Category: 103  
By: Jesus Hernandez, Blog Editor/Contributor  
TitleSanofi-Aventis Deutschland GMBH v. Glenmark Pharma. Inc., No. 2012-1489 (Fed. Cir. April 21, 2014).
[Obviousness] Glenmark argues that the verdict cannot stand, as a matter of law, on the premise that if a combination of classes of components is already known, all selections within such classes are obvious to try, as a matter of law. Glenmark argues that it is irrelevant that the combination is ultimately found to have unpredicted or superior properties if those properties, though unknown in the prior art, could be attributed to one of the prior art components of the combination.
Sanofi-Aventis Deutschland GMBH at *6-7.
[Spoliation/Jury Instructions] Glenmark argues that the district court’s instruction was improper and prejudicial […] for the statement that prejudice occurs when “there is a reasonable possibility” that the error affected the result. Glenmark argues that the Plaintiffs did not show that any deleted emails contained relevant evidence [pertaining litigation of the ANDA generic drug].
Id. at *13 (text added, internal citations omitted).
[Obviousness] [Because in the medical arts potential solutions are less likely to be genuinely predictable, as compared with other arts such as the mechanical devices,] [t]he jury could reasonably have relied on the testimony of the Plaintiffs’ expert, that persons skilled in the art in 1986 would not have predicted the longer-lasting hypertension control demonstrated by the double-ring structures of quinapril and trandolapril in combination with calcium antagonists, because of the widespread belief that double-ring inhibitors would not fit the pocket structure of the ACE.
Id. at 11 (text added).
[Spoliation/Jury Instructions] The destroyed records were from the period that was acknowledged to include discussion of the generic drug, marketing in the United States, preparation of the ANDA, and the Paragraph IV Certification challenging the patent. Glenmark did not negate the reasonable inference that the destroyed emails related to relevant issues. […] Absent any reasonable negation of this inference, the district court’s finding that the documents were likely to be relevant was not clearly erroneous, and informing the jury of the destruction program was not an abuse of discretion. […].
Id. at *14-15 (internal citations omitted).
Category: 112 - Means Plus  
 By: John Kirkpatrick, Contributor 
TitleElcommerce.com v. SAP AG, No. 2011-1369 (Fed. Cir. Feb. 24,2014).
IssueSAP argued [...] that the means-plus-function terms in [U.S. Patent No. 6,947,903 ("the ’903 patent")] do not have supporting “structure or acts” in the specification, [and, therefore,] SAP could satisfy its burden on indefiniteness without expert testimony or other evidence of the existing knowledge in the field of the invention. SAP urged that Federal Circuit precedent does “not require” such evidence, citing [a prior case stating] that “the testimony of one of skill in the art cannot supplant the total absence of structure from the specification.”
Elcommerce.com at *20-21 (text added, internal citations omitted).
HoldingsWithout evidence, ordinarily neither the district court nor this court can decide whether, for a specific function, the description in the specification is adequate from the viewpoint of a person of ordinary skill in the field of the invention. We do not of course hold that expert testimony will always be needed for every situation; but we do hold that there is no Federal Circuit or other prohibition on such expertise.
Id. at *29 (citation removed).

Category: 112 - Definiteness 


 By: Eric Paul Smith, Contributor

TitleChicago Bd. Options Exch, Inc. v. Int'l Secs. Exch., LLC, No. 2013-1326 (Fed. Cir. Apr. 7, 2014)
[1] [a] Whether "the district court erred by 'holding that' Hybrid is the accused product and 'precluding [International Securities Exchange )]ISE[)] from accusing CBOEdirect of infringement,'" Chicago Bd. Options Exch. at *9 (text added), and [b] whether "the district court improperly added additional limitations to [the Federal Circuit's] construction of 'automated exchange' [...] [thereby] violat[ing] the mandate rule," id. at *10-11 (text added).
[2] Whether "the district court [correctly] found that claim 2 was indefinite because the specification did not disclose a step-by-step algorithm for performing the claimed function." Id. at *12 (text added).
[1] [a] "[T]he court did not preclude ISE from accusing CBOEdirect of infringing. Rather, it expressly invited ISE to show that CBOEdirect was independent of the open-outcry aspects of Hybrid . . . ," id. at *10, and [b] "because this factual issue [i.e., whether the two systems were integrated or separate] was unresolved in the previous appeal, the trial court did not violate the mandate rule by allowing this unresolved issue to go to the jury," id. at *11 (text added).
[2] "The district court erred in inding that there was clear and convincing evidence that the specification did not disclose sufficient structure such that a person of ordinary skill in the art would know how to match on a pro rata basis. While it is true that the specification also discusses pro rata allocating, this does not detract from the disclosure of pro rata matching such that claim 2 is indefinite." Id. at *15.



Category: Claim Construction  
 By: Abby Lin, Contributor 
TitleCISCO Sys., Inc. v. Lee, No. 2012-1513, -1514, -1297 (Fed. Cir. Feb. 21, 2014) (nonprecedential).
[1a] [Regarding the construction of "networks",] Teles argues packet-switched network and the line-switching network [of Claim 68] must be “two independent and distinct networks” … [and that the Board’s holding of the D and B channels of a single ISBN network cannot constitute packet- and line-switching networks… because the D and B channels are part of the same network].
Cisco, at *11-12 (text added, internal citations omitted).
[1b] Teles argues the Board should have construed both [“telephone call” and “data transfer with real-time properties”] to mean “end-terminal-to-end-terminal communications connections with a communications time delay of less than 0.5 seconds.”
Id. at *14(text added, internal citations omitted).
[2] [Teles] further argues the Board improperly failed to interpret the terms “control signal” and “communications connection.”
Id. at *10(text added).
[3] Claim 91 and 104 … add the limitation of “a multiplexer device for multiplexing data of several origin end terminals over a single line connection through the line-switching network.” … Cisco argues claims 91 and 104 are anticipated by Focsaneanu, and would have been obvious over Foxsaneanu, Jonas (or Yoshida), and Lucent. With respect to anticipation, Cisco argues Focsaneanu discloses changing-over between packet and line switching during an active transmission, and that the Board lacked substantial evidence in finding otherwise.
Id. at *19-20.
[1a] Although “ISBNs are conventionally known as line-switched networks,” the Board correctly determined that “the networks in the instant claims” can “be read onto an ISBN under a broadest reasonable interpretation.” This court therefore affirms that the claimed packet-switching network and line-switching network includes a single telecommunications network with multiple channels, such as an ISBN network [because the specification does not disclose that two separate networks are required].
Cisco, at *13 (text added, internal citations omitted).
[1b] Teles is therefore incorrect that the broadest reasonable interpretation of “telephone call” and “real-time” data transfer requires a specific time delay limit [because the specification does not mention a 0.5 second time delay in the context of line switching]. See Toshiba Corp., v. Imation Corp., 681 F. 3d 1358, 1369 (Fed. Cir. 2012) (“We do not read limitations form the specification into claims.”). This court affirms the Board’s construction of the terms as any “structure capable of sustaining a telephone call or providing real-time properties.”
Id. at *14-15 (text added. Internal citations omitted).
[2] Contrary to Teles’s argument [regarding “control signal” and “communications connection”], the Board had no obligation to consider claim construction challenges that were not actually raised before it. See 37 C.F.R. § 41.67(c)(1)(vii).
Id. at *16 (text added, internal citations omitted).
[3] Because the Board’s improper limitation of the claimed multiplexer was its sole reason for finding claims 91 and 103 not obvious, the Board’s allowance of claims 91 and 104 is reversed. Once the proper scope of claim 91 and 104’s multiplexer is understood, it is apparent that including such a multiplexer in the combination of Focsaneanu, Lucent, and inter alia, Jonas, is no more than “the predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Id. at *22 (footnote omitted).
Category: 103  
By: Jesus Hernandez, Blog Editor/Contributor    
TitleHoffmann-La Roche, Inc. v. Apotex Inc., No. 2013-1128, -1161, -1162, -1163, -1164 (April 11, 2014).
IssueThe issue in this case is whether it would have been obvious at the time of invention to select a once monthly oral dosing regimen of ibandronate to treat osteoporosis and to set that dose at 150 mg [based on prior art references teaching a daily dosage amount].
Hoffmann-La Roche, Inc. at *9 (text added).
Holding[T]he prior art pointed to a monthly treatment of 150 mg of ibandronate. At the very least, the 150 mg dose was obvious to try: There was a need to solve the problem of patient compliance by looking to less-frequent dosing regimens. And, based on Ravn and Daifotis, in light of Riis’s total-dose concept [in which a daily dosage over a month may be the equivalent of a single monthly dosage], there were only a “finite number of identified, predictable solutions.” [...] Id. at *13 (internal citations omitted, text added).

Category: Enablement
By: Christian Hannon, Contributor 
TitleIn re Hoffmann, No. 2013-1657 (Fed. Cir. Feb. 25, 2014) (non-precedential).

Eugene Hoffmann and David Lund appeal the [lack of enablment] rejection of their application for a patent on a “[t]ropical hurricane control system.” In re Hoffmann at *2.


[Hoffmann and Lund have not provided] enough information to enable a person of
ordinary skill in the art to practice the method without undue experimentation [because of unclear 'preliminary calculations' and a statement requireing "further experimentation" concerning claimed subject matter]. 
Id. at *5 (text added).

Category: Civil Procedure 
 By: Jesus Hernandez, Blog Editor/Contributor 
TitleIn re Teles AG Informatinstechnologien, No. 2012-1297 (Fed. Cir. April 4, 2014).
[1] While we have jurisdiction to review the district court’s dismissal pursuant to § 1295(a)(1), the question is whether we also have jurisdiction to review the Board’s action [if the district court lacked jurisdiction and improperly dismissed the case].
In re Teles AG Informatinstechnologien at *3 (text added).
[2] In 1999, Congress amended § 145 and related provisions [authorizing patent applicants to challenge the Board’s adverse examination decisions in district court instead of directly appealing to the CAFC]. This case raises the question of whether § 145 civil actions remained available to patent owners seeking to challenge adverse reexamination decisions after Congress amended the statute in 1999 and before 2011 [AIA], when Congress amended the statute to clarify that § 145 review was not available to patent owners.
Id. at *3 (text added).
[1] [Because of the different language in § 145 concerning appeals by patent owners versus patent applicants,] [w]e […] hold that the 1999 amendments eliminated the right of patent owners to secure review under § 145, and affirm that the district court lacked jurisdiction over the § 145 action.
Id. at *14 (text added).
[2] [T]he statutory deadline for filing an appeal to this court had passed, and no evidence suggested bad faith in Teles’ filing with the district court. Under these circumstances, it was in the interest of justice to transfer the case pursuant to §1631, and we “treat [Teles’] petition for review, which was timely filed with the district court, as if it had been properly transferred” to this court rather than dismissed.
Id. at *5.

Category: 101 


By: Jesus Hernandez, Blog Editor/Contributor  


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