Case Summary of GoPro, Inc. v. Contour IP Holding LLC

By William Gvoth

September 27, 2018- Case Summary of GoPro, Inc. v. Contour IP Holding LLC

GoPro, Inc. v. Contour IP Holding LLC, 2017-1894, 2017-1936 (Fed. Cir. July 27, 2018) (“GoPro”) is an appeal from the Patent Trial and Appeal Board (PTAB) (Nos. IPR2015-01078, IPR2015-01080). At the PTAB, GoPro, Inc. challenged two patents owned by Contour IP Holding LLC as obvious in light of a GoPro catalog that GoPro distributed at a trade show in July of 2009. The PTAB found against GoPro, Inc. in the challenge. This decision was based on finding that the GoPro catalog was not prior art for the claims of the patents owned by Contour IP Holding LLC.

The patents at issue are U.S. Patent Nos. 8,890,954 (the ‘954 patent) and 8,896,694 (the ‘694 patent), which have a common specification. The common specification of these patents generally describe video cameras or camcorders that can be controlled remotely (e.g., for remote image capture and/or viewing). Specifically, these patents claim use of global positioning system (GPS) technology to track a location of a camera and/or a camcorder during use and further describe use a wireless connection to facilitate remote control of the camera and/or the camcorder. The common specification of these patents further describe that the claimed device can be deployed in areas that do not permit easy use by an individual, such as in a sports scenario. Both patents claim priority to a provisional application filed on September 13, 2010, resulting in a one year prior art date of September 13, 2009.

In July of 2009, GoPro, Inc. attended the Tucker Rocky Dealer Show (the trade show) hosted by Tucker Rocky Distributing, a trade organization related to off-road, all-terrain-type vehicles and related products (e.g., snowmobiles, ATVs, etc.). The trade show was attended by numerous dealers and there were over 1000 attendees, including some potentially interested in video cameras and/or camcorders. There was no evidence presented to the PTAB that the 2009 trade show was advertised to the public, nor was the trade show open to the public. At the trade show, GoPro, Inc. distributed copies of its catalog for its HD Motorsports HERO camera. The catalog described the camera as a “1080p [high-definition (HD)] wearable camera [with] optional wireless remote with an omni-directional range of 30 feet.” In addition, the catalog included several images of the camera and wireless remote, including an image showing attachment of the camera to a helmet (specifically a motocross/ATV-type helmet).

In analyzing the evidence presented, the PTAB determined that a bachelor’s degree in computer science, electrical engineering, and/or the like and experience with video cameras and/or cameras (e.g., creating, programming, etc.) constituted the ordinary skill in the art. Next the PTAB determined that the GoPro, Inc. catalog was not a prior art printed publication by applying Blue Calypso v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016). In making this determination, the PTAB found that the trade show at which the GoPro catalog was distributed was not advertised or announced to the public, such that a person of ordinary skill in the art would have known about it, and in addition, the trade show was not publicly accessible and was only open to members of the Tucker Rocky Distributing trade organization. Essentially, the PTAB failed to see how the general public would have obtained the GoPro catalog from the trade show, especially in light of the fact that the trade show was closed to the general public and was for dealers only. Further, the PTAB did not find any evidence that the catalog was distributed at the show to any persons of ordinary skill in the art, or that any one of such skill was actually in attendance (besides

GoPro’s representatives at the trade show) given that the trade show was focused on off-road, all-terrain-type vehicles and related products.
On appeal, the Court of Appeals for the Federal Circuit (the Court) analyzed whether the catalog constituted a printed publication under 35 U.S.C. 102(b) (Pre-AIA). In performing this analysis, the Court performed a de novo review and reviewed the PTAB’s factual findings for substantial evidence. Under section 102(b), “a person shall be entitled to a patent unless the invention was described in a printed publication more than one year prior to the date of application for the patent in the United States.” Contour IP Holding LLC did not dispute any of the evidence presented regarding distribution of the catalog, nor did they dispute that the trade show occurred more than one year before the application for patent of the ‘954 and ‘694 patents. As such, the issue before the Court was “whether the GoPro catalog was sufficiently accessible as contemplated under 102(b).

The Court agreed with GoPro, Inc.’s argument that the evidence submitted was sufficient to establish that the GoPro catalog was publicly accessible. Citing Medtronic v. Barry, 891 F.3d 1368 (Fed. Cir. 2018), the Court found that the PTAB relied too heavily on the target audience of the distributed GoPro catalog in finding that the GoPro catalog was not publicly accessible. In addition, the Court stated that the PTAB failed to consider other factors, such as “the nature of the conference or meeting at which material is distributed, whether there are restrictions on public discourse of the information, expectations of confidentiality, and expectations of sharing the information.”

In examining these factors, the Court noted that there was no restriction on distribution of the GoPro catalog at the trade show and that the GoPro catalog was freely on display for anyone in attendance. The Court further rejected the notion that the trade show’s focus on “action sports vehicles is not preclusive of persons ordinarily skilled in the art from attending to see what POV digital cameras were being advertised and displayed.” Similarly, the Court found that the patents at issue described that “a primary purpose of POV cameras is for use on vehicles in extreme action environments, such as the ones advertised at the Tucker Rocky Dealer Show.” With regard to attendees of the of the trade show, the Court determined that nothing about the trade show would have excluded cameras, camcorders, or related products from the trade show, and that it would have been likely for people attending the trade show to be interested in such products. Lastly, the Court determined that the vendor lists for the trade show included a number of vendors that would have likely been involved in selling and/or producing cameras and/or camcorders of the type shown and described in GoPro’s catalog.

Based on these determinations, the Court determined that “a dealer show focused on extreme sports vehicles is an obvious forum for POV action sports cameras,” and that “dealers of POV cameras would encompass the relevant audience such that a person ordinarily skilled and interested in POV action cameras, exercising reasonable diligence, should have been aware of the show,” despite the trade show not being open to the general public or advertised to the general public. In addition, the Court determined that the lack of restrictions placed on the dissemination of the GoPro catalog indicates that the GoPro catalog was “intended to reach the general public.” As such, the Court concluded that the GoPro catalog was a printed publication under 102(b) and that the GoPro catalog was prior art for purposes of the patents at issue. The Court remanded to the PTAB for an obviousness determination in light of the GoPro catalog.

This case provides a few practice insights for practitioners. This case highlights that when working with clients, practitioners should broadly interpret non-confidential disclosures of material as public disclosures. Despite the closed nature of the trade show and the lack of evidence that any persons skilled in the art, outside of GoPro, Inc.’s attendees, attended the trade show, the Court nonetheless found that dissemination of the GoPro catalog at the trade show constituted a prior art reference under 102(b). Similarly, this case highlights that a public disclosure can occur as long as the distributed material is not restricted from reaching the general public. Even if the material is not necessarily distributed to anyone of ordinary skill in the art, as long as there are no restrictions on further dissemination by those individuals, a court may find that such dissemination is a public disclosure as the material could, in theory, reach someone skilled in the art. As such, practitioners should work with clients to determine the exact nature of past or future disclosures of invention-related material for purposes of identifying relevant public disclosures.

Download GoPro, Inc. v. Contour IP Holding LLC

Nathan Phares and Kenneth Hartmann Published in Landslide Magazine

By Nathan Phares and Kenneth Hartmann

September 2018 – Creativity in Enhancing the Quality and Size of Patent Portfolios

One of the most challenging choices for an organization’s patent strategy is whether to focus on quality or quantity. A small number of high-quality patents may provide value and solid protection for some inventions, but innovation can occur at a fast pace, which may require rapid filings at a high volume. When presented with the challenge of increasing portfolio size without sacrificing patent quality or ballooning the budget, you, the patent practitioner (whether in-house or in private practice), may need to take creative steps to increase the number of ideas that are harvested from inventors, the number of patents that can be obtained for an idea or group of ideas, and the efficiency with which patents can be drafted. This article discusses several creative strategies to help grow a patent portfolio for your clients, whether they are a business unit of an organization or the organization itself. These creative strategies can be implemented prior to reaching the prosecution phase, both before patent applications are drafted and during the application drafting stage, without simply increasing patent expenditures.

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Working From Home – Elaine Spector Published in American Diversity Report

By Elaine Spector

September 8, 2018 – Working From Home: A Game Changer

After over 21 years of working in an office, I finally had the opportunity to take a leap of faith to work from home. Many people have questioned me about the move, and how I am fairing. My response is simple: “It is a game changer.”

Like many Americans, I’ve spent a majority of my working life in a brick and mortar office. On a typical morning, I would take a quick shower, eat a hurried breakfast, and dash to my car in a futile attempt to beat the traffic. I have been in the law practice for 21 years, most of which were spent living and working in Washington, D.C.- a city notorious for its congestion. After a move to Baltimore, I continued to commute to D.C. for seven excruciating years.

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Dissecting Dissents for Ex Parte Appeals

By Eli Mazour and So Ra Ko, September10, 2018 – Dissent is not the highest form of judgment for judges on the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO).  As discussed in further detail below, our own analysis indicates that dissents for ex parte appeals are found in about .5% of decisions issued by the PTAB.  A PTAB judge deciding an ex parte appeal is more than ten times less likely to dissent than a Federal Circuit (CAFC) judge.

The PTAB decides thousands of ex parte appeals per year.  Each appeal is assigned to a panel of three Administrative Patent Judges (APJs).  While one judge is designated to write the initial opinion, all three judges are supposed to take an active role in adjudication before the final decision is issued.

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Case Summary of SAP America, Inc. v. InvestPic, LLC

By Rebecca Bachner

September 4, 2018- Case Summary of SAP America, Inc. v. InvestPic, LLC

In SAP America, Inc. v. InvestPic, LLC, 2017-2081 (Fed. Cir. May 15, 2018), the Federal Circuit (“the Court”) agreed with the U.S. District Court for the Northern District of Texas (the “District Court”) that the claims of U.S. Patent No. 6,349,291 (“the ‘291 patent”), were invalid because their subject matter is invalid under 35 U.S.C § 101 (“Section 101”).

The ‘291 patent is directed to calculating and analyzing investment data in order to generate a resampled distribution.  In 2016, SAP America, Inc. filed a declaratory judgment alleging the that ‘291 patent was invalid and moved for a judgment on the pleadings on that ground.  In May 2017, at the judgment on the pleadings, the District Court granted the motion and held all claims ineligible under Section 101 and hence invalid.  The District Court concluded that the claims were directed to performing statistical analysis based on the language in the claims and the mathematical calculations in the written description and dependent claims.  InvestPic, LLC appealed the grant of the motion.

On the merits with regards to the claims of the ‘291 patent, the Court found, as did the District Court, that the claims in the ‘291 patent are ineligible under Section 101.  The Court stated that “[w]e may assume that the techniques claimed are ‘groundbreaking, innovative, or even brilliant,’ but that is not enough for eligibility.” Ass’n for Molecular Pathology v. Myriad Genetics Inc, 569 U.S. 576, 591 (2013).  The Court reiterated that overcoming novelty and non-obviousness is not enough and that “[t]he claims here are ineligible because their innovation is an innovation in ineligible subject matter.”  SAP America, Inc. v. InvestPic, LLC at p. 3.  The Court said that the subject matter is nothing but a series of mathematical calculations and the presentation of the results in the plot of a probability distribution function.

To make this determination, the Court looked to the patent’s description of existing practices being improved by the ‘291 patent.  The ‘291 patent discusses that conventional financial information websites perform rudimentary statistical functions relying on a false presumption of a probability distribution and that the patent proposes a technique that “utilizes resampled statistical methods for the analysis of financial data.”  The patent then discusses using a bootstrap method and bias parameters.

The Court then looked to the independent claims.  Independent claims 1 and 11 are method claims and claim 22 is a system claim.

Claim 1: A method for calculating, analyzing and displaying investment data comprising the steps of:
(a) selecting a sample space, wherein the sample space includes at least one investment data sample;
(b) generating a distribution function using a re-sampled statistical method and a bias parameter, wherein the bias parameter determines a degree of randomness in a resampling process; and,
(c) generating a plot of the distribution function.

Claim 11: A method for providing statistical analysis of investment data over an information network, comprising the steps of:
(a)storing investment data pertaining to at least one investment;
(b)receiving a statistical analysis request corresponding to a selected investment;
(c)receiving a bias parameter, wherein the bias parameter determines a degree of randomness in a resampling processing; and
(d)based on upon investment data pertaining to the selected investment, performing a resampled statistical analysis to generate a resampled distribution.

Claim 22: A system for providing statistical analysis of investment information over an information network comprising:
a financial data databased for storing investment data;
a client database;
a plurality of processors collectively arranged to perform a parallel  processing computation, wherein the plurality of processors is adapted to:
receive a statistical analysis request corresponding to a selected investment;
based upon investment data pertaining to the elected investment, perform a resampled statistical analysis to generate a resampled distribution; and
provide a report of the resampled distribution.

 

Upon reviewing the claims, the Court found them directed to abstract ideas.  The Court found this case to be similar to Electric Power Group v. Alstom S.A. 830 F.3d 1350 (Fed. Cir. 2016) as the claims select certain information, analyze it using mathematical techniques and report or display the results of the analysis.

The Court distinguished this case from McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) by stating that McRO was directed to the creation of something physical and the improvement was to how the physical display operated.  However, the claims in the ‘291 patent claimed an improvement to a mathematical technique with no improved display mechanism.  The Court further distinguished these claims from McRO stating that McRO had the specificity required to transform a claim from claiming only a result to claiming a way of achieving it.  Similarly, the Court stated that Thales Visionix Inc. v. U.S., 850 F.3d 1343 (Fed. Cir. 2017) taught an improvement of a physical tracking system.

In contrast, the Court stated, the focus of the claims in the ‘291 patent is not a physical-realm improvement, but an improvement in the selection and mathematical analysis of information followed by reporting or displaying the results.  The Court stated that it did not matter as to whether the information claimed is information about real investments as the limitations were not enough to make the collection or analysis of that information not abstract.

Further, the Court also distinguished the claims in the ‘291 patent from the results of the first test of the Alice inquiry in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC., 827 F.3d 1341 (Fed. Cir. 2016), stating that those claims were directed to improvements in the way the computers and networks carry out their basic functions.  Alice Corp Pty. Ltd v. CLS Bank Int’l, 134 S.Ct 2347 (2014).  The Court said that the claims of the ‘291 patent are directed to improved mathematical analysis and that the technology used can be off-the-shelf computer technology.  As such, the claims of the ‘291 patent did not meet the first test of the Alice inquiry.

Looking to the second test of the Alice inquiry, the Court concluded that there is nothing in the claims sufficient to transform them to patent eligible and that the claims in the ‘291 patent are merely an advance of mathematical techniques in finance.  As such, the Federal Circuit agreed with the District Court that the claims of the ‘291 patent lack subject matter eligibility.

This case illustrates the importance of having claims that are specific and solve a technical problem.  Furthermore, the decision in SAP America, Inc. v. InvestPic, LLC emphasizes the importance of having claims focused on advancements in an area of technology.

Download Case Summary of SAP America, Inc. v. InvestPic, LLC. 

Case Summary of Vivint, Inc. v. Alarm.com Inc.

By Peter Glaser and So Ra Ko

August 22, 2018- Case Summary of Vivint, Inc. v. Alarm.com Inc.

In Vivint, Inc., v. Alarm.com Inc., 2017-2076 (Fed. Cir. July 26, 2018), the Federal Circuit (“the Court”) affirmed an inter partes review decision of the U.S. Patent Trial and Appeal Board (“the PTAB”) that the claims of U.S. Patent No. 6,924,727 (“the ‘727 patent”), were invalid because their subject matter is invalid under 35 U.S.C § 103 (“Section 103”).

The ‘727 patent is directed to a method that allows a user to remotely control electronic devices located in the user’s home.  The United States Patent and Trademark Office (“USPTO”) issued the ‘727 patent in 2005 with a priority date in 2001.  Independent claim 1 is representative (emphasis added):

A method for remote control of home-located electronic devices, comprising the steps of:
receiving, at a management facility, from a terminal via a network, a request signal and a terminal identifier that identifies said terminal;
identifying, in said managing facility a server, said server being identified by a server identifier that corresponds to said terminal identifier;
obtaining, in said management facility, from said server via said network, status information and said server identifier, said status information indicative of the status of home-located electronic devices controlled by said server;
generating display information for said terminal dependent upon the performance of said terminal, wherein said display information includes the status of said home-located electronic devices based on said status information and a prompt for input of a control instruction for said home-located electronic devices, said terminal being identified by said terminal identifier, said terminal identifier corresponding to said server identifier;
transmitting said display information from said management facility to said terminal;
displaying, with said terminal, a screen showing the status of said home-located electronic devices and a screen to prompt for input of a control instruction of said home-located electronic devices on the basis of the received display information;
transmitting, by said terminal, said terminal identifier and first control information;
generating, by said management facility, second control information that directs said server to perform control of said home-located electronic devices, on the basis of said first control information;
transmitting, by said management facility, said second control information to said server, said server being identified by said server identifier that corresponds to said terminal identifier, and
controlling, by said server, said home-located electronic devices on the basis of said second control information.

In 2015, Vivint sued Alarm.com in United States District Court for the District of Utah (“the District Court”) alleging infringement on 6 patents relating to smart home technology, and Alarm.com challenged 5 of the 6 patents in an inter partes review.  The District Court stayed the infringement suit pending results of the inter partes review.  The PTAB concluded that the claims were obvious in view of two earlier patents directed to internet-based home communications system.  Vivint appealed the finding of obviousness arguing that the PTAB misconstrued a term of the claims by departing from the term’s plain meaning.

The PTAB adopted Alarm.com’s proposed construction of “terminal identifier” to mean “an identifier associated with a terminal that enables the home network management facility to identify or communicate with the terminal” rather than “an identifier associated with a terminal that enables a terminal to be identified” as proposed by Vivint.  The PTAB based this construction on several grounds.  First, the ‘727 patent did not include an explicit definition of a “terminal identifier.”  Second, the claims of the ‘727 patent recite “a terminal identifier that identifies said terminal” and “said terminal identifier to determine at least one of a display capability or a communication capability of said terminal,” which the PTAB found instructive in construing a terminal identifier as identifying a terminal and being used to determine a format of information that is to be communicated to a terminal.  Further, the ‘727 patent’s claims recite “wherein said identifier is a manufacturer model identifier of said remote terminal,” which the court indicated is informative in identifying a manufacturer model identifier as a type of terminal identifier.  Third, the PTAB confirmed that the specification of the ‘727 patent recited that the ‘727 patent did not intend to limit an identifier to a specific type of identifier, such as an alphanumeric number or a unique identifier specific to a device.  Fourth, the PTAB found that a definition of “server identifier” was relevant to a definition of “terminal identifier” insofar as each was a type of “identifier” distinguished by the entity being identified.  See Chamberlain Grp., Inc. v. Lear Corp., 516 F.3d 1331, 1337 (Fed. Circ. 2008).  Here, the term “server identifier” was construed parallel to a terminal identifier as “an identifier associated with a home server that enables the home network management facility to identify or communicate with the home server” and this construction was unchallenged, resulting in it being applied to the construction of the “terminal identifier.”

Based on this construction, the PTAB found that U.S. Patent 6,580,950 (“Johnson”) and U.S. Patent 6,161,140 (“Moriya”) independently taught “receiving, at a management facility, … a terminal identifier” (“the terminal identifier limitation”).  The PTAB found that Johnson inherently taught the terminal identifier limitation based on the Johnson’s IP address being a form of terminal identifier.  The PTAB found that Moriya taught the terminal identifier limitation based on Moriya’s model code being a form of the terminal identifier.

Reviewing the claims of the ‘727 patent de novo, the Court found, as did the PTAB, that the claims in the ‘727 patent are ineligible under Section 103.  The Court first reviewed the claims construction decision of the PTAB, confirming that the PTAB correctly applied the claims and specification to arrive at the construction of the term “terminal identifier.”  Although the Court, however, found that the PTAB erred in finding that Johnson inherently disclosed a limitation of the ‘727 patent, the Court found that such error was harmless as Moriya independently taught the limitation of the ‘727 patent.

In concluding that the PTAB erred with regard to Johnson the Court analyzed inherency doctrine—finding that “inherency ordinarily applies in an anticipation context where a prior art reference, which does not expressly disclose every limitation of a claim, may still anticipate that claim,” but that use of inherency doctrine in the context of obviousness is limited to cases where “the limitation at issue [is] necessarily… present, or the natural result of the combination of elements explicitly disclosed by the prior art.” Par Pharm., Inc. v. Twi Pharm. Inc., 773 F.3d 1186, 1194-96 (Fed. Circ. 2014).  Thus, inherency “requires more than agreement; inherency requires inevitability” and evidence that a limitation “comport[s] with” a claim construction is insufficient.

Furthermore, the Court reinforced the point that inherency and obviousness are “distinct concepts” by finding that expert testimony discussing obviousness did not constitute substantial evidence to support an inherency finding.  See In re Spormann, 363 F.2d 444, 4848 (CCPA 1966)).  In this case, the PTAB had supported its inherency finding through expert testimony that, based on an Examiner’s Official Notice, the use of IP addresses in Johnson would have been “obvious” to a skilled artisan.  The Court rejected the PTAB’s reliance on the expert testimony to support its inherency finding, because “what would have been obvious to a skilled artisan is not a valid consideration in an inherency analysis.”

Nevertheless, the Court agreed with the PTAB that Moriya teaches model code capable of identifying a generic terminal rather than a specific terminal.  The ‘727 patent distinguishes between the terminal identifier and a model name (which identifies a generic model).  Thus, Vivint argues, the model code of Moriya should be analogous to the model name and not the model identifier.  The Court agreed with the PTAB finding that claims 29 and 37 of the ‘727 patent, which recite that the terminal identifier is “a manufacturer model identifier,” were sufficient to conclude that the model code was analogous to the model identifier based on the claims construction of the “terminal identifier” as including a manufacturer model identifier.  Further the Court found that the functionality of the model code in Moriya—to allow a system to determine a terminal’s display capability—was the same functionality of the terminal identifier in the ‘727 patent.

The take-aways from this decision include the relevance of dependent claims in the eventual construction of an independent claim, the risks in using similar phrasing for different elements (i.e., use of the common word “identifier” for both a “terminal identifier” and a “server identifier”) and the importance of precision in identifying the functionality of each term in a patent.

Download Case Summary of Vivint, Inc. v. Alarm.com Inc.

Practice Insights in the Wake of Blackbird Tech LLC v. ELB Electronics, Inc.

By Matthew Allen

July 26, 2018- Practice Insights in the Wake of Blackbird Tech LLC v. ELB Electronics, Inc.

In Blackbird Tech LLC v. ELB Electronics, Inc. (Fed. Cir. July 16, 2018), the Federal Circuit found, with one judge dissenting, that the district court erred during claim construction by construing a claim limitation to include a requirement not included in the plain language of the claim, and not supported during the prosecution history.

The decision provides insight into how choices made during drafting and prosecution may affect claim construction, and provides insight into how issues of claim construction might be avoided.

The patent at issue (7,086,747) describes an energy efficient lighting apparatus designed to be retrofitted with an existing light fixture. At issue was claim construction regarding the meaning of “attachment surface,” and whether the attachment surface must be secured to a “ballast cover.” Specifically, claim 12 recites:

12. An energy-efficient lighting apparatus for retrofit with an existing light fixture having a ballast cover, comprising:
a housing having an attachment surface and an illumination surface;
a plurality of illumination surface holes in the illumination surface;
a circuit board comprising a plurality of light-emitting diodes, wherein the circuit board is positioned adjacent the housing so that the plurality of light-emitting diodes protrude through the plurality of illumination surface holes in the illumination surface; and
a fastening mechanism for securing the attachment surface of the lighting apparatus to the illumination surface, wherein the lighting apparatus is coupled to a wall switch and wherein the illumination of the light-emitting diodes is controllable based upon the position of the wall switch.

Blackbird argued that “attachment surface” should be construed as “layer of the housing to which the illumination surface is secured,” while ELB argued (and the district court agreed) that “attachment surface” should be construed as “layer of the housing that is secured to the ballast cover.”

In concluding that “claim 12 does not require the attachment surface to be secured to the ballast cover,” the Federal Circuit relied on the plain language of claim 12, stating that claim 12 “does not require the attachment surface be secured to anything other than the illumination surface.” The Court also pointed out that there was no suggestion (e.g., in the specification or during prosecution or litigation) indicating that the fastening mechanism securing the attachment surface to the ballast cover was an important feature of the claimed invention.

Interestingly, the Federal Circuit also noted that “possibly the most important reason why the fastener for connecting the attachment surface to the ballast cover disclosed in an embodiment ought not be imported into the claim is because that limitation was originally present in claim 12 and was expressly eliminated during prosecution.” During prosecution, an amendment made “to resolve 112 issues” deleted “ballast cover” and replaced it with “illumination surface.” The federal circuit concluded that “[n]o ordinary artisan could read the prosecution history as anything other than eliminating the requirement that a fastening mechanism secures the attachment surface to the ballast cover.”

In his dissent, Circuit Judge Reyna concluded “that the district court correctly construed ‘attachment surface’ to mean ‘layer of the housing that is secured to the ballast cover.’” In particular, Circuit Judge Reyna states:

The plain language of claim 12, read in the context of the specification, implicitly requires that the attachment surface be secured to the ballast cover to achieve the retrofit function. Apart from the preamble, which the parties agree is limiting, claim 12 contains no reference to the ballast cover, the existing light fixture, or where or how the apparatus is retrofit with the existing light fixture. Because the only feature of the existing light fixture described in claim 12 is the ballast cover, a person of ordinary skill would necessarily conclude that the attachment surface is secured to the ballast cover of the existing light fixture.

In addition to the plain language argument, Circuit Judge Reyna noted that “[e]very single embodiment of the retrofit lighting apparatus in the specification describes securing the attachment surface to the ballast cover of the existing light fixture.” He also cites a portion of the specification, which states that “[i]n typical operation, the attachment surface 530 is secured to the ballast cover,” to support his conclusion that the attachment surface should be read as being secured to the ballast cover.

Clearly, this case was not as clear cut as the plain language of claim 12 might have made it seem. However, the case does provide insight into how practitioners might draft and prosecute an application in a manner designed to avoid unfavorable claim construction.

For example, both the district court, and the dissenting Circuit Judge, felt that the specification did not make it clear that the attachment surface might not be secured to the ballast cover. In describing various components, a patent drafter might avoid similar issues by describing components as having multiple functions or capabilities, or avoiding describing a component as serving only one function.

In addition, the inclusion of “ballast cover” in the preamble of claim 12 was given weight in both the majority and dissenting opinions. During drafting, or prosecution, a practitioner might wish to avoid including (or amend to exclude), in the preamble of a claim, limitations, structure, or the like, which might be construed as being somehow tied into other claimed features.

Also, during prosecution, the elimination of claim features is clearly given weight in determining whether an eliminated feature might be required for patentability. Accordingly, rather than leaving in unnecessary claim features, it may be beneficial to remove claim features in a manner designed to pre-empt a claim construction that requires a claim feature that is actually not necessary for patentability.

Download Blackbird Tech LLC v. ELB Electronics, Inc..

Case Summary of Zeroclick, LLC. v. Apple Inc.

By Kris Rhu

June 26, 2018- Case Summary of Zeroclick, LLC. v. Apple Inc.

Zeroclick sued Apple alleging that Apple infringed claims 2 and 52 of U.S. Patent No. 7,818,691 and claim 19 of U.S. Patent No. 8,549,443, which relate to modifications of graphical user interfaces (GUIs) that allow the GUIs to be controlled using pre-defined pointer or touch movements instead of mouse clicks.  Apple responded by asserting invalidity of those claims.  The U.S. District Court for the Northern District of California found that the claims recited means-plus-function terms for which the specification did not have sufficient structure, and therefore, were invalid for indefiniteness.  However, the Court of Appeals for the Federal Circuit (CAFC) vacated and remanded, holding that the district court did not undertake the relevant inquiry when making factual findings to support its conclusion that the claims recited means-plus-function terms.

Claim 2 of the ’691 patent recites:

2. A graphical user interface (GUI), which may comprise an update of an existing program, that may fully operate a GUI by a two step method of movement of a pointer (0) to operate one or more functions within the GUI,
wherein, said existing program is any existing program that can operate the movement of the pointer (0) over a screen (300) and has one or more functions operated by one or more other methods apart from said two step method,and/or one or more functions operated by said one or more other methods in said existing program can be updated to operate by said two step method,
wherein said GUI executes one or more functions within the GUI by the completion of the following said two step method:
first said pointer (0) is immediately adjacent or passes within a control area (1), which is an area of the screen (300) that may be any size including from a pixel on the screen (300) to occupying the whole screen (300), and
second by the completion of a subsequent movement of said pointer (0) according to a specified movement generates a ‘click’ event, thereby triggering one or more functions within the GUI.

Claim 52 is directed to the “method of operating a graphical user interface” described in claim 2.

Claim 19 of the ’443 patent recites:

  1. A device capable of executing software comprising:

a touch-sensitive screen configured to detect being touched by a user’s finger without requiring an exertion of pressure on the screen;a processor connected to the touch-sensitive screen and configured to receive from the screen information regarding locations touched by the user’s finger;executable user interface code stored in a memory connected to the processor;the user interface code executable by the processor;the 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; andthe user interface code is further configured to cause one or more selected operations, which includes one or more functions available to the user interface code of the device, to deactivate while the user’s finger is touching one or more locations on the screen.

During claim construction, the district court found that the limitation “program that can operate the movement of the pointer (0)” in claim 2 of the ‘691 patent is a means-plus-function term.  Specifically, it found “program” to be a means that performs the function of operating the movement of the pointer.  The district court also found that “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 claim 19 of the ‘443 patent is a means-plus-function term.  Specifically, it found “user interface code” to be a means that performs the functions of detecting one or more locations touched by a movement of the user’s finger on the screen without requiring the exertion of pressure and determining therefrom a selected operation.

The CAFC cited Williamson v. Citrix Online, LLC, which stated that the failure to use the word “means” creates a rebuttable presumption that 35 U.S.C. § 112, ¶ 6 does not apply, but that the presumption can be overcome “if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.”  792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc).  Williamson further stated that the essential inquiry in determining whether a claim limitation involves § 112, ¶ 6 is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Id.  The CAFC found that the district court failed to undertake this inquiry and make related factual findings.

The CAFC noted that the claims did not include the word “means,” which invokes the presumption.  The CAFC also noted that Apple provided no evidentiary support for their position that the claim limitations must be construed under § 112, ¶ 6, and therefore, failed to rebut the presumption.  By relying on Apple’s arguments without evidentiary support, the district court legally erred by not giving effect to the unrebutted presumption.

The CAFC further found that the district court effectively treated the features “program” and “user interface code” as nonce words that operate as a substitute for “means,” and found such treatment to be erroneous for three reasons: 1) just because the disputed limitations incorporate functional language does not necessarily convert those words into means for performing those functions.  There are plenty of devices that take the names of the functions they perform (e.g. brake, clamp, screwdriver); 2) the district court removed those terms from their context, which otherwise strongly suggests the plain and ordinary meaning of the terms.  Claim 2 of the ‘691 patent recites a “graphical user interface” which may “comprise an update of an existing program” using a two-step method.  Claim 19 of the ‘443 patent tethers “user interface code” to the code “stored in a memory connected to the processor.”  That processor, in turn, is configured to perform the indicated functions.  Thus, a person of ordinary skill in the art could reasonably discern from the claims that the words “program” and “user interface code” are not used as generic terms, but rather as specific references to conventional GUI programs or code existing previously.  The written description further bolsters this conclusion because it describes the distinction drawn between GUIs in the prior art and the improvement to such interfaces in the claimed invention; and 3) the district court made no findings that compel the conclusion that a conventional GUI program or code is commonly used as a substitute for “means.”

This opinion illustrates the importance of avoiding the use of the word “means” in order to create a rebuttable presumption that 35 U.S.C. § 112, ¶ 6 does not apply to a claim.  The opinion also illustrates the importance of tethering software-esque terms like “program” or “code,” or other terms that may not inherently have structure, to a specific structure in the claims and/or providing context to such claim limitations.  Such strategies can help prevent claim limitations from being construed under 35 U.S.C. § 112, ¶ 6.

 

Download Summary of Zeroclick LLC. v. Apple Inc. 

Case Summary of Medtronic, Inc. v. Barry

By James Olsen
June 17, 2018- Case Summary of Medtronic, Inc. v. Barry, C.A. No. 2017-1169 (Fed. Cir. June 11, 2018)

Background
This is an appeal from two related decisions of the U.S. Patent and Trademark Office’s Patent Trial and Appeals Board (Board) in inter partes review (IPR) proceedings.  The Board concluded that the petitioner, Medtronic, Inc., had not proven that the challenged patent claims are unpatentable.  The Federal Circuit affirmed-in-part and vacated-in-part the decision.

Dr. Mark Barry sued Medtronic for patent infringement in the Eastern District of Texas.  Barry alleged that Medtronic’s products infringed U.S. Patent Nos. 7,670,358 (the 358 Patent) and 7,776,072 (the 072 Patent).  Medtronic petitioned for, and the Board instituted, IPR proceedings for all claims in both patents.

During the IPR proceedings, Medtronic asserted that the claims of the patents were obvious over three references: (1) U.S. Patent Application No. 2005/0245928 (the 928 Application), (2) a book chapter which appears in Masters Techniques in Orthopaedic Surgery: The Spine (2d ed.) (MTOS); and (3) a video entitled “Thoracic Pedicle Screws for Idiopathic Scoliosis” and slides entitled “Free Hand Thoracic Screw Placement and Clinical Use in Scoliosis and Kyphosis Surgery” (Video and Slides).  The Board determined that the claims of the patents were not obvious over the 928 Application and MTOS, and that the Video and Slides were not prior art since they were not publicly accessible.

The primary dispute is whether the Video and Slides were publicly accessible, and thus, prior art to the 358 patent and the 072 patent.

Patents at Issue
The 358 patent relates to a method for ameliorating aberrant spinal column deviation conditions, such as scoliosis.  The 072 patent is a continuation-in-part of the application that led to the 358 patent and shares substantially the same specification.

Analysis
The Federal Circuit affirmed the Board’s determination that the claims of the patents were not obvious over the 928 Application and MTOS.  However, Federal Circuit held that the Board erred in concluding that the Video and Slides were not accessible to the public.

On appeal, the parties disputed whether the Video and Slides constituted printed publications within the meaning of 35 U.S.C. § 102(b).  A CD containing the Video was distributed at three separate programs in 2003: (1) a meeting of the “Spinal Deformity Study Group” (SDSG) in Scottsdale, Arizona, (the Scottsdale program); (2) the Advanced Concepts in Spinal Deformity Surgery meeting in Colorado Springs, Colorado (the Colorado Springs program); and (3) the Spinal Deformity Study Symposium meeting in St. Louis, Missouri.  Binders containing relevant portions of the Slides were also distributed at the Colorado Springs and St. Louis programs.  The earliest of the three 2003 programs, the Scottsdale program, was limited to 20 SDSG members (e.g., experts within the field of spinal deformity), and the other two programs were attended by 20 and 55 surgeons at the Colorado Springs and St. Louis programs, respectively.

The Federal Circuit found that the determination of whether a document is a “printed publication” under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)).  A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it.

The Federal Circuit held that the question becomes whether such materials were sufficiently disseminated at the time of their distribution at the conferences.  The Federal Circuit pointed to Massachusetts Institute of Technology v. AB Fortia (MIT), where a paper that was orally presented at a conference to a group of cell culturists interested in the subject matter was considered a “printed publication.” 774 F.2d 1104, 1109 (Fed. Cir. 1985).  In that case, between 50 and 500 persons having ordinary skill in the art were told of the existence of the paper and informed of its contents by the oral presentation, the document was disseminated without restriction to at least six persons, and whether the copies were freely distributed to interested members of the public was a key consideration in the analysis.

The Federal Circuit also pointed to Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009), where the issue pertained to whether a set of research papers distributed by a doctor to certain colleagues and two commercial entities rendered the documents printed publications.  In that case, the Federal Circuit concluded that such documents were not publicly accessible since academic norms gave rise to an expectation that disclosures would remain confidential, and there was an expectation of confidentiality between the doctor and each of the two commercial entities.

Finally, the Federal Circuit identified In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004), where a reference in dispute was a printed slide presentation that was displayed prominently for three days at a conference to a wide variety of participants.  The reference was shown with no stated expectation that the information would not be copied or reproduced by those viewing it, but copies were never distributed to the public and never indexed.  In that the case, the Federal Circuit identified the relevant factors to include: (1) the length of time the display was exhibited, (2) the expertise of the target audience (to determine how easily those who viewed the material could retain the information), (3) the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and (4) the simplicity or ease with which the material displayed could have been copied.  After reviewing these factors, the Federal Circuit determined that the reference was sufficiently publicly accessible to count as a “printed publication” for the purposes of § 102(b).

The Federal Circuit held that the size and nature of the meetings and whether they are open to people interested in the subject matter of the material disclosed are important considerations.  The Federal Circuit further held that another consideration is whether there is an expectation of confidentiality between the distributor and the recipients of the materials.

The Federal Circuit found that the Board did not fully consider all of the relevant factors.  For example, the Board did not address the potentially-critical difference between the SDSG meeting in Arizona and the programs in Colorado Springs and St. Louis, which were not limited to members of the SDSG but instead were attended by at least 75 other surgeons, collectively.  The Board’s analysis was silent on the distribution that occurred in the two non-SDSG programs.  Further, even if the Board were correct in its assumption that Medtronic only gave the Video and Slides to the SDSG members, it did not address whether the disclosures would remain confidential.

Accordingly, the Federal Circuit held that whether dissemination of the Video and Slides to a set of supremely-skilled experts in a technical field precludes finding such materials to be printed publications warrants further development in the record.  For these reasons, the Federal Circuit vacated the Board’s finding that the Video and Slides are not printed publications and remanded for further proceedings.

Practice Insights
Consider counseling inventors and clients regarding the appropriate factors to consider when presenting materials at conferences and distributing materials without a legal obligation of confidentiality.  It may be wise to file a provisional patent application before presenting or distributing materials related to an invention.  Also, one may enter non-disclosure agreements with parties viewing a presentation or receiving distributed materials.

Download Medtronic, Inc. v. Barry.

Harrity & Harrity is Named to the 2018 IAM Patent 1000 List

Harrity & Harrity has been named to the 2018 IAM Patent 1000, along with partners John Harrity and Paul Harrity.  According to the publication, “As well as in preparation and prosecution, Harrity & Harrity excels at competitive intelligence and pre-litigation patent analysis.  It delivers high-quality results promptly and within budget and can handle any type of technology and any degree of complexity in invention disclosures with ease.”  Read our profile in its entirety HERE.

Case Summary of Vanda Pharma v. West-Ward Pharma

By Elaine Spector
May 18, 2018- Case Summary of Vanda Pharma v. West-Ward Pharma

Background
This is an appeal to the Court of Appeals for the Federal Circuit from the U.S. District Court for the District of Delaware holding the asserted claims of U.S. Patent No. 8,586,610 (the ‘610 patent) to be infringed and not invalid. The Federal Circuit affirmed.

West-Ward filed an Abbreviated New Drug Application (ANDA) that substantially copied Vanda’s New Drug Application, which Vanda was able to obtain approval from the FDA for treatment of patients with schizophrenia. After the ‘610 patent issued, Vanda filed an infringement action against West-Ward in the U.S. District Court for the District of Delaware. After a bench trial, the district court held that the asserted claims were not invalid under §101, §103, or §112 for lack of written description.

The primary dispute is whether the claims are patent eligible in view of Mayo v. Prometheus, or are they instead directed to a law of nature.

Patent at Issue
The ‘610 patent relates to a schizophrenia treatment using iloperidone. The claims require a dosage according to a patient’s metabolization rate of iloperidone (“CYP2D6 activity”).

Comparison of Vanda to Mayo claims

Vanda

Mayo

A method for treating a patient with iloperidone, wherein the patient is suffering from schizophrenia, the method comprising the steps of:A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
determining whether the patient is a CYP2D6 poor metabolizer by: obtaining or having obtained a biological sample from the patient; and performing or having performed a genotyping assay on the biological sample to determine if the patient has a CYP2D6 poor metabolizer genotype;(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and
and if the patient has a CYP2D6 poor metabolizer genotype, then internally administering iloperidone to the patient in an amount of 12 mg/day or less,(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,
and if the patient does not have a CYP2D6 poor metabolizer genotype, then internally administering iloperidone to the patient in an amount that is greater than 12 mg/day, up to 24 mg/day,wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and
wherein a risk of QTc prolongation for a patient having a CYP2D6 poor metabolizer genotype is lower following the internal administration of 12 mg/day or less than it would be if the iloperidone were administered in an amount of greater than 12 mg/day, up to 24 mg/day.wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

Analysis

The Federal Circuit analyzed the findings of the lower court and noted that “[t]he [district] court did conclude that ‘the asserted claims depend upon laws of nature,’ specifically, ‘the relationship between iloperidone, CYP2D6 metabolism, and QTc prolongation.”  Id at 7.  But the Federal Circuit continued by explaining that the ‘610 patent “addresses natural relationships to which the claims add conducting CYP2D6 genotyping tests to determine the appropriate dose of iloperidone to reduce QTc-related risks.”  Id.

 The Federal Circuit held that the claims at issue were not directed to one of the patent-ineligible concepts.  Since the claims were directed to patent-eligible subject matter, no step two inquiry Alice inquiry is needed.  The Federal Circuit explained, that “at step one, ‘it is not enough to merely identify a patent-ineligible concept underlying the claim; we must determine whether the patent-ineligible concept is what the claim is ‘directed to.’’”  Id. at 28 (quoting Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016).

In distinguishing Mayo, the Federal Circuit explained that the “claims in Mayo were not directed to a novel method of treating a disease.  Instead, the claims were directed to a diagnostic method based on the ‘relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of thiopurine drug will prove ineffective or cause harm.’ Id.  This ‘relation is a consequence of the ways in which the thiopurine compounds are metabolized by the body- entirely natural processes.  And so a patent that simply describes the relations sets forth a natural law.”  Id. at 29 (quoting Mayo v. Prometheus).

The Federal Circuit distinguished the claims in Mayo by explaining that “the claim as a whole was not directed to the application of a drug to treat a particular disease.” Id.  As noted by the Supreme Court in Mayo, “the administering step was akin to a limitation that tells engineers to apply a known natural relationship or to apply an abstract idea with computers.”  Id.  “To underscore the distinction between method of treatment claims and those in Mayo, the Supreme Court noted that ‘[u]nlike, say, a typical patent on a new drug or a new way of using an existing drug, the patent claims do not confine their reach to particular applications of those laws.’”  Id. (quoting Mayo v. Prometheus).

The Federal Circuit noted the following three distinctions in the claims of the ‘610 patent:

  1. The claims require a doctor to administer a drug in a certain amount.
  2. The claims do not tie up the doctor’s subsequent treatment plan. (In Mayo, a doctor could infringe even if he/she did not change up his/her treatment plan).
  3. The claims recite the steps of carrying out a specific dosage regimen based on the results of the genetic testing. (In Mayo, the claims did not prescribe a specific dosage regimen or other added steps to take as a result of the indication).

The Federal Circuit summarized that “the claims here are directed to a specific method of treatment for specific patients using a specific compound at specific doses for a specific outcome.”  Id. at 32.

The dissent disagreed, concluding that “[w]hile the claims here do not solely state a law of nature, they do no more than simply direct the relevant audience to apply it.”  (Dissenting Opinion, p. 2).  The dissent reasoned that the claims are directed to “no more than optimization of an existing treatment of schizophrenia, just as the claims in Mayo concerned ‘optimizing therapeutic efficacy’ of thiopurine drugs.’”  Id. at 5.  “It claims no more than instructions directing the audience to apply the natural law in a routine and conventional manner.”  Id. at pp. 5-6.  With regard to the difference in claiming a specific dosage, the dissent highlighted that Mayo considered “the ‘administering’ step in its search for an inventive concept, not as part of the determination whether the claims were directed to a natural law at the threshold.”  Id. at 6.  As noted by the dissent, “the specific dosage adds nothing inventive to the claims beyond the natural law.”  Id.  Similarly, the dissent noted that requiring treatment instead of indicating a dosage is not sufficient at step two of the analysis.

Practice Insights
It is important to be specific about a particular method of treatment, and also to be specific about a particular dosage for a specific outcome. In particular, a specific treatment should be claimed, instead of an optimization of a treatment, as in Mayo.  The treatment should also include a specific dosage, intended for a specific outcome.  Although not determinative, careful consideration should be given to drafting the preamble, as it also plays a role in finding the claims patent eligible, particularly as it related to specifying the particular method of treatment.

Download Case Summary of Vanda Pharma v. West-Ward Pharma.

Harrity Hosts First Women’s Workshop

The Harrity Women’s Workshop took place from May 21-23.  We invited ten women from law schools across the country to join us to learn about the patent field from leading women in the field.  Elaine Spector, Counsel at Harrity & Harrity, and Sandra Maxey, the Firm’s Controller, both wanted to put together a program that would provide women with the skills necessary to succeed both personally and professionally in a high-stress career.

Harrity attorneys presented on topics ranging from the patent process to patent drafting and prosecution, rivaling what can be taught in a traditional classroom setting.  The workshop also featured many speakers, including Teresa Rea, a partner and vice-chair of Intellectual Property and a director with C&M International, a subsidy of Crowell Moring. She spoke about her career and how to create a life-work balance, and inspired the women in attendance to set high goals for themselves. Mercedes Meyer, a partner in the Intellectual Property group at Drinker Biddle & Reath explained the importance of creating a business plan and how to set yourself apart from your male counterparts. Barbara Fisher, Assistant General Counsel, Intellectual Property, at Lockheed Martin, gave an empowering speech on setting goals and achieving them.  Courtney Holohan, Accenture’s Chief Intellectual Property Counsel, told our workshop participants the ten things she wished she had known when she entered the field.  Cynthia Raposo, Senior Vice President of Legal for Under Armour, Inc., discussed issues related to women, including the advancement of women in the field and reasons why women do not tend to promote themselves.  Finally, Ami Gadhia of the National Center for Advancing Translational Sciences (NCATS) led a panel along with Catherine Wendelken, Nekeshia Maloney, and Felicia Metz.  They answered questions about their field, technology transfer, and how they manage a life-work balance.

This is the first Women’s Workshop held by the Harrity Women’s Committee, a sub-committee of the Diversity Committee.  In 2017, the firm held a Diversity Workshop geared towards introducing law school students to the practice of patent law.  Harrity & Harrity is committed to promoting diversity in the legal field, and does so through workshops such as those mentioned above, fellowships, and scholarships for new attorneys.

Seven women whom participated in the Harrity Women's Workshop

Harrity Women’s Workshop Participants

Hologic, Inc. v. Smith & Nephew, Inc.

By Nathan Phares
Satisfying the Written Description Requirement for a Genus based on a Disclosure of a Species of the Genus

May 8, 2017 – Hologic, Inc. v. Smith & Nephew, Inc. is related generally to the written description requirement under 112 paragraph 1 (pre-AIA). The Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeals Board’s (PTAB’s) decision that a genus, claimed in a child application, was adequately disclosed by a species in the specification of a parent application in accordance with the written description requirement.

Smith & Nephew (appellees) secured U.S. Patent No. 8,061,359 on a surgical endoscopic cutting device and method for the cutting device’s use (the ‘359 patent, issued Nov. 22, 2011). The ‘359 patent claims priority to earlier-filed PCT International Publication WO 99/11184 by the same inventor (the Emanuel PCT, published March 11, 1999).

Claim 1 of the ‘359 patent recites a “light guide” that is “permanently affixed” to a “first channel” of the apparatus. This article focuses on the analysis surrounding the light guide. The Emanuel PCT specifies “a connection 8 for a light source . . . for connection to a fibre optics bundle which provides for lighting” (emphasis added). The Examiner of the ‘359 patent objected to the drawings for not showing the “light guide.” Smith & Nephew addressed this objection by amending the specification to state: “A connection 8 for a light source . . . for connection to a light guide, such as a fibre optics bundle which provides for lighting” (emphasis added). The Examiner issued the ‘359 patent thereafter.

Hologic (appellant) requested inter partes reexamination (IPR) of the ‘359 patent, and the PTO granted the reexamination. The IPR Examiner found that the ‘359 patent could not claim priority to the Emanuel PCT because the “fibre optics bundle” of the Emanuel PCT did not provide adequate written description for the “light guide” of the ‘359 patent’s claims. Thus, priority to the Emanuel PCT was severed, so the Emanuel PCT invalidated the ‘359 patent’s claims as obvious in view of a secondary reference.

Smith & Nephew appealed to the PTAB. The PTAB found that the disclosure in the Emanuel PCT provides sufficient written description for the “light guide” of the ‘359 patent, thereby preserving the priority claim of the ‘359 patent to the Emanuel PCT. Thus, the PTAB reversed the IPR Examiner’s rejection of the ‘359 patent’s claims. A more detailed description of the PTAB’s reasoning is provided below. Hologic appealed to the Federal Circuit and appeared before Judges NEWMAN, WALLACH, and STOLL. Judge STOLL authored the opinion.

Claim 1 of the ‘359 patent reads in relevant part:

1. A method for removal of tissue from a uterus, comprising: inserting a distal region of an endoscope into said uterus, the endoscope including a valve and an elongated member defining discrete first and second channels extending from a proximal region of the elongated member to the distal region, the second channel having a proximal end in communication with the valve such that fluid from the valve is able to flow into and through the second channel to the uterus, and the first channel having a light guide permanently affixed therein and being sealed from the second channel to prevent fluid from the valve from entering the uterus through the first channel. . . (emphasis added).

The specification of the ‘359 patent reads, as amended and in relevant part: “[a] connection 8 for a light source is also present, for connection to a light guide, such as a fibre optics bundles which provides for lighting at the end of lens 13.” Col. 3 ll 55-58.

The specification of the Emanuel PCT reads in relevant part:

“A connection 8 for a light source is also present, for connection to a fibre optics bundle which provides for lighting at the end of lens 13.” Emanuel PCT at 4:34-36. See also U.S. Patent No. 7,249,602, which issued from the Emanuel PCT and of which the ‘359 patent is a divisional, at para. [0030].

Hologic appealed the PTAB’s decision that the ‘359 patent is entitled to priority to the Emanuel PCT.  Specifically, Hologic contended that the obviousness rejection should be reinstated based on the Emanuel PCT not satisfying the written description requirement of pre-AIA 35 U.S.C. 112 paragraph 1.  Hologic contends that the Emanuel PCT does not provide adequate description of the “light guide,” as well as the “permanent affix[ture]” of the light guide in a “first channel” claimed in the ‘359 patent. As stated above, this article focuses on the analysis of the written description of the light guide.

The CAFC affirmed the PTAB’s findings that the Emanuel PCT provides written description support for the claims of the ‘359 patent, and that the ‘359 patent is entitled to claim priority to the Emanuel PCT, using a substantial evidence standard. Thus, the Emanuel PCT is not prior art to the ‘359 patent and the obviousness rejection was reversed.

A summary of the relevant written description law follows. To support priority, the specification of a parent patent must disclose what the child patent claims according to the written description requirement of pre-AIA 112 Paragraph 1. Slip Op. at 6, citing In re Katz at 1322. Ariad Pharm. v. Eli Lilly provides the standard: “based on ‘an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art . . ., the specification must describe an
invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed . . . . In other words, the test for sufficiency is whether the disclosure of the [earlier] application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter’ as of that earlier filing date.” Slip Op. at 7, citing Ariad at 1351.

The PTAB reasoned (and the CAFC agreed) that field of the invention is a predictable art, meaning that a lower level of detail is required to satisfy the written description requirement than for unpredictable arts (e.g., pharmaceutical arts, biological arts, etc.). Slip Op. at 7, citing Ariad at
1351. The PTAB further found that the Emanuel PCT discloses a “light guide” based on the facts that the parties do not dispute that a “fibre optic bundle” is a type of light guide, and that various types of light guides were well-known in the art. Slip Op. at 8. Hologic’s experts did not dispute these points. Because the Emanuel PCT showed possession of a “fibre optic bundle,” because a “fibre optic bundle” is a type of light guide, and because various “light guides” were known in a predictable art, the PTAB concluded that the Emanuel PCT reasonably conveys to a skilled artisan that the inventor of the Emanuel PCT had possession of a “light guide.” The CAFC affirmed.

This decision provides a framework for arguing against a written description rejection of a claimed genus over a disclosed species, particularly in the case of a priority claim to an earlier application. For example, this decision could be used to go after a broader scope in a continuation application, a divisional application, or a utility that claims priority to a provisional. Seek to establish that the specification shows possession of a species of a genus, and that the various other species of the genus are known in the art. After this, you may assert that the genus is adequately described in the specification based on the species. This may be particularly useful in predictable arts, although the prosecutor may lower the bar for obviousness by arguing that the art is predictable or that other species of the genus are known in the art. For the patent drafter, this decision provides a cautionary tale to think in terms of the genus as well as the species – add value for your clients by ensuring that your specification covers reasonable alternatives where possible.

The PTAB also found that the “permanently affixed” element and the “first channel” elements were adequately disclosed in the Emanuel PCT, and the CAFC affirmed – this aspect of the decision is not discussed any further in this article, as it is not particularly instructive for prosecutors.

Download Hologic, Inc. v. Smith & Nephew, Inc.

Erin Wills Joins the Firm

We’re excited to announce that Erin Wills has joined our team as an associate.  Erin’s practice focuses on the preparation and prosecution of patent applications.  She has worked with a wide range of technologies, including computer hardware and software, medical devices, and mechanical engineering technologies.

Erin earned her Bachelor’s of Science from North Carolina State University, her Master’s of Science in Materials Science and Engineering from the University of Virginia, and her Juris Doctorate from North Carolina Central University.

To learn more about Erin and the rest of our team, please visit https://harrityllp.com/team/

Ted Nissly Joins the Firm

We’re excited to announce that Ted Nissly has joined our team! Ted is an associate whose practice focuses on the preparation and prosecution of patent applications relating to automotive, computer hardware and software, telecommunications, and e-commerce technologies. Ted received his Bachelor’s of Applied Science from the University of Pennsylvania and his Juris Doctorate from Washington University School of Law. He is a member of AIPLA, IPO, and the Giles S. Rich American Inn of Court for the Federal Circuit.

To learn more about Ted and the rest of our team, please visit https://harrityllp.com/team/.Ted Nissly, Harrity Team

 

 

Ryan Thelen Joins the Firm

We’re excited to announce that Ryan Thelen has joined our team as an associate.  His practice focuses on the preparation and prosecution of electrical, mechanical, and computer technologies. Prior to joining Harrity, Ryan worked in-house where he gained extensive experience in patent portfolio management, product clearance, invention disclosure mining, infringement analysis, and post-grant proceedings before the Patent Trial & Appeal Board.

To learn more about Ryan and the rest of our team, visit https://harrityllp.com/team/.

Steven E. Berkheimer v. HP Inc.

By Kenneth Kwan

March 28, 2018- In Steven E. Berkheimer v. HP Inc., 2017-1437 (Fed. Cir. Feb. 8, 2018), the Federal Circuit affirmed the district court’s summary judgment that claim 1 (among other claims) of U.S. Patent No. 7,447,713 (the ’713 Patent) is patent-ineligible under 35 U.S.C. 101, but reversed the district court’s summary judgment that claims 4 and 5 (among other claims) of the ’713 Patent are patent‑ineligible.

The ’713 Patent is directed to archiving files.  Different files can have portions (objects) that are the same.  A main aspect of the invention in the ’713 Patent is to archive files by linking the objects (that are in common) to one another, such that an update to one of the objects of one file can be reflected in linked objects of other files.

The specification of the ’713 Patent provides the following:

By eliminating redundancy in the archive 14, system operating efficiency will be improved, storage costs will be reduced and a one-to-many editing process can be implemented wherein a singular linked object, common to many documents or files, can be edited once and have the consequence of the editing process propagate through all of the linked documents and files. The one-to-many editing capability substantially reduces effort needed to up-date files which represent packages or packaging manuals or the like as would be understood by those of skill in the art.

Claims 1, 4, and 5 of the ’713 Patent read:

  1. A method of archiving an item comprising in a computer processing system:

presenting the item to a parser;
parsing the item into a plurality of multi-part object structures wherein portions of the structures have searchable information tags associated therewith;
evaluating the object structures in accordance with object structures previously stored in an archive;
presenting an evaluated object structure for manual reconciliation at least where there is a predetermined variance between the object and at least one of a predetermined standard and a user defined rule.

  1. The method as in claim 1 which includes storing a reconciled object structure in the archive without substantial redundancy.
  2. The method as in claim 4 which includes selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items.

The Federal Circuit found that claim 1 is not patent eligible under 35 U.S.C. 101, since parsers and parsing functions are conventional in the art, the analysis and comparison of data, to reconcile differences between two objects, fail to transform the abstract idea into something patent-eligible, and the claim does not contain limitations that relate to the benefits of the invention.

In contrast, the Federal Circuit found that dependent claims 4 and 5 may be patent eligible, since these claims contain limitations relating to the benefits of the invention—i.e., the recitation “without substantial redundancy” in claim 4 and the recitation “to thereby effect a one-to-many change in a plurality of archived items” in claim 5 relate to the benefit of redundancy elimination, which leads to increased operating efficiency and reduces storage costs.

This opinion illustrates the potential importance of including claim limitations that directly relate to the technological improvements described in the patent’s specification, since this might help with the question of subject matter eligibility (particularly Step 2 of the Alice test).

Download Steven E. Berkheimer v. HP Inc.

Top Patent Firms List 2017

By Paul Harrity, Rocky Berndsen, Jaclyn Jones & Matthew Maslink

February 28, 2017- We compiled a list of the top patent firms that are ranked based on the total number of U.S. utility patents that issued in 2017 where the patent firms were listed on the front of the utility patents. We have included only patent firms that have obtained at least 50 utility patents. We made an attempt to correct for typographical errors. We did not eliminate company legal departments from the list.

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Top Patent Firms Badge 2017, Harrity

Harrity & Harrity Holds its Annual State of the Firm Meeting

On Friday, February 9, the Harrity Team came together from across the country to attend this year’s State of the Firm Address.  This is a time for our team to come together to look back on last year’s accomplishments, to learn about our goals for the coming year, and to recognize members of our staff for their accomplishments.

This year Harrity created a special award for the team member who has gone above and beyond their normal job duties.  This year the Harrity Cup was presented to Jazmine Hitt.  John Harrity says of Jazmine, “she’s a patent prosecution assistant, diversity coordinator, and she was in the UNICEF video.  She’s done an outstanding job from the second she walked in the doors and through the end of last year and continuing on obviously this year.  It was a unanimous decision.”

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