Our thanks to Ron Osborne of Intellectual Property Insurance Services Company and Greg Upchurch from LegalMetric for their help in this analysis of the impact of KSR over the past decade. It is hard to believe that KSR is 10 years old. For the entire article, please follow the following link, which takes you to IP Law360 (subscription required).
In the recent decision in Securus Technologies, Inc. v. Global Tel*Link Corporation, the Court of Appeals for the Federal Circuit (CAFC) addressed a number of issues, a couple of which are worth noting as potential pitfalls for a Patent Owner in an inter partes review (IPR) proceeding.
Securus is the result of consolidation of two appeals from Final Written Decisions from the PTAB in IPRs stemming from petitions with respect to Patent Owner’s U.S. Patent No. 7,860,222 (“ the ‘222 Patent”). The independent claims at issue in the ‘222 Patent were generally directed to a system (and method) for allowing a user to establish bookmarks at “events of interest” in communications between individuals by searching the communications to identify particular words, and placing event identifiers in association with the identified words.
As one premise for appeal, Patent Owner argued that the PTAB’s conclusion that independent claim 1 was obvious over the prior art impermissibly relied on an argument raised for the first time in Petitioner’s Reply. In presenting this argument, however, Patent Owner did not argue that such reliance was prejudicial in any way, nor did Patent Owner argue that they were not afforded a meaningful opportunity to respond. Rather, Patent Owner argued that the PTAB’s reliance was improper simply because Petitioner did not advance the specific argument in its petition.
As one might expect, the CAFC did not find Patent Owner’s argument persuasive since Patent Owner had not shown that the PTAB’s decision rested on any factual or legal argument for which it was denied notice or an opportunity to be heard during the proceedings. The CAFC also made a point to note that Patent Owner failed to avail themselves to any procedure for filing a sur-reply, motion to strike, or challenging the allegedly improper argument via conference call.
Patent Owner also appealed the PTAB’s denial of motions to amend seeking to change the antecedent basis for six dependent claims. However, these motions seemed doomed from the start since the Patent Owner admitted numerous times (14 times in two motions) that the changes were not made in response to a ground of unpatentability raised in the IPRs – a specific ground for denial of an amendment set forth in 37 C.F.R. § 42.121(a)(2)(i).
In sum, a couple of swings-and-misses for the Patent Owner who could have spent a bit more time with the PTAB rule book.
The Federal Circuit’s recent decision in Wasica Finance v. Continental Automotive Systems touched on a number of well-worn patent issues, but this article focuses on a few key claim construction principles discussed by the CAFC, including that the contents of the specification are highly relevant when performing claim construction, and a claim generally will not be construed in a manner that renders recited terms meaningless or superfluous.
Wasica is the result of the CAFC consolidating two appeals based on two IPRs arising from petitions filed with respect to Patent Owner’s U.S. Patent No. 5,602,524 (“the ‘524 patent”). The claims at issue were directed, generally, to a system for measuring tire pressure. In the system, each tire included a pressure measuring device and a transmitter, and each transmitter transmitted pressure data to a corresponding receiver. A transmission from a transmitter to a corresponding receiver also included an “identification signal” for identifying the transmitter that sent the transmission. A receiver receiving the identification signal stored the identification signal and processed transmissions only from the corresponding transmitter.
As to the first claim construction issue, Patent Owner argued that the PTAB erred in determining that a particular pressure sensor disclosed by the prior art taught a “pressure measuring device” because the pressure sensor only output a binary signal that indicated whether a measured pressure is abnormal. Patent Owner argued that the recited pressure measuring device, when properly construed, must output a tire’s pressure as a numerical value, and that such a numerical value cannot be represented by a single bit of a binary signal. The CAFC sided with the PTAB and rejected the claim construction presented by Patent Owner. The CAFC relied, in part, on the ‘524 patent, itself, which identifies a family of European patents as including examples of manners in which a sensor of the ‘524 patent may output a pressure signal. The CAFC decided that the family of European patents identified by the ‘524 patent disclose switch-based (e.g., binary) pressure sensors and non-numeric pressure signals. The CAFC pointed out that, in accordance with previous decisions, the CAFC generally does not interpret claim terms in a manner that excludes examples disclosed in the specification. Id. at 13.
As to the second claim construction issue, Petitioners argued that the proper claim construction for the term “bit sequence,” from claim 9, was a sequence of “one or more bits.” Patent Owner argued that the plain meaning of “sequence” implies at least two elements. The PTAB agreed with Patent Owner, but on appeal, the CAFC disagreed. The CAFC explained that the recited element required “at least a 4 bit sequence” which included 4 constituent bit sequences, and thus, interpreting a “sequence” as requiring at least two bits would result in a minimum size of 8 bits for the “at least 4 bit sequence.” The CAFC determined that such an interpretation would essentially rewrite “at least 4 bits” from claim 9 to “at least 8 bits.” The CAFC explained that it is highly disfavored to construe terms in a way that renders them void, meaningless, or superfluous. Id. at 28. As further support for reversing the PTAB’s decision regarding the patentability of claim 9, the CAFC pointed to a portion of the ‘524 patent interpreted by the CAFC as disclosing an embodiment in which a bit sequence included a single bit, thereby contradicting the at-least-two-bit interpretation of “bit sequence” sought by Wasica Finance.
In the end, the Patent Owner and Petitioner both took home partial victories, while the rest of us take home additional insight into the Court’s construction of claim limitations.
Novartis, together with LTS Lohmann Therapie-Systeme, owns a pair of patents covering rivastigmine transdermal patches. These patches are useful for treating Alzheimer’s disease. Noven Pharmaceuticals filed an abbreviated new drug application (ANDA) seeking FDA authorization to manufacture a generic version of the patch. When Novartis sued for infringement, Noven unsuccessfully defended in the ANDA litigation on the grounds of obvious over GB 2 203 040 A (“Enz”), JP 59-184121 (“Sasaki”), and a variety of other references. The Delaware court found that a person of ordinary skill would not have been motivated at the time of invention to add Sasaki’s antioxidant to Enz’s rivastigmine patch, because it was not known at that time that rivastigmine was subject to oxidative decay. Noven did not appeal this loss to the Federal Circuit (CAFC).
However, while the ANDA litigation was proceeding in Delaware district court, Noven had also lodged a series of IPR petitions arguing obviousness over Enz, Sasaki, and a variety of other references. The PTAB instituted four IPRs on these petitions, and held the challenged claims unpatentable as obvious. Novartis appealed from the adverse PTAB decisions. Novartis AG v. Noven Pharm., 2016-1678 (Fed. Cir. Apr. 4, 2017).
Novartis’ principal argument before the CAFC was that the PTAB improperly ignored the Delaware court’s conclusion that there was no motivation to combine Enz and Sasaki at the time of invention. Novartis believed that the Delaware court’s decision should bind the PTAB. The CAFC disagreed for two reasons: first, there were expert declarations in the IPRs that had not been presented to the Delaware district court; and second, the standard for proving obviousness is higher in district court (clear and convincing evidence) than in an IPR (preponderance of the evidence). Therefore, the CAFC concluded that the PTAB should not be bound by Delaware court’s conclusions. The CAFC affirmed the IPR holdings.
It is somewhat unclear how issue preclusion should have applied between the Delaware district court’s conclusions and the PTAB’s fact-findings. Indeed, the CAFC never uses the words “issue preclusion” or “collateral estoppel” in the appeal decision, as if this legal doctrine were not implicated. In contrast to the Delaware court’s finding of no motivation to combine, however, the PTAB found that the person of ordinary skill at the time of invention would have expected rivastigmine to be subject to oxidative decay because Sasaki reports amino groups in other drugs that are prone to oxidative decay and rivastigmine has an amino group. It would have been hard for the PTAB to reach a conclusion of obviousness if it had adopted Delaware’s fact-findings about what the person of ordinary skill would have known, but the CAFC never addresses why the PTAB was not obliged as a matter of issue preclusion to adopt the Delaware fact-findings.
In any event, this case is a solid holding that the PTAB is not bound by a contrary decision in a district court, at least where there is some evidence in the PTAB proceedings that was not part of the district court proceedings. In other words, a patent challenger who loses in the district court need not count on also losing in a parallel PTAB trial.
The Federal Circuit has consistently made clear that arguments not first made to the PTAB will not be considered on appeal. Google fell victim to this well-worn concept in Google Inc. v. SimpleAir, Inc., 2016-1901 (CAFC March 28, 2017), wherein the Federal Circuit decided, in a non-precedential opinion, that Google waived a claim construction argument that was not first presented to the Board. The Court also denied Google’s backup argument that, even under the Board’s claim construction, the art rendered the challenged claims unpatentable.
Regarding the waiver issue, the Court gave context to the dispute by noting that the term at issue, “central broadcast server,” had been construed in three prior district court litigations. In each instance, the courts adopted a definition of the term that was identical to the construction ultimately applied by the PTAB. Although Google filed its IPR against the backdrop of those district court constructions, Google provided the Board with the district court definitions of the term, without offering any other suggested construction. Id. at 5-6 (“Google did not…insist or even request that the PTAB apply a differing construction.”). Google further conceded, at oral argument, that the district court constructions constituted the broadest reasonable interpretation in the IPR proceeding. As such, the claim construction argument Google attempted on appeal was deemed waived.
Regarding Google’s backup plan, the Court quickly dispatched with Google’s arguments, describing them as a “mischaracterization of the PTAB’s ruling, in attempt to create legal error.” Id. at 10.
In sum, this decision reminds Petitioners of the need to carefully weigh the entire record and choose their claim construction positions wisely. While it is hard to know all the litigation considerations that were present in this case, the BRI standard could have been a helpful distinction from the insufficient district court constructions to defeat the challenged claims.
An obviousness challenge can be overcome by showing the prior art teaches away from the claimed invention. However, “teaching away” is a question of fact and thus subject to the substantial evidence standard in appeals from IPR decisions. It is thus difficult to overcome a PTAB determination on this issue, as exemplified in Meiresonne v. Google, Inc., No. 2016-1755 (Fed. Cir. Mar. 7, 2017).
In Mereisonne, Google challenged four patent claims based on a two-reference obviousness argument. The parties agreed that, together, the references taught every limitation of the claims. The only issue on appeal was whether the secondary reference taught away from the claimed invention by criticizing an element of the invention. The Federal Circuit affirmed the PTAB’s decision that it did not, finding substantial evidence supported the PTAB’s determination.
More particularly, the claims were directed to computer systems that users could use to identify suppliers of goods and services over the internet (basically, a directory). The directory website included (1) a plurality of links to supplier websites, (2) a supplier description near the corresponding supplier link, (3) a title portion that describes the class of goods or services on the website, and (4) a rollover window that displays information about at least one of the suppliers corresponding to a link.
The rollover element was central to the dispute. The prior art (Finseth) taught a visual index for a graphical search engine that provides “graphical output from search engine results or other URL lists.” Finseth explained that many web directories included only cursory or cryptic text about the website in the results. Finseth thus taught the use of thumbnail or other representational graphic information to accompany hyperlink results. The primary reference, Hill, also explained that such abstract text was often “gibberish” and advocated visiting the actual site instead of relying on the abstract text accompanying the hyperlink.
The Federal Circuit agreed this criticism was not sufficient to teach away from the claimed rollover window (which corresponded to the prior art abstract test). Despite the prior art’s criticisms, it did not that abstract text was useful in culling through results. The Court also found that even if abstract text was often not useful, the prior art said that other links’ abstract text was useful. Thus, the prior art did not sufficiently discourage the person of ordinary skill from following the path set out in the reference, and did not lead the person in a direction divergent from the path taken.
In MPHJ Tech v. Ricoh Corp., the Federal Circuit affirmed a conclusion of anticipation and obviousness from an IPR involving US 8,488,173 (‘173). The content of the art was not really in dispute. Rather, the focus of the disagreement concerned just how broad is the reach of the broadest reasonable interpretation of the claims.
The ‘173 patent claims a process by which a document can be scanned on one copy machine, and the reproduction printed at another location. Almost all copy machines used in modern offices have such functionality, but none of Ricoh, Xerox, or Lexmark had licensed the ‘173 patent from MPHJ. Therefore, MPHJ regarded every office that had such a copy machine as an infringer. MPHJ attracted quite a lot of publicity when it began sending demand letters to offices threatening lawsuits if payments of $1000 were not made for every worker in the office who uses the copy machine.
Ricoh, Xerox, and Lexmark requested IPR consideration of the ‘173. The claims at issue required that the process be instigated by the activation of a “Go button.” The two sides disagreed whether the claims read on processes in which a human user continued to intervene in the process after the “Go button” had been activated, or whether the claims were limited to processes in which all functions after the activation of the “Go button” continued automatically. Judges O’Malley and Lourie agreed with the PTAB that the claims read on processes with intervening human actions, while Judge Newman wrote a dissent to explain why she believes that even under the broadest reasonable interpretation, the claims only read on fully automated processes.
The real crux of the dispute was that the ‘173 patent derives from a provisional U.S. application, which is incorporated in the ‘173 patent by reference. The provisional explains that “[u]sing… Xerox’s Pagis, the user must first ‘import’ or scan paper in the capture application and then… direct the output to another location. With the [invention of ‘173], a single button (the Go button) directly copies paper… and places it with the third-party application.” Both the majority and the dissent appear to regard this language in the provisional as strong enough to disclaim processes—like Xerox’s—that require human intervention after the “Go button” activation.
However, this language was omitted from the non-provisional. The question, then, was what effect was accomplished by removing this limiting language between provisional and non-provisional applications. The majority concluded that a disclaimer can only be accomplished by clear and unambiguous statements, and the fact that the patent applicant removed the disclaiming language between provisional and non-provisional stages indicates that the patentee did not clearly intend to give up processes with intervening human actions. The dissent, by contrast, reasons that the provisional was incorporated by reference, and thus this limiting language is present in the non-provisional application.
It is worth noting that a similar situation (text found in provisional but not in non-provisional application) occurred in Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1365 (Fed. Cir. 2016). In that case, a narrow definition of a claim term appeared in a provisional application, but that narrow definition was omitted from the corresponding non-provisional. However, because the non-provisional incorporated the provisional by reference, the Symantec court held that the narrow definition in the provisional controlled and compelled a verdict of non-infringement.
Despite the precedent in Symantec, the MPHJ majority held that the narrowing language in MPHJ’s provisional did not effect a disclaimer of claim scope. In other words, the Symantec court was willing to use the provisional to narrow the claim construction when a narrow construction lead to non-infringement, but in MPHJ—where a narrow construction would support patentability—the court discounted the narrowing language from the provisional.
Likely, the disparate outcomes between these two cases reflects the difference between broadest reasonable interpretation applied in IPRs and Philips standards of claim construction applied by district courts like the court in Symantec. The take-home lesson from this case is that parties to an IPR need to consider carefully not only the patent specification when evaluating potential claim constructions, but also documents incorporated by reference.
The Federal Circuit is set to reconsider one of its more controversial decisions en banc, when it decides whether the Achates Reference Publishing, Inc. v. Apple Inc. decision was correctly decided. Specifically, in Wi-Fi One, LLC v. Broadcom Corp., the Court requested supplemental briefing on the following issue:
“Should this court overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and hold that judicial review is available for a patent owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review?”
There have been several justices who have suggested that the Achates decision should be revisited by the entire bench, especially in view of the Supreme Court’s Cuozzo decision. We’ll have an answer soon on whether the broad discretion that has been afforded the PTAB regarding issues related to a decision to institute will continue, or whether the Federal Circuit will allow itself more leeway to consider foundational IPR issues.
Despite the astounding success for patent challengers to date in IPR proceedings, are you one who has been worried about the effects of the IPR estoppel in future litigation? Has this concern dissuaded you from considering filing an IPR in the past? Fear no more, another decision from a federal court has taken a severely narrow view of the IPR estoppel of 35 USC §315(e)(2) (“The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision….may not assert…in a civil action…that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.”).
On December 19th, Judge Robinson, from the District of Delaware, issued an order granting-in-part plaintiff’s motion for summary judgment as to references actually raised during a prior IPR. Intellectual Ventures I LLC et al v. Toshiba Corp., 1-13-cv-00453 (D. Del. Dec. 19, 2016) (J. Robinson). That is, the Court ruled that defendant was not able to move forward in the litigation with a ground for obviousness that was actually raised during the earlier IPR trial between the parties.
Importantly, however, the Court also denied plaintiff’s summary judgment to the extent it sought to prevent defendant from raising grounds for invalidity based on references that were undisputedly available prior to the filing of the IPR and, thus, “could have been raised in the inter partes review.” Id. at 267. In coming to its conclusion, Judge Robinson focused on the language of §315(e)(2) that states that the estoppel applies for grounds that “reasonably could have been raised during that inter partes review.” Id. (emphasis in original). Citing the Federal Circuit’s decision in Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016), Judge Robinson noted that the Federal Circuit has construed 315(e)(2) “quite literally.” Id. That is, in Shaw, because the PTAB rejected certain grounds as redundant, the Federal Circuit held that the petitioner had not raised those grounds during the IPR. Id. While Judge Robinson understood that extending this logic “to prior art references that were never presented to the PTAB at all (despite their public nature) confounds the very purpose of this parallel administrative proceeding,” she could not “divine a reasoned way around the Federal Circuit’s interpretation in Shaw.”
This decision is just another in a growing line of cases where federal courts have interpreted the scope of the IPR estoppel in a much narrower way than many expected. It should only increase the attractiveness of IPR proceedings given that there is little (and dwindling) downside to filing the proceedings.
In a fairly case-specific claim construction analysis, the Federal Circuit reversed the PTAB today in D’Agostino v. Mastercard, Int’l, 2016-1592, -1593 (Fed. Cir. Dec. 12, 2016), finding that the Board erred in determining the challenged claims to be unpatentable because, as a matter of logic, the prior art could not anticipate or render those claims.
The patent at issue involved methods of effecting secure credit-card purchases by minimizing merchant access to credit card numbers. In those methods, a limited-use transaction code is given to the merchant in the place of the credit card number. Of particular importance to the Court’s decision was a “single-merchant” limitation that required that, when such a transaction code is requested, the request limits the number of authorized merchants to one, but does not then identify the merchant because the claims required that such identification occurred only later. Id. at 7.
In its claim construction during the inter partes review trial, the PTAB adopted a construction that did not recognize the separation in time of the communication of the transaction code and the communication of the merchant’s identity. Id. at 5-6. As might be expected, the Court relied upon the specification of the subject patent, as well as its file history, to support this claim construction. See, e.g., id. at 6 (“The prosecution history reinforces the evident meaning of the single-merchant limitation…”).
In general, this decision represents another decision that patent owners can point to in support of the notion that the Board is not flawless in all of its decisions. This particular Board panel made errors that, according to the Federal Circuit, were fairly obvious in nature helping to undercut any notion of Board infallibility.