Tag Archives: Section 103

Goodbye Rosen references, hello Jennings references?

Guest Post by Sarah Burstein, Professor of Law at Suffolk University Law School

LKQ Corp. v. GM Global Tech., 21-2348 (Fed. Cir. 2024) (en banc).

In its decision in LKQ v. GM, the en banc Federal Circuit may have raised as many questions as it answered. For now, I’d like to focus on one:  What counts as a proper primary reference under LKQ?

While the Federal Circuit overruled the Rosen requirement that a primary reference look “basically the same” as the claimed design, the court did not overrule the requirement that there be a primary reference.

According to the Federal Circuit “In applying Graham factor one, the scope and content of the prior art, a primary reference must be identified.” And, as required by Rosen, that primary reference must still be “something in existence,” not “something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature.” But for this last point, the Federal Circuit doesn’t cite Rosen. Instead, it cites the decision that Rosen cited for that point, In re Jennings, 182 F.2d 207, 208 (CCPA 1950).

So what does Jennings tell us about references and § 103? Not much. Here is the entirety of the CCPA’s discussion of the issue:

In the instant case individual features seem to have been selected from different of the reference patents and compared with features shown in appellant’s drawings. In other words, it seems to have been held that by selecting features taken from five different patents, that is, none feature from one patent, another from another, etc., a device might be considered which would so closely resemble the drawings of appellant that his design would not be patentable over such possible construction.

We feel constrained to disagree with the concurring conclusions reached by the tribunals of the Patent Office.

In considering patentability of a proposed design the appearance of the design must be viewed as a whole, as shown by the drawing, or drawings, and compared with something in existence—not with something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature, as would be required here.

182 F.2d 207 at 208. The Jennings court lists the cited references but does not say—let alone show—which “features seem to have been selected” from each or how they were “compared with features shown in appellant’s drawings.” Nonetheless, the CCPA did helpfully emphasize that, in analyzing whether a design is obvious, the design must be considered as a whole.

Going back to LKQ, the en banc Federal Circuit further tells us that “[t]he primary reference will likely be the closest prior art, i.e., the prior art design that is most visually similar to the claimed design” and that “[t]he primary reference will typically be in the same field of endeavor as the claimed ornamental design’s article of manufacture, but it need not be, so long as it is analogous art.”

So what to make of all of this?

First, and perhaps most importantly, the Federal Circuit’s decision in LKQ is a clear repudiation of the Frankenart approach to design patent obviousness. A challenger (or an examiner) can’t just slice and dice a design claim into “limitations,” find those in the prior art, and then stitch them together into an invalidating reference. That’s a good thing.

Second, we know that a proper primary reference no longer has to look “basically the same” as a claimed design, as that phrase was applied by the Federal Circuit. (For a few examples of the extremely high degree of visual similarity required by the Federal Circuit prior to LKQ, see here and here.)

Nonetheless, the court’s citation to and reaffirmation of the Jennings rule suggests that, even after LKQ, a primary reference must still have at least some quantum of overall visual similarity. If no reference looks at least somewhat similar to the claimed design, then are we not simply “selecting individual features from prior art and combining them” to invalidate the design?

So what about Whitman Saddle? The LKQ court tells us that it doesn’t matter that Whitman Saddle predated the enactment of § 103 and spoke about “invention,” not obviousness. They tell us, without any citation or explanation, that “[t]he reasoning of Whitman Saddle carries over to the modern § 103 standard of obviousness.” (I suspect that Judge Rich would have disagreed.) Perhaps some patent challengers will attempt to argue that, following LKQ, “half is enough”—i.e., that if half of the claimed design can be found in a piece of prior art, that constitutes a proper primary reference. I don’t think that’s right. Whitman Saddle was a case with unusual facts and, in its discussion, the Supreme Court expressly relied on the existence of a “mix and match” custom in the field of saddle design. In that case, the Supreme Court tells us, the issue wasn’t that the different parts of the claimed saddle design could be found in the prior art and hypothetically could have combined but rather because, the Supreme Court tells us, it was “customary” to do so. Without that custom, then the reference combining in Whitman Saddle would seem to be nothing more than the Frankenart approach rejected in Jennings—and now in LKQ. In cases without evidence of a similar type of custom, Whitman Saddle may have limited precedential value.

Third, the LKQ court left open the possibility that the primary reference could be both the “most visually similar to the claimed design” but not the type of reference that could anticipate the claimed design under § 102. That’s because the primary reference need not disclose a design for the same type of article, as required for anticipation. It merely needs to be “analogous art.” Thus, the Federal Circuit has indicated that, for designs, the universe of § 103 prior art is broader than the universe of § 102 prior art. That’s the opposite of how it works in utility patents. That’s not a problem, though. Or even a bad thing. (Indeed, I’ve argued that this is how it should be.) But it’s still notable.

One more point: The LKQ court justified its retention of a primary reference requirement as being necessary to avoid “hindsight.” That may be true in some sense. But, as I’ve written before, requiring a primary reference does more than that—it focuses the inquiry, quite properly and as required by Jennings, on the design as a whole. It recognizes that design patents are fundamentally different than utility patents. They protect fundamentally different innovations (visual designs) in a fundamentally different way (central claiming using images). The Frankenart approach rejected by Jennings—and now by the en banc Federal Circuit in LKQ—essentially asks whether it would have been technically possible to combine preexisting design elements. It tells us nothing about whether it would have been visually obvious to do so. Exactly how this new primary reference requirement will develop remains to be seen. But the Federal Circuit’s renewed and reemphasized focus on the fact that a design must be emphasized as a whole is extremely important and a point not to be missed.

* * *

For more on the history of § 103, design patents, and some thoughts about what types of modifications to a primary reference would be obvious (from a design perspective), see this article.

Patenting Informational Innovations: IOEngine Narrows the Printed Matter Doctrine

by Dennis Crouch

This may be a useful case for patent prosecutors to cite to the USPTO because it creates a strong dividing line for the printed matter doctrine — applying the doctrine only to cases where the claims recite the communicative content of information. 

IOEngine, LLC v. Ingenico Inc., 2021-1227 (Fed. Cir. 2024).

In this decision, the Federal Circuit partially reversed a PTAB invalidity finding against several IOEngine patent claims. The most interesting portion of the opinion focuses on the printed matter doctrine.   Under the doctrine, certain “printed matter” is given no patentable weight because it is deemed to fall outside the scope of patentable subject matter. C R Bard Inc. v. AngioDynamics, Inc., 979 F.3d 1372 (Fed. Cir. 2020).  In this case though the Federal Circuit concluded that the Board erred in giving no weight to IOEngine’s claim limitations requiring “encrypted communications” and “program code.”

The printed matter doctrine a unique and somewhat amorphous concept in patent law that straddles the line between patent eligibility under 35 U.S.C. § 101 and the novelty and non-obviousness requirements of §§ 102 and 103. (more…)

De Forest Radio v. GE: A Landmark Supreme Court Decision on the Invention Requirement

By Dennis Crouch

In 1931, the United States Supreme Court decided a landmark case on the patentability of inventions, De Forest Radio Co. v. General Electric Co., 283 U.S. 664 (1931), amended, 284 U.S. 571 (1931). The case involved a patent infringement suit over an improved vacuum tube used in radio communications. While the case predated the codification of the nonobviousness requirement in 35 U.S.C. § 103 as part of the Patent Act of 1952, it nonetheless applied a similar requirement for “invention.”

I wanted to review the case because it is one relied upon in the recent Vanda v. Teva petition, with the patentee arguing that the court’s standard from 1931 has been relaxed by the Federal Circuit’s “reasonable expectation of success” standard. The decision also provides an interesting case study in the way that the court seems to blend considerations of obviousness and (more…)

Bringing Home the Bacon with Joint Inventorship

Guest Post by Jordan Duenckel.  Jordan is a second-year law student at the University of Missouri, head of our IP student association, and a registered patent agent.  He has an extensive background in chemistry and food science.

HIP, Inc., v. Hormel Foods Corp., 2022-1696, — F.4th — (Fed. Cir. May 2, 2023)

Joint inventorship requires a substantial contribution to the invention. In the decision HIP, Inc. vs. Hormel, Judge Lourie writes for a unanimous panel to reverse a district court’s determination of joint inventorship involving a new process for precooking bacon. US Patent 9,980,498 has four inventors that are employees of and assigned their interest to Hormel.  HIP sued Hormel, alleging that David Howard was either the sole inventor or a joint inventor of the ’498 patent. The district court determined that Howard was a joint inventor based solely on his alleged contribution to the infrared preheating concept in independent claim 5.  

Bacon is an interesting food with unique preservation and cooking properties. Being a cured product, for food safety reasons, no additional cooking of the bacon is needed when bought off the shelf in a refrigerated section. Of course, most people are not consuming the bacon without additional cooking and some companies will precook the product for consumer convenience. When precooking, Hormel is trying to avoid the loss of salt, and therefore flavor, through condensation and prevent the creation charred off flavors (as opposed to the desirable char on a steak).  

 In the process of viability testing the new method, prior to filing the application, the inventors consulted with David Howard of Unitherm, HIP’s predecessor, to discuss methods related to Unitherm’s cooking equipment to create a two-step process of preheating then a higher temperature step. After some difficulties, Hormel leased the equipment and returned to their own R&D lab. The method created, the subject matter of the ‘498 patent, involves a first step that allows the fat of the bacon to seal the surface of the bacon and prevent condensation. The charring was remedied by adjusting the heating method of the oven in the second step of high-temperature cooking. In Hormel’s product development, Hormel tried an infrared oven and a conventional spiral oven.

HIP argued that Howard contributed to the ‘498 patent in the preheating by hot air in claim 5 and/or preheating with an infrared oven in claim 5.  Claim Five reads in the relevant part:  

  1. A method of making precooked meat pieces using a hybrid cooking system, comprising: preheating meat pieces in a first cooking compartment using a preheating method selected from the group consisting of a microwave oven, an infrared oven, and hot air to a temperature of at least 140º F. to create preheated meat pieces…

On appeal, Hormel argues that Howard’s contribution is well-known in the art and insignificant when measured against the full invention. With inventorship being a question of law, and the issuance of a patent creating a presumption of inventorship, an alleged joint inventor must provide clear and convincing evidence to substantiate their claim. In evaluating whether a significant contribution was made by Howards, the parties apply the test from Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998). The test requires that the alleged joint inventor: 

(1) contributed in some significant manner to the conception of the invention; (2) made a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention; and (3) did more than merely explain to the real inventors well-known concepts and/or the current state of the art. 

Analyzing the second Pannu factor, the Court found that the alleged contribution of preheating meat pieces using an infrared oven to be insignificant in quality because it was mentioned only once in the patent specification as an alternative heating method to a microwave oven and was recited only once in one Markush grouping in a single claim. In contrast, preheating with microwave ovens and microwave ovens themselves were prominently featured throughout the specification, claims, and figures. The examples and corresponding figures also employed procedures using preheating with a microwave oven, but not preheating with an infrared oven.  

Infrared heating seems to have been an afterthought in the creation of the two-step precooking method. Whatever discussions Howard might have had about the importance of the infrared, Hormel seems to have focused on microwave heating to solve the condensation problem. From one step further back, it seems absurd to permit joint ownership by a cooking equipment manufacturer when the significant discoveries and refinements of the methods were made in Hormel’s R&D facility without Howard present. The prevention of condensation and avoiding the char flavor were both made independent of Howard’s contributions. Considering the second Pannu factor, the reversal of inventorship seems appropriate.  

Overlapping Ranges in Claims and Prior Art Result in Invalidation of Patent on Transdermal Patch for Parkinson’s Disease

By Chris Holman

UCB, Inc. v. Actavis Lab’ys UT, Inc., 2023 WL 2904757, — 4th —   (Fed. Cir. Apr. 12, 2023)

Rotigotine is a drug used to treat Parkinson’s disease. People with Parkinson’s disease experience significant gastrointestinal dysfunction, such as difficulty swallowing, which can frustrate the oral administration of drugs. However, the complications associated with oral treatment can be avoided by means of a transdermal patch that delivers the drug through the patient’s skin.  In order to cross the skin barrier, however, the drug must be in an “amorphous,” i.e., non-crystalline, form.  If the drug crystallizes in the patch, it will generally not be able to cross the skin barrier.

In 2007, UCB invented and marketed “original Neupro,” a transdermal patch for the treatment of Parkinson’s disease containing a dispersion of amorphous rotigotine and polyvinylpyrrolidone (PVP), with the PVP functioning as a stabilizer. Unfortunately, soon after original Neupro entered the market it was found that the rotigotine was crystallizing when stored at room temperature, rendering the drug ineffective.  This caused UCB to recall the product from the U.S. market in April 2008 (although it remained in limited use under a compassionate-use program). In Europe, regulators allowed original Neupro to stay on the market, under the condition that it would only be marketed under “cold-chain conditions,” i.e., it would be stored in a refrigerator.

The patent at issue in this case, U.S. Patent No. 10,130,589, is directed towards UCB’s solution to this problem, which was to essentially double the amount of PVP in the patch, from original Neupro’s weight ratio of rotigotine to PVP of 9:2 to the new, reformulated Neupro’s weight ratio of 9:4. In particular the ‘589 patent claims a method for stabilizing rotigotine by combining a non-crystalline form of rotigotine with PVP to form a solid dispersion, wherein the weight ratio of rotigotine to PVP is in a range from about 9:4 to 9:6. UCB re-entered the U. S. market with its reformulated Neupro in 2012.

In 2019, UCB sued Actavis for infringing the ‘589 patent in a Hatch-Waxman lawsuit.  The district court found the asserted claims to be invalid based on anticipation and obviousness, particularly in view of earlier-issued UCB patents, i.e., the “Muller patents,” which disclosed combinations of rotigotine and PVP present at a range of weight ratios from 9:1.5 to 9.5. Note that the Muller patents cover both original Neupro (9:2) and reformulated Neupro (9:4), while the ‘589 patent (claiming a range of 9:4 to 9:6) only covers reformulated Neupro. Significantly, UCB had successfully asserted a Muller patent in a previous ANDA suit that resulted in an injunction preventing approval of Actavis’s ANDA until the relevant Muller patent’s expiration in March 2021. The ‘589 patent would not have expired until December 2030, and thus could have delayed FDA approval of a generic version of Neupro by nine additional years.

On appeal, the Federal Circuit reversed the district court’s anticipation ruling, but affirmed on the basis of obviousness. The opinion, authored by Judge Stoll, begins by explaining that Federal Circuit precedent sets forth an established framework for analyzing whether a prior art reference anticipates a claimed range. If the prior art discloses a point within the claimed range, the prior art anticipates the claim. On the other hand, if the prior art discloses an overlapping range, the prior art anticipates the claimed range “only if it describes the claimed range with sufficient specificity such that a reasonable factfinder could conclude there is no reasonable difference in how the inventions operate over the ranges.”

In the case at hand, the prior art Muller patents disclose a range (9:1.5 to 9.5) that overlaps with the range claimed in the ‘589 patent (9:4 to 9:6). The Federal Circuit found that the district court had erred by failing to analyze this as an overlapping range case, but to instead treat this as a case in which the prior art discloses a point within the claimed range.  The Muller patents did not literally disclose any point within the range claimed in the ‘589 patent, but the district court had nonetheless concluded, based on expert testimony, that the range disclosed in the Muller patents would implicitly teach a person of skill “a few examples” of specific weight ratios, including 9:4 and 9:5 weight ratios of rotigotine to PVP. Nonetheless, the district court’s error with regard to its anticipation analysis was rendered moot when the Federal Circuit proceeded to affirm its obviousness finding.

Judge Stoll cited Federal Circuit precedent for the proposition that there is a presumption of obviousness when a claimed range overlaps with a range disclosed in the prior art. Although this presumption can be overcome if, e.g., the prior art teaches away from the claimed range, or the claimed range produces new and unexpected results, or other evidence demonstrates the nonobviousness of the claimed range, in this case the Federal Circuit agreed with the district court that UCB had failed to present evidence to rebut the presumption of obviousness.

For example, the district court had not erred in its decision to disregard the commercial success of reformulated Neupro, based on a lack of a nexus between the drug’s commercial success and the claimed invention. In particular, the Federal Circuit agreed that the existence of the Muller patents weakened UCB’s evidence of commercial success, because these patents operated as blocking patents, dissuading competitors from developing a rotigotine transdermal patch, at least until the Muller patents expired. While rejecting UCB’s suggestion that the court’s analysis had branded all co-owned patents as “blocking” patents, the court noted that in this case UCB had held exclusive worldwide rights to rotigotine for all therapeutic indications since 1998, and that until the Muller patents expired Actavis had been enjoined from marketing a generic version of reformulated Neupro.