PATENT CASE OF THE WEEK
In re: Global IP Holdings LLC, Appeal No. 2018-1426 (Fed. Cir. July 5, 2019)
The Federal Circuit vacated and remanded a decision of the Patent Trial and Appeal Board (“PTAB”) upholding an examiner’s rejection of reissue claims for failure to comply with the written description requirement of 35 U.S.C. § 112, ¶ 1. At issue were claims directed to carpeted automotive vehicle floors originally limited to a composition including, e.g., “first and second reinforced thermoplastic skins and a thermoplastic cellular core,” which the patent owner Global IP sought to broaden in a reissue application to, e.g., “first and second plastic skins and a plastic cellular core.”
The examiner had rejected Global IP’s reissue claims, finding that the specification described these elements only as being formed from thermoplastic materials and not generally from plastic materials, and that the written description therefore could not support claims directed to the full range of plastics, which was new matter. PTAB affirmed, rejecting Global IP’s arguments that the type of plastic used was not critical to the invention; that plastics besides thermoplastics were known, predictable options at the time of the invention; and that disclosure of a species (thermoplastics) therefore supported claiming of the genus (plastics).
The Federal Circuit vacated the PTAB’s decision, finding that the PTAB legally erred when it found the specification to be insufficient “regardless of the predictability of results of substituting alternatives, or the actual criticality of thermoplastics in the overall invention.” The Court held that this standard conflicted with its decisions in Ariad Pharm, Inc. v. Eli Lilly & Co. (Fed. Cir. 2010) and In re Peters (Fed. Cir. 1983), instructing that predictability and criticality are relevant to a determination of whether the specification “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date,” and that the level of detail required may vary depending on these and other factors. The Court pointed to the facts of In re Peters as instructive. In that case, the inventor had disclosed and claimed metal tips having a tapered shape, but was permitted to broaden claims to cover both tapered and non-tapered tips, because the broadened claims “merely omit an unnecessary limitation that had restricted one element of the invention to the exact and non-critical shape disclosed in the original patent,” and a skilled artisan would understand that it was unimportant whether the tips were tapered.
The Federal Circuit declined to decide in the first instance the factual question of sufficiency of the written description in light of these considerations, and remanded the matter to the PTAB for determination under the proper legal standard.
The opinion can be found here.
ALSO THIS WEEK
Westech Aerosol Corporation v. 3M Company, Appeal No. 2018-1699 (Fed. Cir. July 5, 2019)
In this appeal from the United States District Court for the Western District of Washington, the Federal Circuit discusses issues relating to venue under 28 U.S.C. § 1400(b). Specifically, the Court affirmed the lower court’s decision to dismiss a case for improper venue because plaintiff failed to plead any facts showing either defendant had a regular and established place of business physically located in the district under the new TC Heartland and In re Cray standards. Plaintiff’s complaint simply parroted the language of the statute, which was insufficient because, without more, it is a mere legal conclusion, especially in light of intervening law holding that it is plaintiff’s burden to show venue is proper. The Court also denied 3M’s motion for sanctions because, while this appeal of a motion to dismiss without prejudice was frivolous as argued and borderline sanctionable, the Court declined to fault defendant for pursuing an appeal when the question of who bears the burden for establishing proper venue had not yet been answered.
The opinion can be found here.
Enzo Life Sciences, Inc. v. Roche Molecular Systems, Inc., Appeal Nos. 2017-2498, -2499, -2545, -2546 (Fed. Cir. June 20, 2019, unsealed July 5, 2019)
In a recently unsealed opinion of a consolidated appeal of four district court cases, the Federal Circuit addresses two patents directed to non-radioactive labeling of polynucleotides for specific purposes. The district court granted defendants’ motion for summary judgment of invalidity on non-enablement grounds, and the patent owner appealed. The Federal Circuit affirmed, finding the field of art to be an unpredictable one, such that undue experimentation would have been required for the person of ordinary skill to make and use the invention in view of the breadth of the claims and the limited disclosure of the patents.
The opinion can be found here.
Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, Appeal No. 2017-2508 (Fed. Cir. July 3, 2019)
The Court declined to hear en banc the February panel decision in this case finding the claims, which are directed to methods for detecting diseases, invalid under Section 101. Read our original write-up of that decision here. Judges Lourie, Reyna, Chen, Hughes, Prost, Taranto, and Dyk concurred in the denial of the petition en banc. Judges Moore, O’Malley, Wallach, Stoll, and Newman dissented. Opinions were issued by Judges Lourie (joined by Judges Reyna and Chen), Hughes (joined by Judges Prost and Taranto), Dyk (joined by Judges Hughes and Chen (in part)), Chen, Moore (joined by Judges O’Malley, Wallach, and Stoll), Newman (joined by Judge Wallach), Stoll (joined by Judge Wallach), and O’Malley. The combined decision is 86 pages in length. None of the opinions garnered a majority. Stay tuned for petitions to the Supreme Court.
The opinion can be found here.
Kolcraft Enterprises, Inc. v. Graco Children’s Products, Inc., Appeal Nos. 2018-1259, -1260 (July 2, 2019)
The Federal Circuit affirmed a finding by the PTAB that patents relating to “play yards” or “pack ’n plays” used by young children were invalid. The case turned on whether the inventors had sufficiently antedated the prior art with inventor declarations. Both inventors submitted declarations that referred to eight files on their computers that allegedly predated the date of the prior art. The inventors testified at depositions that the dates of the documents were established through looking at metadata on their computers. However, the original files containing the metadata were not produced in the case, nor were, apparently, printouts showing the metadata on which they relied. The Board found the evidence insufficient and the Federal Circuit affirmed. “Kolcraft [] argues that the metadata associated with the Exhibits shows the dates when they were created. Yet the metadata is not part of the record. The only other discussion of metadata as possible corroborating evidence is found in the deposition testimony of inventor Troutman, which is insufficient to corroborate inventor testimony of prior conception.”
The opinion can be found here.
