Teaching Away Insufficient to Overcome Motivation to Combine References

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Federal Circuit Review No. 67-01
Evidence of Teaching Away Insufficient to Overcome Motivation to Combine References

Dome Patent L.P. v. Lee, No. 2014-1673, 2015 U.S. App. LEXIS 15674 (Fed. Cir. Sep. 3, 2015) (Before Reyna, Schall, and Hughes, J.) (Opinion for the court, Hughes, J.). Click Here for a copy of the opinion.

Dome Patent (“Dome”) owns U.S. Patent No. 4,306,042 directed to a method for making contact-lens material using polymer chemistry. Claim 1 covers a method of making Tris (a siloxane-based compound) and copolymerizing it with a cross-linking agent, including a siloxane-based cross-linker. Dome sued several makers of contact lenses for infringement. Subsequently, a defendant requested ex parte reexamination of the ‘042 patent, which the Patent Office (“PTO”) granted. The PTO found claim 1 obvious and unpatentable. Dome then filed suit in the district court, requesting the court to enjoin the PTO from cancelling claim 1 and to direct the PTO to issue a reexamination certificate. Following a bench trial, the court held claim 1 invalid as obvious and entered judgment in favor of the PTO. Dome appealed, challenging the standard of review employed by the district court as well as the court’s ultimate conclusion of obviousness.

The Federal Circuit held that the district court correctly required the PTO to show obviousness by “a preponderance of the evidence.” Rejecting Dome’s argument, the Court distinguished between the standard in litigation and in reexamination proceedings and held that the presumption of validity requiring an invalidity defense to be proved “by clear and convincing evidence” was not applicable here. In a reexamination, the Examiner does not attack the validity of a patent. Rather, he conducts “a subjective examination of claims in light of prior art” and “determine[s] whether the claimed subject matter should have been allowed in the first place.” Therefore, there is “no need to presume that the [PTO] had ‘done its job’ in the previous examination.” Furthermore, the purpose of reexamination is to allow the PTO to review “patents thought doubtful.” The intent underlying reexamination is to “start over” in the PTO, which would have been hindered if the reexamined claims were presumed valid. Therefore the district court correctly applied the “preponderance by the evidence” standard of review.

The Federal Circuit also affirmed the district court’s conclusion of obviousness. Here, because all elements of claim 1 were found in the prior art, the issue was “whether a person of ordinary skill in the art would be motivated to combine those references, and whether in making that combination, a person of ordinary skill would have had a reasonable expectation of success.” Here, it was known that high oxygen permeability contact lens material was desirable. This served as a motivation to combine references disclosing Tris monomer and a Tris-type cross-linking agent to increase oxygen permeability of a contact lens. Specifically, Gaylord and Ellis disclosed a polymer for making contact lenses comprising Tris and a hydrophilic cross-linking agent, while Tanaka disclosed a polymer for the same purpose comprising a siloxane-based monomer (not Tris) and a hydrophobic, siloxane-based cross linking agent. Dome’s experts testified that at the time of the invention, “those in the field were turning to siloxane-based compounds to enhance a polymer’s oxygen permeability.” Therefore, a person of ordinary skill would be motivated to combine references teaching siloxane-based Tris-type monomers (Gaylord and Ellis) and a reference teaching siloxane-based cross-linking agents (Tanaka), for use in contact-lens material.

Dome argued that, by disclosing the potential disadvantages associated with using Tris-type monomers with a siloxane-based cross-linking agent, and by providing a better alternative to Tris-type monomers, Tanaka taught away from using Tris with siloxane-based cross-linking agents.  However, the Federal Circuit determined that while Tanaka may have warned against Tris-type materials, Gaylord and Ellis disclosed “roadmaps on how to offset the disadvantages associated with using Tris-type monomers to obtain a material suitable for contact lenses,” e.g., using Tris and hydrophilic monomers in varying concentrations. Because Gaylord and Ellis taught that “Tris could be used effectively to make contact lenses,” a person of ordinary skill would not have been dissuaded from combining the prior art. Furthermore, while Dome’s argument against obviousness based on Tanaka was plausible, it was not sufficient to overcome the district court’s factual findings that “a person of ordinary skill would have been motivated to combine the identified prior art to arrive at the claimed invention.” Accordingly, the Federal Circuit affirmed.

The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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