Michael B. Pierorazio

In re: Lawrence Everatt Anderson,


The Federal Circuit holds that “the speed being displayed on the display for use by a motorist in determining a route of travel” is a non-limiting statement of intended use because the “‘for use’ language does not add a structural limitation to the claimed system or method.”

Written By: David Youngkin

In In Re: Gregory E. Urbanski, Kevin W. Lang the Federal Circuit upheld the decision of the USPTO Patent Trial and Appeal Board (Board) finding the claims of the application obvious.  Urbanski’s application at issue was U.S. 11/170,614, entitled “Protein and Fiber Hydrolysates”, and was directed to a method of enzymatic hydrolysis of soy fiber.  Relevant to the appeal was claim 43 which required “that the soy fiber and enzyme be mixed in water for 60 to 120 minutes”.


Written By: John Kirkpatrick

Redline instituted an inter partes review (IPR) to show that claims 9 and 10 of U.S. Patent No. 6,526,808 (the ’808 patent), owned by Star, would have been obvious.  Redline did not include expert testimony to support its grounds in its IPR petition.  Upon institution of the IPR on two of the twelve grounds proposed in Redline’s petition, Redline submitted a motion for supplemental disclosure including expert testimony pursuant to 37 C.F.R. § 42.123(a), which allows for supplemental information “relevant to a claim for which the trial has been instituted” to be submitted “with-in one month of the date the trial is instituted.”  The USPTO PTAB denied Redline’s motion finding that the supplemental information could have been submitted with Redline’s petition and did not comply with the PTAB’s “statutory mandate for economy, integrity, efficient administration, and timely consideration of IPRs.”  Redline at *14.  The PTAB then rejected the grounds, noting that Redline “did not rely on an expert declaration in support of its position.” Id. at *12.  While Redline admitted that it intentionally delayed filing the expert information because submitting information for two grounds is less of a burden than submitting information for twelve grounds, Redline, on appeal, argued that the PTAB must allow the motion as long as the timeliness and relevance requirements of §42.123(a) are met.

Category: 103 
 By: Michael Pierorazio, Contributor
TitleI/P Engine, Inc. v. AOL Inc., No. 2013-1307, -1313 (Fed. Cir. Aug. 15, 2014) (non-precedential).
[The Obviousness Determination] The Google Defendants argue that I/P Engine’s claimed invention is obvious as a matter of law because it simply combines content-based and collaborative filtering, two information filtering methods that were well-known in the art.
I/P Engine, Inc., at *8.
[The Jury’s Findings] I/P Engine points to the fact that the jury found that there were differences between the prior art and the claimed invention[…], and argues that on appeal “the only question is whether substantial evidence supports the jury’s findings.”[…].
Id. at *16 (internal citations omitted).
[Secondary Conditions] […] I/P Engine’s argument that the commercial success of Google’s accused advertising systems provides objective evidence of non-obviousness.
Id. at *18.
[The Obviousness Determination] [T]he prior art contained explicit statements describing the advantages of combining these two filtering techniques, and […] it would have been obvious to include a user’s query in the filtering process[…]. We […] hold that no reasonable jury could conclude otherwise.
I/P Engine, Inc., at *8 (internal citations omitted).
[The Jury’s Findings] [W]hile the jury made underlying determinations as to the differences between the asserted claims and the prior art, it did not address the ultimate legal conclusion as to obviousness. Thus, while the jury found that the prior art did not disclose all of the elements of the asserted claims[…], it never determined whether it would have been obvious to one skilled in the art to bridge any differences between the prior art and the claimed invention[…].
Id. at *17 (internal citations omitted).
[Secondary Conditions] We find no merit in I/P Engine’s argument that the commercial success of Google’s accused advertising systems provides objective evidence of non-obviousness. Evidence of commercial success, or other secondary considerations, is only significant if there is a nexus between the claimed invention and the commercial success. […]. Id. at *18 (footnote omitted)(internal citations omitted) )(internal quotation marks omitted). Accordingly, secondary considerations cannot overcome the strong prima facie case of obviousness[…]. Id. at *19 (footnote omitted)(internal citations omitted).
 Category: 103
By: Jesus Hernandez, Blog Editor/Contributor 
TitleScientific Plastic Prod., Inc. v. Biotage AB, No. 2013-1219, -1220, -1221 (Fed. Cir. Sept. 10, 2014).
IssuesThe examiner concluded that it would have been obvious to combine the cartridge of Yamada with the cap of either King or Strassheimer. On appeal to the Board, SPP challenged (1) the examiner’s determination that King and Strassheimer were “analogous art” and (2) that it would have been obvious to combine the LPLC cartridge of Yamada with the pressure-resistant resealable cap of either King or Strassheimer.
Scientific Plastic Prod., Inc., at *5 (emphasis added).
[(1)] [T]he King and Strassheimer references address the problem of providing a fluid tight seal at elevated pressures, between a container and a resealable cap. This is sufficiently close to the problem addressed by the claimed invention; substantial evidence supports the Board’s finding that King and Strassheimer are available as prior art
Id. at *9 (text added).
[(2)] We conclude that the Board did not err in holding that it would have been obvious for a person of ordinary skill in the field of the invention to modify the chromatography cartridge of Yamada with the resealable threaded cap of King or Strassheimer [because by providing for the presence of an O-ring, the Yamada reference implicitly acknowledges that there is a potential leakage issue between the cap and column body of the plastic cartridge that could be cured by either King or Strassheimer].
Id. at *11 (text added).
Category: 103 
By: Roy Rabindranath, Contributor
TitleK-Swiss, Inc. v. Glide N Lock GMBH, 2013-1316, -1317 (Fed. Circ. April 23, 2014) (non-precedential)
[1a] On Clouds argues that the Board’s decision that Szentes anticipates claims 1 and 9 is not supported by substantial evidence because Szentes does not disclose the limitation in the first, unloaded configuration—the resilient member that elastically absorbs oblique shoe loads using the relative motion between the upper and lower layers.
K-Swiss, Inc. at *7.
[1b] On Clouds argues that substantial evidence does not support the Board’s conclusion that Okabe anticipates claim 1 because Okabe does not meet the limitation in the second configuration (the loaded state) that the upper and lower layer of the resilient member engage to “substantially prevent” relative motion.
Id. at *9.
[2a] [Whether] a person having ordinary skill in the art would not have combined Szentes with any of [the prior art] references because Szentes disparaged the use of small channels like those in Pagani, Takahashi and Inohara.
Id. at *11 (text added).
[2b] As for claims 6 and 7, which specify the percentage the outsole deforms in the loaded position, the specific percentages are not explicitly disclosed in Pagani, Takahashi or Inohara [but are nonetheless rejected by combining these references with Szentes].
Id. at *12 (text added).
[1a] Because the Szentes sole is made of an elastically resilient material, it absorbs oblique shoe loads in the unloaded state, the first configuration, through the movement of the elastic materials.
Id. at *7.
[1b] Okabe teaches that rubber pins would frictionally engage with the upper layer in the loaded state, thereby preventing relative motion between the two layers.
Id. at *9.
[2a] Szentes does not disparage the use of small channels, but uses them as another example of the floating problem that [Szentes] was attempting to solve-"[an outsole with multiple small cavities] shows the same deficiencies [] as the previous one [i.e., a large hallow cavity], weaing results in an unsure and wobbling walk."[...]Id., at *11 (internal citations omitted).
[2b] [W]e find that substantial evidence does not support the Board’s finding that claims 6 and 7 would not have been prima facie obvious in light of Szentes, Pagani, Takahashi, or Inohara [because the (i) percentages are inherent in the prior art, and (ii) because it is not inventive to discover the optimum or workable ranges by routine experimentation.]
Id. at *14 (text added).
Category: 103 
 By: Jesus Hernandez, Blog Editor/Contributor
TitleBristol-Myers Squibb Co. v. Teva Pharma. USA, Inc., No. 2013-1306 (Fed. Cir. June 12, 2014).
IssueBMS attacks the lower court’s obviousness determination by contending that a skilled artisan would have had to make too many decisions to arrive at entecavir. Those decisions include selecting (1) the class of nucleoside analog compounds, (2) 2′-CDG as a lead compound from the class of carbocyclics, (3) the carbocyclic ring or guanine base of 2′-CDG for modification, (4) the 2’ or 5’ position on the carbocyclic ring, (5) the specific chemical element on the 5’ position (carbon), and (6) the type of carbon to carbon bond (single or double).
Bristol-Myers Squibb Co. at *9.
HoldingBased on (1) the structural similarity between entecavir and 2′-CDG, (2) the teachings of the Madhavan reference [teaching that adding an exocyclic methylene group to a carbocyclic nucleoside analog can result in a lead compound with improved antiviral activity], (3) the finding that the exocyclic methylene substitution would be a “small, conservative change[]”and (4) the “totality of the prior art” on 2′-CDG [teaching that 2′-CDG was a promising compound and subject to a multitude of modifications], the district court found [and the CAFC affirms] that a skilled artisan would have been motivated to substitute an exocyclic methylene group at the 5’ position of 2′-CDG, with a reasonable expectation of success of creating a compound with beneficial antiviral properties.
Id. at *7 (text added, no direct correspondence between issue and holding  numbering).
Category: 103 
By: Eric Paul Smith, Contributor  
TitleIn re Chaganti, No. 2013-1372 (Fed. Cir. Jan. 27, 2014) (non-precedential).
[1] "The parties dispute whether Manolis[, U.S. Patent No. 7,243,079 (Manolis),] is analogous art."
In re Chaganti at *5.
[2] "[T]he Board found that Glassman does not teach away from the claimed invention. Mr. Chaganti argues that the Board's finding lacks substantial evidence [and] contends that Glassman's statement that existing lock servers are undesirable on an open network teaches away from using existing lock server architectures to provide controlled access to copyrighted material on an open network."
Id. at *5-6 (citations and internal quotation marks omitted).
[3] "Mr. Chaganti argues that the Board erred by failing to articulate th[e] reason[ to combine Manolis with Glassman, U.S. Patent No. 6,453,305 (Glassman)]. He contends that the Board's reason to combine [...] was motivated by hindsight bias[ and] that the Board erred by failing to make factual findings with respect to the ordinary skill in the field of the invention."
Id. at *6-7.
[4] "Mr. Chaganti [...] argues [(a)] that Glassman does not examine license information to determine [a number] N [of authorized concurrent users], as required by claim 48[; (b)] that Glassman does not disclose the step of receiving licensing information indicating that the license is for access of information for a predetermined time . . . as required by claim 49[; and (c)] that Glassman does not disclose the step of determining a time period [...] during which the copyright-protected information object may be accessed as required by dependent claim 50. With respect to claims 51, and 57-60, Mr. Chaganti seems to argue that the Board misconstrued the terms 'formatting,' formatter,' and 'format.'"
Id. at *8.
[1] "We agree with the PTO that Manolis is analogous art [because both Manolis and the claimed invention are directed to the controlled distribution of content via the Internet]."
In re Chaganti at *5 (text added).
[2] "While Glassman describes the then-existing lock servers as 'undesirable,' we disagree that this constitutes a teaching away from mechanisms for controlling Internet access to copyrighted materials."
Id. at *6.
[3] "The Board found that a person of ordinary skill would have had a reason to use the online print service of Manolis to provide licensed access to copyrighted images in order to provide account users with the ability to control access to their copyrighted images while at the same time providing concurrent access to the images as suggested by Glassman [...]. Substantial evidence supports the Board's finding."
Id. at *7 (citations, interal quotation marks, and alteration markings omitted).
[4] "We agree with the PTO that substantial evidence supports the Board's findings that the combination of Manolis and Glassman discloses each limitation of dependent claims 48-50, 51, and 57-60."
Id. at *9.
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: 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: 103  
 By: Christian Hannon, Contributor 
TitleIn re Enhanced Security Research, LLC, No. 2013-1114 (Fed. Cir. Jan. 13, 2014).
[1] [Obviousness] With respect to obviousness, the critical issue is whether the Manual in combination with Liepins teaches a person of ordinary skill in the art how to assess the severity of an attempted security breach and then block that attempted breach based on its severity. Enhanced Security Research, LLC at *8 (text added).
[2] [Prior Art] [The second issue is that Enhanced Secuirty Research] contends that the [NetStalker] Manual is not prior art. Id. at *6. (text added)
Holdings[1] [Obviousness] [W]e hold that the examiner and Board properly treated the NetStalker Manual as publically-available prior art and, having done so, correctly concluded that the teachings of the Manual and Liepins render the amended ’236 patent claims at issue obvious under 35 U.S.C. § 103. [2] [Prior Art] We further hold that ESR has failed to demonstrate the requisite attorney diligence under Rule 131, and, therefore, the ’236 patent does not predate the publication date of the Manual. Id. at *23 (text added).
Category: 103 
 By: Eric Paul Smith, Contributor  
TitleApple Inc. v. ITC, No. 2012-1338 (Fed. Cir. Aug. 7, 2013).
IssueThe Federal Circuit is reviewing (1-2) whether the ITC properly determined that U.S. Patent No. 7,663,607 (the “‘607 Patent”) was obvious in view of the prior art and whether the ITC properly determined that the ‘607 Patent was anticipated by U.S. Patent No. 7,372,455 (“Perski ‘455”), and (3) whether the ITC properly determined that Motorola did not infringe U.S. Patent No. 7,812,828 (the “‘828 Patent”).
(1-2) “[S]ubstantial evidence supports the ITC’s finding that Perski ‘455 anticipates claims 1-7 of the ‘607 patent. The ITC’s decision that Perski ‘455 anticipates claim 10, however, lacks substantial evidence.” Apple at *10. “[T]he ITC fact findings regarding the scope and content of the prior art . . . are supported by substantial evidence[, but] remand so the ITC can consider that evidence in conjunction with the evidence of secondary considerations [...].” Id. at *17-18.
(3) “[T]he ITC erroneously construed the ‘mathematically fitting an ellipse’ limitation [...].” Id. at *19. “[The Federal Circuit] vacate[s] [...] and remand[s] the case to the ITC to consider in the first instance whether the accused products infringe under the correction construction [...].” Id. at *20.
Category: 103 
By: Christian Hannon, Contributor 
TitleIn re Eaton, No. 2013-1104 (Fed. Cir. Nov. 22, 2013) (non-precedential).
Issues[1] Mr. Eaton appeals the Board's anticipation rejection of claim 1 because Jungkeit does not describe a vitamin composition that is essentially free of anti-oxidants and thus cannot anticipate claim 1 [which recites that the composition is "essentially free of anti-oxidants."]. [...] [2] Similarly, Mr. Eaton appeals the Board's obviousness rejection of claims 1 and 8-10 over Jungkeit and Mantynen because Mantynen fails to rectify the deficiencies of Jungkeit. In re Eaton at *5 (text added).
Holdings[1] The Office has not established that the cited references disclose compositions whose effectiveness is not reduced at all due to the presence of the antioxidants.[...] [Therefore,] substantial evidence [does not] support a finding that Jungkeit met the "essentially free of antioxidants" element[.] In re Eaton at *7-9. [2] [Secondly, regarding the obviousness rejection, the Board's] finding does not provide a rationale for adjusting the concentrations of antioxidants in Jungkeit or Mantynen to be “essentially free of antioxidants.” Id. at *9 (text added).
Category: 103
By: Jesus Hernandez, Blog Editor/Contributor   
TitleGolderma Lab., LP v. Tolmar, Inc., No. 2013-1034 (Fed. Cir. Dec. 11, 2013).
IssueThe relevant dispute in this case is thus not over whether the prior art discloses all of the claim elements or over the motivation to combine the prior art references [since all the features are taught, but for a concentration value that nonetheless falls within a range disclosed in the prior art]. Rather, the dispute is whether there was motivation to select the claimed 0.3% adapalene composition in the disclosed range.
Golderma Lab. at *9 (text added).
Holding[W]e hold that claims 35 and 36 of the ’181 patent, claims 24 and 27 of the ’060 patent, claim 5 of the ’558 patent, and claims 40 and 41 of the ’044 patent are invalid as obvious [because: A. the prior art does not actually disparage selection of 0.3% adapalene composition in the disclosed range; B. a percent increase constitutes only a difference in degree from the prior art; and C. evidence of commercial success diminishes when market entry by others is precluded by a blocking patent].
Id. at *15 (text added).
Category: 103
 By: Eric Paul Smith, Contributor   
TitleIn re Haase, No. 2012-1690 (Fed. Cir. Oct 30, 2013) (nonprecedential).
[1] "Mr. Haase challenges the anticipation rejections […] He principally contends that the allegedly “critical” molecular-weight ranges for ammonium polymers in his application do not exist in Hassick."
In re Haase at *6-7.
[2] "The first category of rebuttal evidence [as to claim 3, and reiterated for claims 4, 22, and 76] pertains to unexpected results, for which Mr. Haase submitted data allegedly showing that his claimed methods outperformed Hassick’s in various comparisons of water-clarity results."
Id. at *10 (text added).
[1] "All that is required to meet claims 1, 2, 56, and 75 is one individual ammonium polymer compound within the claimed range, no matter what else is in the composition or how much of the molecular-weight distribution disclosed in Hassick overlaps with the claimed ranges."
Id. at *7.
[2] "[T]he PTO established a prima facie case of obviousness for claim[s] 3[,] [4, 22, and 76], and Mr. Haase’s rebuttal evidence failed to overcome it [because his submitted evidence of unexpected results, a comparison of Mr. Haase's own test results and the references, did not correlate directly with the recited language in claims 3, 4, 22, and 76]."
Id. at *12 (text added).
 Category: 103
 By: John Kirkpatrick, Contributor
TitleNovo Nordisk A/S v. Caraco Pharmaceutical Laboratories Ltd., 2011-1223 (Fed. Cir. June 18, 2013).
[1] Burdens under 103 Analysis
[a] “[Had] the district court misallocated the burden of persuasion […] by forcing Novo to “overcome” Caraco’s “prima facie” case of obviousness with evidence of unexpected results[?]” Novo, at *9 (text added).
[b] “[E]ven if the burdens were properly allocated in this case, [did] Caraco’s evidence insufficiently [support] the court’s ultimate obviousness findings[?]” Novo, at *9 (text added).
[c] “[S]hould [the district court] have deferred to the examiner’s original finding that the Sturis and Moses studies demonstrated unexpected synergy[?]” Novo, at *9 (text added).
[2] Inequitable Conduct“[Had] the district court clearly erred in finding that [the patentee’s] representations and omissions were material and intentional under [Therasense v. Becton, 649 F.3d 1276 (Fed. Cir. 2011) (en banc)?]” Novo, at *20 (text added).
[1] Burdens under 103 Analysis
[a] “[A]s long as the [district] court reserved its ultimate conclusion on validity until after it considered the evidence from both sides, [analysis using terms such as “overcome” and “prima facie”] simply reflects the court’s shift of the burden of production once the court determined that the challenger has established a prima facie case of obviousness.” Novo, at *13 (text added).
[b] It is reasonable that an artisan seeking to combine a known insulin sensitizer (like metformin) with a new insulin secretagogue (like repaglinide) would base his expectations upon prior art sensitizer/secretagogue combinations.” Novo, at *15.
[c] “[W]e treat [a district court challenge to] the issued patent as having a presumption of validity that must be overcome by clear and convincing evidence.” Novo, at *18 (text added).
[2] Inequitable Conduct“[The omission] is nevertheless a non-material omission because it can ‘be rendered irrelevant in light of subsequent argument or explanation by the patentee.’” Novo, at *22 (quoting Therasense, at 1294, text added).

 Category: 103
Obvious to Try?
By: Jesus Hernandez, Blog Editor/Contributor  
TitleLeo Pharma. Prod., Ltd., v. Rea, No. 2012-1520 (Fed. Cir. Aug. 2013).
Issue"[W]hether, in light of the prior art references [not specifically addressing the problem of the ‘013 patent] and objective indicia of nonobviousness, the claimed invention would have been obvious to a person of ordinary skill in the art at a time just before the time of invention.” Leo Pharma. at *11 (text added).
Holding“In light of the lack of expectation of a successful result, the failure of the prior art to provide direction, and the substantial number of intervening years between the publication of the prior art and the ’013 patent’s filing date, this invention is not simply a case of '‘picking and choosing’ from a list in order to achieve a compatible and non-deleterious preparation' […]. Because the problem was not known, the possible approaches to solving the problem were not known or finite, and the solution was not predictable, it would not have been obvious for a person of ordinary skill to make the claimed invention.” Id. at *18-19.

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