Federal Circuit Review - November 2018

by Knobbe Martens
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Federal Circuit Finds Claims Directed to Tabbed Spreadsheets Patent Eligible and Claims Directed to Tracking Changes in Documents Ineligible Under Section 101

In Data Engine Technologies LLC v. Google LLC, Appeal No. 2017-1135, the Federal Circuit held that claims reciting a specific method for navigating through three-dimensional electronic spreadsheets were not directed to an abstract idea and that claims directed to tracking changes in documents were not patent eligible.

Data Engine Technologies LLC (“DET”) filed suit against Google LLC asserting patents that generally relate to a method for tracking changes in an electronic spreadsheet (“Track-Changes Patent”) and navigating through a spreadsheet using tabs that allow the user to “flip through” the different spreadsheet pages (“Tab Patents”).  The district court entered a judgment on the pleadings, holding that the asserted claims were ineligible under 35 U.S.C. § 101 for being directed to abstract ideas and failing to provide an inventive concept.  DET appealed to the Federal Circuit.

Regarding the Tab Patents, the Federal Circuit held that all but one of the asserted claims were directed to patent-eligible subject matter.  The Federal Circuit stated that “[w]hen considered as a whole, and in light of the specification, [the claims are] not directed to an abstract idea. Rather, the claims are directed to a specific method for navigating through three-dimensional electronic spreadsheets.” The Federal Circuit emphasized that “although these spreadsheet interfaces have become ubiquitous, Quattro Pro, the first commercial embodiment of the claimed invention, was highly acclaimed as having revolutionized three-dimensional electronic spreadsheets,” and that “the method provides a specific solution to then-existing technological problems in computers and prior art electronic spreadsheets.”  Also important to the Federal Circuit’s analysis was the fact that the Tab Patents required a specific interface and implementation for navigating the spreadsheets using techniques unique to computers. For instance, the Tab Patents’ claims recited specific steps for navigating between spreadsheet pages and required displaying a row of spreadsheet page identifiers (i.e., tabs) and allowing user-settable labels for the tabs.  Thus, the Federal Circuit held that, with the exception of one claim, the asserted claims of the Tab Patents were directed to patent-eligible subject matter.

Turning to the Track-Changes Patent, the Federal Circuit stated that, “at their core, these claims recite tracking changes in a spreadsheet by: (1) creating a base version of a spreadsheet, (2) creating a new version of the spreadsheet, and (3) determining which cells of data have changed by comparing the new and base versions.”  The Federal Circuit explained that unlike the Tab patents, “nothing in the [Track-Changes Patent]’s claims viewed in light of the specification convinces us that the claimed method improves spreadsheet functionality in a specific way sufficient to render the claims not abstract.”  Thus, the Federal Circuit held that the asserted claims of the Track-Changes Patent were directed to the abstract idea of collecting, recognizing, and storing the recognized data in memory and that the claims did not recite an inventive concept under Alice step two.  Thus, the Federal Circuit affirmed-in-part, reversed-in-part, and remanded.


 Laws of Nature and Naturally Occurring DNA Sequences Are not Patent Eligible

 

In Roche Molecular Systems, Inc. v. Cepheid, Appeal No. 2017-1690, the Federal Circuit held that methods of testing for the presence of a bacterium that causes tuberculosis and the primers used in that testing were directed to patent-ineligible subject matter because the claimed methods were directed to laws of nature and the primers’ sequences were indistinguishable from naturally occurring DNA.

Roche Molecular Systems, Inc. (“Roche”) brought a patent infringement case against Cepheid asserting that Cepheid’s product, Xpert® MTB/RIF Assay, infringed Roche’s patent directed to primers that can bind to a tuberculosis bacterium and diagnostic tests using the primers.  Cepheid filed a motion for summary judgment, arguing that all of the asserted claims were patent-ineligible under 35 U.S.C. § 101.  The district court granted Cepheid’s motion, finding both the primer claims and the method claims invalid.

The Federal Circuit affirmed the District’s Court’s decision.  The Federal Circuit applied the Alice/Mayo two-step framework to the primer and method claims separately.  The Federal Circuit held that the primer claims were directed to nonpatentable subject matter because the claimed primers have identical nucleotide sequences to the corresponding naturally occurring DNA.  The Federal Circuit held that the method claims were directed to a relationship between the signature nucleotide sequences and the presence of tuberculosis in a sample, which is a naturally occurring phenomena ineligible for patenting.  The Federal Circuit also held that the method claims do not contain an inventive concept that transforms the relationship between the signature nucleotides and tuberculosis into patent-eligible subject matter, as the amplification and detection techniques were routine at the time the application was filed.  Accordingly, the Federal Circuit affirmed the district’s court’s decision finding both the primer claims and the method claims invalid. 

Judge O’Malley concurred, writing separately to express her belief that the Federal Circuit’s prior holding in In re BRCA1- & BRCA2-Based Hereditary Cancer Test Patent Litig., 774 F.3d 755 (Fed. Circ. 2014), which O’Malley agreed with the majority compelled the conclusionin this case, was unduly broad and that the conclusion should be revisited en banc.  

 


 Non-Prior Art References may be Considered to Evaluate the Knowledge, Motivations, and Expectations of a Skilled Artisan

In Yeda Research And Development Co., Ltd. v. Mylan Pharmaceuticals Inc. and Teva Pharmaceuticals USA, Inc. v. Sandoz Inc. (companion cases), Appeal No. 2017-1575, the Federal Circuit held that non-prior art evidence may be considered when evaluating the knowledge, motivations, and expectations of a POSITA regarding the prior art.  In addition, there is no categorical rule in pharmaceutical patent cases precluding obviousness determinations in the absence of a pharmacokinetic and pharmacodynamic profile.  Finally, it is not error to apply an “obvious to try” analysis where there are a limited number of permutations of dose and frequency not already disclosed in the prior art.  

Common Background

Yeda Research and Development Co., Ltd. (“Yeda”) is the assignee of three patents claiming a treatment for relapsing-remitting multiple sclerosis (“RRMS”) by injecting 40 mg of glatiramer acetate (GA) three times a week over the course of seven days.  Mylan Pharmaceuticals, Inc. (“Mylan”) filed petitions for inter partes review to challenge all claims of the patents.  In addition, the patents were the subject of Hatch-Waxman litigation, thus giving rise to the companion case, Teva Pharmaceuticals USA, Inc. v. Sandoz Inc.  

Both the Board and the district court found that the prior art disclosed every limitation of the independent claims other than the dosing regimen of three doses per seven day period.  However, both the Board and the district court also found that the missing limitation would have been obvious to a skilled artisan.  Accordingly, both the Board and the district court found the claims invalid.  Yeda appealed from each.

Appeal from the Board (Yeda v. Mylan)

On appeal, Yeda argued that the Board erred by relying on a non-prior-art reference.  The Federal Circuit found that, aside from one instance which constituted harmless error, the Board relied on the non‑prior art reference for the purposes of evaluating the knowledge, motivations and expectations of the skilled artisan in view of the prior art, and that such reliance is permissible.  Further, despite Yeda’s arguments that a reasonable expectation of success is impossible without a pharmacokinetic and pharmacodynamics (“pk/pd”) profile, the Federal Circuit declined to find a rigid rule categorically precluding obviousness determinations without pk/pd data.  Accordingly, the Federal Circuit affirmed the Board’s decision. 

Appeal from the District Court (Teva v. Sandoz)

On appeal, Teva argued that the district court erred in finding the missing limitation obvious to try.  However, the Federal Circuit disagreed.  The Federal Circuit highlighted two categories of impermissible obvious to try analyses: when what was obvious to try was (a) to vary all parameters until one succeeds, where the prior art gave no indication of critical parameters and no direction as to which of many possibilities is likely to be successful; or (b) to explore a new technology in a seemingly promising field of experimentation, where the prior art gave only general guidance as to the particular method of achieving the claimed invention.  The Federal Circuit found that neither category applied in this case because only two dose sizes had been shown to be effective and safe, and the prior art encouraged skilled artisans to pursue less frequent dosing regimens.  Further, there were “only a limited number of permutations of dose and frequency to explore that were not already disclosed in the prior art.”  Accordingly, the Federal Circuit affirmed the district court’s decision.   

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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