Expert Testimony Not Always Necessary to Establish Prima Facie Obviousness Case in Inter Partes Review
In Belden Inc. v. Berk-Tek LLC, Appeal Nos. 2014-1575, 2014-1576, on appeal from an IPR, the Federal Circuit affirmed the PTAB’s decision not to exclude a patent owner’s expert declaration filed after the patent owner response and reversed the PTAB’s decision to confirm the nonobviousness of two dependent claims.
The IPR petitioner did not file a supporting expert declaration with its opening petition. Instead, the petitioner first submitted a declaration after the patent owner response. The patent owner filed a motion to exclude the expert declaration, arguing the petitioner should be required to produce all evidence in the initial petition. The PTAB denied the motion. And in the final written decision, the PTAB canceled an independent claim and three dependent claims for obviousness but confirmed the separate patentability of two dependent claims. Both parties appealed.
The Federal Circuit affirmed the PTAB’s decision to deny the motion to exclude. “No rule requires a Petition to be accompanied by any declaration, let alone one from an expert guiding the Board as to how it should read prior art. . . . Board members, because of expertise, may more often find it easier to understand and soundly explain the teachings and suggestions of prior art without expert assistance. In the present case, which is all we address, we conclude that the . . . declaration was not necessary for the prima facie case of obviousness.” The Federal Circuit did not review whether the declaration was new evidence.
On the issue of obviousness, the patent owner challenged the PTAB’s factual findings, including that there would have been a motivation to modify the prior art to meet the claims. The Federal Circuit affirmed that substantial evidence supported the PTAB’s factual findings. Regarding the PTAB’s findings on motivation, the Federal Circuit supported the PTAB’s decision to “rely on its own reading of [the prior art]—supported by the Petition’s observations about it” where the circumstances “involv[ed] a simple point in a mechanical field and one very close piece of prior art.” The petitioner challenged one of the PTAB’s factual findings favoring separate patentability of the two dependent claims. But the Federal Circuit viewed the real underlying issue as a question of law. The Federal Circuit held the PTAB legally erred by disregarding a certain prior art teaching, which “violates the principle that a reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect.” The Federal Circuit held the two dependent claims were unpatentable for obviousness.
ITC Lacks Jurisdiction over Internet Transmissions into United States
In ClearCorrect Operating, LLC v. International Trade Commission, Appeal No. 2014-1527, the Federal Circuit held that the ITC could not block the import of infringing digital files because the ITC lacked jurisdiction. According to the Federal Circuit, the term “articles” as described in 19 U.S.C. § 1337 is defined as “material things” and does not include electronically transmitted digital data.
The ITC has the authority to block importation of infringing articles under § 1337, but the ITC has previously only used the power to block physical goods. In this dispute, however, the ITC expanded that jurisdiction and held that it had the authority to stop ClearCorrect from importing digital files that were used to create infringing versions of Invisalign clear braces.
Disagreeing with the ITC’s interpretation of the term “article,” the Federal Circuit applied the two steps of Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984). Under step one of the Chevron test, the Federal Circuit examined the term’s literal meaning in contemporaneous and modern dictionaries, the term’s context in § 1337 and its subsections, and the term’s role in the totality of the statutory scheme, including tariff schedules. The Federal Circuit held that all constructions of the term “article” point to Congress’s unambiguous intent that “articles” means tangible or material things and does not extend to ClearCorrect’s electronically transmitted digital models.
Because Congress’s intent was clear, the Federal Circuit acknowledged it did not need to address step two of the Chevron test. Nonetheless, the Federal Circuit held that the ITC “repeatedly and unreasonably erred in its analysis” when the ITC irrationally analyzed various dictionaries, misquoted the legislative history, and improperly cited current Congressional debates. Finally, the Federal Circuit noted its deference to Congress on this issue.
Pharmaceutical Species Claims Found Obvious over Disclosure of Genus in Prior Art
In Prometheus Laboratories, Inc. v. Roxane Laboratories, Inc., Appeal Nos. 2014-1634, 2014-1635, the Federal Circuit affirmed the district court’s invalidity judgment, concluding a pharmaceutical patent’s species claims would have been obvious over a prior art patent disclosing the genus.
Roxane submitted to the FDA a paragraph IV certification that its generic version of a drug would not infringe Prometheus’s patent on the treatment of women with diarrhea-predominant irritable bowel syndrome (IBS-D) utilizing the drug, or alternatively that the patent was invalid. Prometheus sued Roxane for infringement. The district court found the claims would have been obvious over a prior art patent that disclosed treating a condition such as IBS by administering to a patient an effective amount of the drug.
The Federal Circuit affirmed the judgment of invalidity based on obviousness. The Federal Circuit reasoned that the claim “limitations are directed to a known type of IBS, to treating the gender that predominantly experiences IBS, to treating patients with a characteristic that is always or almost always evaluated in establishing IBS, and to assessing symptoms for a duration of time that was common in diagnosing patients with IBS.” Thus, “it would have been obvious for a person having ordinary skill in the art reading the . . . [genus methods in the reference patent] to treat female patients with IBS-D who had symptoms for at least six months and who had experienced at least moderate pain.” Recognizing that, even though “a narrow species can be non-obvious and patent eligible despite a patent on its genus,” the Federal Circuit nevertheless concluded that the disputed species claims would have been obvious over the reference patent and other prior art because the claimed patient subset did not display unexpected results.
Federal Circuit Broadly Construes Negative Limitation Left Undefined in Specification
In Imaginal Systematic, LLC v. Leggett & Platt, Inc., Appeal No. 2014-1845, the Federal Circuit affirmed the district court’s claim construction ruling and held that a patent’s claim language disavowed more than a single preferred embodiment from an earlier patent incorporated by reference.
In a first round of litigation, Imaginal sued L&P and Simmons for infringing three patents, including the ’402 patent, which recites a process for stapling box springs together. In the first litigation, the district court held the asserted claims valid and infringed on summary judgment. As a result of this lawsuit, L&P redesigned its box-spring stapling apparatus. One design change was to use a computer system that uses an optical sensor to control the movement of both the wooden frame of the box spring and the stapling device.
Imaginal then filed a second lawsuit against L&P and Simmons, alleging that L&P’s redesigned stapling apparatus still infringed the ’402 patent. The ’402 patent incorporates by reference an earlier patent, the ’789 patent, which explicitly requires “a vision guided stapling apparatus” that locates target sites on the wood frame and guides a stapler to these target sites. By contrast, the ’402 patent recited a method of making box springs where one step was “moving the fastening tool without the use of a vision guidance system . . . until the fastening tool is located at a target fastening location.” The district court construed “vision guidance system” in the ’402 patent as a “system that uses a vision or sight based method to control or direct the movement or direction of something.” Applying this claim construction, the district court held that L&P’s redesigned product did not infringe the ’402 patent.
On appeal, Imaginal challenged the district court’s claim construction, arguing that the ’402 patent disclaimed only the use of the vision guidance system described in the ’789 patent. The Federal Circuit disagreed, noting that “[n]othing in the claim language purports to restrict the term ‘vision guidance system’ to one particular system. Indeed, the claim uses the term generically, referring to ‘a’ vision guidance system—meaning one or more—rather than a specific system.” The Federal Circuit noted that the patentee had not acted as its own lexicographer in this case, and although Imaginal could have defined “vision guidance system” to mean the vision guidance system of the ’789 patent, it did not. The Federal Circuit further noted that the ’402 patent specification actually disclosed two different examples of vision guidance systems: that of the ’789 patent and another that provides “less exact” guidance. The Federal Circuit reasoned that, because the ’402 patent specifically used the phrase “vision guidance system” to refer to two different systems, there was no indication that the patentee intended to disclaim only the system disclosed in the ’789 patent.
Negative Claim Limitation Satisfies Written Description Requirement
In Inphi Corp. v. Netlist, Inc., Appeal No. 2015-1179, the Federal Circuit affirmed that a negative claim limitation satisfied the standard for written description because the specification included alternative features that were properly described.
Inphi filed for inter partes reexamination of Netlist’s patent directed to computer memory technologies. During reexamination, Netlist narrowed the claims by adding a negative limitation that excluded certain signal types. The narrowed claims issued, and Inphi appealed to the PTAB. Inphi argued that the negative limitation did not satisfy the standard for written description because the patent did not disclose a reason for excluding the recited signal types. The PTAB affirmed the examiner’s decision, finding that the specification contained sufficient support because it adequately distinguished between the signal types at issue.
The Federal Circuit affirmed the PTAB decision and confirmed that the specification contained sufficient description. The Federal Circuit clarified its language from the case Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012), which states that “[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” The Federal Circuit held that Santarus did not create a heightened written-description standard for negative claim limitations and that if alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.
Unambiguous Plain Meaning of Claim Limitations Trumps Other Descriptions in Specification
In Straight Path IP Group, Inc. v. Sipnet EU S.R.O., Appeal No. 2015-1212, the Federal Circuit reversed the PTAB’s construction of a claim term in an IPR, reiterating that, absent clear redefinition or disavowal, the plain meaning of a claim limitation will be controlling over other descriptions in the specification when the plain meaning is unambiguous.
In Sipnet’s IPR against Straight Path’s patent, the PTAB canceled claims based on its construction of the claim term “a query as to whether the second process is connected to computer network.” The parties agreed that the claim term’s language requires "being on-line," however, the PTAB adopted Sipnet’s view that the language also “simply requires being registered with the server,” and not Straight Path’s view that it “refers to a present-tense status.” In reaching its conclusion, the PTAB asserted that Sipnet’s construction was the “broadest reasonable construction based on the specification” because “‘connected to the computer network’ encompasses a processing unit that is ‘active and on-line at registration.’”
Straight Path appealed, arguing that (1) because the patent had expired by the time of the appeal (but apparently not at the outset of the IPR), the Federal Circuit should address claim construction under the principles of Phillips rather than using the broadest reasonable interpretation standard, and (2) the PTAB reached the wrong claim construction even under the broadest reasonable interpretation standard. The Federal Circuit chose not to address issue (1) because it found in issue (2) that the PTAB’s construction was erroneous even under the broadest reasonable interpretation standard.
In a de novo review of the PTAB’s claim construction, the Federal Circuit focused on the word “is” within the claim term and held that the language “plainly says” that the query must address the present-tense status of the second process. The Federal Circuit held that “the PTAB did not address the facially clear meaning [of the claim language], instead turning immediately to the specification.” The Federal Circuit explained that, “[w]hen claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Because there was no basis for reasonably adopting a construction that contradicts the plain meaning of the claim language, the PTAB erred in its construction even under the broadest reasonable interpretation standard. The Federal Circuit reversed the construction and claim cancellation, and remanded for further proceedings.
