Posts Tagged: "Judge Alan Lourie"

Federal Circuit vacates PTAB decision for failure to explain reason claims were invalid

Unlike the Board’s anticipation determinations, which contravened the only permissible findings that could be drawn from the prior art under the proper constructions of the relevant claim terms, the obviousness determinations involved “potentially lawful but insufficiently or inappropriately explained” factual findings. In re Van Os, 844 F.3d 1359, 1362 (Fed. Cir. 2017). The Board failed to explain its reasoning to allow the Court to determine whether its findings would be lawful. When faced with similarly deficient factual findings, the Court has “consistently vacated and remanded for further proceedings.” Id. Consequently, the Court vacated the Board’s obviousness rejections with respect to claims 1-3, 5-8, and 21, and remanded for further factual findings and explanation on this issue.

PTAB Ruling Tainted by Hindsight; Failure to Consider Undisputed Commercial Success

The Federal Circuit also remanded to the Board further consideration of the undisputed evidence presented by Polaris that its ATVs were a commercial success. Polaris presented undisputed evidence that its vehicles had generated over $1.5 billion in sales since 2007 and that the commercial product was tied to the patent and claims entitling Polaris to a presumption of a nexus. Despite this undisputed evidence the Board still concluded that Polaris failed to prove a nexus, finding Polaris’ evidence conclusory.

CAFC affirms PTA calculation because patentee did not properly request early national stage examination

The Federal Circuit found that Actelion was required to make an express request to commence early national stage examination. Actelion’s statement “earnestly soliciting early examination,” which made no reference to § 371(f), the PCT, or the national stage, combined with failure to check the box expressly requesting early examination, was an “inconsistent or ambivalent request.” While Actelion was not required to check any boxes, it was still required to make its intentions clear. Thus, the district court did not err in affirming the PTO’s finding that Actelion failed to make an express request for early examination. The Federal Circuit also found no error in the PTO’s determination that the national stage commenced on January 17, 2012, the next workday after a 30-month date that fell on a federal holiday.

Board Improperly Interpreted Incorporation by Reference

While the Court affirmed several of the Board’s validity findings, it reversed the determination that the ’455 PCT qualifies as prior art. At issue was the extent to which the ‘817 application included the disclosures of Severinsky, so that challenged claims would antedate the ‘455 PCT. Paice argued that Severinsky was incorporated into the ‘817 application and was not prior art. Therefore, certain challenged claims could rely on Severinsky for the ‘817 priority date, which was earlier than the ’455 PCT.

Google Suffers IPR Defeat on Patent Asserted Against YouTube by Network-1

On Tuesday, January 23rd, the Court of Appeals for the Federal Circuit issued a ruling in Google LLC v. Network-1 Technologies, Inc. which affirmed a finding by the Patent Trial and Appeal Board (PTAB) that a patent covering a method of identifying media linked over the Internet was valid. The Federal Circuit disagreed with Google that the PTAB erred in its claim construction during the validity trial, leaving in place a patent that has been asserted by Network-1 against Google’s major online media platform YouTube.

Federal Circuit Remands PTAB Decision to Uphold Patent Claims Challenged By Nintendo

While the recent decision did uphold the PTAB’s finding of validity of some claims, the Federal Circuit reversed and remanded part of the decision in a way that further highlights the revolving door of validity challenges taking place between the Federal Circuit and the PTAB… The recent Federal Circuit decision on Nintendo’s appeal of the ‘796 final written decision issued by the PTAB found that substantial evidence supports the PTAB’s determination that the challenged claims of the ‘796 patent were adequately supported by the written description of the grandparent application. However, the Federal Circuit reversed and remanded because the panel did not believe all of the challenged claims were reduced to practice as the result of the 1998 working prototype. The existence of a reduction to practice associated with the 1998 working prototype is important because if all of the claims has been reduced to practice with the 1998 working prototype Yasushi would not be prior art.

Whether TSA Action is Attributable for Direct Infringement is Genuine Issue of Fact

The key issue in the present appeal, in light of Akamai V, is whether TSA’s performance of the final two steps of the patented method claims can be attributed to Travel Sentry, such that Travel Sentry is responsible for infringing the relevant claims… Under Akamai V, direct infringement under § 271(a) occurs where all steps of a claimed method are performed by a single entity. When more than one actor is involved in practicing the steps, the court considers whether the acts of one entity are attributable to the other such that a single entity is effectively responsible for the infringement. An entity will be held responsible for another’s performance of method steps where it directs or controls that performance. This is a question of fact.

Surviving Alice: Sufficient Inventive Concept Must be in Claim, Not Specification

In Two-Way Media Ltd v. Comcast Cable Communs., LLC, (Opinion for the court, Reyna, J.), the Federal Circuit affirmed a district court decision finding four patents owned by Two-Way Media were directed to ineligible subject matter under 35 U.S.C. § 101. Claim 1 of the ‘187 patent was representative of the ‘187 and ‘005 patents, and described a method for transmitting message packets over a communications network, like the Internet… For claims directed to judicial exceptions under § 101, a patent cannot identify a sufficient inventive concept solely in the specification and survive the Alice inquiry; the inventive concept must be found in the claims themselves in order to transform the nature of the claims into a patent-eligible application.

Federal Circuit: Less Preferred Alternative is not Teaching Away

In an obviousness inquiry, material prior art references disclosing combinations of claimed limitations cannot be disregarded based on a drug product’s commercial viability or FDA approval. Teaching away from a claimed feature requires a reference to disclose that the feature is unworkable rather than less favorable.

Merck Process for Stabilizing Antibiotic Compound Invalid as Obvious

The District of Delaware found that one of two patents asserted by Merck was not invalid and infringed, and the other patent, while infringed, was invalid as obvious. Merck appealed the conclusion of invalidity. The Federal Circuit affirmed… If the strongest evidence of nonobviousness are objective indicia, it is critical for the patentee to persuade the finder of fact that all four Graham factors need to be evaluated contemporaneously in making an obviousness determination.

CAFC affirms invalidity of geographic map visualization patent asserted against Google Earth

The Court of Appeals for the Federal Circuit entered a non-precedential decision in Art+Com Innovation Pool GmbH v. Google LLC, which affirmed a lower court’s invalidation of a patent covering methods of displaying geographic information to a user. The patent, issued in 2013 to Berlin-based Art+Com Innovationpool and claiming a priority date of December 1995, had been asserted in a patent case decided in the District of Delaware in which the German-based patent owner was seeking more than $100 million from Google for infringement committed by its Google Earth service.

Burden of Persuasion for Patentability of Amended Claims in IPR Stays with Petitioner

After a panel of the Federal Circuit affirmed the Board’s decision, in Aqua Products v. Matal, Aqua requested an en banc rehearing. The USPTO Director Joseph Matal joined the appeal on behalf of the USPTO. At issue was whether the Board could place the burden of proof for patentability of amended claims on the patent owner in an IPR, and the Board’s underlying interpretation of the relevant statutes, specifically § 316(d) governing claim amendments and 35 U.S.C. § 316(e) allocating the burden of proof in an IPR… With respect to the burden of proof, the burden of persuasion for patentability of amended claims in an IPR proceeding is placed on the petitioner, not the patent owner. However, considering Judge Reyna’s concurrence, patent owners might still have the burden of production; depending on future cases.

Federal Circuit Reverses PTAB’s Unreasonably Broad BRI of term

In Re: Smith International, the Federal Circuit reversed, finding that the Board’s construction of “body” was unreasonably broad. While the claims do recite “body” without further elaboration, the specification does not use the term generically… The broadest reasonable interpretation of a term in a patent claim must be consistent with the specification. An analysis looking for whether the broadest possible meaning is proscribed by the specification is a backwards approach to claim interpretations and is improper.

Federal Circuit applies ‘rule of reason’ to find inventor testimony credible in IPR

The Court found the Board’s reliance on Woodland Trust to be “misplaced” because in that case there had been continued public use for a period of a decade without any documentary evidence to support conception. To the contrary, on the facts presented here there was some documentation over the period of several months. Furthermore, that documentation took place nearly twenty years ago, which according to the Court wrote made this situation far closer to Loral Fairchild Corp. v. Matsushita Electric, 266 F.3d 1358 (Fed. Cir. 2001). In Loral Fairchild the Court previously “forgave the inventor’s inability ‘to submit documents showing production test results, considering that the events at issue occurred almost 30 years ago’” — when the inventor’s account was otherwise adequately corroborated. Additionally, there was no one else suggested by either party as the actual inventor.

Employees working from home do not establish place of business for venue under TC Heartland

In re Cray, Inc., the Federal Circuit applied the recent Supreme Court’s TC Heartland decision to grant a writ of mandamus, directing the Eastern District of Texas to transfer Raytheon’s patent case to a proper venue. The district court refused the transfer based on notions of targeting the district for a benefit, according to a four-part test it adapted from In re Cordis Corp. The Federal Circuit disagreed, holding that the listed criteria were not sufficiently tethered to the relevant statute, 28 U.S.C. § 1400(b)… In determining venue in a patent infringement case, the location of defendant’s employees who work from home is not a regular and established place of defendant’s business when the defendant corporation has no material connection to that place, as by rent, inventory, conditioning employment based on the location, or other relevant facts.