Posts Tagged: "Judge Pauline Newman"

In Praxair Distribution v. Mallinckrodt Hospital Products, Praxair petitioned for inter partes review of claims 1-19 of the ’112 patent, which the Board instituted. The Board held that claims 1-8 and 10-19 would have been obvious over four prior art references. However, claim 9 survived. Praxair appealed from the Board’s decision regarding claim 9, and Mallinckrodt cross-appealed regarding claims 1-8 and 10-11. The Federal Circuit affirmed the Board’s decision holding claims 1-8 and 10 unpatentable as obvious. Judge Newman concurred in judgment of unpatentability of claims 1-11, but disagreed with the Court’s view of the “printed matter doctrine” and its application to “information” and “mental steps.”

AIDS Healthcare Found., Inc. v. Gilead Scis., Inc., the Federal Circuit affirmed the dismissal of patent challenges filed by drug consumers. The Court noted that a declaratory action requires “a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” The Court also dismissed AHF’s argument that it is inducing infringement and dismissed AHF’s public policy arguments for invalidating invalid patents… A consumer’s interest in purchasing cheaper goods is insufficient to meet the adverse legal interest required for a declaratory action. And a consumer’s request that another party infringes a patent cannot, by itself, induce infringement. To induce infringement, there must be direct infringement by a third party.

The Federal Circuit recently affirmed a decision of the United States Patent and Trademark Office to reject VerHoef’s pending application 13/328,201 for a dog harness under pre-AIA Section 102(f) because the applicant “did not himself invent the subject matter sought to be patented.” At the Federal Circuit, VerHoef conceded that the figure “8” loop was an essential feature, and did not dispute that the veterinarian, and not he, contributed the idea of the figure eight loop.

In 01 Communique Lab v. Citrix Systems, the Federal Circuit rejected Communique’s appeal. The court properly relied on a comparison of the allegedly infringing GoToMyPC product to the asserted patent claims, as shown by careful jury instructions. Citrix’s comparison to the BuddyHelp prior art, in aid of a legitimate defense, did not cause prejudice to Communique. In reaching its decision, the Court noted that claim terms must be construed the same way for both invalidity and infringement. Thus, if a narrow construction was appropriate for validity in the reexamination to avoid the prior art, a broader construction should not be applied against alleged infringers.

In Knowles Elecs. LLC v. Iancu, Knowles appealed the inter partes reexamination decision of the Board, which affirmed an examiner’s finding that certain claims were anticipated while other claims would have been obvious over various prior art references. The third-party requester declined to defend the judgment in its favor. The Director of the USPTO intervened to defend the Board’s decision, pursuant to 35 U.S.C. § 143. On appeal, the Court permitted the Director to intervene and affirmed the Board’s decision… Under current precedent and Article III challenges notwithstanding, in appeals from Board decisions in which the appellee has withdrawn, appellants should be prepared to argue against the Director in lieu of the withdrawn appellee. Further, such appellants should be prepared to rebut additional evidence which may be added to the record by the intervening Director.

Under the status quo, neither the patentee nor the public is able to rely on judicial determination of an issue that might later be taken to the PTAB. Knowles, Dissenting Op. at 10. Should the differences in standards between the courts and the PTO for proving invalidity, which contribute to the status quo in a large measure, be allowed to continue? Or, should the policy objectives of judicial efficiency and repose be given effect to preserve the finality of judgement of a court of last resort? These questions have assumed added significance post-AIA since one of the purposes of AIA was to save time and cost. As for standards, courts give claims their customary meaning and require clear and convincing evidence to prove a patent invalid. On the other hand, the PTO gives claims their broadest reasonable interpretation (BRI) and requires a preponderance of evidence to prove invalidity. In her dissent, Judge Newman urged the court to recognize the significant legal and economic consequences of conflict between judicial ruling and agency decision, in which patent life and investment resources are consumed in duplicate litigation with no reliable finality. Id.

The Court of Appeals for the Federal Circuit recently issued a decision in DSS Technology Management v. Apple, which reversed an earlier decision by the Patent Trial and Appeal Board (PTAB) to invalidate patent claims covering a wireless communication networking technology… While this may seem like an ordinary, garden variety misapplication of the law of obviousness by the PTAB, there is more beneath the surface. In this case one of the Administrative Patent Judges hearing the case at the United States Patent and Trademark Office (USPTO) was APJ Matt Clemens, who previously represented Apple as a defense attorney in patent infringement matters prior to joining the board… It is astonishing that the Patent Trial and Appeal Board STILL does not have Rules of Conduct or any kind of Code of Judicial Ethics that applies to Administrative Patent Judges. This is inexcusable, period.

The Federal Circuit found that the Board failed to provide sufficient explanation for its obviousness finding, instead using a conclusory approach that asked whether the missing limitation resulted from “ordinary creativity” of a skilled artisan. According to the panel majority, the question of whether the claims resulted from ordinary creativity was akin to asking whether the claims were obvious as a result of common sense. Therefore, the Federal Circuit began by returning to it’s 2016 ruling in Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016), which dealt with the proper use of common sense as part of an obviousness rejection.

The issue was whether the PCT, which disclosed a “connection to fibre optics bundle which provides for lighting” was a sufficient written description to support the “light guide” “permanently affixed” in the “first channel” of the patented claims. The Board reversed the Examiner and concluded that the earlier application had sufficient written description to qualify as a priority document… The Federal Circuit affirmed. The disclosure of a species, here a “fibre optics bundle,” was sufficient support for a priority claim by a later-filed patent application utilizing genus claims, here a “light guide,” because the patent-in-suit was in a predictable art field and the genus claims covered well-known limitations.

in Ottah v. Fiat Chrysler, Chikezie Ottah appealed the lower court’s grant of summary judgment of non-infringement and dismissal of the complaint with prejudice. Ottah’s patent concerns a removable book holder assembly for use by a person in a protective or mobile structure. Disputed claim 1 includes the phrase, “a book holder for removable attachment.” Ottah alleged that several auto manufacturers infringed the patent by using and making a camera holder for use in their vehicles.

In a prior abandoned patent application, VerHoef listed himself as joint inventor of the dog mobility device with Dr. Lamb, the veterinarian making the suggestion; this joint venture failed and then each party tried to file competing patent applications. This was all done at a time when VerHoef was not well acquainted with patent law according to Thomas Loop, patent attorney at Loop IP Law representing VerHoef in the case. “All inventors take limitations and elements from others, that’s the essence of inventions,” Loop argued to the Federal Circuit panel of Circuit Judges Pauline Newman, Haldane Robert Mayer and Alan Lourie. “[VerHoef] had the entire reduction to practice of the invention… she blurted out an idea, and he adopted it. That’s what happened here.” Although VerHoef agreed that Dr. Lamb did provide the suggestion, Loop argued that this suggestion did not elevate the veterinarian to the level of inventor.

Although the majority opinion was silent with respect to a prior claim construction by the Federal Circuit relating to the patent, Judge Newman wrote in dissent that the majority’s failure to address the issue (which was briefed) allowed for a final claim construction by the Federal Circuit to for the first time lack preclusive effect.

The PTAB found the claims in question obvious for two reasons. First, in its primary ruling the PTAB held that there was no prosecution disclaimer, finding the “single entry” limitation of the claims to include text selection by a user, which was clearly within the prior art. The PTAB reasoned that claims these claims were not limited by the prosecution record, but to do this the PTAB had to ignore both the patent examiner’s Reasons for Allowance and the argument made by the applicant in the Remarks. Rather inexplicably, citing Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375, 1379 (Fed. Cir. 2005), the PTAB ruled that it is up to the applicant to disclaim scope, not the examiner. But such a rationale simply ignored the facts on the record, namely that the reason the examiner explained the claims were allowed was precisely because of the argument made in the Remarks. Therefore, it was the applicant that specifically gave up that claim scope, as required to establish a prosecution disclaimer.

A disclaimer of challenged patent claims before an IPR is instituted may result in a final adverse judgment against the patent owner, triggering estoppel provisions that preclude the assertion of other claims that are not patentably distinct from those disclaimed… Judge Newman dissented, explaining that because no trial occurred, the Board had no authority to issue an adverse judgment.

In its decision, the Federal Circuit upheld a lower court’s ruling that Advanced Video did not have standing to sue for patent infringement after it was determined that the co-owner of the patent did not assign ownership to the patent under the terms of an employment agreement… Although Hsiun never signed an assignment declaration, she also never objected to the USPTO procedures leading up to the grant of the ‘788 patent. Newman’s dissent focused mainly on the terms of Hsiun’s employment agreement, which demonstrated that Ms. Hsiun’s inventions were the property of the employer.