Posts Tagged: "Judge Richard Taranto"

The Court determined that the scope of the arbitration provision did not cover the intellectual property claims before the district court because the arbitration provision only covered the obligations established by the Agreement (the promotion of the plaintiff’s products).

Appellant Affinity Labs of Texas, LLC (“Affinity”) appealed from the inter partes reexamination of its patent filed by Apple Inc. (“Apple”). Apple requested reexamination after Affinity asserted the patent against Apple in district court. The parties settled their dispute and filed a joint stipulation of dismissal with the district court… The estoppel provision of Pre-AIA Section 317(b), as applied to Inter Partes Reexamination, requires a “Final Decision,” which must show that the estopped party has not sustained its burden of proving invalidity of any patent claim in suit. Thus, a joint stipulation and order of dismissal “without prejudice” did not bar the maintenance of the Inter Partes Reexamination.

The Federal Circuit affirmed a Patent Trial and Appeal Board (“Board”) decision to uphold the unpatentability of several claims of a patent owned by Affinity Labs of Texas, LLC (“Affinity”). An Examiner initially found the claims to be unpatentable during two inter partes reexaminations and an ex parte reexamination of Affinity’s patent…. The estoppel provision of pre-AIA 35 U.S.C. § 317(b) for reexamination proceedings applies, claim-by-claim, to the party in the litigation, and does not trigger termination of reexamination proceedings involving other parties and other claims.

The Federal Circuit affirmed a Patent Trial and Appeal Board (“Board”) decision finding a patent owned by Novartis AG and Mitsubishi Tanabe Pharma Corp. (collectively “Novartis”) to be unpatentable as obvious… Refusal by the Board to institute an IPR based on a particular reference does not necessarily preclude the Board from relying on that reference as additional support for a motivation to combine other references. Separate patentability arguments for dependent claims must be clearly argued lest they stand or fall with parent claims. A nexus for non-obviousness due to commercial success must clearly flow from the patented invention and not from subject matter known in the prior art.

Anticipation can arise when the disclosure of a limited number of alternative combinations discloses the one that is claimed. However, a reference does not anticipate because an artisan would immediately envision a missing limitation… In Kennametal, the challenged claim required a ruthenium binding agent and a PVD coating to be used together. The prior art reference disclosed five binding agents (including ruthenium) and three coating techniques (including PVD), and taught that any binding agents could be used with any coatings. Thus, Kennametal held that the reference effectively taught fifteen combinations, one of which anticipated the challenged claim. A limited number of possible combinations effectively disclosed one of them. Kennametal does not hold that a reference can anticipate a claim if a skilled artisan would “at once envisage” the missing limitation. As a result, the Court reversed the Board’s finding of anticipation.

The PTAB held that anticipation can be found even when a prior art reference does not disclose each and every claim element as long as one of skill in the relevant art would “at once envisage” the claimed arrangement, citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015). The Federal Circuit explained the PTAB fundamentally misinterpreted and misapplied the Court’s holding in Kennametal… For there to be anticipation each and every element must be present, period. Close is not the same and PTAB judges should know that.

The Federal Circuit found that the district court did not abuse its discretion in admitting the AT&T settlement agreement for several reasons. First, the agreement covered the same patented technology at issue and thus was a reliable estimate of the technology’s value to Prism and potential infringers. Second, though both litigations were commenced the same day, the agreement came from an “earlier” case because it was entered into after all discovery was complete and on a fully developed record. This increased the likelihood that the settlement reflected the value of the patented technology rather than a desire to avoid a potential unfavorable judgment. Finally, the settlement was reached after a large share of litigation costs had already been expended, again reducing the role of litigation cost-avoidance in the decision to settle.

The CBM determination includes patents that are “financial in nature” according to the claims; not patents that are “complementary” or “incidental” to financial activity according to the specification or post-grant assertion of the patent… Further, the Board’s reliance on post-grant activity, that Secure Axcess alleged infringement against financial institutions, was improper. “Those choices do not necessarily define a patent as a CBM patent, nor even necessarily illuminate an understanding of the invention as claimed.”

When applying that definition to the present case, the majority opinion rejected as too limiting Secure Axcess’s proposal that CBM review should be limited to “products and services such as credit, loans, real estate transactions, securities and investment products, and similar financial products and services”. However, the Federal Circuit also rejected the Board’s much more expansive approach that CBM review should apply to financial products or services that were merely “used in” and “incidental to” a financial activity… In dissent, Judge Lourie disagreed with the majority’s holding on the basis of Secure Axcess’s claims being “surely claims to ‘a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.’” This, he argued, was because “[t]here can be little doubt that such claims meet the ‘method or apparatus for performing data processing’ limitation of the statute.”

The PTAB agreed with Apple and invalidated the patent. The Federal Circuit remanded because the Board failed to adequately explain its finding that a skilled artisan would have had a motivation to combine the references used to find obviousness… IPR practitioners should brief the Board with explicit reasoning why a skilled artisan not only could (or could not), but would (or would not) be motivated to combine the asserted references, and how those references work together (or do not).

Mylan had to show by clear and convincing evidence that the idea for the ’445 patent claim was conceived by someone at the FDA and communicated to Mr. Pavliv, the named inventor. The Court agreed with the district court that Mylan did not carry the burden of showing that someone other than Mr. Pavliv had conceived a “definite and permanent idea” of an EDTA-free Acetadote formulation. Mylan argued that Mr. Pavliv’s prior communications with the FDA, including the FDA’s request for justification of the inclusion of EDTA, required Cumberland to undertake research that would have inevitably led to the invention. However, this was not the same as a suggestion to remove EDTA. Derivation is not proved by showing conception and communication of an idea different from the claimed invention, even if that idea would make the claimed idea obvious.

The Court was careful to explain that its “holding in this case does not mean that the existence of examples in the written description will always render a claim definite, or that listing requirements always provide sufficient certainty.” Instead, its holding is simply that “visually negligible” is sufficiently supported by Sonix’s patent “to inform with reasonable certainty those skilled in the art of the scope of the invention.” Practitioners prosecuting applications in which arguably subjective terms exist should include as much guidance as possible in the specification to define that term. It may prove vital to include requirements or examples.

In a December 22, 2016 decision, the Federal Circuit vacated a decision by the Patent Trial and Appeal Board (“The Board”) in two inter partes review (IPR) proceedings. The Court reversed the Board’s decision that the claims at issue were unpatentable for anticipation and obviousness… The broadest reasonable interpretation of a patent claim does not extend to a legally incorrect interpretation. When the claim as a whole expressly excludes a particular result, a claim term cannot be interpreted so broadly as to encompass that result.

The Court held that remand was improper. Generally, remand is proper where the governing legal standards change during appeal. However, the Court found that the change in legal standard would not affect the district court’s order because Medgraph failed to present a case of direct infringement even under the broader theory of attribution in Akamai V.

NuVasive owns a patent relating to spinal fusion implants. Medtronic petitioned the Patent Trial and Appeal Board (the “Board”) to institute an inter partes review challenging the validity of NuVasive’s patent over several references. The Board instituted the IPR and found the challenged claims obvious over a combination of references.