Patent Case Summaries July 11, 2019

Patent Case Summaries | Week Ending July 5, 2019

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.


Ex Parte Olson, et al., Appeal No. 2017-6489 (PTAB Mar. 25, 2019) (designated informative on July 1, 2019). Opinion by Paulraj, joined by Fredman and Worth.

Applying the USPTO’s January 7, 2019, revised guidance on the application of 35 U.S.C. § 101, the Patent Trial and Appeal Board reversed an Examiner’s rejection of certain claims under § 101.

In considering subject matter eligibility, the Board applied the two-step Alice framework to determine whether the claims at issue are directed to a patent-ineligible concept and, if so, whether the limitations of each claim are sufficient to ensure that the claims amount to significantly more than the patent-ineligible concept. Under the USPTO’s guidance, the Board “look[s] to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas … and (2) additional elements that integrate the judicial exception into a practical application.” The Board explained that, “[o]nly if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not ‘well-understood, routine, conventional’ in the field … or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.”

Applying the USPTO’s guidance, the Board concluded that the Examiner erred in rejecting the claims as being directed to patent-ineligible subject matter. The claims concern a method and system for registering a catheter navigation system to a three-dimensional image. The Board first determined that the claims recite “the judicial exception of a mathematical concept.” The Board next determined, however, that the recited mathematical concept includes additional limitations that “apply the thin plate splines algorithm, weighted basis functions, and error functions … in a meaningful way” so as to “avoid errors introduced in the prior art, such as those instructed when an affine transformation is used.” Furthermore, the Board concluded that the claim limitations “apply the mathematical concepts with a particular machine, i.e., the catheter navigation system.”

The Board thus concluded that the claims are eligible for patenting because the claimed invention is “integrated into a practical application” and the claims are not directed to a judicial exception.

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Ex Parte Kimizuka, et al., Appeal No. 2018-1081 (PTAB May 15, 2019) (designated informative on July 1, 2019). Opinion by Repko, joined by Tierney and Cygan.

Applying the USPTO’s January 7, 2019, revised guidance on the application of 35 U.S.C. § 101 (outlined in our summary of the Olson opinion, above), the Patent Trial and Appeal Board affirmed an Examiner’s rejection of certain claims under § 101.

The claims under consideration concern a method for fitting a golf club to a player in which a golf club is selected with a suitable loft angle based on data about hit golf balls. The Board first determined that the claims recite “an abstract idea within the Guidance’s mental-process grouping.” The Board explained that certain claim limitations (“determining, by a processor, a suitable dynamic loft,” “determining a dynamic loft difference,” and “determining a recommended loft angle”) are evaluations “that can be practically performed in the mind.” The Board next determined that the application’s claimed improvement to club-fitting accuracy “lacks a technical solution to a technical problem.” The claim limitations reciting “by a processor,” “creating a hit ball result database,” and “measuring a subject’s head speed, dynamic loft, and blow angle using a reference club” each fail to indicate that “the judicial exception has been integrated into a practical application.”

The Board thus affirmed the Examiner’s rejections of the claims as patent ineligible, concluding that the “[claim] limitations – considered individually and in combination – do not provide an inventive concept.”

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Ex Parte Savescu, et al., Appeal No. 2018-3174 (PTAB Apr. 1, 2019) (designated informative on July 1, 2019). Opinion by Repko, joined by Dixon and Courtenay.

Applying the USPTO’s January 7, 2019, revised guidance on the application of 35 U.S.C. § 101 (outlined in our summary of the Olson opinion, above), the Patent Trial and Appeal Board affirmed an Examiner’s rejection of certain claims under § 101.

The claims under consideration concern a method for creating a life cycle workflow for a project that includes creating a project workflow on a server and a webpage with project details. The Board first determined that the claims “encompass steps for creating a workflow that organizes how people perform project tasks” and that “the recited subject matter belongs to the group of certain methods of organizing human activity.” The Board next determined that the “server” and the step of “creating one or more project detail pages on the server computer, each project detail page being a web page that is made visible during a corresponding workflow stage” both fail to integrate the judicial exception into a practical application. The Board concluded that the claims are “directed to an abstract idea on a server used in its ordinary capacity performing well-understood, routine, and conventional activities.”

The Board thus affirmed the Examiner’s rejections of the claims as patent ineligible, concluding that the “limitations, considered individually and in combination, do not provide an inventive concept.”

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Ex Parte Fautz, Appeal No. 2019-106 (PTAB May 15, 2019) (designated informative on July 1, 2019). Opinion by Repko, joined by Haapala and MacDonald.

Applying the USPTO’s January 7, 2019, revised guidance on the application of 35 U.S.C. § 101 (outlined in our summary of the Olson opinion, above), the Patent Trial and Appeal Board reversed an Examiner’s rejection of certain claims under § 101.

The claims under consideration concern a magnetic resonance tomography device that performs slice-imaging and optimizes the signal-to-noise ratio from reception coils that receive signals generated while scanning a subject. The independent claims recite three mathematical formulas and four calculations that use the formulas. The Board determined that “the independent claims recite an abstract idea: a mathematical concept.” Next, the Board considered whether the recited abstract idea is integrated into a practical application. The Board concluded that it is, explaining that the “independent claims recite a practical application … because the claimed method, device, and medium improve the output by reconstructing ‘image data of the examination subject on the basis of the sum signal.’” The Board further concluded that “the claimed invention uses the recited mathematical equations to improve the imaging system.”

The Board thus concluded that the claims are eligible for patenting and therefore reversed the Examiner’s rejections of the claims.

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Kolcraft Enterprises, Inc. v. Graco Children’s Products, Inc., Nos. 2018-1259, -1260 (Fed. Cir. (PTAB) July 2, 2019). Opinion by Reyna, joined by Moore and Chen.

The Federal Circuit affirmed the Patent Trial and Appeal Board’s determination in an IPR Final Written Decision that two design patents were unpatentable as obvious.

After the Board instituted the IPR, the Patent Owner submitted a Response accompanied by an inventor declaration that included several exhibits. Neither the declaration nor the exhibits included specific dates of conception. The declaration redacted the dates when the exhibits were created, using blank spaces where relevant dates would have been. Later, the Patent Owner produced an unredacted version of the declaration where the blank spaces were replaced with alleged dates of conception and reduction to practice based on metadata associated with the exhibits. The unredacted version, however, was not in the record before the Board.

The Board determined that a cited prior art reference—Chen ’393—qualified as prior art because the Patent Owner failed to show that conception, diligence, and reduction to practice occurred before Chen ’393 was filed. The Board rejected the inventors’ testimony to the contrary because the testimony was not corroborated. The Board then ruled that the challenged claims were obvious in view of Chen ’393.

On appeal, the Patent Owner did not dispute obviousness if Chen ’393 qualifies as prior art. The appeal thus turned on the corroboration of the inventors’ testimony. The Federal Circuit explained that “[i]nventor testimony of conception must be corroborated by other, independent information,” which is governed by a “rule of reason” analysis. “Inventor testimony alone cannot prove conception.” The Federal Circuit determined that “[t]here is no evidence in the record independently corroborating the inventors’ alleged conception prior to Chen ’393.” Therefore, substantial evidence supported the Board’s finding that the inventor declaration and exhibits do not corroborate dates of prior conception sufficient to antedate Chen ’393. The Federal Circuit thus affirmed the Board’s determination that the challenged claims were unpatentable as obvious.

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Enzo Life Sciences, Inc. v. Roche Molecular Systems, Inc., et al., Nos. 2017-2498, -2499, -2545, -2546 (Fed. Cir. (D. Del.) July 5, 2019). Opinion by Prost, joined by Reyna and Wallach.

The Federal Circuit affirmed the district court’s grant of summary judgment that certain patent claims are invalid for lack of enablement.

Enzo sued various competitors for infringement of two patents directed to the use of non-radioactively labeled polynucleotides in nucleic acid hybridization and detection applications. Scientists use a hybridization “probe” to detect the presence of nucleic acid sequences of interest, and the label on the probe allows scientists to detect the hybridized probe. The district court granted summary judgment to the defendants, holding the asserted claims invalid for lack of enablement. Enzo appealed.

On appeal, the Federal Circuit explained that “[t]he enablement requirement asks whether the specification teaches those in the art to make and use the invention without undue experimentation.” Applying that standard, the Federal Circuit noted that the specification of the asserted patents must not only enable creation of a labeled probe, but also enable a probe that is hybridizable and detectable upon hybridization as claimed in the asserted patents. The court determined that the “scope of the claims is quite broad” and that “the specification’s guidance as to how [certain] variables would or would not impact the functionality of the claimed
probes is sparse.” The court also noted the “unpredictability of the art at the time,” ultimately concluding that the written description did not satisfy the enablement requirement.

Additionally, the Federal Circuit ruled that the deficiencies in the description were not cured by the knowledge of those skilled in the art at the time of the invention. “Although a specification need not disclose what is well known in the art, that rule is not a substitute for a basic enabling disclosure.”

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In re Global IP Holdings LLC, No. 2018-1426 (Fed. Cir. (PTAB) July 5, 2019). Opinion by Stoll, joined by Moore and Reyna.

Global owns a patent directed to carpeted automotive vehicle load floors having sandwich-type composite panels with cellular cores. A representative claim recites “a composite panel having first and second reinforced thermoplastic skins and a thermoplastic cellular core.” Global filed a reissue application, seeking to broaden the claims by replacing “thermoplastic” with “plastic.” The Examiner rejected the reissue claims for failing to comply with the written description requirement, and the Patent Trial and Appeal Board affirmed.

On appeal, the Federal Circuit vacated the Board’s decision because “the legal standard applied by the Board conflicts with [Federal Circuit] precedent.” “The test for sufficiency [of the written description] is whether the specification ‘reasonably conveys to those skilled in the art that the inventor had possession of the claimed subjected matter as of the filing date.’” The determination “is a question of fact that necessarily varies depending on the context.”

The Board had found the patent specification insufficient “regardless of the predictability of results of substituting alternatives, or the actual criticality of thermoplastics in the overall invention.” The Federal Circuit held that this statement conflicts with the court’s precedent, and therefore the Board “legally erred in its analysis.” The Federal Circuit explained that the “level of detail required varies depending on the … predictability of the relevant technology.” Also, “the criticality or importance of an unclaimed limitation to the invention can be relevant to the written description inquiry.” The Federal Circuit therefore vacated and remanded with instructions for the Board to “address the relevant factors, including predictability and criticality.”

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Westech Aerosol Corp. v. 3M Co., et al., No. 2018-1699 (Fed. Cir. (W.D. Wash.) July 5, 2019). Opinion by Reyna, joined by Lourie and Mayer.

After Westech filed suit in the Western District of Washington, the Supreme Court issued its decision in TC Heartland holding that, for purposes of the patent venue statute, a defendant “resides” only in its state of incorporation. The district court allowed Westech to amend its complaint to allege proper venue consistent with TC Heartland. 3M moved to dismiss for improper venue, and the district court granted the motion without prejudice. Westech then appealed, and after filing its opening appeal brief, 3M moved for sanctions on the basis that the appeal is frivolous.

The Federal Circuit affirmed the district court’s dismissal on the basis of “two principles of patent venue law.” First, the plaintiff has the burden of establishing proper venue under 28 U.S.C. § 1400(b). Second, “venue under the patent statute is proper when the facts show that the defendant has a regular and established place of business physically located within the judicial district.” The Federal Circuit determined that Westech’s amended complaint “fails to meet these standards” and therefore affirmed the district court’s dismissal. The Federal Circuit explained that “Westech failed to plead any facts showing 3M had a regular and established place of business physically located in the Western District of Washington.” In lieu of pleading such facts, Westech had “parrot[ed] the language of § 1400(b)”. The Federal Circuit ruled that Westech’s approach is insufficient, as it “amounts to a mere legal conclusion that the court is not bound to accept as true.”

Turning to the motion for sanctions, the Federal Circuit noted that Westech’s appeal was “frivolous as argued” and found that Westech’s “behavior on appeal borders on sanctionable,” but the court determined that the misconduct did not warrant sanctions under the circumstances. At the time of the appeal briefing, “the question of who shoulders the burden of establishing proper venue under § 1400(b) had yet to be answered.” As such, the Federal Circuit denied the motion for sanctions.

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