Posts Tagged: "patent claims"

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.

Distribution Agreement Considered a Commercial Offer and On-Sale Bar

The Federal Circuit reiterated that the on-sale bar does not exempt commercial agreements between a patentee and its supplier or distributor. It is the commercial character of the transaction that is more relevant than the parties involved when assessing whether there was a commercial offer for sale.

In Travel Sentry v. Tropp, CAFC recognizes broad scope of attribution under doctrine of divided infringement

The central issue before the Federal Circuit was whether there was a genuine issue of material fact that TSA’s performance of those steps could be attributed to Travel Sentry, such that Travel Sentry could be held singularly responsible for directly infringing Tropp’s method claims. Slip Op. at 13. The district court had answered this question in the negative… The Federal Circuit rejected the district court’s interpretation of divided infringement as too narrow and, accordingly, vacated its summary judgment of non-infringement.

Analyzing obviousness and anticipation challenges to claims directed to an isolated component of a prior art mixture

Based on the governing Federal Circuit case law, where the patent claim at issue is directed to a specific component (such as a specific enantiomer) of a prior art mixture (such as a racemic drug material), it does not appear that there is anything to be gained by a patent challenger, from an anticipation standpoint, simply by virtue of the fact that the specific component inherently exists within that prior art mixture/composition. In other words, while a claim to such an isolated component may potentially be vulnerable to an anticipation attack, the anticipatory reference needs to specifically identify and characterize the component, and must teach how to isolate the component. Absent this sort of “slam dunk” scenario, a patent challenger’s success is likely to rise or fall with the merits of its obviousness argument(s). The critical factors in the obviousness analysis will likely be whether the claimed component was known to be responsible for the activity of the prior art mixture/composition; whether the process used to isolate the claimed component was challenging, or better yet still from the patentee’s perspective, whether the process was inventive; whether the prior art as a whole would have enabled one of ordinary skill in the art to isolate the claimed component; and whether the claimed component exhibits any unexpectedly superior properties relative to the prior art mixture/composition.

Combinations do Not Anticipate if Artisan Would Not Immediately Envision Claimed Combination

The Federal Circuit heard the case of Microsoft Corp. v. Biscotti, Inc. After Biscotti, Inc. (“Biscotti”) sued Microsoft Corp. (“Microsoft”) for patent infringement, Microsoft filed three unsuccessful inter partes reviews (“IPR”) challenging certain claims of U.S. Patent No. 8,144,182 (“the ‘182 patent”) as anticipated or obvious. The ‘182 patent relates to tools and techniques for providing video calling solutions. The IPRs focused on independent claims 6 and 69, and their dependent claims. On appeal Microsoft challenged the Board’s standard of review… The Federal Circuit reiterated that anticipation is a question of fact subject to substantial evidence review, that ultimate claim construction and claim construction relying solely on intrinsic evidence is subject to de novo review, and subsidiary factual findings based on extrinsic evidence are reviewed for substantial evidence.