Posts Tagged: "Judge Raymond Clevenger"

In re: Natural Alternatives, LLC, 2015-1911 (opinion and errata) is a non-precedential but still notable case from the U.S. Court of Appeals for the Federal Circuit that finds the claims of a patent that was in reexamination to be patentable, despite the examiner and the Patent Trial and Appeal Board finding that the claims were obvious. While the examiner had cobbled together various references to make an obviousness rejection, the examiner failed to set forth “sufficient facts” supporting his position that the prior art disclosed the limitations of Natural’s claims in a manner that renders the claimed invention obvious.

The Court held that dealing “physical playing cards” did not constitute patent eligible territory. This constituted a “purely conventional” activity, like the conventional computer implementation that fell short in Alice. The Court found there was no inventive concept sufficient to transform the subject matter into a patent-eligible application of an abstract idea.

On March 10, 2016 the Federal Circuit sent two Patent Trial and Appeal Board (“PTAB” or “Board”) reexaminations back to the Patent Office. In proceedings initiated by IBM and SAS Institute Inc., the PTAB rejected claims for analyzing investment data in two patents owned by InvestPic LLC. The Board’s ruling turned upon two claim terms: (1) a “bias parameter” that determines a degree of randomness in sample selection in a resampling process”; and (2) “a statistical analysis request corresponding to two or more selected investments.”

The issue on appeal was whether Applicants antedated the ‘560 reference in accordance with Rule 131. A patent applicant bears the burden of establishing “reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application.” 37 C.F.R. 1.131(b). The Court concluded that substantial evidence supported a finding that Applicants failed to establish conception and continuing diligence, or actual reduction to practice, before the effective date of the ‘560 reference.

Since the preferred embodiment did not have patentable characteristics that are distinct from other disclosed embodiments, the Court held that “the patentee [was] entitled to claim scope commensurate with the invention that [was] described in the specification.” The Court also held that the doctrine of claim differentiation was applicable here, since the “two severable score lines” limitation only appeared in a dependent claim but not in any independent claims. In other words, the presence of the “two severable score lines” limitation in a dependent claim gave rise to a presumption that such a limitation was not present in the independent claim.

Applying KSR, the Federal Circuit concluded that combining elements from the cited prior art would have yielded a predictable result, namely the system fan would activate periodically following the end of a heating or cooling cycle as claimed in the ‘017 patent. The Court further found motivation or rationale for combining the references in the nature of the problem addressed. The Federal Circuit also rejected ABT’s arguments regarding the objective evidence of nonobviousness, namely commercial success and long felt need.

Writing for the panel majority, Judge Dyk, who was joined by Judge Clevenger, explained that regardless of whether the USPTO properly should have instituted an IPR, the decision of the USPTO could not be reviewed or challenged even after a completed IPR proceeding. Further, the CAFC found that the broadest reasonable interpretation standard is appropriate in IPR. Judge Newman dissented.