The following is a summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit for the week ending November 1, 2013. Mike Turner and Ross Barton prepared this edition.
Case Summaries
The Patent Application: Specification: Written Description
Remedies: Damages: Attorneys’ Fees
Litigation Practice and Procedure: Procedure: JMOL Procedure
Litigation Practice and Procedure: Procedure: New Trial Procedure
Litigation Practice and Procedure: Procedure: Exceptional Case (Litigation Misconduct)
Synthes USA, LLC, et al. v. Spinal Kinetics, Inc., Nos. 13-1047, -1059 (Fed. Cir. (N.D. Cal.) Oct. 29, 2013). Opinion by O’Malley, joined by Prost. Dissenting opinion by Taranto.
The Federal Circuit determined that the jury verdict of invalidity for lack of written description was supported by substantial evidence, while also concluding that the case was not exceptional so as to warrant attorneys’ fees. In so doing, the Federal Circuit discussed several aspects of the written description analysis, including the required disclosure for genus-species claims and the technical differences between openings and grooves.
Synthes USA, LLC and DePuy Synthes Products, LLC (collectively “Synthes”) sued Spinal Kinetics, Inc. (“SK”) in the U.S. District Court for the Northern District of California for infringement of U.S. Patent No. 7,429,270 (“the ’270 patent”). The ’270 patent is directed to intervertebral implants and cover plates that engage the cores of the implants. The key limitation at issue was “the third plate including a plurality of openings,” which the Federal Circuit noted was important because SK’s devices “do not employ peripheral grooves, but instead use slots, or openings, on the cover plates.”
After trial, the jury found that the asserted claims were invalid for lack of written description based on four different limitations. In particular, however, the jury determined that the disclosure of peripheral grooves did not adequately demonstrate possession of the entire genus of possible openings. According to the Federal Circuit, the parties had apparently agreed that “grooves” are a species of the genus “opening[s].”
Synthes moved for a judgment as a matter of law (“JMOL”), or for a new trial, on this and other issues. SK cross-moved for attorneys’ fees under 35 U.S.C. § 285. The district court denied SK’s motion and granted-in-part Synthes’s motion, notably denying Synthes’s JMOL motion with respect to the limitation “plurality of openings.” Synthes appealed the denial of the JMOL, and SK appealed the denial of attorneys’ fees. Synthes asserted that the expert and fact witness testimony on this limitation did not support the jury’s verdict, and the field of art was not so unpredictable to make the disclosure of one species of opening insufficient to claim the entire genus.
The Federal Circuit disagreed with Synthes on both of these counts, instead focusing on the specification’s failure to “disclose[] anything broader than using grooves to anchor the fiber system to the cover plates,” as well as witness testimony that there are “significant biomechanical property differences between using peripheral grooves and interior slots” and that peripheral grooves limit fiber orientation in a way that non-peripheral openings do not. The Federal Circuit thus ruled that the jury’s verdict was supported by substantial evidence. Regarding SK’s motion for attorneys’ fees, the Federal Circuit ruled that SK had not demonstrated, by clear and convincing evidence, that Synthes’s “continued pursuit of litigation [was] frivolous or vexatious.”
Judge Taranto dissented, explaining that the critical issue was whether, in the eyes of a skilled artisan, the difference between the narrower disclosure and the broader claim term “[had] a material effect on whether the product or process would achieve the aims of the claims at issue, with materiality of the effect not the same as non-obviousness but related to predictability.” Judge Taranto stated that SK had actually not offered any proof that the difference between grooves and openings “had any effect on the ability of the invented implants to fulfill their purpose,” observing that the evidence was instead related to the difference between peripheral and non-peripheral placement of grooves or openings. Since this placement issue was not part of the disputed limitation, Judge Taranto found it irrelevant and agreed with Synthes that the jury verdict was unsupported on any other ground.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1047.Opinion.10-25-2013.1.PDF
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Patentable Invention: Obviousness: Scope and Content of Prior Art
Patentable Invention: Obviousness: Level of Ordinary Skill
Patent Office Procedures: Reexamination
Randall Manufacturing v. Stanek, et al., No. 12-1611 (Fed. Cir. (B.P.A.I.) Oct. 30, 2013). Opinion by Taranto, joined by Rader and Dyk.
The Federal Circuit concluded that the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences (“BPAI”) failed to properly consider evidence of obviousness put forward by inter partes reexamination requestor Randall Manufacturing (“Randall”). The Federal Circuit noted that the inquiry into obviousness “not only permits, but requires, consideration of common knowledge and common sense.” According to the Federal Circuit, the BPAI’s analysis “ran afoul of this basic mandate . . . [b]y narrowly focusing on the four prior-art references cited by the Examiner and ignoring the additional record evidence [third-party requestor Randall] cited to demonstrate the knowledge and perspective of one of ordinary skill in the art.” Thus, the BPAI’s determination of nonobviousness for the subject claims was vacated and remanded for further consideration.
FG Products, Inc. (“FG”) owns U.S. Patent No. 7,214,017 (“the ’017 patent”). The ’017 patent discloses and claims movable partitions for use within a cargo space, typically used in tractor trailers carrying refrigerated materials, wherein the panels can be moved along racks, tethered together, and folded up against the ceiling of the cargo space when not in use. On December 4, 2007, FG’s competitor, Randall, requested inter partes reexamination of the ’017 patent. After the Examiner rejected the original 15 claims, FG added 78 new claims. Prosecution continued for a number of years, eventually leading to the allowance of all but twenty-nine of the claims.
These twenty-nine claims were rejected by the Examiner based on four prior art references: two published advertisements and two issued patents. FG appealed to the BPAI, who reversed the Examiner after finding that the four references did not show why ceiling stowage, disclosed in one of the prior art patents, would have been combined with the features of the other prior art references to create the claimed combination. The BPAI also found that means-plus-function limitations, as construed from the ’017 patent’s specification, were not present in the art as well. Consequently, the BPAI reversed the Examiner and allowed the twenty-nine claims, which Randall then appealed.
On appeal, the Federal Circuit criticized the BPAI for limiting its analysis to the four rejection references and not considering Randall’s background references that “could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions.” The Federal Circuit noted that these references established that ceiling stowage was a prevalent, if not predominant, method of stowing bulkhead panels, and that ordinary designers would know how to make simple adjustments to enable this feature. Thus, the Federal Circuit vacated the BPAI’s determination of nonobviousness and remanded for further proceedings.
http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1611.Opinion.10-28-2013.1.PDF
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