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.
Provisur Technologies, Inc. v. Weber, Inc., Nos. 2021-1942, -1975 (Fed. Cir. (PTAB) Sept. 27, 2022). Opinion by Prost, joined by Reyna and Stark.
Weber filed an IPR petition challenging claims 1–14 of a patent owned by Provisur directed to methods and systems for “classifying slices or a portion cut from a food product according to an optimal image of the slice” taken using a digital camera. The Patent Trial and Appeal Board found that Weber proved claims 1–10, 13, and 14 unpatentable as obvious over a combination of references, but failed to prove claims 11 and 12 unpatentable. Also, during the proceeding, the Board denied Provisur’s motion to exclude evidence relied on by Weber in its reply. Provisur appealed the adverse rulings, and Weber cross-appealed as to claims 11 and 12.
The Federal Circuit first concluded that the Board did not abuse its discretion in allowing Weber’s reply evidence. Provisur had responded to Weber’s IPR petition by arguing that the prior art did not disclose a digital camera. Weber then replied by explaining that the prior art used the same type of camera as the one described in the challenged patent, and Weber submitted three documents in support of its position. The Federal Circuit saw no abuse of discretion in the Board’s decision to allow the reply evidence, stating: “The Board properly concluded that the reply evidence was both directly responsive to Provisur’s arguments and highly probative. Importantly, Weber’s invalidity theories did not change, nor did the reply fill any holes in Weber’s petition.”
Turning to the merits, the Federal Circuit agreed with Provisur that the Board erred by failing to explain how the prior-art combinations taught or suggested the “surface-area limitation” of the independent claims. Under the APA, the Board must fully and particularly set out the bases for its decision. Here, “Provisur plainly argued that the prior art did not render obvious the surface-area limitation, and the Board’s analysis does not explicitly address those arguments or even implicitly explain how the combined system [met the limitation] in a way that fairly contemplates and resolves those arguments.” Thus, the Federal Circuit vacated and remanded for the Board to consider Provisur’s arguments.
Regarding Weber’s cross-appeal, the Federal Circuit agreed with Weber that the Board erred by considering a prior-art reference in isolation rather than in the context of the asserted combination. Weber’s IPR petition did not rely on the reference in isolation, and so the Board erred by “never directly or implicitly address[ing] the arguments that Weber had set forth in its petition.” Also, the Board’s findings as to claims 11 and 12 were inconsistent with findings it made for other claims, requiring a vacatur and remand.
Cooperative Entertainment, Inc. v. Kollective Technology, Inc., No. 2021-2167 (Fed. Cir. (N.D. Cal.) Sept. 28, 2022). Opinion by Moore, joined by Lourie and Stark.
Cooperative sued Kollective for infringement of a patent directed to systems and methods of structuring a peer-to-peer (P2P) dynamic network for distributing large files such as videos and video games. Kollective moved to dismiss the complaint under Rule 12(b)(6) on the ground that the claims are ineligible under 35 U.S.C. § 101. The district court granted the motion based on the two-step Alice framework and the court’s determination that the claims are directed to an abstract idea that lacks a sufficient inventive concept. Cooperative appealed.
The Federal Circuit reversed. The court first noted that it “need not address the parties’ dispute regarding the application of Alice step one because … the claims contain alleged inventive concepts not limited to the abstract idea, which defeat Kollective’s Rule 12 motion.”
Addressing Alice step two, and “drawing all inferences in favor of Cooperative, as [the court] must on a motion to dismiss,” the court concluded that the claims “recite a specific technical solution that is an inventive concept: it recites a particular arrangement of peer nodes for distributing content ‘outside controlled networks and/or [content distribution networks] … which did not exist in the prior art.” Thus, the court held that “at minimum” the district court should have denied the motion to dismiss because the allegations in the complaint create a plausible factual issue regarding the inventiveness of the claimed dynamic P2P configuration. Moreover, Cooperative’s complaint plausibly alleged a second inventive concept—use of trace route segmentation.
The Federal Circuit noted that the claim language, the specification, and Kollective’s complaint sufficiently explained how the technology was inventive and provided an advantage over prior-art P2P networks. The court therefore reversed. In doing so, the court made clear that the ruling does not “decide today that the claims are patent eligible under § 101”; instead, the court held “only that there are plausible factual allegations that the claims include inventive concepts, and that is enough to preclude dismissal.”
Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp., No. 2021-2121 (Fed. Cir. (PTAB) Sept. 29, 2022). Opinion by Lourie, joined by Reyna and Stoll.
Mylan petitioned for IPR of a patent owned by Merck directed to sitagliptin dihydrogenphosphate (sitagliptin DHP), which can be used to treat Type 2 diabetes. Sitagliptin DHP is a DHP salt of sitagliptin, having a 1:1 sitagliptin-to-DHP ratio. Mylan’s IPR petition asserted that claims 1–3, 17, 19, and 21–23 were anticipated by Edmondson (a Merck publication), and that claims 1–4, 17, 19, and 21–23 were obvious over Edmondson in view of two additional publications, Brittain and Bastin.
The Patent Trial and Appeal Board concluded that Mylan did not demonstrate that any of these claims were anticipated or rendered obviousness. Regarding anticipation, the Board found that there was no express disclosure of a 1:1 sitagliptin DHP salt in Edmondson, and that Mylan could not fill in the gaps by arguing that a skilled artisan would “at once envisage” (per In re Petering) what is missing.
Regarding obviousness, the Board found that Merck successfully antedated Edmondson with evidence of an earlier reduction to practice of the pertinent subject matter, rendering Edmondson merely a § 102(e) reference. Also, it was undisputed that Merck commonly owned Edmondson and the challenged patent at the time of the invention. Thus, under § 103(c)(1), Edmondson could not qualify as an obviousness reference for most of the challenged claims. As for the remaining claims—claims 3 and 4—the Board found that Mylan failed to prove that they would have been obvious over Edmondson in view of Brittain and Bastin. Mylan appealed.
The Federal Circuit affirmed. With respect to anticipation, the court noted that Edmondson does not expressly disclose a 1:1 sitagliptin DHP salt. The court also agreed with the Board that Edmondson does not inherently disclose a 1:1 sitagliptin DHP salt. Edmondson listed sitagliptin among 33 compounds, “with no direction to select sitagliptin from among them,” and listed eight pharmaceutically preferred acids and various stoichiometric possibilities, resulting in “957 possible salts, some of which may not exist.” The Federal Circuit ruled that this “is a far cry from the 20 compounds ‘envisaged’ by the narrow genus in Petering.” Thus, substantial evidence supported the Board’s finding of no anticipation.
Next, the Federal Circuit upheld the Board’s finding that Merck had successfully antedated Edmondson, removing it as a reference. And the court observed that, “without Edmondson, the obviousness challenge to these claims fails,” leaving only claim 3 and 4.
The Federal Circuit upheld the Board’s decision that Mylan failed to show that claims 3 and 4 would have been obvious. Regarding claim 3, Mylan’s own expert had conceded that Edmondson did not teach the (S)-enantiomer. The Federal Circuit also pointed to the Board’s conclusions that “Mylan advanced no expected or theoretical benefit to making the (S)-enantiomer of 1:1 sitagliptin DHP,” that the disclosure of enantiomers in Edmondson was so broad that there was no motivation to prepare the (S)-enantiomer of 1:1 sitagliptin DHP, and that there was no reasonable expectation of success in doing so. Regarding claim 4, the Federal Circuit pointed to evidence that hydrate formation was both unpredictable and undesirable. Therefore, substantial evidence supported the Board’s ruling that Mylan failed to prove that claims 3 and 4 would have been obvious.