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Guest Post: Joinder and the One-Year Time Bar in Inter Partes Review

Guest post by Saurabh Vishnubhakat, Professor at the Texas A&M University School of Law and the Texas A&M College of Engineering. Disclosures: Professor Vishnubhakat was formerly an advisor at the USPTO, but his arguments here should not be imputed to the USPTO or to any other organization. Professor Vishnubhakat was an author of amicus briefs by Professors of Patent and Administrative Law in Wi-Fi One v. Broadcom (in support of neither party) and in Thryv v. Click-to-Call Technologies (in support of the respondent), both of which cases are discussed below.

The March 18, 2020 precedential Federal Circuit opinion in Facebook v. Windy City has notable implications for the system of inter partes review proceedings before the USPTO Patent Trial and Appeal Board. The case was about how two important provisions of the IPR statute—the one-year time bar of § 315(b) and the Director’s discretion to permit joinder under § 315(c)—interact with each other. (As those who follow PTAB issues know, the one-year time bar is also currently before the Supreme Court in Thryv v. Click-to-Call Technologies, on whether PTAB determinations about the time bar are subject to judicial review.) The holding in Windy City is fairly straightforward. The broader implications deserve some elaboration.

The Panel Decision

The panel held that § 315(c) does not authorize same-party joinder, i.e., does not allow a petitioner who has filed an inter partes review petition to join its own, earlier inter partes review petition. The panel also held that § 315(c) does not authorize issue joinder, i.e., does not allow joinder that would introduce new issues material to patentability, such as new patent claims or new grounds for cancellation. (As to the merits of the PTAB’s final written decisions on claims from each of Windy City’s four patents, the panel affirmed that the PTAB’s findings of obviousness were supported by substantial evidence—except as to the patent claims that had been improperly joined through Facebook’s later, time-barred petitions.)

The Dispute’s Background and Timeline

The case began with an infringement suit in which Windy City asserted four patents against Facebook. Exactly one year after it had been served with Windy City’s complaint, Facebook timely sought inter partes review of some, but not all, claims across all four of Windy City’s asserted patents. Taken together, the four patents contained 830 claims, though it was not yet clear which claims were in suit. The PTAB instituted review as to nearly all of the patent claims that Facebook challenged in its petitions. By the time Windy City had clarified which particular patent claims it was asserting in its district court suit, the one-year bar of § 315(b) had passed.

Facebook still sought inter partes review on the remaining patent claims asserted against it, along with a motion under § 315(c) to join these IPRs to the earlier IPRs that the PTAB had already instituted. The PTAB instituted both petitions and allowed joinder.

June 2, 2015

Windy City sued Facebook in the Western District of North Carolina.

June 3, 2015

Windy City served its complaint upon Facebook.

June 3, 2016

Facebook timely filed four IPR petitions challenging some, but not all, claims across all four of Windy City’s patents.

December 12–15, 2016

The PTAB instituted review on nearly all of the patent claims that Facebook had challenged in its IPR petitions of June 2016.

October 19, 2016

Windy City identified the patent claims that it believed Facebook had infringed.

January 12–17, 2017

Facebook filed two more IPR petitions challenging the remaining Windy City patent claims that were asserted against it—and sought joinder of these IPRs to its earlier, already-instituted IPRs.

July 31–August 1, 2017

The PTAB instituted review on both of Facebook’s additional IPR petitions and allowed them to be joined to Facebook’s earlier IPRs.

The Court’s Statutory Analysis

On the question of same-party joinder, the panel explained that the Director’s discretion under § 315(c) is only to “join as a party to that inter partes review any person who” meets certain conditions. Slip op. at 14 (emphasis added). This language excludes the joinder of a petitioner who is already a party to the existing IPR, as Facebook was in this case. The court analogized to the Federal Rules of Civil Procedure, under which “joinder of a person as a party is uniformly about adding someone that is not already a party.” Id. at 16 (emphasis in original). It also noted that joinder under § 315(c) pertains to persons, not proceedings, and that combining one IPR proceeding with another, earlier IPR proceeding was best understood in terms of a different statutory provision: consolidation under § 315(d). Id. at 14–15.

Importantly, this reading of § 315(c) does not depend on whether the later-filed petition or petitions were time-barred under § 315(b). The USPTO’s contrary view had been expressed a year ago by Precedential Opinion Panel’s review of Proppant Express Investments v. Oren Technologies. The agency’s conclusion was that same-party joinder is permissible under § 315(c)—indeed, is permissible even if the later-filed petition may otherwise be time-barred under § 315(b).

Similarly on the question of issue joinder, the panel started from the same premise that the Director’s discretion under § 315(c) is only to join a person as a party to an earlier IPR who meets certain conditions. Among these conditions is the limitation that such a joinder must be to “to an already-instituted IPR.” Slip op. at 17 (emphasis in original). This point matters because the already-instituted IPR “is governed by its own
petition and is confined to the claims and grounds challenged in that petition.” Id. at 17–18 (citing SAS Institute v. Iancu, especially that “the petitioner’s petition, not the Director’s discretion, is supposed to guide the life of the litigation”). That confinement, the court concluded, does not allow “the joined party to bring new issues from the newer proceeding into the existing proceeding.” Id. at 18.

As with same-party joinder, the court’s view against issue joinder did not depend on whether the later-raised issues were time-barred under § 315(b). And here, too, the court explained that allowing a new petition with new issues to be combined with an already-instituted petition with its own issues was simply not the purview of party joinder under § 315(c). Rather, it was the stuff of consolidation under § 315(d). Id. at 18–19.

The Court’s Deference Analysis

On both of these statutory questions, the panel concluded that the plain language of § 315(c) is unambiguous. As a result, the USPTO’s contrary view was not entitled to deference under the familiar two-step framework of Chevron v. NRDC. Id. at 23–24. The agency lost at step one.

The entire panel also went further, however, in a separate concurring opinion that offered additional views about what deference, if any, might have been owed to the USPTO as a result of its Precedential Opinion Panel’s conclusion in Proppant. The panel in its concurring opinion concluded that, even if § 315(c) were deemed ambiguous in the contexts at issue here—same-party joinder and issue joinder—the agency’s views as expressed through the Precedential Opinion Panel would still fail at Chevron step two: the most reasonable reading of § 315(c) would remain the one adopted in the majority opinion. Slip op. at 2 (Prost, C.J., conc.).

This position of non-deference and the precedential interpretations of joinder and the one-year bar together represent a major milestone in the PTAB’s adjudicatory power as well as in Federal Circuit oversight of the USPTO. It is these two very practical concerns, which are at the heart of the AIA’s system of administrative patent revocation, where the larger significance of Windy City really lies.

Implications for the PTAB and the USPTO

The District Courts vs. the Agency

That first concern of adjudicatory power is, to be more precise, about the separation of the PTAB’s power from that of the federal courts—indeed, about the AIA’s intended plan that the PTAB should act as a substitute for the courts. The one-year time bar is an especially important safeguard of that substitutionary choice, which the AIA requires petitioners to make. As I have previously discussed on this blog, the boundary-enforcing function of the one-year bar makes § 315(b) a robust statutory limit on the Director’s discretion in institution-related matters.

For purposes of judicial review, § 315(b)’s work as a statutory limit means that the en banc Federal Circuit correctly decided Wi-Fi One v. Broadcom, holding that the nonappealability of institution decisions under § 314(d) does not extend to PTAB determinations about the one-year time bar. It also suggests that the Supreme Court in Thryv v. Click-to-Call, argued last December, should affirm that § 315(b) determinations are judicially reviewable.

The problem of joinder, however, raises further questions both on its own and in combination with the one-year bar. On its own, PTAB joinder offers a mechanism for socially beneficial collective action in challenging patents whose validity may be in question. The problem of resolving patent validity through litigation in the federal courts is not limited to cost, delay, and potential inaccuracy due to the relative technical inexpertise of most judges and juries. That problem also includes the high constitutional barrier of access to federal court—in the form of Article III standing—that allows only certain parties with certain kinds of incentives even to enter the fray. PTAB proceedings under the AIA have no such standing requirement and so reduce this barrier to entry considerably.

Moreover, the Blonder-Tongue doctrine means that an unsuccessful patent validity challenge in federal court estops only the challenger, whereas a successful validity challenge invalidates the patent as against the world. Thus, federal-courts litigants with a concrete enough stake in challenging a patent generally bear all the costs of losing but must share with the world—including their competitors—the benefits of winning, creating a collective action problem. By contrast, the relatively lower costs of entering and conducting PTAB review and the ability to join inter partes review petitions as co-challengers reduce this collective action problem.

Empirical research on the PTAB offers good evidence of this intuition. For example, inter partes review (unlike covered business method review) allows not only defensive petitions by parties sued in district court for infringement but also entirely preemptive petitions by those who have yet to be sued on the patent in question. Thus, when so-called “standard” petitioners who act defensively file IPR petitions, they may subsequently be joined by “nonstandard” petitioners who are interested in striking preemptively. And across most major fields of technology, the share of standard IPR petitions (in which at least one petitioner was previously sued on the same patent) is greater than the share of standard IPR petitioners (who have themselves previously been sued on the same patent). In fact, this disparity is quite high for certainly technology categories, such as Drugs and Medical (48.5% vs. 70.8%) and Mechanical (53.1% vs. 70.2%).

What this disparity reveals is that petitioners who are not prior district-court defendants tend to use § 315(c) to join IPR petitions that have been filed by prior defendants.

Source: Saurabh Vishnubhakat, Arti K. Rai & Jay P. Kesan, Strategic Decision Making in Dual PTAB and District Court Proceedings, 31 Berkeley Tech. L.J. 45 (2016) [SSRN].

Still, though joinder under § 315(c) offers benefits for socially desirable collective action, it is easy to see how it can conflict with the overarching boundary between district courts and the PTAB, the very boundary that the one-year time bar of § 315(b) exists to enforce. If parties can evade the one-year deadline by joining already-instituted petitions, whether their own or those of others, then the substitutionary function of PTAB review is undermined, potentially significantly. But if patent owners can “run out the clock” in district court before identifying their patent claims in suit—as Facebook cautioned in this case, slip op. at 21—then petitioners may not be able to make fully meaningful use of inter partes review.

Given these competing policy choices, the practical question becomes: who should decide the contours of the PTAB-district court boundary, the USPTO or the Federal Circuit? By construing the statute for itself and giving no deference to the USPTO’s interpretation, the Federal Circuit has sent a strong signal about the degree to which the USPTO still does not enjoy full policymaking authority in the patent system.

The Federal Circuit vs. the Agency

That same strong signal from the Federal Circuit also pervades the second major concern, regarding appellate oversight of the USPTO. The panel opinion’s direct holding about § 315(c) sidesteps whether the substance of the Precedential Opinion Panel’s position would merit Chevron deference, as the statute here was deemed unambiguous. The court’s dicta in its separate concurring opinion, however, offers a stark picture of how the agency’s future positions might fare in debates over judicial deference.

In that picture, the role of the Precedential Opinion Panel is of central importance. Created in September 2018 to streamline the process by which PTAB opinions could be designated precedential, the POP marked a departure from the USPTO’s preexisting Standard Operating Procedure, which had required discussion and a majority vote from the entire PTAB membership followed by approval from the Director. That process had proven relatively unwieldy for generating case law that could effectively bind PTAB panels, and the resulting lack of precedential force had hamstrung the USPTO’s desire for deference.

For example, the Federal Circuit had previously “decline[d] to give Chevron deference to these nonprecedential Board decisions, which do not even bind other panels of the Board”—observing further that, “[i]ndeed, this court has not yet opined on whether deference is warranted for precedential Board decisions.” Power Integrations v. Semiconductor Components, 926 F.3d 1306, 1318 (Fed. Cir. 2019). And even in the present case, the Windy City concurrence still noted that “precedential value alone does not add up to Chevron entitlement.” Slip op. at 13 (Prost, C.J., conc.).

What matters more for Precedential Opinion Panel review, the court explained, is whether Congress has delegated to the USPTO the authority to speak with the force of law and whether the USPTO’s relevant statutory interpretation represents an exercise of that authority. Id. at 6 (citing United States v. Mead Corp., 533 U.S. 218, 226–27 (2001)). In the court’s view, the POP process does not rise to that level. It is true that § 316 confers rulemaking authority to govern the conduct of inter partes review proceedings. However, that authority is limited to prescribing regulations and does not include other means for adopting legal standards and procedures. Id. at 7. In this regard, POP review “is not equivalent in form or substance to traditional notice-and-comment rulemaking” and so does not rise to Chevron-worthy agency action. Id. at 12–13.

It is also true that §§ 3(b) and 3(c) delegate adjudicatory authority over inter partes review proceedings and that, according to the Supreme Court in Mead itself, the power to adjudicate is as quintessential a form of lawmaking authority as rulemaking. Id. at 8. However, that authority belongs in this case to the PTAB itself whereas the rulemaking authority of § 316 is delegated to the Director. The court observed that most modern Congressional delegations of authority to administrative agencies vest “a single delegee with both rulemaking and adjudicatory powers”—that delegee being the agency head. Id. at 9–10. The AIA, by contrast, divided the powers of rulemaking and adjudication between the Director and the PTAB. In this sort of “bilateral structure,” the two forms of lawmaking cannot be exercised interchangeably in order to achieve Chevron deference. Id. at 10 (citing Martin v. OSHRC, 499 U.S. 144, 154–55 (1991)).

Notably, the USPTO has been here before. As the Federal Circuit held in its complex and fractured en banc decision in Aqua Products v. Matal (Fed. Cir. 2017), the USPTO was not entitled to Chevron deference for its interpretation of § 316(e), which places “the burden of proving a proposition of unpatentability” upon the petitioner. The USPTO’s view at the time was that, for patent claim amendments offered during inter partes review, the patent owner bears the burden of proving that the amended claims are patentable—not the petitioner to prove that the amended claims are unpatentable. The en banc court concluded by a 7–4 majority that the USPTO’s approach did not merit Chevron deference, but the split in reasoning did much to shape the outcome.

Only five of the eleven judges had concluded that § 316(e) was unambiguous on the relevant question; the other six concluded that the statute was ambiguous. But of those latter six judges, only four concluded that Chevron deference was appropriate for the USPTO’s interpretation of § 316(e). The other two judges held that the agency had not engaged in APA-compliant rulemaking and so was not entitled to deference. Thus, the USPTO’s engagement in APA-compliant rulemaking could potentially have turned a 7–4 defeat into a 6–5 victory on the question of Chevron deference.

Source: Saurabh Vishnubhakat, The Mixed Case for a PTAB Off-Ramp, 18 Chi.-Kent J. Intell. Prop. 101 (2019) [SSRN].

Conclusion

The concurring opinion in Windy City seems to offer much the same lesson. It is not enough simply that the AIA contained delegations of lawmaking authority and that the USPTO has attempted to speak with the force of law. The institutional details of who in the USPTO received which powers—and how specifically those powers were exercised to generate the agency’s views—matters a great deal. Following an initial period of judicial latitude toward broad USPTO assertions of authority and discretion, the Federal Circuit’s more recent jurisprudence has reflected some retrenchment, such as its en banc reversal in Wi-Fi One. The same is true of the Supreme Court, which after a broadly drawn affirmation of agency discretion in Cuozzo v. Lee, took a considerably more skeptical view two years later in SAS Institute v. Iancu. This retrenchment, if it continues, will demand an increasingly formal, increasingly specific exercise of the authority that the USPTO believes it is exercising.

3D Printing, Patent Infringement, and the Coronavirus

Guest post by Prof. Lucas Osborn, Campbell University School of Law.

Never waste an opportunity in a pandemic to incur a PR disaster. That appears to be the mantra – if initial reports are believed – of an Italian company who holds a patent on a valve used in breathing machines that are critical for coronavirus patients. The company could not meet the surging demand for its valves. In response to the shortage, two engineers used 3D printers to make these essential devices locally near Brescia in northern Italy, a region the coronavirus has hit particularly hard. In response, the patent holder allegedly threatened a patent infringement lawsuit against them.

In a remarkable testament to the speed and flexibility of 3D printing technology, on the same day the engineers learned about the shortage of valves, they were able to create a digital version of the valve and 3D print working valves. Within a day they had made over 100. (As an aside, 3D printing is at the core of a rapid move to create an open source ventilator to combat shortages.)

To be fair, the company, and one of the individuals doing the 3D printing, denies a threat was made. Although the company did refuse to share the design file with the individuals, forcing them to create a 3D printable digital file from scratch.

Regardless, this episode represents the first widely publicized instance of 3D printing technology being used to (arguably) infringe a patent on a medical device. Patent infringement and 3D printing involves several interesting patent issues on which I have previously written here (with Professor Tim Holbrook) and here.

The key to appreciating the unique patent infringement issues with 3D printing is to keep in mind the difference between the digital and physical version of the patented device. In just about every case, the patent covers only the tangible object, not the digital version of it. Therefore, merely creating a 3D printable file of the device is not an act of direct infringement.

Direct Infringement

On the other hand, anyone who prints the physical valve commits direct infringement for “making” the patented device. But even the issue of who performs the actual printing will not always be clear. For instance, assume that X makes the digital file, but does not have the appropriate 3D printer. X takes the file to Y, an on-demand 3D print shop, who prints the object on X’s behalf. Did X or Y “make” the invention? In the copyright context, companies like YouTube have avoided liability for direct infringement by arguing they are passive conduits for their users’ actions. Perhaps 3D print shops will be able to make the same argument.

Indirect Infringement

Getting back to the digital file, although the engineers printed lots of valves for local use, they declined to share the file with others out of fear of patent liability. Their fear was not misplaced. A person can be liable for indirect patent infringement for helping or inducing others to commit direct patent infringement. And the person can be potentially liable in any and all countries where the direct infringement occurred or was facilitated (unlike the US, many other countries do not require a specific act of direct infringement as a precursor to indirect liability).

In the US, the relevant indirect liability would be inducement under 35 U.S.C. § 271(b), which states simply that, “Whoever actively induces infringement of a patent shall be liable as an infringer.” Although the statute does not say so, liability for inducement requires that the accused have knowledge of the specific patent and that the induced acts constitute patent infringement. Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 765-68 (2011). If the engineers in Italy were in fact warned of a specific patent, that would likely be enough to meet the knowledge requirement.

Knowledge can be negated by a good faith belief of noninfringement, but it cannot be negated by a good faith belief in the patent’s invalidity. Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 1928 (2015). Courts have not had an opportunity to explore what is required for an individual, as opposed to a company, to form a good faith belief of noninfringement. Would a layperson’s study of the patent suffice, or must they incur the huge expense of a formal legal opinion?

In most European countries, indirect liability applies where someone

supplies or offers to supply in [the country] . . . with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the [the country].

See, e.g., UK Patent Act § 60(2). (Most European countries have similar provisions because their statutes are all based on the 1975 Community Patent Convention.) Although the statute requires actual or constructive knowledge, the details of that knowledge requirement are unsettled: must the infringer have knowledge of the specific patent or merely knowledge of the acts that the direct infringer will take. If courts only require knowledge of the induced acts, liability would attach regardless of any specific knowledge of the patent.

In short, creators of 3D printable files, especially those with knowledge of a relevant patent, should be wary of making them available for others on the internet.

Love Your Neighbor, or At Least Your Reputation

Although the coronavirus pandemic inflames passions when needed medical equipment is in short supply, it is important to remember that in emergencies Article 31 of TRIPS, the key international patent treaty, provides flexibilities for governments to use – and authorize others to use – patents without the consent of patent holders.

The above analysis focuses only on the legal issues. Even if the patent holder is more interested in making money than saving lives, it may be wise to consider the reputational and other costs associated with denying live saving equipment to hospitals in need. Others, including patent holders relating to vaccine development, have initially threatened patent infringement suits only to backtrack after a storm of public outrage. So even if the patent holder made a threat to someone in Italy (and it is not at all clear that it did), it would be no surprise that it decided to change tactics.

Jury Verdicts in Design Patent Cases

Hafco Foundry and Machine Co. v. GMS Mine Repair and Maintenance, Inc. (Fed. Cir. 2020).

Hafco’s US Design Patent D681,684 covers an ornamental design for a “Rock Dust Blower.” GMS was Hafco’s distributor. After a breakup GMS started selling its own version.

The jury awarded a verdict of $123k and the district court issued a permanent injunction. However, in a post verdict ruling, the district court remitted the damages award to zero and ordered a new trial on damages.  The court also denied GMS’s motion for judgment as a matter of law (JMOL) on non-infringement and GMS appealed.

The basic question in the appeal is the extent that functional elements of the design can be protected by design patent.  Unlike copyright, design patent law does not have a statutory requirement that ornamental features of a design be separable from the functional elements.  I have never used a “rock dust blower”, but nothing in the design shown above appears purely decorative.  At the same time, I can imagine many ways to make a fully functional and relatively inexpensive “rock dust blower” that use different design features than those drawn by the patentee here.  Unfortunately, during the trial (or pre-trial) GMS never pointed to (or provided evidence on) the particular functional aspects of the design here that should have been excluded. As such, the Federal Circuit found the issue waived

Because GMS never made this non-infringement argument at the district court, nor presented relevant evidence on the functional or prior art aspects of the ‘684 patent to the jury, GMS has not preserved the argument for appeal.

Slip Op.

Jury Instructions – Functionality:  A jury is supposed to be instructed on the law.  Here, GMS asked for a jury instruction that “a design patent protects only the non-functional aspects of the design as shown in the patent drawings, if there are any such nonfunctional aspects.”  The did not use GMS’s proposal and GMS did not subsequently object to the Jury Instructions provided by the court. That lack of second-round objections to jury instructions is required under FRCP 51(d)(1) unless the instructions fall under the “plain error” exception of FRCP 51(d)(2).

(2) Plain Error. A court may consider a plain error in the instructions that has not been preserved as required by Rule 51(d)(1) if the error affects substantial rights.

On appeal, the Federal Circuit found no “plain error” and in fact no error at all.  The court particularly walked through and approved the following jury instructions:

Ordinary Observer:

An ordinary observer is a person who buys and uses the product at issue.

The appellate panel found no error with this instruction.

Differences from the Prior Art:  Under Egyptian Goddess, the infringement test compares the design patent images with with the accused product while keeping the prior art in-mind.  Here, for instance, the 55 gallon drum used in the patent is at least prior art.

The jury was not properly instructed to “familiarize yourself with each of the prior art designs that have been brought to your attention.” Rather, the court simply asked the jury to compare the design patent to the accused product:

You must only compare GMS’ accused rock dust blower to the ’684 design patent when making your decision regarding infringement.

On appeal, the Federal Circuit confirmed that this is a special case since the accused infringer – GMS – did not present any prior art for comparison. “Given that there was no prior art introduced at trial, no attempt by GMS to introduce the prior art, and no proposed jury instruction on this issue, the purported exclusion of this instruction cannot be error.”

Affirmed.  In hindsight, this case looks like a failure of lawyering by the defendant.  However, part of the issue here is that we were talking about only $100,000 and the level of lawyering required for a strong appellate case costs more than that.  In addition we have a situation where it sure looks like the defendant intentionally made a knock-off product.

Crouch’s Advice: If you are going to litigate a design patent, hire someone who has previously litigated a design patent (even though there are not that many folks).  If you already have litigation counsel that you trust, have them bring in an additional design patent litigator (likely from another firm) to add to the team. The difficulty here is that design patent law is different enough to get folks in deep trouble who assume they understand the process.

= = = =

Damages: Dissent by Judge Newman concurred with the opinion discussed above but also added her own opinion resolving the question of damages that was apparently not appealed. The jury verdict (image below) shows damages of $123k and were measured by GMS’s infringing sales under a profit disgorgement theory.  The problem though is that Hafco eventually elected to pursue damages based upon its own lost profits rather than profit disgorgement.  Clear error there by the jury and so it looks like it should require a new trial unless remittur works.

Remittur: When the jury verdict size cannot be supported by the evidence presented, the court may order a new trial (as here) under R.59.  In addition, the court can also offer the plaintiff the option to accept a lesser amount of damages – an amount that is supported by the evidence. This option is a remittur.  Here, the judge offered the Hafco a remittur of $0 in damages, which Hafco rejected in favor of a new trial.  In her dissent, Judge Newman suggested that the proper amount for Remittur would be $110,000 which (according to her) was the patentee’s undisputed lost profits.

Hafco suggests that remittitur to Hafco’s lost profits of $110,000 would be a more reasonable action than remittitur to zero, for $110,000 reasonably implements the jury’s verdict and intent. . . .

I would simply correct the district court’s judgment, and remit the damages award to the undisputed amount of $110,000. A new trial, on undisputed facts, is not needed to serve the purposes of the jury verdict.

Dissent.  On remand, the court may take Judge Newman’s arguments to heart and reconsider the new trial with a R.60(b) order.

= = = =

I also want to just note for a second that the lids here appear to have major differences in design.

Sequenom Back Again: This time Patent Eligible

by Dennis Crouch

Illumina, Inc. and Sequenom, Inc. v. Ariosa Diagnostics, Inc. (Fed. Cir. 2020)

These parties were before the Court back in 2015 in a case that ended with a big holding that Illumina & Sequenom’s patents were invalid as directed to an unpatentable natural phenomenon.  The discovery here is super interesting — a pregnant mother has the baby’s DNA floating around in her plasma.  Turns out that there is lots of DNA floating around in a human body: mother DNA; baby DNA; bacterial DNA; viruses; mitochondrial; etc.  The researchers here used a smart way to find the baby-DNA in the mess that relies on the fact (i.e., natural phenom) that baby-DNA is part mother and part father.  The researchers got a sample of paternal DNA (from the father) and then looked for DNA in the mother’s plasma that included segments that matched the father’s DNA.  Prior to this breakthrough some parents agonized over whether to collect some baby DNA by sticking a big needle into the amniotic sac.  That approach had the problem of causing death in a small number of cases.   In any event, the 2015 Federal Circuit held the patent claims ineligible and the Supreme Court denied certiorari.

The present case involves two additional patents that use the same natural phenomena to solve the same problems.  An important added element here is that the inventors also found that baby-DNA fragments in the plasma tend to be shorter than the mother-DNA in the plasma.  Both patents here take advantage of this phenomenon to claim methods of preparing DNA for testing. The patent document explains this finding as follows:

[S]urprisingly, the majority of the circulatory extracellular fetal DNA has a relatively small size of approximately 500 base pairs or less, whereas the majority of circulatory extracellular maternal DNA in maternal plasma has a size greater than approximately 500 base pairs. . . . This surprising finding forms the basis of the present invention according to which separation of circulatory extracellular DNA fragments which are smaller than approximately 500 base pairs provides a possibility to enrich for fetal DNA sequences from the vast bulk of circulatory extracellular maternal DNA.

‘751 Specification.

The district court ruled the asserted claims ineligible.  On appeal here, however, the Federal Circuit has reversed — holding that these claims are directed at a technical solution that crosses the threshold into a patent eligible invention.

We conclude that the claims are not directed to that natural phenomenon but rather to a patent-eligible method that utilizes it.

This is a split decision with Judge Lourie explaining why the claims are patent eligible and Judge Reyna dissenting. Judge Moore signed-on with the Louri opinion making the result 2-1.

= = = =

The patents here both relate to preparing sample to be tested. U.S. Patent 9,580,751 claims a method of “preparing a DNA fraction from a pregnant human female.” Claim 1 includes three steps:

(a) extracting DNA from pregnant mother’s blood plasma [this should include both fetal and maternal DNA fragments];

(b) using “size discrimination” to remove DNA fragments greater than ~500 bp; [This results in what the claims call a “fraction of the DNA”.]

(c) analyzing a genetic locus in the fraction of DNA produced in (b). [Although not stated, this analysis could discern whether the DNA is fetal and the presence of genotypic abnormalities.]

U.S. Patent 9,580,751 Claim 1. The ‘931 patent is almost identical — it removes DNA fragments < 300 bp instead of 500 bp.

Note here that prior to the invention researchers already knew how to do all of these steps individually. However, there was no reason to separate-out the <500 bp fragments prior to the discovery of the phenomenon that most of those would be fetal DNA. This is what lead Judge Reyna to reject the claims as ineligible:

The patents’ only claimed advance is the discovery of that natural phenomenon. The claims, the written description, and the legal precedent applicable to this case all support the conclusion that the patents are ineligible. . . .

The inventors discovered a natural phenomenon: that cff-DNA tends to be shorter than cell-free maternal DNA in a mother’s blood. . . . Other than the surprising discovery, nothing else in the specification or the record before us indicates there was anything new or useful about the claimed invention.

Bottom line, researchers discovered that most of the fetal DNA in the plasma is <500 bp and the resulting invention directly applies that and broadly claims fractioning-out DNA from the plasma that is <500 bp.

The majority agreed that “the inventors were not entitled to patent the natural phenomenon that cell-free fetal DNA tends to be shorter than cell-free maternal DNA.”  Here, however, the majority concludes that the claimed method merely takes advantage of that phenomenon “by employing
physical process steps to selectively remove larger fragments of cell-free DNA and thus enrich a mixture in cellfree fetal DNA.”

In prior cases the Federal Circuit has distinguished between unpatentable diagnostic methods and patent eligible methods of treatments. In this case, the court places the inventions at issue in a third category: method of preparation.

This is not a diagnostic case. And it is not a method of treatment case. It is a method of preparation case.

This line allows the court to distinguish the case from the prior Ariosa decisions and find the claims patent eligible.

Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak

The United States Patent and Trademark Office (USPTO) considers the effects of the Coronavirus outbreak that began in approximately January 2020 to be an “extraordinary situation” within the meaning of 37 CPR 1.183 and 37 CPR 2.146 for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners.

USPTO Alexandria Campus Building

Patent applicants will be able to file a petition to revive and the PTO will waive the fee for those “who were unable to timely reply to an Office communication due to the effects of the coronavirus outbreak, which resulted in the application being held abandoned or the reexamination prosecution terminated or limited.”

The petition to revive “must include a statement that the delay in filing the reply required to the outstanding Office communication was because the practitioner, applicant, or at least one inventor, was personally affected by the Coronavirus outbreak such that they were unable to file a timely reply.”

[coronavirus_relief_ognotice_03162020]

Supreme Court Postpones Oral Arguments

The Supreme Court has postponed oral arguments for its upcoming March session.  This includes two IP cases:

  • PTO v. Booking.com (Can .COM transform an otherwise generic term into a protectable trademark?)
  • Google v. Oracle (Is a software interface [an the JAVA API] protectable by copyright?)

The Federal Circuit’s next oral arguments are in April and so the court can delay any particular decision on the issue.  If you have a case before a district court judge or PTAB, check with your judges and clerks to understand timelines going forward.

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AIA Patents Update

The chart above should be no surprise. Most pending applications before the PTO are now post-AIA patent applications. These are applications that were filed on or after March 16, 2013 and don’t claim priority to any prior patent filing. Note here that the PTO does not appear to enter the final AIA-status for some new applications filed with missing parts and so the numbers for the recently published cases may shift somewhat. The bulk of U.S. patents issue within four years of their priority filing date. However, there is a fairly long-tail. The patent with the longest pedigree for 2020 (thus far) is US10539396 for a dual-mode seeking missile (using both IR and RF sensors to direct a missile. The patent application was kept confidential on Gov’t order from 1976 – 2018.

USPTO cancels in-person meetings

From The PTO: Until further notice, examiner and examining attorney interviews, Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) oral hearings, and other similar in-person meetings with parties and stakeholders scheduled to take place at USPTO offices on or after Friday, March 13, 2020 will be conducted remotely by video or telephone. Parties will receive further instructions on how to participate by video or telephone in advance of the interview, hearing, or meeting.

If you have any questions, please contact the following:

  • For patent examiner interviews, please contact the examiner or the examiner’s supervisor (SPE) directly. Additionally, if you have any questions about telephonic or video interviews in general or are unable to reach the examiner or SPE with respect to a particular interview, please email: ExaminerInterviewPractice@uspto.gov
  • For trademark examining attorney interviews, please contact the managing attorney.
  • For PTAB oral hearings, please contact PTABHearings@uspto.gov or call 571-272-9797.
  • For TTAB oral hearings, please contact TTABHearings@uspto.gov or call 571-272-8500.
  • For other in-person meetings, please contact your USPTO point of contact for that meeting.

Exclusionary Conduct

Sen. Klobuchar has proposed a new law titled the “Anticompetitive Exclusionary Conduct Prevention Act of 2020.” [PDF of Bill]

The key provision is as follows:

It shall be unlawful for a person, acting alone or in concert with other persons, to engage in exclusionary conduct that presents an appreciable risk of harming competition.

Here, exclusionary conduct is defined as conduct that disadvantages “actual or potential competitors” or “tends to foreclose or limit the opportunity of 1 or more actual or potential competitors to compete.”  For companies our groups with large market share, we assume that if they undertake exclusionary conduct then it will harm competition unless the procompetitive benefits are proven.

The bill is interesting in that it has a small caveat for securing and enforcing intellectual property rights:

Applying for or enforcing a patent, trademark, or copyright, unless such applications or enforcement actions are baseless or made in bad faith, shall not alone constitute exclusionary conduct, but such actions may be considered as part of a course of conduct that constitutes exclusionary conduct.

Thus, under the provision, “good faith” enforcement actions would not – alone – be actionable, but could be combined with other activity to show that the patent holder injured competitors.

I don’t understand why the competitors can’t just eat together politely. 

 

USPTO hiring hundreds of new examiners in 2020

The USPTO has indicated that it is planning to hire “hundreds” of new patent examiners this calendar year, including individuals with backgrounds in biomedical, computer, electrical, and mechanical engineering.

More here: https://www.uspto.gov/about-us/news-updates/uspto-hiring-hundreds-new-examiners-2020

Find USPTO Jobs Here: https://www.usajobs.gov/Search?l=&l=&a=CM56&hp=public&k=patent%20examiner&p=1

Zis is vat happens venue disrespect my sovereignty

by Dennis Crouch

Board of Regents of the University of Texas System, et al. v. Boston Scientific Corporation, No. 19-1110 (Supreme Court 2020).

While we await a handful of interesting state copyright law issues from the US Supreme Court, a new petition from the State of Texas asks for some respect as well. In the case, UT sued Boston Scientific for patent infringement in W.D.Tex. Federal Court.  However, venue turned out to be improper and the case was transferred to D.Del.  Texas has argued that a state has the right to enforce its actions – seek redress for harms against the state — within the borders of its own state.

Supreme Court Petition question:

Whether a state’s sovereign right to try its causes within its borders when there is personal jurisdiction over the defendant renders unconstitutional a federal patent venue statute applied to force the state sovereign to sue the in-state infringer in a federal court located in another state.

[Petition].  In Ohio v. Wyandotte Chemicals Corp., 401 U.S. 493 (1971) the Supreme Court wrote that the Founders believed that “no State should be compelled to resort to the tribunals of other States for redress.”  However, the “Constitutional” limitation is one implicit in the structure of our multi-sovereign federal system rather than with express language in the document.

Sovereign Indignity: Texas must Litigate its Infringement Case in Delaware

 

Keeping Your Settlement Secret from the Court?

by Dennis Crouch

I’m going to link-in with Prof. Hricik on this case — it feels wrong to me to “settle” a lawsuit using a secret side-bet about how the court will decide a particular motion and then only reveal the settlement after the motion is decided. However, the court didn’t appear to blink its eye. 

In Diem LLC v. BigCommerce, Inc., the defendant BigCommerce asks the Federal Circuit to reconsider its legal definition of “prevailing party” in order to allow attorney fee shifting:

According to the Supreme Court, the phrase “prevailing party” bears a uniform meaning across fee-shifting statutes. CRST Van Expedited, Inc. v. EEOC, 136 S.Ct. 1642 (2016) (“Congress has included the term ‘prevailing party’ in various fee-shifting statutes, and it has been the Court’s approach to interpret the term in a consistent manner.”).

The Federal Circuit has not respected that mandate. Its “prevailing party” jurisprudence has diverged from most sister circuits in contradiction of Supreme Court law.

[En Banc Petition]. The particular legal issue here is if a patent infringement settlement agreement can create a “prevailing party” that could then result in an attorney fee award.

While this legal question is important, a big issue in the case for me is the cooperation between the parties to get the court to decide an issue after the case had been settled.

In 2018 Diem sued BigCommerce for patent infringement, BigCommerce responded with a motion for summary judgment of non-infringement based upon a joint infringement argument.  The parties “settled” the case prior to the court’s determination of the MSJ.  “Settled” is in quotation-marks because the agreement was not a complete settlement but rather a conditional agreement creating what I call a side-bet.  Under the agreement – If the MSJ is denied and the court finds that a the infringement contentions included a joint infringement claim then BigCommerce gets $30k; otherwise case dismissed with no payment. I put together the following flow-chart for how the settlement agreement works.  Note that the agreement also includes a contractual requirement to for BigCommerce to resubmit its summary judgment motion if the joint infringement contention issue isn’t addressed in court’s first determination.

[Note – my flow chart is slightly simplified from the contract language].

]The following language comes from the settlement agreement:

MSJ Denied: If the MSJ is denied and the Court rules that Joint Infringement [was disclosed in the infringement contentions], then BigCommerce will pay Diem the sum of $30,000.00 (the “Payment”). . . .

Any Other Outcome: If any other outcome occurs, then Diem agrees to the following (collectively, a “BC-Favorable Resolution”): (i) Diem will walkaway and will not appeal or object to any order(s), (ii) the parties will allow the Court to determine the prevailing party and enter a final judgment, and (iii) if the case is not otherwise disposed, the parties will move to dismiss the action with prejudice (with clear language that BigCommerce did not pay Diem to settle this action).

Note here that the settlement agreement was not filed with the district court at that time — rather the parties waited for the court to rule on the summary judgment motion before telling the court that they had settled the case.

When it finally ruled on the motion, the district court granted summary judgment but did not address whether Diem had disclosed joint infringement in its original contentions — explaining that the theory was mooted by amended contentions and the court’s claim construction ruling.  After then being confronted with the settlement agreement, the Court (now a different judge) went ahead and decided the joint infringement disclosure question — holding that joint infringement was not disclosed in the original contention. The result then under the settlement: case-dismissed with no money being paid.

Prevailing Party: The defendant BigCommerce thought that it won — case was dismissed with prejudice in favor of the defendant — and consequently asked for prevailing-party attorney fees under Section 285.  The court quickly shot-down that request — holding that the case had no prevailing party because it was settled.

While the Court granted Defendants’ motion, resulting in BigCommerce not having to pay anything, this precise scenario was contemplated by the parties and accounted for in the Settlement Agreement. Thus, there is no “prevailing party.”

This decision fits to Federal Circuit precedent in Exigent Tech. v. Atrana Solutions, Inc., 442 F.3d 1301, 1312, (Fed. Cir. 2006) (“An award of [attorney fees] was not proper unless Atrana was a prevailing party. Atrana cannot be a prevailing party if the case was resolved by settlement (not incorporated by judicial decree) prior to any relief on the merits.”).  On appeal, the Federal Circuit affirmed the award in a R.36 judgment without opinion.  The major twist here as suggested by the en banc request is that the Supreme Court has – in other contexts – repeatedly held that a prevaling party can be determined based upon a settlement where the question is left for the court to decide. See Maher v. Gagne, 448 U.S. 122 (1980); Perdue v. Kenny A. ex rel. Winn, 559 U.S. 542 (2010)

UK Patent Law Primer: Reading through Judge Stone’s New Opinion

by Dennis Crouch

Geofabrics Ltd. v. Fiberweb Geosynthetic Ltd. [2020] EWHC 444 (Pat) [[2020] EWHC 444]

In the UK, Geofabrics just won a judgment of infringement against Fiberweb for its European Patent No. 2 430 238.  The parallel U.S. Patent 8,978,995 has not yet been enforced.  I thought I would walk through the decision looking at how UK Judge Mr. David Stone handled issues and their parallel US comparison.

The invention here is a fairly expensive multi-layer geo-liner for a railway. The layered product includes two support layers sandwiching a filtration layer — this filtration is the key to the invention.  The filtration layer is “normally impermeable to water” but allows water to pass upward through the layer when under high pressure (rail car).  The inventors called it a filtration layer because it only allows water to pass through and leaves behind silt and clay-fines in order to avoid erosion.

The defense offered several reasons for denying the infringement: lack of novelty, obviousness, and insufficiency of the claims and disclosure.

Novelty: The UK novelty law is substantially parallel to that of the U.S., although with a somewhat heightened enablement requirement. In a 1972 opinion, Lord Justice Sachs provided the following metaphor to the law of (land) discovery:

To anticipate the patentee’s claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented … A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentees.

General Tire & Rubber Co v Firestone Tyre & Rubber Co Limited [1972] RPC 457.  More recently, UK courts have noted that an anticipatory references must both disclose the claimed invention as and also “enable the ordinary skilled person to perform it.” Synthon BV v SmithKline Beecham plc [2006] RPC 10 (Lord Hoffman).

In the present case, the Judge Stone found that multi-layer fabric in the prior art lacked the precise permeability spectrum claimed in the invention.

Obviousness in the UK similarly parallels the U.S. law’s Graham analysis:

(1) (a) Identify the notional [skilled addressee]; (b) Identify the relevant common general knowledge of that person;

(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;

(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;

(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?”

Pozzoli SpA v BDMO SA [2007] EWCA Civ 558 (Jacob LJ).  The UK statute itself is simple asking is the invention “obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art.” The Patents Act 1977 (as amended).  Note here that the UK statute limits obviousness analysis only to publicly-available prior art while secret prior art (such as prior filed applications) are available only for novelty analysis.

The case here focused also on two sub elements:

  • Obvious to try: There must be at least a reasonable expectation of success of a combination.
  • Long-felt want: Something often pleaded but rarely with success.  However, it can turn “apparent technical obviousness” into a judgment of non-obviousness.

In his opinion, Judge Stone again sided with the patentee — finding that although the prior art addressed under-track erosion using a barrier — it’s solution was quite different in practice.

[I]t is by no means clear to me that a skilled addressee equipped with the CGK [Common General Knowledge] would:

(a) replace an impermeable membrane with a permeable one; (b) introduce a filtering element when none is hinted at in Jay; and (c) choose a geomembrane that operated under the load of a train – that is, it would allow water to pass up through it (whilst being filtered) only under the pressure of the load of a train, and not under the pressure of the tracks and ballast in the absence of a train.

In my judgment, the Patent is not obvious over Jay.

Insufficiency: The court examined three defenses under the umbrella of “insufficiency”: Uncertainty (sometimes called ambiguity); Classical insufficiency/lack of enablement; and Lack of plausibility.  The statute provides that the specification must “disclose the invention clearly enough and completely enough for it to be performed by a [skilled addressee]”.  72(1)(c) of the Patents Act 1977.

Insufficiency – Uncertainty is basically the same as claim indefiniteness in the U.S. — requiring undue effort to understand the scope of the claims. Here, the court found that the claim requirement of being “normally impermeable” was not unduly uncertain.

Classical Insufficiency is parallel to enablement in US law — the specification must enable a person killed in the art to perform the invention without undue burden.  Here, the court found that some testing was necessary to create the claimed permeability profile, but that testing was “not unduly burdensome.”

Insufficiency – Plausibility: In the UK, the plausibility doctrine has some flavors of US utility doctrine.  Normally, plausibility will be assumed. However, courts have raised suspicion in situations where an inventor could easily file many patents based upon pure speculation of success.  One example of this might be a new medical use of a known drug (“second medical use claim”).  In that situation, the UK Courts require “some disclosure as to how or why the known product can be expected to work in the new application.”  In rejecting this defense, the court noted that a patent for a new product (as here) is “almost always” plausible.

Infringement: The court found infringement both literally and as equivalence.  For equivalence – the court applies a result-way test: “Substantially the same result in substantially the same way.” Actavis UK Ltd v Eli Lilly and Co [2017] UKSC 48 (Lord Kitchin JSC). Equivalence can be negated based upon evidence that patentee “intended that strict compliance with the literal meaning . . . was an essential requirement of the invention.” Id.  In this case, the question of what “normally” impermeable meant. The court found that the accused product fit that term or was at least the equivalent.  The basic argument on the other side was that the layer might be permeable under the weight of flood-water and in some parts of the UK floods regularly occur.

In the end, the court upheld the patent and found it infringed. The next steps in the case will be to consider remedies. The patentee has requested damages as well as injunctive relief.

Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Computer as a Tool: Abstract Idea

Customedia Tech. v. DISH Network (Fed. Cir. 2020)

The PTAB sided with the patent challenger DISH – cancelling the challenged claims of Customedia’s US Patents 8,719,090 and 9,053,494.  On appeal, the Federal Circuit has affirmed – holding that the “claims are ineligible under § 101.”

The invention here relates to facilitating advertising via multimedia system. The Federal Circuit provided the following example synopsis: “a cable set-top box with built-in storage sections that may be leased or sold to advertisers.”  The claims also include a remote server that provides the advertising data.

Alice Step 1: The patentee argued that specifically allocating data space for advertising was an improvement to computer functionality — it ensures that space is available for advertising. On appeal, the Federal Circuit disagreed:

To be a patent-eligible improvement to computer functionality, we have required the claims to be directed to an improvement in the functionality of the computer or network platform itself. . . . [I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool. . . . We have also held that improving a user’s experience while using a computer application is not, without more, sufficient to render the claims directed to an improvement in computer functionality. . . .

The claims here . . . do not enable computers to operate more quickly or efficiently, nor do they solve any technological problem. They merely recite reserving memory to ensure storage space is available for at least some advertising data. . . . The only improvements identified in the specification are generic speed and efficiency improvements inherent in applying the use of a computer to any task. Therefore, the claimed invention is at most an improvement to the abstract concept of targeted advertising wherein a computer is merely used as a tool. This is not an improvement in the functioning of the computer itself.

Abstract idea.

Proving Unintentional Delay

The UPSTO has published a new Federal Register notice titled “Clarification of practice for revival, reinstatement, and delayed priority petitions.”

Here, the PTO is explaining that it is going to require patent applicants to submit “additional information” to explain its claim of “unintentional” delay in meeting a particular deadline.  Additional information will be required by the PTO when:

  • a petition to revive an abandoned application is filed more than two years after the date the application became abandoned;
  • a petition to accept a delayed maintenance fee payment is filed more than two years after the date the patent expired for nonpayment; and
  • a petition to accept a delayed priority or benefit claim is filed more than two years after the date the priority or benefit claim was due.

The notice also indicates that the PTO might also require additional information in other situations where there is “a question as to whether the delay was unintentional.”

Up to now in these situations, the USPTO has simply allowed the attorney or party to sign a statement that the entire delay was unintentional — relying upon the duty of candor and good faith to ensure that the claim was accurate. However, that structural trust appears to be breaking down.

Fed Reg Notice.

37 CFR 1.137 already indicates that the PTO “may require additional information where there is a question whether the delay was unintentional.”  What is happening here appears to be an expansion of this regulation.

Inherency as an Element of Obviousness

Hospira v. Fresenius (Fed. Cir. 2020)

Hospira lost at the district court on obviousness — with the court finding its asserted Claim 6 of US8648106 invalid as obvious. On appeal, the Federal Circuit affirmed and now Hospira has petitioned for en banc rehearing — focusing in on the role of inherency in combining prior art.

[Fed. Cir. Decision][Hospira Petition]

The claim is directed to the sedative dexmedetomidine in a “ready use liquid pharmaceutical composition” in a glass container and a shelf-life of 5-months with “no more than about 2% decrease” in the concentration of the active drug.

The “no more than about 2%” loss claim appears functionally described result — if you build the vial and fill it in the way described by the inventor then you’ll presumably get the shelf life.

Here, all of the limitations found in the claim are found within the prior art and the district court held that it would have been obvious for PHOSITA to combine the references as such. The one lacking element was the <2% loss limitation — that one was not expressed in the prior art.  However, the district court concluded that the functional limitation is an inherent result of the combination — and thus the whole claim is obvious.

Petition question:

Whether a party seeking to show that a property is inherent in a combination of prior art disclosures must affirmatively prove that the property is necessarily present in that combination, regardless of how that combination is prepared.

Hospira’s basic arguments here are (1) that inherency for obviousness must be proven with clear and convincing evidence and (2) that inherency for obviousness only ‘counts’ if necessarily present in the proposed combination, not merely likely or possibly present.

In their 2005 paper on Inherency, Professors Dan Burk and Mark Lemely took the position that inherency should have almost no role in the obviousness analysis because of its hindsight approach.

Hindsight reconstruction of the invention, looking back at the prior art to second-guess the inventor once the invention is available, is anathema to an obviousness assessment. But inherency is all about hindsight—a recognition today that an invention was present in the prior art, even though it was not understood to be there at the time.

Given the hindsight limitations on obviousness, we expect the role of inherency under § 103 to be extremely limited, if not altogether nonexistent.

Dan Burk, Mark Lemley, Inherency, 47 William & Mary Law Review 371 (2005).