. Kayak at 9. As such, the Board was unconvinced that any combination of these three references, regardless of whether or not that exact combination had been used in a rejection, could be the basis for institution in light of § 325(d). Kayak at 9. The Board found the fourth reference to be cumulative in part because the Petitioner relied on one of the three references to teach the same subject matter in another part of the Petition. Kayak at 10. The Board noted this was at least circumstantial evidence that the fourth reference was substantially similar. Kayak at 10.
Additionally, in dicta, the Board offered several possible scenarios in which similar prior art could still lead to institution, such as: clear error in the original prosecution; when the prior art was only cursorily considered; or raising an issue the USPTO was unaware of, like evidence of priority dates. Kayak at 11.
Brendan Seth O'Shea
Email: firstname.lastname@example.orgBrendan O’Shea is an associate in the firm’s Electrical and Mechanical Patent Prosecution practice group, where he prosecutes patent applications for domestic and international clients.
Mr. O’Shea’s patent prosecution experience spans a wide range of technologies, including software and Internet-based applications, business methods, telecommunications, biomedical devices, and mechanical arts.
Claim Validity Upheld Based on Showing of Lack of Motivation to Combine References
Author: James A. Gromada
In Resmed Limited et al. v. Fisher & Paykel Healthcare Limited, Case No. IPR2016-01724, the Patent Trial and Appeal Board (PTAB) was presented with a question as to whether several claims of U.S. Patent No. 8,453,641 B2 (hereinafter “the ‘641 patent”) are unpatentable under 35 U.S.C. §103 as obvious over a combination of three references. The ‘641 patent is entitled “Apparatus for Measuring Properties of Gases Supplied to a Patient” and, as provided at column 2, lines 57-62 of the ‘641 patent, its stated purpose is “to measure various properties, for example temperature or humidity, at the end of a gas delivery tube or conduit using sensors mounted on a wire, such as a wire used for heating the gases flow[ing] through the tube or conduit, where the wire resides within the delivery tube or conduit.”
When a combination of prior art references is cited for the purpose of determining that a claim is unpatentable under 35 U.S.C. §103, a showing that a skilled artisan would have been motivated to combine the references in order to achieve the claimed combination is required. The Supreme Court has stated that “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007). Instead, “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'” must be considered. Intercontinental Great Brands LLC v. Kellogg N. Am. Co., 869 F.d 1336, 1344 (Fed. Cir. 2017) (quoting KSR, 550 U.S. at 418).
The critical feature of the challenged claims of the ‘641 patent is the use of a heater wire for heating the conduit and also for carrying electrical signals from measuring sensors. The Petitioner, Resmed, relied on one cited reference, Edirisuriya, as teaching that “the heater wire itself could be used to carry electrical signals from measuring sensors,” although Edirisuriya does not explain how the heater wire can be used to carry electrical signals from a sensor. In response, the Patent Owner argued that a skilled artisan would not have been motivated to combine Edirisuriya with the other two cited references, MR810 and Gradon, because the use of the heater wire to carry electrical signals would have increased complexity and rendered the MR810-Gradon system inoperable. In particular, the Patent Owner argued that a temperature sensor cannot simply be added in series with a heater wire, because the heater wire requires a relatively high electrical current and power dissipation, whereas the temperature sensor requires a relatively low electrical current and power dissipation, and therefore, a simple substitution would lead to self heating.
In its analysis, the PTAB stated that “[w]ith respect to each of the proposed circuit designs that Petitioner contends a skilled artisan would have been aware of to implement the combined teachings, a skilled artisan would have been faced with the real-world fact that there was uncertainty as to the operability of the design,” because the proposed circuit designs “are not based on disclosure in the prior art” – Petitioner’s expert “confirms that he did not locate any prior art references disclosing a circuit design in which the heater wire is utilized to carry electrical signals from measuring sensors” – and because Petitioner did not provide sufficient evidence that any of the proposed circuit designs would be operable in any device.
Conversely, Patent Owner argued that “all three proposed circuit designs would have been inoperable.” In particular, Patent Owner’s expert stated that if the proposed Vishay thermistor was combined with the MR810 apparatus, the power dissipated would exceed the maximum rating of the Vishay thermistor, thereby destroying it, and further, that the Vishay thermistor is not typically used for temperature measurement. Petitioner’s expert agreed that “he would not use the proposed Vishay thermistor in combination with the MR810 heating wire because it would exceed the Vishay thermistor’s power dissipation specification, and that the heater wire and the supply voltage would need to be changed.”
Based on the above, the PTAB found “that the complexity of the proposed circuit designs and the lack of evidence provided by Petitioner describing additional circuitry and control logic that would be necessary to implement such circuitry in the proposed modified designs, which Patent Owner establishes are non-trivial, weigh against a finding of motivation to combine.” As a result, the PTAB held that “the motivation to eliminate an additional or external wire and reduced the number of contacts would have been outweighed by the countervailing real-world reasons not to combine the references,” and that “Petitioner’s challenges rest on impermissible hindsight reconstruction of the disclosure in the ‘641 patent.”
This case illustrates that a challenge to the validity of a patent claim can be effectively countered by the testimony of Patent Owner’s expert that there is no motivation to combine references. In particular, a convincing demonstration that there is uncertainty as to the operability of the proposed combination and/or a showing that practical, real-world considerations tend to weigh against combining the references may be decisive.
Mr. Gromada practices in all areas of patent law, including: patent preparation and prosection; patent litigation; patent reexamination (ex parte and inter partes); and counseling clients on intellectual property matters. He also engages in patent infringement and validity opinion practice and counseling, freedom-to-operate analysis, and due diligence work.
His experience includes a wide range of electrical and mechanical technologies, including radio frequent (RF) communcations technologies and equipment, cellular networks, medical devices, computer and Internet-related technologies, televisions and image display devices, computer gaming applications, and financial systems. Mr. Gromada was previously employed with Science Applications International Corporation (SAIC) as a research engineer in the defense intelligence industry.
See his full biography here.
On February 23, 2018, the Patent Trial and Appeal Board (PTAB) issued two decisions regarding an inter partes review (IPR) of patents covering Allergan’s Restasis© (Cyclosporine ophthalmic emulsion) filed by Akorn Pharmaceuticals, Mylan Pharmaceuticals, and Teva Pharmaceuticals. The first opinion denied the Saint Regis Mohawk Tribe’s Motion to Terminate the Proceedings, while the second denied Allergan’s Motion to Withdraw from the IPR, even though it purported to assign its patent rights to the Tribe. Mylan Pharmaceuticals Inc. v. Allergan, Inc., IPR2016-01127, -01128, -01129, -01130,, 01131, -01132, Paper Nos. 129 and 131 (Feb. 23, 2018 PTAB)
The two decisions were issued just months after an Eastern District of Texas decision finding that the Restasis patents were invalid as obvious (currently pending appeal at the United States Court of Appeals for the Federal Circuit). Just prior to the district court decision, Allergan attempted to assign its patent rights to the Saint Regis Mohawk Tribe, who granted Allergan an exclusive license to the Restasis© patents. The Tribe then filed a motion to terminate the IPRs based on the doctrine of tribal sovereign immunity. Shortly thereafter, Allergan filed a motion to withdraw from the proceedings, stating Allergan was no longer the patent holder. The PTAB denied both motions.
The PTAB provided two reasons for denying the Tribe’s Motion to Terminate. First, the PTAB held that the Tribe failed to establish that it was entitled to assert its tribal immunity in inter partes review proceedings. Citing the Supreme Court, the Board noted that the Tribe’s sovereignty “is of a unique and limited character…[existing] only at the sufferance of Congress and is subject to complete defeasance.” United States v. Wheeler, 435 U.S. 313, 323 (1978). The PTAB’s analysis relied on the premise that “general Acts of Congress apply to Indians…in the absence of a clear expression to the contrary.” IPR2016-01127, Paper no. 129 at 11. The Act of Congress here provides that “any patent (regardless of ownership) is ‘subject to the conditions and requirements of [the Patent Act].’” Id. Because patents are, by law, inherently subject to IPRs, the Board made clear that any sovereign immunity enjoyed by the Tribe did not eliminate the PTAB’s right to conduct an inter partes review.
Second, the Board held that the proceedings may continue with Allergan as the patent owner, and that the Tribe was not an indispensable party to the proceedings. According to the terms of the patent assignment, Allergan retained substantially all of its rights in the patents, leaving the Tribe with nothing more than “an illusory or superficial right to sue for infringement of the challenged patents.” See Paper no. 131 at 22. Furthermore, Allergan’s rights as the exclusive licensee gave Allergan “at least an identical – if not more of an interest of the effective patent owner…in defending the challenged patents.” Paper no. 131 at 37. Therefore, the PTAB found that the assignment did warrant granting the Tribe’s Motion to Terminate the IPRs.
Disclaimer: Sughrue Mion represented Akorn Pharmaceuticals in the District Court Litigation and is currently representing Akorn in the Appeal and IPR proceedings.
Benjamin M. Cappel
Email: email@example.comBenjamin Cappel is an associate in the Litigation group and concentrates his practice on pharmaceutical patent litigation under the Hatch-Waxman Act. Mr. Cappel has experience litigating cases before the International Trade Commission and federal district courts. He has also assisted in contested case proceedings before the Patent Trial and Appeal Board (PTAB) including IPR and CBM reviews.
Not a member of the DC Bar. Supervised by members of the DC Bar.
Sughrue is pleased to announce the publication of THE ESSENTIAL CASE LAW GUIDE TO PTAB TRIALS, collectively authored by Sughrue partners and associates. The Guide is the first comprehensive text on decisions of the U.S. Patent Office regarding the newest form of administrative law practice before that agency. Through analysis and summary of the PTAB’s decisions, the text identifies boundaries of the PTAB’s rules, providing guidance when handling these highly specialized matters before the U.S. Patent Office. Partners John Bird, Jay Lytle, Susan Pan and Raja Saliba are The Guide’s lead authors. The Guide is published by the American Bar Association, Section on Intellectual Property Law, and will be available March 15, 2018 at https://shop.americanbar.org/ebus/
Wi-Fi One, LLC v. Broadcom Corp. (Fed. Cir. 2018)
By David Emery
In an en banc decision, the Federal Circuit reigned in the scope of 35 U.S.C. § 314(d) by deciding that time-bar determinations under § 315(b) are appealable. While § 314(d) states that a determination whether to institute is nonappealable, the Court limited this prohibition to those issues “closely tied to the application and interpretation of statutes related to the institution decision” of § 314. That is, issues “closely related” to the substantive “reasonable likelihood” decision.
Overruling the Court’s prior interpretation of § 314(d), which was used to prohibit a prior appeal of a time-barred determination under § 315(b), the decision emphasized the intervening Supreme Court decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016). In Cuozzo, the Supreme Court recognized the “strong presumption” in favor of judicial review. In that decision they emphasized “clear and convincing” indications derived from specific language, legislative history and the statutory scheme were required to defeat this presumption. While Cuozzo ultimately decided against review of the certain determinations by the Director, this Court interpreted that holding as leaving the door open review of certain determinations.
In its analysis, the Court found no “clear and convincing” evidence of Congress’s intent to bar judicial review. Referring to the language of § 314(d), which limits the application to “this section”, the Court found those issues relating to the threshold determination whether to institute nonappealable. This determination, outlined in § 314(a), are limited to whether a petitioner shows a reasonable likelihood of success of prevailing with respect to at least 1 claim. No other issues relevant to determining whether to institute are defined in this section.
In contrast to the decision with respect to § 315(b), the Court noted that sections 311-13 are preliminary procedural requirements that are more closely related to the determination of § 314(a) by the Director. On the other hand, §315(b) was distinguished from these sections because it is not related to that determination and has no relation to patentability merits. The decision also noted that § 315 is a limit on statutory authority – issues that have traditionally been reviewed.
Mr. Emery practices in all areas of patent law including: patent preparation and prosecution; patent litigation; patent reexamination (ex parte and inter partes); and counseling clients on intellectual property matters. He also engages in patent infringement and validity opinion practice and counseling, freedom to operate analysis, and due diligence and product clearance work.
His experience includes a wide range of electrical and mechanical technologies, including medical devices, heating and cooling systems, hydraulic applications, semiconductor design and manufacture, telecommunications equipment, automotive technologies, electrical power generation equipment, electrical transmission components, electric vehicles, welding equipment, image display devices, fiber optic distribution, and various computer and printer related technologies.