Below are short summaries of decisions from January 1 – September 30, 2018, which are referenced throughout Patent Defenses:
We summarize below substantive patent law developments in the past nine months—on the AIA’s “on sale” bar, damages, Sec. 112(f), the patentable weight doctrine, written description, issue preclusion, fee awards, and, of course, Sec. 101—all digested in our free, mobile-friendly legal research tool Patent Defenses which we update approximately weekly.
AIA’s “On Sale” Prior Art
The Supreme Court granted certiorari to interpret the AIA’s revised “on sale” prior art provision for first-to-file patents. Sec. 102(a) (“A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” (emphasis added).) The U.S. Amicus Brief supports the petitioner, arguing that the AIA’s on sale bar is “limited to sales and offers that make an invention ‘available to the public.’” A ruling for Petitioner may mean that any invention that can be commercialized without disclosing the invention to the public, can be protected as a trade secret for decades or centuries (think Coca-Cola) and then patented.
- Helsinn (Fed. Cir. 05/01/17) (holding that the “otherwise available to the public” phrase did not limit invalidating sales to those disclosing details of the invention to the public), cert. granted (U.S. 06/25/2018) (Question Presented: “Whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.”)
The Supreme Court approved recovering foreign lost profits from domestic infringements, where infringement is based on the export of component(s) under § 271(f)(2). Despite expressly not addressing when proximate cause prohibits such damages, the Court approved the jury’s damages award, which was based in part on the non-infringing actions of foreign customers of the defendant. On remand, the Federal Circuit now must decide whether it can, and should, apply proximate cause to bar damages in this or other actions posing similar facts.
- WesternGeco III (U.S. 06/22/2018) (7-2) (the jury’s damages award did not violate the presumption against extraterritoriality because the “conduct relevant to the statutory focus in this case is domestic” – “the infringement” is the focus of Sec. 284, domestic export of components is the focus of Sec. 271(f)(2), damage is not a substantive element of the cause of action, and the “overseas events were merely incidental to the infringement.” But, “in reaching this holding, we do not address the extent to which other doctrines, such as proximate cause, could limit or preclude damages in particular cases.”)
Claim Construction – Sec. 112(f)
Someday, the Supreme Court may rule that no presumptions apply when determining whether patent claim language triggers Sec. 112(f) construction. While Williamson (Fed. Cir. 06/16/15) (en banc) weakened those presumptions, it did not eliminate them. In June, the Federal Circuit issued its first post-Williamson decision reversing a trial’s court holding that non-“means” claim language triggered Sec. 112(f), and in August it reversed the ITC for failing to construe a non-“means” element as triggering Sec. 112(f).
- Zeroclick (Fed. Cir. 06/01/18) (rev’g holding that this claim language triggers Sec. 112(6/f): “program that can operate the movement of the pointer” and “user interface code being configured to detect one or more locations touched by a movement of the user’s finger on the screen without requiring the exertion of pressure and determine therefrom a selected operation,” in part because the challenger provided no intrinsic or extrinsic evidence to overcome presumption arising from absence of “means.”)
- Diebold Nixdorf (Fed. Cir. 08/15/18) (rev’g ITC; term “cheque standby unit” is a means-plus-function term and, lacking structural support, indefinite. “Claims describe the term ‘cheque standby unit’ solely in relation to its function and location in the apparatus;” Spec. describes no specific structure; figure depicts unit as a vertical line; patent owner’s expert “offered purely functional definitions” and in effect testified it meant “any structure capable of performing the claimed function;” and there was no evidence “in the form of dictionary definitions or otherwise—that ‘cheque standby unit’ was reasonably well understood by persons of ordinary skill in the art to refer to a structure or class of structures.”)
Claim Construction – No Patentable Weight
Several panels addressed the doctrine of “no patentable weight” (i.e., claim language that cannot be used to distinguish prior art), reminding litigants of the importance this doctrine for all portions of the claim (not just the preamble).
- Non-Functional Information Content Has No Patentable Weight Because It Is Patent Ineligible: Claim limitations reciting “the content of information” “are not entitled to patentable weight unless the printed matter is functionally related to the substrate on which the printed matter is applied” “because such information is not patent eligible subject matter under 35 U.S.C. § 101.” Praxair (Fed. Cir. 05/16/18) (2-1) (limitation about providing information to doctor along with nitric oxide gas cylinders has no patentable weight, except where claim also recites discontinuing certain treatment “based on” the information).
- In re Nordt (Fed. Cir. 02/08/18) (vacating PTAB construction of “injection molded” as process limitation with no patentable weight: “words of limitation that can connote with equal force a structural characteristic of the product or a process of manufacture are commonly and by default interpreted in their structural sense, unless the patentee has demonstrated otherwise”).
- In re Theresa (Fed. Cir. 01/17/18) (non-precedential) (aff’g PTAB obviousness rejection; where claim recites symbols printed on labels affixed to memory devices, the symbols have “no patentable weight” because they “bear no functional or structural relationship to the labels on which they are printed and thus cannot form a patentable distinction with the prior art references”).
Section 112(a) Written Description
Patent claims often are not entitled to be backdated to their asserted priority application for lack of written-description support, rendering them invalid over intervening prior art. A panel invalidated claims on solar-panel mounting assemblies on this basis. (Disclosure: Klarquist represented the defendant).
- D Three (Fed. Cir. 05/21/18) (aff’g Summ. J. that two sets of genus claims were unsupported: (1) where priority app.’s only disclosure of a washerless assembly “consistently has one type of attachment bracket,” and did not disclose that bracket as an “optional feature,” and “in no way contemplates the use of other types of attachment brackets in a washerless assembly,” that disclosure did not support claims more broadly encompassing washerless assembly with a “genus of attachment brackets” not limited to the disclosed bracket; (2) where priority app.’s only washer embodiments placed washer only above the flashing, claims reciting washer but not requiring that location were not supported.)
Section 112(a) Full-Scope Enablement
Another patent owner was hoist upon its own claim-construction petard because the patent’s disclosure did not enable the full-scope of the claims construed per the patent owner’s claim-construction position:
- Trustees of Boston Univ. (Fed. Cir. 07/25/18) (rev’g denial of JMOL after jury verdict rejecting enablement defense; no enablement as a matter of law; claim construction sought by patent owner created six permutations of the relationship between two layers in a semiconductor, but Spec. did not enable one permutation that experts agreed was physically impossible using type of methods disclosed in Spec. (“a monocrystalline growth layer formed directly on an amorphous buffer layer”). “Having obtained a claim construction that included a purely amorphous layer within the scope of the claim, BU then needed to successfully defend against an enablement challenge as to the claim’s full scope.”)
PTAB Decisions Creating Issue Preclusion
Panels applied issue preclusion based on PTAB unpatentability determinations affirmed by the Federal Circuit. This issue will have even greater importance now that the PTAB will apply (effective with petitions filed November 13) the Phillips district-court claim-construction standard, making many if not most PTAB claim constructions binding in trial courts under either issue preclusion or judicial estoppel.
- Fed. Cir. Affirming PTAB Unpatentability Decision Precludes District Court Action Also On Appeal: XY (Fed. Cir. 05/23/18) (2-1) (sua sponte applying issue preclusion on appeal of district court “not invalid” judgment based on affirmance of PTAB unpatentability decision); and
- Affirmed PTAB Unpatentability Decision Has Issue Preclusion Effect In Other PTAB Proceedings: A PTAB final written decision in first IPR finding claims unpatentable, affirmed by the Fed. Cir. while second IPR was on appeal, has issue preclusive effect in second PTAB IPR, even if different prior art is asserted. Maxlinear (Fed. Cir. 01/25/18) (vacating PTAB patentability determination and remanding for determination whether dependent claims not already adjudicated unpatentable are patentably distinct from the claims already adjudicated unpatentable).
Attorney Fees Award and Rule 11 Sanctions
Defendants often send an early “Octane Fitness” letter putting the patent owner on notice of why its action is baseless and should be dismissed. A panel decision has reinforced the wisdom of such letters in such actions.
- One Factor In Granting Fees Is Whether Winning Party Promptly Put Losing Party On Notice Of Substantive Weakness Of Its Case: “A ‘party cannot simply hide under a rock, quietly documenting all the ways it’s been wronged, so that it can march out its ‘parade of horribles’ after all is said and done.’” Stone Basket (Fed. Cir. 06/11/18) (aff’g denial of fees where winning defendant did not move under Rule 11 or for summary judgment, did not in its invalidity contentions focus on particular cited reference that supposedly made case exceptional, and did not tell patent owner case was exceptional or ask that it be dropped until a year after its invalidity contentions).
Deceptive Revival of Expired Patent
- Deceptive Declaration That Failure To Pay Maintenace Fee Was Unintentional Meets But For Test: “Statements critical to the ‘survival of the patent’—even though they do not, strictly speaking, bear on patentability— also can be material within the meaning of Therasense.” In re Rembrandt Tech. (Fed. Cir. 08/15/18) (aff’g exceptional case finding, in part due to prior patent owner’s inequitable conduct in filing false declaration that failure to pay maintenance fees was unintentional). Allegation that delay in payment was unintentional was material because “the PTO would not have revived the patents if it had known that Paradyne consciously allowed them to expire.” Id. (aff’g intent to deceive finding in part based on other misdeeds by same actors).
Section 101 – Abstract Ideas and Natural Laws:
Several Sec. 101 decisions favored patent owners, in three respects.
First, they identified more examples of patent-eligible claims under Step One.
- a method of treatment requiring “a treating doctor to administer iloperidone in the amount of either (1) 12 mg/day or less or (2) between 12 mg/day to 24 mg/day, depending on the result of a genotyping assay” is patent eligible as “‘a new way of using an existing drug’ that is safer for patients.” Vanda Pharm. (Fed. Cir. 04/13/18) (2-1);
- “an improved user interface for computing devices.” Core Wireless (Fed. Cir. 01/25/18); and
- “a method of providing computer security by scanning a downloadable and attaching the results of that scan to the downloadable itself in the form of a ‘security profile,’” which security profile has “information about potentially hostile operations produced by a ‘behavior-based’ virus scan,” unlike (and with advantages over) traditional “code-matching” virus scans, and thus “employs a new kind of file that enables a computer security system to do things it could not do before.” Finjan (Fed. Cir. 01/10/18).
Second, they identified alleged factual disputes barring early judgment on Step Two.
- Exergen (Fed. Cir. 03/08/18) (Moore, J.) (2-1) (non-precedential) (aff’g denial of judgment of patent ineligibility: “The district court’s conclusion that these claim elements were not well-understood, routine, and conventional is a question of fact to which we must give clear error deference.”);
- Aatrix Software (Fed. Cir. 02/14/18) (Moore, J.) (2-1) (vacating R. 12(b)(6) invalidity decision on account of fact issues regarding whether “the claimed combination contains inventive components and improves the workings of the computer,” and “factual disputes” such as “whether the claim term ‘data file’ constitutes an inventive concept”; and reversing district court denial of post-judgment motion of patent owner to file second amended complaint alleging these facts which “if accepted as true, contradict the district court’s conclusion that the claimed combination was conventional or routine.”); and
- Berkheimer (Fed. Cir. 02/08/18) (Moore, J.) (vacating Summ. J. of Sec. 101 invalidity on four claims: “The patent eligibility inquiry may contain underlying issues of fact.”)
Third, they suggested that “inventive” in Step Two means not conventional (a lower hurdle for patent owners), without addressing Supreme Court precedents (see Comments on Berkheimer Memo. (04/27/18)) showing that “inventive” in Step Two is meant literally, i.e., meaning novel and non-obvious (a higher hurdle).
- “Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.” Berkheimer (Fed. Cir. 02/08/18); and
- Exergen (Fed. Cir. 03/08/18) (“something is not well-understood, routine, and conventional merely because it is disclosed in a prior art reference. There are many obscure references that nonetheless qualify as prior art.”)
But, other panels continued to apply the abstractness exclusion in line with the majority of post-Alice Fed. Cir. decisions. For example:
- BSG Tech. (Fed. Cir. 08/15/18) (aff’g Summ. J. claims ineligible; “Whether a combination of claim limitations supplies an inventive concept that renders a claim ‘significantly more’ than an abstract idea to which it is directed is a question of law. Underlying factual determinations may inform this legal determination…. But the relevant inquiry is not whether the claimed invention as a whole is unconventional or non-routine…. A claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept…. As a matter of law, narrowing or reformulating an abstract idea does not add ‘significantly more’ to it.”)
Strategy for Patent Challengers to Win a Rule 12 or 56 Alice Motion Post Aatrix, Berkheimer and Exergen (Apr. 6, 2018).
Below are short summaries of decisions from July 1 – December 31, 2017, which are referenced throughout Patent Defenses:
- Obviousness Seems A Slightly Higher Bar:
- Need reasonable expectation of success, not merely cautious optimism, possibility of success, or absence of expectation of failure:
- Sanofi (Fed. Cir. 11/09/17) (aff’g finding of no reasonable expectation of success where skilled artisans “would have been at best cautiously optimistic that dronedarone could” achieve the claimed results).
- In re Stepan (Fed. Cir. 08/25/17) (2-1) (vacating § 103 rejection of app. claims; “[T]o have a reasonable expectation of success, one must be motivated to do more than merely to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.”).
- Honeywell (Fed. Cir. 08/01/17) (rev’g PTAB obviousness decision in inter partes reexam; error of law to base obviousness on reasoning that unpredictability would have led skilled artisan to conduct routine testing to arrive at optimal result).
- Must consider also motivations to not combine:
- “Evidence suggesting reasons to combine cannot be viewed in a vacuum apart from evidence suggesting reasons not to combine.” Arctic Cat (Fed. Cir. 12/07/17) (aff’g non-obviousness).
- No hindsight:
- Merck Sharp (Fed. Cir. 10/19/17) (non-precedential) (rev’g bench trial finding of obviousness: “the only way to arrive at the hypothetical ring is by using the [challenged] patent as a roadmap to piece together various elements of [the prior art reference]. That represents an improper reliance on hindsight.”).
- Millennium Pharm. (Fed. Cir. 07/17/17) (rev’g obviousness judgment; error to find inherency where claimed subject matter is “natural result” of the path the inventor took, because § 103 provides that “(p)atentability shall not be negatived by the manner in which the invention was made.”).
- Need reasonable expectation of success, not merely cautious optimism, possibility of success, or absence of expectation of failure:
- Uncertain Application Of § 112(6/f) Can Constitute “Indefiniteness”: Uncertainty over what “structure” is incorporated into a claim via § 112(6/f) may defeat “reasonable certainty” of claim scope and thus invalidate claim under Nautilus. “It may be that a variety of devices can act as the ‘control means,’ but the specification does not explain which devices are claimed and which are not. Thus, an ordinary artisan could not ascertain the scope of the claim with reasonable certainty.” Lufthansa (Fed. Cir. 10/19/17) (non-precedential). The next step is to hold that uncertainty over whether a claim element triggers § 112(6/f) may invalidate the claim.
- Sec. 112(6/f) Element Plus New Matter Can Bar Claim Backdating: Structures incorporated into the claim via § 112(6/f) may defeat alleged priority date if not also found in alleged priority application. Uniloc (Fed. Cir. 10/23/17) (non-precedential) (aff’g PTAB; claim not entitled to provisional’s filing date because Spec. structure corresponding to § 112(6/f) element was new matter, not disclosed in provisional).
- Pure Functional Claiming = “Indefinite.” Facially Functional Claiming May Not: More opinions to help distinguish pure functional claiming from facially functional claiming, and explain why the former defeats “reasonable certainty” of claim scope.
- Pure Functional Claiming Impermissible: Lufthansa (Fed. Cir. 10/19/17) (non-precedential) (rev’g trial court holding that “control means” element was definite: “Failure to specify the corresponding structure in the specification amounts to impermissible pure functional claiming.”).
- (J. Lourie:) Claiming A Result Without How To Achieve It Defeats “Reasonable Certainty” Of Claim Scope: Forest Labs. (Fed. Cir. 12/11/17) (non-precedential) (Lourie, J., concurring) (“Claiming a result without reciting what materials produce that result is the epitome of an indefinite claim. Such a claim fails to delineate with any reasonable certainty the requirements of the formulation. …. It is a hollow claim…. [It] is indefinite for the principal and simple reason that it claims a result without reciting how to achieve that result.”).
- But Some Functional Language Implies How Function Performed: “The Nautilus standard of ‘reasonable certainty’ does not exclude claim language that identifies a product by what it does. Nothing inherent in the standard of ‘reasonable certainty’ precludes a relevant skilled artisan from understanding with reasonable certainty what compositions perform a particular function.” BASF (Fed. Cir. 11/20/17) (rev’g indefiniteness holding; “containing a material composition A effective for catalyzing NH3 oxidation,” provides “reasonable certainty” because “the claims and specification let the public know that any known SCR and AMOx catalysts can be used as long as they play their claimed role in the claimed architecture.”).
- A Result Is Not Patent Eligible (§ 101): Two-Way Media (Fed. Cir. 11/01/17) (aff’g R. 12(c) invalidity; claim “recites a method for routing information using result-based functional language. The claim requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating records,’ but does not sufficiently describe how to achieve these results in a non-abstract way.”).
- Need To Distinguish Claim Environment From Claim Elements: A patent claim recited a “communications device” configured to, among other things, transmit a delivery confirmation message to an “authenticating device,” which authenticating device was configured to generate a delivery report. An infringement verdict favoring the patent owner was overturned on appeal for failure to show direct infringement by phone users, because there was no showing that phone users used (benefitted from) the accused system’s authentication device. Intellectual Ventures (Motorola) (Fed. Cir. 09/13/17) (2-1). But, it seems that the patent owner probably would have won on appeal had it argued that the authentication device was merely part of the claim environment, not a claim element, and thus did not need to be used by the alleged direct infringer. See “Claim Language May Limit Claimed Environment Not Claimed Subject Matter” in Patent Defenses.
- Multi-Actor Direct Infringement Of Method Claim Under Akamai: Jury may find that second actor’s actions are attributed to first actor where second actor receives something of value from first actor only if it performs one or more claimed steps. Travel Sentry II (Fed. Cir. 12/19/17) (vacating sum. jud. of no direct infringement; jury may find that TSA opening luggage bearing defendant’s logo with master key defendant provided (along w/ training), is attributed to defendant provider of special locks on luggage).
- Marking: Patent Owner’s Burden To Show Licensee’s Unmarked Product Outside Patent: Where infringer identified 14 products of licensee with no patent marking, “which it argued fell within the patent claims, it was the patentee’s burden to establish compliance with the marking statute—that these products did not fall within the patent claims.” Arctic Cat (Fed. Cir. 12/07/17) (vacating judgment on marking for patent owner to show on remand whether unmarked products were patented).
- Willfulness Includes “Should Have Known” “Unjustifiably High Risk” Of Infringement: Arctic Cat (Fed. Cir. 12/07/17) (aff’g jury verdict of willfulness; approving jury instruction: “[patent owner] must prove by clear and convincing evidence that [alleged infringer] actually knew or should have known that its actions constituted an unjustifiably high risk of infringement of a valid and enforceable patent.”).
- Attorney Fees: Patent Owner Must Continuously Reevaluate Merits Of Case In View Of New Precedential Decisions: A party must continually “reassess its case in view of new controlling law.” Inventor Holdings (Fed. Cir. 12/08/17) (aff’g award of $931,903.45 in “post-Alice attorney fees, including fees incurred during the appeal of the district court’s § 101 decision,” “based on the weakness of [the patent owner’s] § 101 arguments and the need to deter similarly weak arguments in the future.”).
- TIPS Re PHOSITA: The password-protected confidential version of Patent Defenses contains strategic tips omitted from the public version. If you would like access to the redacted confidential areas, please contact email@example.com. The sample tip below was reinforced by two panel decisions in April 2017.
- Don’t Settle For Just Describing Years Of Education And Experience: Defining the level of skill in the art often is given scant attention, but with KSR and also increased importance of non-enablement defense, this requires more attention. E.g., in addition to specifying their education and training, consider giving examples of their knowledge, and skills, and related recent advances in this technology evidencing such skill. When defining PHOSITA, articulate what logic, judgment, and common sense that PHOSITA would use. See Nichia (Fed. Cir. 04/28/17) (aff’g no motivation to combine references; “derives further support from its earlier finding that artisans in this field face myriad design challenges because small design changes may cause unpredictable results and because design considerations often pull in multiple directions.”); Novartis (Fed. Cir. 04/04/17) (aff’g PTAB determination of motivation to combine references, in part based on findings of the knowledge and skills of PHOSITA: “The PTAB found that a PHOSITA would have, inter alia, ‘had knowledge of organic chemistry and been able to analyze and recognize certain characteristics of a compound based on its chemical structure.’ The PTAB further found that … a [PHOSITA] would have understood that the presence of particular functional groups in a molecule has consequences,’ such as degradation. Ample record evidence from scholarly sources supports the PTAB’s findings. The expert testimony of Dr. Schöneich corroborates the content of these sources. Thus, substantial evidence supports the PTAB’s finding that a PHOSITA would not have waited to add an antioxidant until discovering degradation during testing, but would have assessed a compound’s structure in advance of testing to determine whether an antioxidant should be added.”)