February 2019

Words of Ambiguity in Specification Save patent Scope

by Dennis Crouch

Continental Circuits LLC v. Intel Corp (Fed. Cir. 2019)

Claim-construction used to be the bread-and-butter of Federal Circuit decisions.  That standard was of course upset by the onslaught of eligibility decisions from district courts and BRI obviousness cases out of the PTAB.

The patents at issue here all relate to circuit board construction – and dealing with the problem of delamination. The claimed solution is uses “a unique surface structure . . . comprised of teeth that are preferably angled or hooked like fangs or canine teeth to enable one layer to mechanically grip a second layer.” The figure below from the patent provides an example of how the layers might fit together.

The toothy layers can be formed in various ways — etching

Step 6, as discussed subsequently in greater detail, involves the etching cavities, veins, openings, or gaps in the applied dielectric material 8, or more particularly an outermost surface thereof, to accommodate the teeth. One technique for forming the teeth is somewhat similar to what has been known as the swell and etch or desmear process, except that contrary to all known teachings in the prior art, in effect, a “double desmear process” is utilized.

During prosecution, the patentee also explained that the invention uses “two separate swell and etch steps” to form the teeth.  However, the claims themselves do not expressly require the double pass process.

In the first decision in this case, the district court considered the claims, specification, and prosecution history and found that the claims should be interpreted to require a double pass — even though not expressly required by the claims. Because the accused infringers only used a single-pass, non-infringement was then an easy finding.

On appeal,  the Federal Circuit has rejected the narrow claim construction.  As is its process, the court began with the claim language — finding that ” at least based on the plain language, the claims are not limited to a repeated desmear process.”  Moving then to the specification, the court found no “clear and unmistakable disclaimer” of the claim scope covering a single-pass method.  For the court here, the deciding factor appears to be the patent attorney’s care in drafting the specification. Here, the specification calls double desmear “one technique” that the invention “can be carried out” and “for example” rather than calling the approach “the invention.”

This approach here is properly seen as a patent drafting trick rather than an improved disclosure or invention.  We know this because, although the specification called its double-pass approach “one technique” it did not describe any other technique — except for the prior art single-pass technique that the specification bemoaned as inferior. 

Still, the Federal Circuit sided with the patentee and found that the words of ambiguity sufficient to avoid a claim scope narrowing.

Heeding the warning in Phillips to keep in mind that a goal of the specification is to provide a best mode to make and use an invention, phrases such as “one technique,” “can be carried out,” and “a way” indicate that using Probelec XB 7081 is only one method for making the invention and does not automatically lead to finding a clear disavowal of claim scope. We have also “expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.” Id. . . . Additionally, distinguishing the double desmear process as “contrary to” or “in stark contrast” with the single desmear process, which again appears within the context of disclosures of the preferred embodiment, are not clear and unmistakable limiting statements. We have held that “[m]ere criticism of a particular embodiment . . . is not sufficient to rise to the level of clear disavowal.”

I’ll note that this decision is an example of the rhetorical approach of disassembly.  After the appellee pointed to ten different reasons for limiting claim scope, the court walked through each one individually — and concluding that each offered “mere” subtleties and not a “clear disclaimer.” The court did not consider the impact of the whole.  This is an easy criticism of the court’s decision, but the reality is that the court is now in a tough position.  I would have also criticized the decision if it had gone the other way (which it could have based upon an alternative statement of the case and reading of precedent).  The bigger problem here is that we need to step back and repeatedly ask – how can we build up this system in ways that truly encourage beneficial innovation and do not simply encourage extensive lawyering. This case is also a clear failure of the examiner who was told by the patentee that a particular aspect of the innovation was important, but then allowed the patent to issue without requiring that it be expressed in the claims.

Diagnosis: Ineligible

by Dennis Crouch

Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC (Fed. Cir. 2019)

There is a lot to unpack in this decision, and so this is just a small discussion of an important Federal Circuit opinion – DC

Mayo is involved in another diagnostic method patent dispute — and again has come out on-top with a finding that the asserted patent claims are ineligible under 35 U.S.C. 101. That district court finding has now been affirmed on appeal, although subject to a strong dissent from Judge Newman.

The named inventors on Athena’s patent were working on a subset of Myasthenia gravis (MG) patients who did not exhibit the usual acetylcholine receptor antibodies.  The researchers discovered that these patients were instead generating excess antibodies to a muscle-specific tyrosine kinase (MuSK) that the body uses in neuromuscular junctions. So, the key discovery here was the relationship between MuSK autoantibody production and MG.

The patent at issue is not directed a this relationship per se, but rather a method for diagnosing MuSK related disorders by looking for those MuSK autoantibodies.  The particular claims at issue include a basic diagnostic method involving: mixing a person’s “bodily fluid” with a labeled antigen to the MuSK antibodies; immunoprecipitating any MuSK complexes from the fluid; and then looking for the label in the precipitate.  Some claims indicate that the label is a radioactive iodine isotope.

Conventional Techniques: As we get into the eligibility analysis, it makes sense to note here that the claimed method is basically the one that any biochem PhD researcher would have come up with after learning about the importance of the MuSK autoantibody — i.e., it probably would be obvious if the relationship between MuSk and MG were in the prior art. However, the claimed method does involve creating non-naturally-occurring labeled antigens and then causing a chemical reaction that does not naturally-occur.

Under Mayo v. Prometheus, 566 U.S. 66 (2012) a law of nature may not be patented.  In that case, the provided an example of a law of nature — the correlation between the a blood metabolite and the appropriate treatment dosage.  The court explained explain that it is proper to have a claim “directed to” a law of nature, so long as the claim also includes “something more” such as an inventive practical application.  In other words: “Laws of nature are not patentable, but applications of such laws may be patentable.” Athena.

Here, the Federal Circuit agreed with the lower court that the claims at issue are directed to a law of nature: “the correlation between the presence of naturally-occurring MuSK autoantibodies in bodily fluid and MuSK-related neurological diseases like MG.”  This correlation exists in nature, even if only recently discovered by humans, and “there can thus be no dispute that it is an ineligible natural law.”

Here, although the claims include “certain concrete steps,” the court still determined that they were – as a whole – directed to the abstract idea “because the claimed advance was only in the discovery of a natural law, and . . . the additional recited steps only apply conventional techniques to detect that natural law.”  To support this conclusion, the court cited to portions of the specification explaining that “the actual steps [are] known per se in the art” or are “standard techniques in the art.”

Regarding the required creation and use of a man-made molecule.  The court held that “the use of a man-made molecule is not decisive if it amounts to only a routine step in a conventional method for observing a natural law.”  I will note here that the molecule itself would likely be eligible — to the extent they were created by the researchers.

In its analysis, the court also distinguishes its recent decision in Vanda, which found a method of treatment based upon genotype to be eligible.

We consider it important at this point to note the difference between the claims before us here, which recite a natural law and conventional means for detecting it, and applications of natural laws, which are patent-eligible. See Vanda Pharm. Inc. v. West-Ward Pharm. Int’l Ltd., 887 F.3d 1117, 1133–36 (Fed. Cir. 2018) (holding that method of treatment by administering drug at certain dosage ranges based on a patient’s genotype was not directed to a natural law). Claiming a natural cause of an ailment and well-known means of observing it is not eligible for patent because such a claim in effect only encompasses the natural law itself. But claiming a new treatment for an ailment, albeit using a natural law, is not claiming the natural law.

Within step-one of the Mayo/Alice analysis the court basically answered step-two as well — does the claim include “something more.” Here, the court appears to have added the notion that step-one should focus only on the claim as a whole while step-two includes an element-by-element analysis.  Regardless, the court found that the application steps were all simply recitations of steps known in the art.

Because the specification defines the individual immunoprecipitation and iodination steps and the overall radioimmunoassay as conventional techniques, the claims fail to provide an inventive concept. . . .  [A]pplying standard techniques in a standard way to observe a natural law does not provide an inventive concept.

Although conventionality can now be seen as an issue of fact, the court found that it was effectively admitted within the specification.

Judge Lourie penned the majority opinion and was joined by Judge Stoll. Judge Newman wrote in dissent. Judge Newman argued that the claims should be seen at face value:

The claims … preparation of the new radioactive entities and their chemical reactions to detect autoantibodies to the protein muscle-specific tyrosine kinase (MuSK).

This, according to Judge Newman is “not a law of nature.”

Note here Footnote 4 from the majority opinion — agreeing with the dissent that “the public interest is poorly served by adding disincentive to the development of new diagnostic methods” and lamenting their inability to act. “Our precedent leaves no room for a different outcome here.”

State of the Union and IP

President Trump’s State of the Union Speech included only a small focus on intellectual property rights — and only in the international sphere:

We are now making it clear to China that after years of targeting our industries, and stealing our intellectual property, the theft of American jobs and wealth has come to an end. . . .

Our new U.S.-Mexico-Canada Agreement — or USMCA — will replace NAFTA and deliver for American workers: bringing back our manufacturing jobs, expanding American agriculture, protecting intellectual property, and ensuring that more cars are proudly stamped with four beautiful words: made in the USA.

Am I my Server Rack?: Do Edge Nodes Satisfy the Venue Rules?

by Dennis Crouch

In re Google (Fed. Cir. 2019)

This appeal stems from a pending E.D.Tex. infringement lawsuit filed in 2017. SEVEN Networks, LLC v. Google LLC, 2:17-CV-00442 (E.D. Tex. Aug. 22, 2017).  In the case, SEVEN accused Google of infringing ten of its patents:

  • 8,078,158, titled “Provisioning Applications for a Mobile Device”
  • 8,811,952, titled “Mobile Device Power Management in Data Synchronization Over a Mobile Network With or Without a Trigger Notification”
  • 9,247,019, titled “Mobile Application Traffic Optimization”
  • 9,325,600, titled “Offloading Application Traffic to a Shared Communication Channel for Signal Optimization in a Wireless Network for Traffic Utilizing Proprietary and Non-Proprietary Protocols”
  • 9,351,254, titled “Method for Power Saving in Mobile Devices by Optimizing Wakelocks”
  • 9,386,433 titled “System and Method for Providing a Network Service in a Distributed Fashion to a Mobile Device”
  • 9,444,812, titled “Systems and Methods for Authenticating a Service”
  • 9,516,127, titled “Intelligent Alarm Manipulator and Resource Tracker”
  • 9,516,129, titled “Mobile Application Traffic Optimization”
  • 9,553,816, titled “Optimizing Mobile Network Traffic Coordination Across Multiple Applications Running on a Mobile Device,”

Google filed for dismissal under TC Heartland — arguing that it did not reside in E.D. Texas, and had no “regular and established place of business” within the district as required for proper venue under 28 U.S.C. § 1400(b).

However, the district court found venue to be proper.  The crux of the conclusion was based upon the fact that Google owns and uses computer servers within the district — “edge nodes” — that Google operate to quickly deliver content to its users within the district.  Note here that, although Google owns the servers, it rents the rack space within various ISP server hubs.

The Federal Circuit then denied Google’s writ of mandamus in a non-precedential 2018 order — noting in dicta that the district court decision was fact-specific and reasoned:

Google owns and wholly controls the servers, located in the district under specific contracts with ISPs—which may not even tighten a screw without Google’s instruction. The location of the servers in the district serves Google’s business interests—by serving interests of Google’s ISP customers (e.g., in saving transport costs), Google’s end-user customers (e.g., in quick delivery of content), or both—as confirmed by Google’s advertising of its Edge Network and the Edge Nodes for efficient content delivery; and upon installation of the servers, Google places its inventory in (loads its content onto) those servers, and when Google’s end-user customers ask Google for that inventory, Google can and often does fulfill those requests from those local servers. And the server placement contracts provide Google very strong control to
keep the servers at their locations once they are installed.

Rather than ruling on the merits, the appellate panel court denied the writ — holding that mandamus is not warranted in this case.  Rather, the majority approach is to wait until the conclusion of the trial and, if Google loses, it can then appeal the improper venue issue.

The mandamus denial was issued in a per curiam order by Judges Dyk and Taranto. Judge Reyna wrote in dissent — arguing that “Google’s petition presents fundamental issues concerning the application of § 1400(b) that have far reaching implications and on which district courts have disagreed.” Google persisted and filed a petition for en banc rehearing of its mandamus petition.  That request has now also been denied, with the inclusion of another Judge Reyna dissent — this time precedential and joined by Judges Newman and Lourie.

The question poised before the court is whether Google’s servers … which have no physical interaction with Google employees or customers and are installed by third-parties in the facilities of third-party [ISPs] located in the Eastern District of Texas, constitute a regular and established place of business under 35 U.S.C. 1400(b) and this court’s decision in Cray.

In his dissenting opinion, Judge Reyna argues (1) this is an important question that should be addressed on mandamus; and (2) the answer is that servers likely do not count as a “regular and established place of business.”

[E]xclusive ownership and control over the servers may be insufficient under Cray. See Cray, 871 F.3d at 1363 (“Relevant considerations include whether the defendant owns or leases the place, or exercises other attributes of possession or control over the place.” (emphases added)). It is undisputed that no Google employee has ever visited the places where the servers are installed. Nor do those facilities resemble one of the many Google offices in other venues that would satisfy § 1400(b) under a straightforward application of the statute. See id. at 1364 (“A further consideration for this requirement might be the nature and activity of the alleged place of business of the defendant in the district in comparison with that of other places of business of the defendant in other venues.”). … For many [internet focused] companies, the reasoning of the district court’s holding could essentially reestablish nationwide venue, in conflict with TC Heartland, by standing for the proposition that owning and controlling computer hardware involved in some aspect of company business (e.g., transmitting data) alone is sufficient.

Here, Judge Reyna is not deciding the question, but suggesting that the answer is likely that venue is improper.

Back on the ground – the case has been proceeding throughout the entire mandamus process. Trial was set for January 2018.  However, just before trial the parties asked for a stay of the case based upon an “agreement in principle” to settle the case.  A full settlement is now likely within a few days.

Standing on the Shoulders of those Without Standing

by Dennis Crouch

Mylan Pharms. Inc. v. Research Corp. Techs., Inc.  (Fed. Cir. 2019)

This post begins with an obviousness discussion, then moves to IPR standing, and finally talks about SAS. 

Obviousness: In Mylan, the Federal Circuit affirms a PTAB decision siding with the patentee and holding that RCT’s pharmaceutical compound patent claims were not proven unpatentable (i.e., confirming patentability).

The patent at issue is directed toward an enantiomeric isomer (R configuration) of lacosamide. The dependent claims at issue are directed to the use of the drug for anticonvulsant effective (treating epilepsy symptoms).

As with most Inter Partes Review (IPR) decisions, the focus is obviousness.  The listed inventor – Harold Kohn – is also the author of the lead prior art reference.

Harold Kohn et al., Preparation and Anticonvulsant Activity of a Series of Functionalized α-Heteroatom-Substituted Amino Acids, 34 J. Medicinal Chemistry 2444 (1991); J.A. 2404–12.

The article identifies a particular compound as the “most active” as a potential anticonvulsant whose structure is shown below.

Although the Board decided that there was sufficient similarity to institute the IPR, it ultimately ruled that the modification of the 1991 compound to create lacosamide was beyond ordinary skill in the art.

On appeal, the Federal Circuit affirmed — holding that even if the 1991 compound was an appropriate lead compound the challenger “failed to meet their burden to establish a motivation to modify.”  Here, the challenger relied upon an organic chemistry drug design text for the principle that a developer would be motivated to replace an amine in the 1991 compound with a methylene link to form lacosamide.

According to Appellants, a person of skill in the art would then have been motivated to modify compound 3l by replacing the amine of its methoxyamino group with a methylene link to yield a more stable, synthetically accessible, pharmaceutically common and acceptable moiety.

On appeal, however, the Federal Circuit rejected this approach — holding that the PTAB decision was based upon substantial evidence. In particular, the Board looked at contemporaneous evidence that such a modification would have reduced therapeutic activity.

= = = = =

The case includes an important discussion regarding standing to appeal and the one-year bar under 5 U.S.C. § 319.  Here, Argentum filed the IPR petition in November 2015.  Argentum had not ever been sued under the patent and arguably would not have Article III standing to challenge the patent in court.  However, the IPR statute allows anyone to petition.

After institution, Mylan, Brekenridge, and Alembic all filed their own IPR petitions as well as petitions for joinder under 35 U.S.C. § 315(c).

(c) Joinder.— If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.

The joinder petitions were granted.  One quirk here is that the Mylan, Brekenridge, and Alembic IPR petitions would not have been granted on their own since they were all time-barred under 35 U.S.C. § 315(b).  Joinder, however, is a different matter — since the statute expressly indicates that “The time limitation set forth in [§ 315(b)] shall not apply to a request for joinder under subsection (c).”

In the appeal, the original petitioner Argentum dropped-out and did not appeal — and arguably could not have appealed. Only the newcomers, Mylan, Brekenridge, and Alembic, appealed.

On appeal, RCT called foul — on the challengers approach of cobbling together rights.

  • Argentum able to file IPR, but no right to appeal.
  • Mylan, et al., not able to file IPR on its own, but standing to appeal.

In the end though, the Federal Circuit found the approach proper under the statute. Once Mylan was joined as a petitioner, it had a statutory right to appeal.

= = = = =

Final point to discuss here involves SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).  In that case, the Supreme Court held that the PTAB must either institute as to either (1) all challenged claims or (2) no claims.  The Federal Circuit has expanded that holding to now include a requirement of instituting as to either (1) all grounds for challenge or (2) no grounds at all.

Here, the PTAB instituted as to all challenged claims, but only some grounds for challenge.  In oral arguments (rebuttal), Mylan’s counsel requested, in the “alternative,” that the case be remanded for consideration of all grounds.  On appeal, the Federal Circuit held that the right to remand had been waived. In particular, applicant waited more than 6-months until the rebuttal portion of oral arguments to request the remand. “Given the circumstances in this case, we find that Appellants have waived their request for remand.”

2019 Revised Subject Matter Eligibility Guidance

Chad Gilles at BigPatentData reports on the first handful of PTAB decisions considering eligibility under the 2019 Revised Subject Matter Eligibility Guidance. The outcome — 101 Rejection Affirmed in five of six cases.  Gilles writes “If your claim can still be lumped into the very broad ‘certain methods of organizing human activity’ the new guidance may not be of much help.”

LINK

 

Inventors Per Patent III

U.S. patents list the country of residence of the inventors at the time of patent issue — although I imagine that many applicants do not update residence during application pendency.  The chart below looks at the first-listed inventor for recently issued patents and then reports the average number of inventors per patent for each country.  An interesting caveat to this report is that about 8% of U.S. patents involve cross-border inventions. These are multi-inventor patents with at least two of the inventors residing in different countries.

Another Post on 101 and Statutory Text, and Hopefully my Last

By David Hricik

I’ve written on this blog my argument — I think, observation — that the text of the Patent Act does not authorize invalidity, or patentability, to be based upon Section 101.  (Here is one of them.)  Why rant again?

First, Dennis on the main page posted here the USPTO’s new guidelines on eligibility.

Second, today at the AIPLA mid-winter meeting, Bob Armitage spoke passionately about how  these guidelines are nonsensical and that we will never resolve the 101 problem because it is leading us down a path of nonsense talk.  (Is a non-mathematical concept not abstract?  What is a “method of organizing human activity?”).  The Federal Circuit in one of the Alice opinions quoted Judge Rich who said in 1946 Congress got rid of this nonsense — of what is “inventiveness” and so on — but here we are, talking nonsense.

So, this post. Here is my suggestion:  someone should assert the USPTO lacks rule making power to adopt these regulations (or guidelines) because 101 is not a condition of patentability.  Maybe the USPTO will reject the argument (I bet they will but a textualist would not), and maybe the CAFC will reject the argument (ditto), and more likely than not the Supreme Court would, too (but, I hedge my bets because several justices are textualists and the Court has actually never analyzed the statutory text).  You could, if you made this argument, end up showing the Court what the USPTO and CAFC know, which is that 112 and 103 are the authorized and regulated ways to police broad patents, and 101 is not.

Maybe you can help us stop talking nonsense.

Self-Harm: Company’s own 102(e) prior art Cancels the Patent

by Dennis Crouch

Duncan Parking Techs., Inc. v. IPS Group, Inc. (Fed. Cir. 2019) and
IPS Group, Inc. v. Duncan Solutions Inc. (Fed. Cir. 2019)

This decision involves parallel appeals from (1) a district court siding with the accused infringer on noninfringement grounds; and (2)  a PTAB IPR decision siding with the patentee confirming patentability. On appeal, the accused infringer won on several grounds, but it appears that at least some of the claims will be found both infringed and valid.

In this post, I focus on the PTAB decision and self-harming prior art.

0= 

The two patents in suit are related to single-space, credit-card enabled, solar-powered parking meters. U.S. Patents 8,595,054 and 7,854,310.  Of the two, the ‘054 patent has the earlier effective filing date (December 2006) while the ‘310 patent’s associated application was not filed until 14 months later (February 2008).  The two patents are both owned by IPS and have one overlapping inventor (King). However the patents also have several non-overlapping inventors.  Relevant for this case, Schwarz is a listed inventor of the ‘054 patent but not the ‘310 patent.

Once the ‘054 patent published in 2009, it became prior art under pre-AIA 35 U.S.C. 102(e) with a prior art date of December 2006.  102(e) offers two additional tricks for our situation here: First, a published application or patent only counts as prior art if filed “by another”; and second, 102(e) prior art cannot be used for obviousness purposes if the purported prior art is owned by the same entity as the application/patent being challenged.

By Another: This gets a little bit tricky, but the baseline law is that a prior art application is “by another” if invented by someone not listed in the later application being challenged.  Here, the purported prior art (the ‘054 patent) lists King and Schwarz as inventors — that counts as a different since Schwarz is not listed on the ‘310 patent.  However, the court allows parties to get into the weeds on this point and ask — who actually invented the particular aspects of the disclosure being used.  Here, the patentee argued that King (the overlapping inventor) is the one who created the particular disclosure.  On appeal, the Federal Circuit agreed with the legal analysis, but disagreed on the facts:

If Schwarz is a joint inventor of the anticipating disclosure, then it is “by another” for the purposes of § 102(e). . . . Because the [later] ’310 patent claims clearly include elements previously disclosed in Figure 8 [of the prior ‘054 patent], the question is whether Schwarz conceived those elements as they were disclosed in the ’054 patent. . . .

While IPS argues that Schwarz’s role consisted of “drawing a schematic,” the record shows that creating the block diagram was not a minor task. Schwarz had to coordinate with D+I as they designed a device that could
physically fit within an existing parking meter housing. As a result of Schwarz’s contribution, the ’054 patent discloses a parking meter device with a detailed electrical system, a challenge King described as one of “two big hurdles” to the invention. Thus, Schwarz’s contribution, measured against the dimension
of the full invention, was significant.

Okay, based upon the Federal Circuit’s conclusion that Schwarz is an inventor of that disclosure in the ‘054 patent and not listed on the ‘310 patent, his contribution is “by another” and thus can count as 102(e) prior art.

Same Owner: The same-owner caveat on 102(e) is quite powerful. However, pre-AIA it only applied to limit the obviousness doctrine.  Here, the challenge is anticipation and so the reference counts as prior art.

The result here is that the earlier application counts as prior art — as such, Federal Circuit reversed the PTAB decision and remanded for a finding that the claims should be cancelled.

= = = =

Note here that these details have been substantially changed by the America Invents Act. Under the new law, the same-company exception applies for both obviousness and anticipation. Thus, this case would have a different outcome.

In addition, the “by another” language was removed and replaced with “names another inventor.”  I don’t believe that this second language actually changes the law.

= = = =

The result here is that the ‘310 patent is invalid, but the ‘054 patent remains strong and at least some of its claims appear infringed.

2019 Revised Subject Matter Eligibility Guidance: Advanced Module

On February 26, the USPTO will be holding a 3-hour online training focused on the 2019 Revised Subject Matter Eligibility Guidelines.  [Free – Sign-Up Here] This will basically parallel examiner training on the same subject matter and will be led by USPTO trainers.  The Office has limited space, but has scheduled potential additional training on February 27 and 28.  Sign-up by February 3, 2019.

Read these Eligibility Guidelines from the USPTO