Patent News:

Fed. Cir. holds USPTO fees to be paid by Appellee in District Courts (posted 06/26/17)

35 USC § 145: An applicant dissatisfied with the decision of the Patent Trial and Appeal Board in an appeal under section 134(a) may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the Eastern District of Virginia. . . . All the expenses of the proceedings shall be paid by the applicant.

In Nantkwest, Inc. v. Joseph Metal, [Acting] Director, USPTO, Judge Prost wrote for the majority that “expenses” in 35 U.S.C. § 145 includes attorney's fees. In so doing, the Federal Circuit reversed the lower court's ruling that § 145 does not meet the requirements of the “American Rule”—that all parties pay their own attorneys' fees, win or lose, unless a statute or contract provides otherwise. More specifically, the lower court concluded that “[a]ll expenses” provision of § 145 was “neither sufficiently specific nor explicit enough for the authorization of attorney's fees” (quoting the Federal Circuit). The court noted that its decision is in-line with two other circuits that “expenses” includes attorneys' fees, as well as definitions and explanations that “standard legal dictionaries and treatises provide for the term 'expense.'”

Judge Stoll dissented, stating that when interpreted with the aid of Nineteenth Century dictionaries, the word “expense” introduced by the Patent Act of 1839 is synonymous with “cost” and “damage.” The court addressed this argument directly stating: “Not so. The Patent Act of 1836 specifically distinguished among these three terms.”

In response, Stoll notes that, “[w]hile Congress remains free to draft statutes providing for the award of attorneys' fees, any such deviation from the American Rule must be 'specific and explicit.'” Stoll cites numerous examples when Congress did explicitly authorize courts to shift attorneys' fees, including under the same Title, noting that “Congress decided to exclude 'attorney fees' from § 145 but not § 285” and that the Courts must presume under a fundamental principle of statutory interpretation that this disparity is intentional, suggesting a deliberate decision not to authorize such an award.

Supreme Court takes up AIA constitutionality (posted 06/20/17)

Supreme Court granted cert. on June 12, 2017 in Oil States Energy Services LLC v. Greene's Energy Group LLC.

Supreme Court extends first-sale doctrine (posted 05/31/17)

In Impression Products, Inc. v. Lexmark International, Inc., the Supreme Court held that first-sale patent exhaustion applies to toner cartridges sold by Lexmark in the United States as well as overseas.

Stated the court (Chief Justice Roberts):

  • A patentee is free to set the price and negotiate contracts with purchasers, but may not, 'by virtue of his patent, controll the use or disposition' of the product after ownership passes to the purchaser. The sale 'terminates all patent rights to that item.' [Internal citations omitted; emphasis in original.]
  • [E]ven when a patentee sells an item under an express restriction, the patentee does not retain patent rights in that product.“
  • In sum, patent exhaustion is uniform and automatic. Once a patentee decides to sell – whether on its own or through a licensee – that sale exhausts its patent rights, regardless of any post-sale restrictions the patentee purports to impose, either directly or through a licensee.

On cross-boarder patent exhaustion, the court stated:

  • Exhaustion is a separate limit on the patent grant, and does not depend on the patentee receiving some undefined premium for selling the right to access the American market. A purchaser buys an item, not patent rights. And exhaustion is triggered by the patentee's decision to give that item up and receive whatever fee it decides is appropriate 'for the article and the invention which it embodies.'

Justice Ginsberg dissented, stating:

A foreign sale, I would hold, does not exhaust a U.S. inventor's U.S. patent rights.
[. . .]
U.S. patent protection accompanies none of a U.S. patentee's sales abroad – a competitor could sell the same patented product abroad with no U.S.-patent-law consequence. Accordingly, the foreign sale should not diminish the protection of U.S. law in the United States.
[. . .]
The majority disagrees, in part because this Court decided, in Kirtsaeng v. John Wiley & Sons, Inc., . . . that a foreign sale exhausts U.S. copyright protectoins. [. . .] But even if I subscribed to Kirtsaeng's reasoning with respect to copyright, that decision should bear little weight in the patent context. [. . .] The Patent Act contains no analogue to 17 U.S.C. §109(a), the Copyright first-sale provision analyzed in Kirtaeng. More importantly, copyright protections, unlike patent protections, are harmonized across countries.

Patentee's statements at IPR raises prosecution disclaimer (posted 05/12/17)

In Aylus Networks v. Apple, the USFC upheld the lower court's finding of non-infringement based on a narrow claim construction of the phrase, “wherein the [control point proxy] logic is invoked to negotiate media content delivery between the [media server] and the [media receiver]” set forth in claim 2 of the litigated patent, RE 44,412. In upholding the lower court's ruling, the USFC addressed for the first time “whether statements made by a patent owner during an IPR proceeding can be relied upon to support a finding of prosecution disclaimer during claim construction.” Stated the court:

A patent owner's preliminary response filed prior to an institution decision and a patent owner's response filed after institution are both official papers filed with the PTO and made available to the public. In both official papers, the patent owner can define claim terms and otherwise make representations about claim scope to avoid prior art. . . . Regardless of when the statements are made during the proceeding, the public is “entitled to rely on those representations when determining a course of lawful conduct. . . .”
[. . .]
In conclusion we hold that statements made by a patent owner during an IPR proceeding, whetehr before or after an institution decision, can be considered for claim construction and relied upon to support a finding of prosecution disclaimer.”

The USFC then explained that they agreed with the district court that multiple statements made by the patent owner, such as “the CPP logic exclusively handles the negotiation of media content delivery between the MS and the MR,” according to the USFC, “constitute a clear and unmistakable surrender of methods invoking the control point logic [as opposed to the control point proxy] in the negotiation of media content delivery between the MS and the MR if the MS and MR are both in communication with the UE via a local wireless network.”

Fed. Cir. decides AIA on-sale bar (posted 05/01/17)

35 U.S.C. § 102(a) NOVELTY; PRIOR ART. —A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention

In Helsinn Healthcare v. Teva Pharmaceuticals USA the Fed. Cir. construed a vexing phrase in the AIA's on-sale bar provision. Patentee Helsinn asserted four patents against Teva, one of which, U.S. Patent 8,598,219, was subject to the AIA's novelty provision. Nearly 2 years before applying for the patent, Helsinn and MGI Pharma, Inc. entered into a “Supply and Purchase Agreement” for the medication covered by the patent which was announced in a joint press release by the two corporations and in MGI's 8-K filing with the SEC, which included partially redacted copies of the agreement. The transaction details were publicly disclosed except the price terms and specific dosage formulations.

Holdings

The Federal Circuit reversed the lower court decision upholding patentability, stating:

  • “We decline the invitation by the parties to decide this case more broadly than necessary. [. . .] Even if the [Congressional] floor statements were intended to overrule those secret or confidential sale cases . . , that would have no effect here since those cases were concerned entirely with whether the existance of a sale or offer was public. Here, the existence of the sale . . . was publicly announced. . . .”
  • We conclude that, after the AIA, if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of the sale. . . . the Supply and Purchase Agreement . . . constituted a sale of the claimed invention . . . before the critical date, and therefore both the pre-AIA and AIA on-sale bars apply.

PTAB analyzes pre-AIA 102(e) claim-by-claim (posted 03/29/17)

35 U.S.C. §102 (pre-AIA) A person shall be entitled to a patent unless — (e) the invention was described in —

(1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or

(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent . . .

In Duncan Parking Technologies v. IPS Group, the PTAB upheld some claims and determined other claims were anticipated under 35 U.S.C. § 102(e) (pre AIA) despite the fact that it was undisputed that the prior reference, King '054, described all the features of the patent at issue, King '310. The determination of anticipation turned instead on whether the '054 patent was “by another.”

The prior art reference, King '054, had one inventor, David King, in common with the patent, King '310. With respect to the upheld claims, the Board agreed with IPS that the upheld claims reflected the sole invention of King, and the portions of King '054 on which Petitioner DPT relies was King's own work, and hence not “by another.”

Laches defense nixed by SCOTUS (updated 03/21/17)

SUPREME COURT DECISION

35 U.S.C. 286 Time limitation on damages:

Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.

In the case of claims against the United States Government. . . .

In a 7-1 decision authored by Justice Alito, Justice Breyer dissenting, the S.Ct. held that, “[b]y the logic of Petrella [which held that laches cannot be used to bar copyright claims during a three-year statute of limitations period] we infer that this provision represents a judgment by Congress that a patentee may recover for damages for infringement committed within six years of filing the claim.”

Breyer's dissent and the majority's response

In his dissent, Justice Breyer's wrote:

Laches is a doctrine that bars a plaintiff ’s claim when there has been unreasonable, prejudicial delay in commencing suit. See 1 D. Dobbs, Law of Remedies §2.3(5), p. 89 (2d ed. 1993). The question before us is whether acourt can apply this doctrine in a patent infringement action for damages brought within the statute of limitations. The Court holds that a court cannot. Laches, it says, is a “gap-filling doctrine,” generally applicable where there is no statute of limitations. But the 1952 Patent Act contains a statute of limitations. Hence there is “no gap to fill.” Ante, at 5.

In my view, however, the majority has ignored the fact that, despite the 1952 Act’s statute of limitations, there remains a “gap” to fill. See infra, at 2–3. Laches fills this gap. And for more than a century courts with virtual unanimity have applied laches in patent damages cases. Congress, when it wrote the 1952 statute, was aware of and intended to codify that judicial practice. I fear that the majority, in ignoring this legal history, opens a new “gap” in the patent law, threatening harmful and unfair legal consequences.
[. . .]
Two features of this statutory language are important. First, the limitations provision, unlike those in many other statutes, does not set forth a period of time in which to sue, beginning when a claim accrues and then expiring some time later. [. . .] Rather, it permits a patentee to sue at any time after an infringement takes place. It simply limits damages to those caused within the preceding six years. That means that a patentee, after learning of a possible infringement in year 1, might wait until year 10 or year 15 or year 20 to bring a lawsuit. And if he wins, he can collect damages for the preceding six years of infringement.

This fact creates a gap.

The majority responded to this argument in footnote 4 of the Court's opinion (internal citations removed):

The dissent argues that there is a “gap” in the statutory scheme because the Patent Act’s statute of limitations might permit a patentee to wait until an infringing product has become successful before suing for infringement. We rejected a version of this argument in Petrella, and we do so here. The dissent’s argument implies that, insofar as the lack of a laches defense could produce policy outcomes judges deem undesirable, there is a “gap” for laches to fill, notwithstanding the presence of a statute of limitations. That is precisely the kind of “legislation-overriding” judicial role that Petrella rightly disclaimed.

BACKGROUND

This case has an interesting background:

  • On October 31, 2003, patent holder SCA notifies defendant First Quality of infringement of Patent 6,375,646.
  • On November 21, 2003, First Quality informs SCA that it thinks SCA's patent is invalid because it is anticipated by prior patent 5,415,649, and therefore it is not infringing
  • On July 7, 2004, SCA requests reexamination of the '646 patent in light of the '649 patent. SCA does not notify or communicate with First Quality regarding the reexamination or otherwise, after the initial exchange.
  • On March 27, 2007, the PTO confirmed patentability of all 28 original claims and issued several other claims SCA added during reexamination.
  • On August 2, 2010 – over three years after reexamination concluded and nearly seven years since the original communication – SCA filed a complaint alleging First Quality of infringing the '646 patent.
  • The district court granted First Quality's summary judgment motion on latches and equitable estoppel.
  • SCA appealed and in an earlier panel decision, the summary judgment was affirmed the district court's analysis.
  • SCA filed a petition for rehearing en banc, posing the following questions:
    1. In light of the Supreme Court's decision in Petrella v. Metro-Goldwyn-Mayer 1), should A.C. Aukerman Co. v. R.L. Chaides Constr. Co. 2), be overruled so that the defense to latches is not applicable to bar a claim for damages based on patent infringement occurring within the six-year damages limitation period established by 35 U.S.C. § 286?
    2. In light of the fact that there is no statute of limitations for claims of patent infringement and in view of Supreme Court precedent, should the defense of latches be available under some circumstances to bar an entire infringement suit for either damages or injunctive relief?

Arguments

On May 2, 2016, the S.Ct. granted a petition in SCA Hygiene Products v. First Quality Baby Products, LLC. to address the question: “whether and to what extent the defense of laches may bar a claim for patent infringement. . . .”

On 11/01/16, arguments were held:

FEDERAL CIRCUIT

In an en banc majority opinion authored by Chief Judge Prost, the Federal Circuit, in SCA Hygiene Products v. First Quality Baby Products, LLC, found that § 282 defenses provision of Title 35 includes laches (even though it is not mentioned) and that case law (pre-dating the Supreme Court's decision last year in Patrella) shows that laches is a defense to legal liability and hence a defense to patent infringement for prior damages, in contravention of the plain meaning of Patrella in view of § 286. Confused? Read on . . .

The majority opinion discussed judicial history of laches and equitable estoppel vis-à-vis the precedent set by Aukerman. Stated the court: “Aukerman was motivated by preserving the distinction between laches – which bars only pre-suit damages – and equitable estoppel – which bars the entire suit. Estoppel, which does not necessarily involve delay in bringing the suit, requires 'statements or conduct of the patentee which must communicate in a misleading way that the accused infringer will not be disturbed by the plaintiff patentee in the activities in which the former is currently engaged” (internal quotes and citations removed).

The court explained that although Auckerman controlled the operation of laches in patent cases for over two decades, the recent Petrella decision in the Supreme Court upset the status quo by holding that laches was not a defense to legal relief in copyright law. Petrella calls portions of Aukerman's reasoning into question, necessitating this en banc reconsideration. Specifically, In Petrella, the Supreme Court reasoned that the copyright statute of limitations itself takes account of delay, crowding out the judiciary's power to decide whether a suit is timely. Therefore, the Supreme Court found, “laches is a defense developed by courts of equity; its principal application was, and remains, to claims of an equitable cast for which the Legislature has provided no fixed time limitations.”

Holdings

The en banc opinion held that, under Petrella, Section 286 acts as a prescription by Congress of a time period for recovery of damages. Characterizing Section 286 as a statute of limitations or a limitation on damages is not dispositive or a relevant consideration. Because patent infringement is a continuous tort, there is no relevant functional difference between a damages limitation and a statute of limitations. However, the majority opinion held that, based on a “sufficiently reliable source on the meaning of § 282,” the defenses provision, that that section uses inclusive language, and hence includes within it codification of laches as a statutory defense to patent infringement. This is consistent with prior interpretations of § 282.

The question remained:

If laches as codified in § 282 is a defense only against only equitable relief, Petrella prohibits judicial application of laches to bar legal damages. If, however, laches as codified operates as a defense to both legal and equitable relief, patent law's statutory scheme–like the Lanham Act . . . – does not implicate Patrella. In that case § 286 obligates us to apply laches as a defense to a legal relief, notwithstanding § 286's time limitation on the recovery of damages.

Based on tenuous at best logic, the court further held, “[i]n sum, the case law strongly supports the availability of laches to bar legal relief. In applying laches to ongoing relief, the court held awarding ongoing relief requires that the court act within its equitable discretion, which, according to eBay must be exercised consistent with traditional principles of equity. This means following the four-fact test laid out in eBay.

Dissent

In a dissent-in-part authored by Judge Hughs, joined by Moore, Wallace, Taranto, and Chen, Judge Hughes writes:

In Petrella v. Metro-Goldwyn-Mayer, Inc., the Supreme Court emphasized that it had never approved the use of laches to bar a claim for legal damages brought within a statutory limitations period. The majority reasons that Petrealla is not controlling here because Congress specifically incorporated laches as a defense to legal damages into the Patent Act of 1952. But the majority has no sound basis for finding that Congress intended to displace the uniform limitations period in § 286 with the case-specific doctrine of laches. The majority's key logic – that Congress adopted the view of some lower courts that laches could bar legal relief in patent cases – requires us to presume that Congress ignored the Supreme Court. For in 1952, the Supreme Court had already recognized the common-law principle that laches cannot bar a claim for legal damages. I know of no precedent for inferring a congressional departure from a common-law principle recognized by the highest court based solely on aberrational lower-court decisions.

Diamond v. Diehr is still good law (posted 03/09/17)

1. A system for tracking the motion of an object relative to a moving reference frame, comprising:

a first inertial sensor mounted on the tracked object;

a second inertial sensor mounted on the moving reference frame; and

an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors.

22. A method comprising determining an orientation of an object relative to a moving reference frame based on signals from two inertial sensors mounted respectively on the object and on the moving reference frame.

In Thales Visionix Inc. v. U.S., the Federal Circuit reversed a lower court ruling that the claims were patent-ineligible subject matter under 35 U.S.C. § 101 because they are directed to an abstract idea under the two-part Alice framework.

The court first addressed Diehr, noting that the Supreme Court, “explained that claims are patent eligible under § 101 'when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect.' In terms of the modern day Alice test, the Diehr claims were directed to an improvement in the rubber curing process, not a mathematical formula” (internal citations removed).

In footnote 2, the Court continued, ”Diehr preceded the evolution of the Supreme Court’s two-step framework and therefore did not separate its analysis into the two Alice steps. We do not hold that Diehr is instructive precedent only for Alice step one.“

In overturning the ruling that Thales Visionix's patent was invalid, the court stated (emphasis added):

For the purpose of evaluating patent eligibility, the ’159 patent claims are nearly indistinguishable from the claims at issue in Diehr. [. . .] While the claims utilize mathematical equations to determine the orientation of the object relative to the moving reference frame, the equations—dictated by the placement of the inertial sensors and application of laws of physics—serve only to tabulate the position and orientation information in this configuration. This arrangement is analogous to the claims in Diehr, which required the temperature measurement “at a location closely adjacent to the mold cavity in the press during molding.” Diehr, 450 U.S. at 179 n.5. Just as the claims in Diehr reduced the likelihood that the rubber molding process would result in “overcuring” or “undercuring,” id. at 187, the claims here result in a system that reduces errors in an inertial system that tracks an object on a moving platform.

Is Diamond v. Diehr still good law? (posted 03/07/17)

1. An automated method for determining the state of a well operation, comprising:

storing a plurality of states for a well operation;

receiving mechanical and hydraulic data reported for the well operation from a plurality of systems; and

determining that at least some of the data is valid by comparing the at least some of the data to at least one limit, the at least one limit indicative of a threshold at which the at least some of the data do not accurately represent the mechanical or hydraulic condition purportedly represented by the at least some of the data; and

when the at least some of the data are valid, based on the mechanical and hydraulic data, automatically selecting one of the states as the state of the well operation.

30. The method of claim 1, further comprising using the state of the well operation to evaluate parameters and provide control for the well operation.

In TDE Petroleum Data Solutions v. AKM Enterprise, Inc. DBA Mobilize, Inc., the Federal Circuit in 2016 nixed TDE's patent on a method of determining the state of an oil well operation on an appeal of the district court's grant of motion to dismiss made by Mobilize. In a short 5-page opinion, Judge Houghes wrote for the unanimous panel that the claims fail the 2-part Alice test.

In March 2017, the Supreme Court denied a petition certiorari after the Federal Circuit denied a petition for an en banc rehearing. An amicus brief filed on behalf of 15 law professors argues that this case is effectively a reversal of Diamond v. Diehr, the famous case involving automatically controlling a curing process for rubber tires.

This case exemplifies a fundamental error in the lower courts’ application of the Mayo-Alice test, which has produced harmful indeterminacy in patent law. Amici here identify a key insight into the nature of this legal indeterminacy: the district court and the Federal Circuit applied the Mayo-Alice test in a way that would invalidate the process claim this Court deemed to be patent eligible in Diehr. While the Petitioner focuses on Claim 1, Amici focus instead on Claim 30 because it precisely parallels the patented process this Court held to be patent eligible in Diehr. Thus, Claim 30 epitomizes the legal conflict that now exists between this Court’s patentable eligibility jurisprudence and the lower courts’ misapplications of the Mayo-Alice test.

In addition, the brief argues that the court improperly analyzed the claimed invention in parts, rather than as a whole. The amicus brief states:

In order to reach a contrary result in this case, both the district court and the Federal Circuit did what this Court has cautioned against: “dissect[ing] the claims into old and new elements and then [ignoring] the presence” of other elements in the claimed invention as a whole that make it patent eligible. Diehr 450 U.S. at 188. The courts below ignored the basic requirement that they must assess the claimed invention as a whole under § 101. In this case, the claimed invention as a whole is an industrial oil-drilling operation on an oil rig. Like the rubber-curing process at issue in Diehr, 450 U.S. at 184 n.8, industrial oil-drilling processes have historically been secured under the patent laws. See, e.g., Roberts v. Dickey, 20 F. Cas. 880, 884-85 (C.C.W.D. Pa. 1871) (holding as patent eligible an oil-drilling patent and rejecting defendant’s argument it is unpatentable subject matter); U.S. Patent 850,037 (issued Apr. 9, 1907) (Method of Raising Liquids From Wells); U.S. Patent 6,528 (reissued Jan. 26, 1875) (Method of Increasing Capacity of Oil-Wells).

Supreme Court construes statutory limits on international inducement (posted 02/22/17)

35 U.S.C. § 271(f)(1): Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

In Life Technologies Corp. et al. v. Promega Corp. et al., the Supreme Court held that 35 U.S.C. § 271(f)(1) “has a quantitative, not a qualitative meaning” and that sending overseas a single component for incorporation into other components for manufacture of the patented invention can never constitute a “substantial portion” and thus trigger infringement liability.

Another PTAB reversal at Fed. Cir. because of vague opinion (posted 02/15/17)

In Personal Web Technologies LLC v. Apple, Inc, the Federal Circuit expressed frustrations that the PTAB has not met its burden of adequately explaining its rationale for invalidating patents, stating, ”[w]e have repeatedly applied those requirements in reviewing the adequacy of the board's obviousness analysis. . . .“

Holdings:

  • Unordered List ItemQuoting In re Lee 3), the Fed. Cir. held that “the agency tribunal must present a full and reasoned explanation of its decision. The agency tribunal must set forth its findings and the grounds thereof, as supported by the agency record, and explain its application of the law to the found facts.” The court continued, citing Synopsis, Inc. v. Mentor Graphics Corp. 4), “the Board, as an administrative agency, must articulate logical and rational reasons for its decisions” (inner quotations omitted). The court then concluded that ”[t]he Board did not sufficiently explain and support its conclusions that (1) Woodhill and Stefik disclose all of the elements recited in the challenged claims . . . and (2) a relevant skilled artisan would have been motivated to combine Woodhill and Stefik in the way the '310 patent claims and reasonable expected success.“
  • With respect to the rationale to combine, the Federal Circuit is clear that the Board's acceptance of Apple's argument that the references could be combined is insufficient. Stated the court:
The Board’s most substantial discussion of this issue merely agrees with Apple’s contention that “a person of ordinary skill in the art reading Woodhill and Stefik would have understood that the combination of Woodhill and Stefik would have allowed for the selective access features of Stefik to be used with Woodhill’s content-dependent identifiers feature.” Id. at *8 (emphasis added). But that reasoning seems to say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined. And that is not enough: it does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”); InTouch Techs., Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014).
  • In its most harsh critique, the Boar stated, ”[i]ndeed, the Board nowhere clearly explained, or cited evidence showing, how the combination of the two references was supposed to work. At least in this case, such a clear, evidence-supported account of the contemplated workings of the combination is a prerequisite to adequately explaining and supporting a conclusion that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.“

Fed. Cir. reverses PTAB on functional limitation (posted 01/10/17)

In In re Chudik, the Federal Circuit reversed a PTAB decision upholding an Examiner's rejection of a claim to a scalpal having a blade “configured for creating a passageway through skin and soft-tissue to a target site on a bone.” There was no dispute that prior art device met non-functional (i.e., structural) limitations in the claim. Stated the court:

“When . . . the only question [is] whether the functional limitation can be found in the single prior art reference, we apply the long-standing and unquestioned precedent as stated in In re Schreiber 5). . . . [W]hen the structural limitations are met by a single prior art reference, and when the examiner 'has reason to believe' that the prior art reference inherently teaches the functional limitation, the burden shifts to the patent applicant to show that the functional limitation cannot be met by the single prior art reference.

In this case, the examiner and the Board shifted the burden to the applicant . . . to disprove anticipation. [. . .] As explained below, in this case the examiner lacked adequate reason for his belief that Samuels inherently teaches the functional limitation, and the Board thus erred in sustaining the examiner's § 102 final office action.”
1)
134 S.Ct. 1962 (2014)
2)
960 F.2d 1020 (Fed. Cir. 1992)
3)
277 F.3d 1338, 1342
4)
814 F.3d 1309, 1322
5)
128 F.3d 1473 (Fed. Cir. 1997)
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