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 June 13, 2014. Andrew Sterling and Mike Connor prepared this edition.
Patentable Invention: Obviousness: Teaching, Suggestion, or Motivation in Prior Art
The Patent Application: Specification: Written Description
Patent Office Procedures: Prosecution Before the Office: Prosecution of Applications: Appeals
Patent Office Procedures: Reexamination
Q.I. Press Controls, B.V. v. Lee, Nos. 12-1630, -1631 (Fed. Cir. (B.P.A.I.) June 9, 2014). Opinion by Lourie, joined by Bryson and Hughes.
Affirming-in-part and vacating-in-part a decision of the Board of Patent Appeals and Interferences (“Board”), the Federal Circuit held that patent claims combining the teachings of prior art to yield a predictable result are invalid for obviousness. Further, the Federal Circuit held that a Board decision finding that some claims are valid and that other, nearly identical claims are invalid over similar combinations of prior art, is an impermissible inconsistency warranting remand for further consideration.
Quad/Tech, Inc. (“Quad/Tech”) owns U.S. Patent No. 6,867,423 (“the ’423 patent”), which relates to a visual inspection system for printing presses that utilizes a circular configuration of multiple light-emitting diodes surrounding an image sensor. Q.I. Press Controls, B.V. (“Q.I. Press”) initiated an inter partes reexamination of the ’423 patent, alleging that the claims would have been obvious over various prior art references. The examiner initially rejected all twelve of the original claims of the ’423 patent as obvious over various combinations of prior art. Quad/Tech responded by amending several of the original claims and adding sixty new claims. The examiner ultimately rejected all seventy-two claims on various grounds, including rejecting three claims for lack of an adequate written description and the remaining claims as obvious in light of various combinations of prior art. The Board affirmed in part and reversed in part the examiner’s rejections. Both Quad/Tech and Q.I. Press appealed the Board’s decision.
On appeal, Quad/Tech argued that the Board erred in affirming the examiner’s rejection of Claims 61-72 for obviousness by using hindsight bias to combine two references, and failed to properly consider evidence of industry praise. Quad/Tech also argued that the Board erred in concluding that Claim 18 of the ’423 patent was invalid for inadequate written description because the figures of the patent were sufficient to support the claim limitations.
Addressing the Board’s rejection of Claims 61-72, the Federal Circuit held that the Board correctly found that it would have been obvious for one of skill in the art, in seeking alternatives to the existent prior art, to combine the teachings and disclosure of the cited references to obtain the predictable result. The Federal Circuit also held that evidence of secondary considerations, such as the industry praise, must be factored into the obviousness analysis; however, that evidence did not alter the conclusion that Claims 61-72 are obvious.
Addressing the Board’s rejection of Claim 18 as invalid for inadequate written description, the Federal Circuit held that there was substantial evidence supporting the Board’s conclusion that Claim 18 lacked adequate written description because, while some elements of the claim were present in figures of the ’423 patent, no single figure included or referenced each claim element. The Federal Circuit explained that to satisfy the written description requirements, a disclosure must clearly allow a person of ordinary skill in the art to recognize that the inventor invented what is claimed.
On appeal, Q.I. Press argued that the Board’s decision finding Claims 1-60 of the ’423 patent nonobvious in light of two prior art references was inherently contradictory because the Board found Claims 61-72, which were nearly identical to Claims 1-60, obvious over a combination of similar prior art. The Federal Circuit held that in this instance, when nearly identical claims are found both valid and invalid based on similar combinations of prior art, the Board opinion is seemingly inconsistent. The Federal Circuit thus ruled that the Board erred by not considering the combination of prior art that invalidated Claims 61-72 as a new ground for rejecting Claims 1-60. Accordingly, the Federal Circuit vacated and remanded the Board’s decision relating to Claims 1-60 and remanded.
Patentable Invention: Obviousness: Teaching, Suggestion, or Motivation in Prior Art
Allergan, Inc., et al. v. Apotex, Inc., et al., Nos. 13-1245, -1246, -1247 (Fed. Cir. (M.D.N.C.) June 10, 2014). Opinion by Prost, joined by Reyna. Opinion dissenting in part by Chen.
Reversing the district court’s determination that certain claims are not invalid as obvious, the Federal Circuit held that claims which encompass a broad genus of compounds are invalid if the prior art establishes that any compounds within the claimed genus would have been obvious to one of ordinary skill in the art.
Allergan, Inc. (“Allergan”) owns U.S. Patent No. 7,388,029 (“the ’029 patent”) and is the assignee of U.S. Patent No. 7,351,404 (“the ’404 patent”), both of which are directed to synthetic prostaglandin F-2-alpha (“PGF”) analogs. Allergan asserts that these patents cover its product, Latisse®, which is indicated for the treatment of hair loss and includes the PGF analog bimatoprost. Allergan sued Apotex Inc., Apotex Corp., Sandoz, Inc., and Hi-Tech Pharmacol Co. (collectively “appellants”), alleging infringement of the ’029 and ’404 patents after each appellant submitted an abbreviated new drug application seeking approval of a generic version of Latisse®. The district court determined, among other issues, that Allergan’s patents were not invalid as obvious. In finding the claims nonobvious, the district court limited its analysis to the properties of one specific group of PGF analogs, C1-amides and in particular bimatoprost, and found that a person of ordinary skill would not have been motivated to use these compounds to treat hair loss or have had a reasonable expectation of success.
On appeal, the Federal Circuit held that claims are invalid as obvious if any compounds within a broad genus claimed would have been obvious at the time of the invention. Reversing the district court’s finding of nonobviousness, the Federal Circuit ruled that the district court erred by failing to consider the full scope of the patent claims and focusing only on the C1-amide group instead of thousands of permutations of PGF analogs claimed. The Federal Circuit explained that the district court’s flawed legal analysis resulted in an improper analysis of whether there was a motivation to combine references, a reasonable expectation of success of developing the claimed invention, and secondary considerations such as unexpected results. The Federal Circuit noted that, because the asserted claims were not limited to C1-amides but instead broadly claimed thousands of PGF analogs, the district court should have evaluated whether all of the claimed PGF analogs would behave in the same manner as compounds in the C1-amide group in order to establish that evidence of nonobvious is commensurate with the full scope of the claims.
In an opinion dissenting in part with the majority, Judge Chen disagreed with the majority’s reliance on prior art that proposed thousands of potential compounds. Judge Chen explained that the prior art was so broad and generic that a person of ordinary skill in the art was not faced with a small or easily traversed number of options. Judge Chen also cautioned against relying on prior art that was disclosed during prosecution and specifically considered by the examiner.
Patent Office Procedures: Reissue: Generally
In re Dinsmore, et al., No. 13-1637 (Fed. Cir. (P.T.A.B.) June 10, 2014). Opinion by Taranto, joined by Bryson and Hughes.
Affirming the Patent Trial and Appeal Board’s (“PTAB”) decision that affirmed a rejection of a reissue application, the Federal Circuit held that the applicants’ filing of a terminal disclaimer to overcome a non-statutory obviousness-type double patenting rejection in the original application is not an error correctible by reissue under 35 U.S.C. § 251.
Mark Dinsmore and David Caruso (collectively “Dinsmore”) appealed a decision of the PTAB affirming a rejection of a reissue application relating to U.S. Patent No. 7,236,568 (“the ’568 patent”). During the prosecution of the ’568 patent, the examiner rejected all claims on the ground of nonstatutory obviousness-type double patenting over claims of U.S. Patent No. 6,658,086 (“the ’086 patent”). Dinsmore responded by filing a terminal disclaimer declaring that “any patent so granted on the instant application shall be enforceable only for and during such period that it and the [’086] patent are commonly owned.” Dinsmore later applied to reissue all claims of the ’568 patent under 35 U.S.C. § 251, seeking to replace the terminal disclaimer. Dinsmore claimed that the terminal disclaimer was filed in error because the ’086 patent was not commonly owned by the owners of the ’586 patent.
The examiner rejected all the pending claims in the reissue application because the error identified in the reissue declaration was not an error that could support reissue. The PTAB affirmed the examiner’s rejection, concluding that the “voluntary and intentional filing of a terminal disclaimer to overcome a non-statutory obviousness-type double patenting rejection during prosecution of the original patent is not an ‘error’ correctible by reissue under 35 U.S.C. § 251.”
On appeal, Dinsmore argued that, because the ’568 and ’086 patents are not and have never been commonly owned, the recorded terminal disclaimer was ineffective and invalid. Dinsmore further argued that the filing of the terminal disclaimer was an error within the meaning of 35 U.S.C. § 251.
Affirming the PTAB’s rejection, the Federal Circuit held that filing a terminal disclaimer to overcome a non-statutory obviousness-type double patenting rejection is not an error correctible by reissue under 35 U.S.C. § 251. The Federal Circuit explained that whether there was an “error” for which a reissue can be sought generally turns on whether misunderstandings, by the applicants or their agents, gave rise to the patenting choice that reissue is being invoked to correct. In contrast, where there was no misunderstanding, reissue applications are inadequate as being no more than an effort to reverse a later-regretted choice made in obtaining the original patent. The Federal Circuit noted that Dinsmore did not allege they misunderstood the plain meaning of the disclaimer, or that its filing was due to a mistaken belief that the ’568 and ’086 patents were in fact commonly owned. Therefore, the error Dinsmore sought to correct in their reissue application was simply an attempt to revise a choice they made, which is not an error remediable under the reissue statute.
Patentable Invention: Obviousness: Scope and Content of Prior Art
Patentable Invention: Obviousness: Secondary Considerations of Nonobviousness
Patentable Invention: Obviousness: Teaching, Suggestion, or Motivation in Prior Art
Bristol-Myers Squibb Co. v. Teva Pharmaceuticals USA, Inc., No. 13-1306 (Fed. Cir. (D. Del.) June 12, 2014). Opinion by Chen, joined by Prost and Plager
Affirming the district court’s judgment of invalidity, the Federal Circuit held that discoveries made after the priority date of a patent that may have discouraged or taught away from a claimed invention do not indicate nonobviousness because nonobviousness is determined by what was known at the time of the invention. The Federal Circuit also held that unexpected results do not per se prevent a finding of obviousness.
Bristol-Myers Squibb (“BMS”) owns U.S. Patent No. 5,206,244 (“the ’244 patent”). The ’244 patent is directed to a new chemical compound, entecavir, which is a modified version of the natural nucleoside 2'-CDG. BMS markets entecavir under the trade name Baraclude® as a treatment for hepatitis B. BMS filed suit against Teva Pharmaceuticals USA, Inc. (“Teva”) after Teva filed an abbreviated new drug application for a generic version of entecavir. Following a bench trial, the district court found that a skilled artisan would have selected the prior art compound deoxyguanosine, a natural nucleoside similar to 2'-CDG, as a lead compound for further development efforts, and would have modified it to create entecavir with a reasonable expectation of success of creating a compound with beneficial antiviral properties.
On appeal, BMS argued that the district court erred in finding one of ordinary skill in the art would have selected 2'-CDG as the lead compound because it was discovered to be toxic after the priority date of the ’244 patent. BMS also argued that a new chemical entity, as a matter of law, cannot be obvious when the claimed invention possesses unexpected properties.
Affirming the district court’s ruling of invalidity, the Federal Circuit noted that obviousness is evaluated from the perspective of a person having ordinary skill in the art at the time of the invention. Because the toxicity of 2'-CDG was not known until after the invention claimed in the ’244 patent, there was no clear error in the district court’s finding that 2'-CDG was a proper lead compound. The Federal Circuit also held that there was ample evidence to support the district court’s conclusion that skilled artisans would have been motivated to modify 2'-CDG to make the patented compound.
Addressing BMS’s claim that unexpected properties defeat an obviousness challenge, the Federal Circuit held that “unexpected results do not per se defeat, or prevent, the finding that a modification to a lead compound will yield expected, beneficial properties.” Instead, the court held that unexpected results should be analyzed as secondary considerations of nonobviousness.
BMS also argued that entecavir’s superior therapeutic properties were unexpected, and thus constituted evidence of secondary considerations of nonobviousness. On this point, the Federal Circuit determined that the district court made two legal errors in assessing unexpected results, namely, (1) comparing entecavir to another hepatitis B drug instead of the closest prior art, 2'-CDG; and (2) inappropriately looking to what the inventor knew at the time of the invention, instead of one of ordinary skill in the art, to determine what was expected. The Federal Circuit ruled, however, that both errors were harmless.
The Patent Application: Claims: Indefiniteness Claim Interpretation: Means-Plus-Function
Triton Tech of Texas, LLC v. Nintendo of America, Inc., No. 13-1476 (Fed. Cir. (W.D. Wash.) June 13, 2014). Opinion by Moore, joined by Reyna and Hughes.
Affirming the district court’s judgment of invalidity due to indefiniteness, the Federal Circuit held that the asserted means-plus-function claims were indefinite because the patent failed to disclose an algorithm for performing the claimed function.
Triton Tech of Texas, LLC (“Triton”) sued Nintendo of America, Inc., alleging that the Wii Remote™ used in combination with a related accessory infringes U.S. Patent No. 5,181,181 (“the ’181 patent”). The ’181 patent is directed to an input device that includes components for determining its position, attitude, and motion, which allows a user to communicate with a computer by manipulating the input device in three dimensions. The asserted claims include an “integrator means” for integrating acceleration signals to determine the position of the input device in three-dimensional space. In the preferred embodiment described in the specification, the acceleration signals are periodically read and numerically integrated to calculate the position, attitude, and motion values for the input device. The district court found the corresponding structure for performing the integrating function was a conventional microprocessor, but found the claims invalid due to indefiniteness because the ’181 patent did not disclose any algorithm for performing the claimed “integrating” function.
Affirming the district court’s judgment of indefiniteness, the Federal Circuit rejected Triton’s argument that the phrase “numerical integration,” as disclosed in the specification describing the preferred embodiment, was sufficient disclosure of an algorithm. The Federal Circuit explained that an algorithm consists of a step-by-step procedure for performing a claimed function, and the phrase “numerical integration” was not an algorithm, but instead was an entire class of different possible algorithms used to perform integration. Triton’s disclosure of the broad class of “numerical integration” did not adequately limit the scope of the claim to a corresponding structure, material, or act that performs the function, as required by 35 U.S.C. § 112.
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