Archive for September, 2010

Federal Circuit Announces Oral Argument Schedule for Atlanta

Tuesday, September 28th, 2010

The Federal Circuit is slated to have a very busy month of November.  The court will hear two patent cases en banc, conduct a portrait presentation ceremony for Chief Judge Rader, and travel to Atlanta to sit for oral arguments.  The court will also sit for oral arguments in Washington, D.C.  The schedule of cases for Atlanta is as follows:

November Calendar Announcement

Sitting in Atlanta, GA

Panel C:  Tuesday, November 2, 2010, 10:00 A.M., John Marshall Law

2010-1002

DCT

REMBRANDT DATA V AOL

[argued]

2010-1019

PTO

IN RE JUNG

[argued]

2010-1128

CIT

SKF USA V US

[argued]

2010-1206

DCT

PFIZER V IVAX PHARMA

[argued]

2010-1362

DCT

MIKKILINENI V STOLL

[on the briefs]

2010-7115

CVA

COCKRELL V DVA

[on the briefs]

 Panel D:  Tuesday, November 2, 2010,  2:00 P.M., Georgia State Law*

2010-1025

DCT

ARLINGTON INDUSTRIES V BRIDGEPORT

[argued]

2010-1138

CIT

HORIZON LINES V US

[argued]

2010-1191

PTO

ANTHONY PIZZA HLDG V ANTHONY PIZZA

[argued]

2010-1201

DCT

FIFTH GENERATION V INTL BUSINESS

[argued]

2010-3060

MSPB

OZIER V MSPB

[on the briefs]

2010-5133

CFC

CLARKE V US

[on the briefs]

Panel E:  Wednesday, November 3, 2010, 10:00 A.M., U.S. District Court

2010-1069

DCT

JAPAN CASH MACHINE V MEI

[argued]

2010-5039

CFC

GRAMLING V US

[argued]

2010-7053

CVA

KOKESCH V DVA

[argued]

2010-1216

DCT

COMBINED TACTICAL V DEFENSE TECH

[argued]

2010-3101

MSPB

CAHILL V DEFENSE

[on the briefs]

2010-5139

CFC

PARKER V US

[on the briefs]

 Panel F:  Wednesday, November 3, 2010, 10:00 A.M., U.S. District Court

2009-1562

DCT

SRI INTL V INTERNET SECURITY

[argued]

2010-3033

MSPB

DINKINS V USPS

[argued]

2010-5042

CFC

TAKOTA CORPORATION V US

[argued]

2010-1227

DCT

ABB V COOPER INDUSTRIES

[argued]

2010-3116

MSPB

DELAPENIA V MSPB

[on the briefs]

2010-5141

CFC

DOZIER-CARTER V US

[on the briefs]

 Panel G:  Thursday, November 4, 2010, 10:00 A.M., Emory Law

2010-1110

DCT

CENTILLION DATA V QWEST COMM

[argued]

2010-3065

MSPB

BOWEN V NAVY

[argued]

2010-5075

CFC

GCC ENTERPRISES V US

[argued]

2010-1249

DCT

WELLMAN INC V EASTMAN CHEMICAL

[argued]

2010-7079

CVA

RAMIREZ V DVA

[on the briefs]

2010-3128

MSPB

MARSHALL V USPS

[on the briefs]

 *Georgia State Law hearings are at the Supreme Court of Georgia

Judge O’Malley Nomination Moved Out of Senate Judiciary Committee to Full Senate

Monday, September 27th, 2010

The Senate Judiciary Committee held a vote on Judge Kathleen O’Malley last Thursday during its business meeting.  By voice vote of the committee members, Judge O’Malley’s nomination was approved unanimously by the quorum of senators.  Her nomination will now move to the full Senate for a vote at a later date.

The Senate Judiciary Committee has not yet held a hearing on nominee Edward C. DuMont for a second vacancy on the Federal Circuit. 

A third vacancy still has no nominee from the White House.

During the committee meeting, Chairman Leahy noted that the Federal Circuit currently has three vacancies and that the committee has to “get moving” on the pending nominations.  The D.C. Circuit apparently has four vacancies.

You can watch the webcast of the committee meeting here: [Watch Committee Meeting].  Judge O’Malley’s nomination is discussed at about the 20:49 minute and 46:10 minute marks.

Feelin’ Groovy — Spine Solutions, Inc. et al. v. Medtronic Sofamor Danek USA,Inc. et al.

Friday, September 24th, 2010

UPDATED 9/25/2010

Spine Solutions, Inc., et al. v. Medtronic Sofamor Danek USA, Inc. et al., 2009-1538 (Fed. Cir. September 9, 2010) is an interesting case in that it deals with “adapted to” language and “operative engagement” language.

6936071_intervertebral_implant1-fig-2

Claim 1 of the 6,936,071 patent, the only independent claim at issue, reads as follows:

 

An intervertebral implant insertable between ad-jacent vertebrae, comprising,

 

an upper part having an upper surface for engaging a vertebrae and a lower surface which includes a rounded portion,

 

a lower part having a lower surface for engaging a vertebrae and an upper surface portion in operative engagement with the rounded portion of the upper part,

 

said implant being constructed to be the sole im-plant in its intervertebral space,

 

the implant having a lead end which leads as the implant is inserted along a path into the intervertebral space and a trailing end opposite the lead end, and lateral planes which pass through the outermost boundaries of the implant and parallel to the said path, and

 

a single anchor on each of the upper surface of the upper part and the lower surface of the lower part, each said anchor being elongated, having a height greater than its width, and located along a line parallel to said path, the two anchors lying essentially in the same vertical plane, which plane is essentially midway between said lateral planes,

 

each said anchor being adapted to enter a groove in the adjacent vertebrae as the implant moves along said path into the intervertebral space, to anchor its respective part to the vertebrae which its surface engages.

The issue with respect to the “adapted to” language was whether the written description of the patent had been satisfied for the claim language “adapated to enter a groove.” This language was added after filing the application and according to the appellant had no basis in the specification. The court decided this isssue as follows:

Medtronic asserts that the district court erred in granting summary judgment that the ’071 patent contains adequate written description to support the limitation “single anchor . . . adapted to enter a groove.” We review a grant of summary judgment de novo, reapplying the standard applicable at the district court. Young v. Lu-menis, Inc., 492 F.3d 1336, 1345 (Fed. Cir. 2007). Sum-mary judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(c). “Compliance with the written description requirement is a question of fact but is ame-nable to summary judgment in cases where no reasonable fact finder could return a verdict for the non-moving party.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1307 (Fed. Cir. 2008).

Claim 1 recites that the “single anchor” is “adapted to enter a groove in the adjacent vertebrae.” ’071 patent col.7 ll.3-10 (emphasis added). Medtronic argued that the written description does not disclose the “adapted to enter a groove” limitation. SSI argues that the ’071 patent necessarily discloses anchors that are “adapted to enter a groove” because it discloses that the adjacent vertebrae rest on the support faces of the intervertebral implant after insertion. The district court granted summary judgment holding that the claim was adequately sup-ported by the written description. We see no error in this judgment.

Medtronic is correct that the ’477 patent disclosure was not incorporated by reference and therefore cannot provide the disclosure of the “adapted to enter a groove” limitation. In the two pages Medtronic devotes to this issue, it argues that the patent makes no mention of grooves. See, e.g., Medtronic’s Br. at 37 (“patent’s failure to disclose any information concerning the grooves located in the vertebrae and their interaction with the anchor is a prime example of SSI’s attempt to expand its claims beyond its disclosures”); Medtronic’s Reply Br. at 8 (argu-ing that the patent diagrams do not show any grooves). Because the claims at issue relate to the implant and do not cover the groove itself, applicants were not required to disclose grooves or how grooves should be formed or cut. The limitation at issue does not recite cutting a groove into vertebrae, or even inserting an anchor into a groove; rather, it recites “a single anchor . . . adapted to enter a groove.” The issue for written description purposes is whether a person of skill in the art would understand the ’071 patent to describe a single anchor that is adapted to enter a groove. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (“the test for sufficiency [of the written description requirement] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date”).

We see no error in the district court’s determination that there is no genuine dispute of material fact; the specification describes the claimed “single anchor” as necessarily being “adapted to enter a groove.” The disclosure of the shape of the anchor in combination with its placement adequately describes an anchor adapted to enter a groove. The specification discloses that each of the top and bottom parts of the implant has a support face that includes a single anchor. ’071 patent col.3 ll.56-58, col.4 ll.9-12, figs. 1-7. These anchors affix the upper and lower parts into the adjacent vertebrae such that the end face of each vertebrae “rests . . . on the support face” of the corresponding part of the implant. Id. col.3 ll.58-60, col.5 ll.59-64. Thus, the specification discloses that the single anchor enters the adjacent vertebrae in such a way that the vertebrae “rest” on the support faces of the top and bottom parts of the implant. For such direct contact between the implant and vertebrae to occur, the single anchor must be entirely inserted into the adjacent vertebrae: that is, the anchors must be fully inserted into a “groove” of some type, whether that groove is pre-cut or formed by the anchor itself (e.g., by a “self-cutting” an-chor). The specification, therefore, discloses that the single anchor is inserted into a vertebral groove. The record lacks adequate evidence to create a genuine dis-pute over whether the specification discloses that the anchors are “adapted to enter a groove.” The fact that the specification never mentions the word groove is not suffi-cient to create a genuine dispute of material fact.

We agree with the district court that the specification of the ’071 patent provides adequate written description to support the “single anchor . . . adapted to enter a groove” limitation. Therefore, we affirm the court’s grant of SSI’s motion for partial summary judgment dismissing Medtronic’s 35 U.S.C. § 112 defenses.

The parties spent a good portion of oral argument discussing the “adapted to enter a groove” issue. You can listen to Appellant’s argument [Here], Appellee’s argument [Here], and Appellant’s rebuttal argument [Here].

Another issue concerned the claim construction of the language “operative engagement.” The Appellant argued as follows: [Listen]. The Appellee did not have a chance to discuss this issue during oral argument.

The panel had the following to say in regard to “operative engagement”:

Medtronic asserts that the district court erred in con-struing the claim term “operative engagement.” Claim construction is a matter of law, and we review the court’s claim construction without deference. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1451 (Fed. Cir. 1998) (en banc). In doing so, we are mindful of the principle that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). We read the claims “in view of the specification,” which is “the single best guide to the meaning of a disputed term.” Id. at 1315.

Claim 1 recites the limitation of “a lower part having a lower surface for engaging a vertebrae and an upper surface portion in operative engagement with the rounded portion of the upper part.” ’071 patent col.6 ll.60-62 (emphasis added). At claim construction, Medtronic proposed construing “operative engagement” to mean “the interaction between the pivot insert and the rounded portion of the upper part.” Claim Construction Order, 2008 U.S. Dist. LEXIS 116648, at *18. The court ob-served that although the preferred embodiment of the ’071 patent has a pivot, claim 1 does not recite such a limitation: rather, claim 1 recites only an upper and a lower part that are “in operative engagement” with each other. The court also found that claim differentiation weighed against reading a pivot limitation into claim 1, because various dependent claims add limitations relating to a two-piece lower part with a pivot insert. Therefore, the court adopted SSI’s proposed construction, construing “operative engagement” as “permitting movement (for example pivotability).” Id. at *23.

     Medtronic asserts that the court erred in construing “operative engagement” as not incorporating a pivot insert. According to Medtronic, the only “engagement” disclosed by the specification occurs between the upper part and the pivot insert, not between the upper and lower parts. SSI asserts that the court’s construction is correct because the plain language of the claim does not limit the invention to the preferred three-piece embodi-ment.

We agree with SSI that the court correctly construed “operative engagement.” The language of the limitation is straightforward: the lower part of the implant engages “operatively” with the rounded portion of the upper part. Given that the claimed invention is an intervertebral implant designed to replace a disc in a spinal column, “operative engagement” must be engagement such that the upper and lower parts of the implant can move rela-tive to each other; otherwise, the implant would be rigid and would inhibit movement of the adjacent vertebrae. Thus, the court correctly determined that “operative engagement” relates to permitting movement. The court also did not err in identifying pivotability as an example type of movement; the ’071 patent specifically discloses pivotability in association with the preferred embodiment. However, nothing in the claim suggests that the upper part of the implant must be specifically engaged with a pivot insert, as opposed to the lower part of the implant. To the contrary, the claim indicates that the upper and lower parts are engaged with each other directly. ’071 patent col.6 ll.60-62 (“a lower part having . . . an upper surface portion in operative engagement with the rounded portion of the upper part”). Therefore, the court did not err in construing “operative engagement” as “permitting movement (for example pivotability).”

     Medtronic asserts, in the alternative, that under the court’s construction claim 1 is invalid for failure to comply with the written description requirement. Therefore, Medtronic argues, the court erred in granting summary judgment that the ’071 patent contains adequate written description to support the limitation “lower part having . . . an upper surface portion in operative engagement with the rounded portion of the upper part.” Medtronic argues that the ’071 patent only describes a three-piece device with a separate pivot insert, not a two-piece device that permits movement between the top and bottom parts. However, Figures 3 and 6 of the ’071 patent illustrate the implant outside the intervertebral space (i.e., prior to insertion) and show the pivot insert as embedded in the lower part. Additionally, the evidence at summary judg-ment included deposition testimony from Medtronic’s expert that a person of skill in the art would have known that an implant having a lower plate with an embeddable pivot insert—such as that disclosed by the ’071 patent—could have been assembled prior to insertion and inserted into the patient as a two-piece device. Medtronic does not point to any evidence rebutting this testimony. Therefore, we agree with the district court that a person of skill in the art would have understood the ’071 patent to describe an implant that could be pre-assembled prior to insertion, such that the upper surface of the lower part is “opera-tively engaged” with the lower surface of the upper part.
     Medtronic contends that the ’071 patent does not de-scribe a two-piece implant because the ’071 patent ac-tively disparages the two-piece design of the ’477 patent. In discussing the two-piece design of the ’477 patent, the ’071 patent notes that it is “particularly difficult” to achieve a minimum structural height for an implant if the pivot is embedded prior to insertion. Id. col.1 ll.11-19. However, this does not rise to the level of an express disclaimer sufficient to limit the scope of the claims; “[d]isavowal requires expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Epistar Corp. v. ITC, 566 F.3d 1321, 1335 (Fed. Cir. 2009). Further, claim 1 is not directed to the height-minimizing embodiment. The originally-filed claims recited limitations directed to “protrusions and recesses . . . which are offset laterally from one another in such a way that . . . [the upper and lower parts] mesh with one an-other,” see J.A. 17167; claim 1 as issued recites no such limitation.

 
You can read the court’s opinion here: [Read].
You can listen to the entire oral argument here: [Listen].

You can review extrinsic evidence here:

Prior Art Used to Construe Claim

Tuesday, September 21st, 2010

In Laryngeal Mask Co. Ltd v. Ambu A/S, 2010-1028 (Fed. Cir. September 21, 2010), the Federal Circuit dealt with some complicated claim construction issues.  One issue concerned the meaning of the word “backplate” used in a laryngeal mask patent.  The oral argument for this case was featured in an earlier post as the Oral Argument of the Month [Link]. 

What caught my eye in today’s opinion was the use of prior art patents as a guide to construe a claim term.  The court wrote:

Although there was no dictionary or treatise defini-tion introduced for backplate, there are two prior art patents also related to laryngeal mask devices which use the term. U.S. Patent No. 5,355,879 (’879 patent); U.S. Patent No. 5,305,743 (’743 patent). Both prior art patents list the same inventor as the patent at issue, Dr. Brain. Both of these patents disclose a backplate, but neither includes a tube joint. This prior art use of the term would further inform one of skill in the art as to the common meaning of the term backplate.

The term backplate has a somewhat self-descriptive nature. As the prior art patents indicate it is the plate on the back. In light of the claims, specification, prosecution history, and prior art patents, we conclude that one of skill in the art would understand the claimed backplate to be “the relatively rigid mask structure surrounded by the cuff.” We conclude that one of skill in the art would not conclude that the backplate must have a tube joint. We also conclude that the inventor did not act as his own lexicographer here and clearly require the backplate to have a tube joint. Because the district court’s judgment of noninfringement was based on an erroneous claim con-struction, we vacate that judgment and remand for fur-ther proceedings.

 

The court’s statement  “in view of the claims, specification, prosecution history, and prior art patents” is a little redundant because the prior art patents were cited during the prosecution history — therefore under Phillips v. AWH, 415 F.3d 1303 (Fed. Cir. 2005) those cited prior art patents actually form part of the prosecution history.  See Phillips at 1317 (”The prosecution history, which we have designated as part of the “intrinsic evidence,” consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent. Autogiro, 384 F.2d at 399.”).

This case is reminiscent of Arthur A. Collins, Inc. v. Northern Telecom Ltd., 216 F.3d 1042 (Fed. Cir. 2000), where the court said:

Even when prior art is not cited in the written description or the prosecution history, it may assist in ascertaining the meaning of a term to a person skilled in the art. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584, 39 USPQ2d 1573, 1578 (Fed.Cir.1996). When prior art that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a guide to the proper construction of the term, because it may indicate not only the meaning of the term to persons skilled in the art, but also that the patentee intended to adopt that meaning.

You can read the entire Laryngeal Mask opinion here: [Read].

Merit Systems Protection Board to Conduct First Oral Argument in 27 Years

Monday, September 20th, 2010

Correction

The Merit Systems Protection Board is slated to hold its first oral argument in 27 years.  The announcement of the oral argument was made last week in the Federal Register.  The argument before the Merit Systems Protection Board will take place at the Court of Appeals for the Federal Circuit.

The MSPB announcement reads as follows:

U.S. MERIT SYSTEMS PROTECTION BOARD (MSPB) TO CONDUCT FIRST ORAL ARGUMENT IN 27 YEARS

On Tuesday, September 21, 2010, the MSPB will hear oral argument in the matters of Rhonda K. Conyers v. Department of Defense, MSPB Docket No. CH–0752–09–0925–I–1, and Devon H. Northover v. Department of Defense, MSPB Docket No. AT–0752–10–0184–I–1. The proceedings will take place at 10:00 a.m. at the United States Court of Appeals for the Federal Circuit, Room 201, 717 Madison Place, N.W., Washington, D.C. See 75 FR 56146, Sept. 15, 2010.

 

Conyers and Northover raise the question of whether, pursuant to 5 CFR part 732, the rule in Department of the Navy v. Egan, 484 U.S. 518, 530–31 (1988), limiting the scope of MSPB review of an adverse action based on the revocation of a security clearance, also applies to an adverse action involving an employee in a ‘‘non-critical sensitive’’ position due to the employee having been denied continued eligibility for employment in a sensitive position. The Board requested and received an advisory opinion from the Office of Personnel Management (OPM) in this matter. See 5 U.S.C. § 1204(e)(1)(A). The Board also invited and received amicus curiae briefs. See 75 FR 6728, Feb. 10, 2010.

 

The parties and the amici curiae will be allotted time at the hearing to present oral argument in this matter. The briefs submitted by the parties and the amici curiae, as well as OPM’s advisory opinion, are available for viewing on the MSPB’s website at http://www.mspb.gov/oralarguments. The MSPB also will make a recording of the oral argument available on its website. The public is welcome to attend this hearing for the sole purpose of observation. Any person attending this oral argument who requires special accessibility features, such as sign language interpretation, must inform MSPB of those needs in advance.

 

This is the first time the MSPB has conducted an oral argument in 27 years. Chairman Susan Tsui Grundmann, Vice Chairman Anne Wagner, and Member Mary Rose will utilize oral argument in cases like Conyers and Northover that present issues of special significance because of their broad potential impact on the Federal civil service and merit systems. Chairman Grundmann stated, “In an era of unprecedented Government transparency and openness, it is incumbent upon the Board to exercise its existing abilities to request amicus briefs and conduct oral argument in order to shed light on the issues, the debate, and the process. Doing so should result in the best decisions for Federal employees and agencies, and the American people.”

 

The U.S. Merit System Protection Board (MSPB) is an independent, quasi-judicial agency that protects Federal merit systems and the rights of individuals within those systems. The MSPB also conducts studies of the civil service and other merit systems in the Executive Branch.

 

The Federal Register announcement is available here: [Read].

Alice in Wonderland — Part II

Friday, September 17th, 2010

Alice in Wonderland made an encore appearance at the Federal Circuit recently during the oral argument of Daiichi Sankyo Co. v. Mylan Pharma, 2009-1511 (Fed. Cir. Sept. 9, 2010).  The panel was trying to assess whether one would have chosen an example in a patent reference as a motivation to modify another reference, when the example was the 118th example in the patent reference.  This prompted Judge Friedman to make the following analogy to Alice in Wonderland: [Listen].

References to Alice in Wonderland are made quite often in judicial opinions.  If you have access to Lexis, see “Wondering about Alice: Judicial References to Alice in Wonderland and Through the Looking Glass,” Parker B. Potter, Jr., 28 Whittier L. Rev. 175 (2006).

You can listen to the entire oral argument here: [Listen].

You can read the opinion here: [Read].

Federal Circuit Judges Heading to Japan in 2011

Wednesday, September 15th, 2010

rotated-tokyo1The Federal Circuit has posted an announcement on its web site that Chief Judge Rader and other judges will be holding a joint judicial conference with the Tokyo Intellectual Property High Court in Tokyo, Japan on May 12th and 13th, 2011.

The historic conference will offer judges the opportunity to explore common issues and learn from each other about intellectual property litigation.

Oral Arguments for the “2010 KSR Guidelines Update”

Saturday, September 11th, 2010

The USPTO recently published its 2010 KSR Guidelines Update  in view of case law that has developed since KSR Int’l, Co. v. Teleflex, Inc. was decided by the US Supreme Court. Listed below are the charts from the guidelines with some additional information. Namely, I’ve added a  hyperlink to the court’s opinion, a column for the judges on the panel with the author of the opinion underlined, whether the teaching point could be deemed pro-inventor, and a link for listening to the oral argument.

Combining Prior Art Elements

 

 

In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008).

 

Even where a general method that could have been applied to make the claimed product was known and within the level of skill of the ordinary artisan, the claim may nevertheless be nonobvious if the problem which had suggested use of the method had been previously unknown

Lourie

Bryson

Gajarsa

 Yes

 Listen

Crocs, Inc. v. U.S. Int’l Trade Comm’n., 598 F.3d 1294 (Fed. Cir. 2010).

A claimed combination of prior art elements may be nonobvious where the prior art teaches away from the claimed combination and the combination yields more than predictable results.

Lourie

Rader

Prost

 Yes

Listen 

Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 356 (Fed.Cir. 2008).

A claimed invention is likely to be obvious if it is a combination of known prior art elements that would reasonably have been expected to maintain their respective properties or functions after they have been combined. 

Dyk

Prost

Moore

 No

 Listen

 Ecolab, Inc. v. FMC Corp., 569 F.3d 1335 Fed. Cir. 2009).

A combination of known elements would have been prima facie obvious if an ordinarily skilled artisan would have recognized an apparent reason to combine those elements and would have known how to do so. 

Rader

Gajarsa

Dyk

 No

Listen 

 

Wyers v. Master Lock Co., No. 2009–1412, — F.3d—, 2010 WL 2901839 (Fed. Cir. July 22, 2010). 

The scope of analogous art is to be construed broadly and includes references that are reasonably pertinent to the problem that the inventor was trying to solve. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning. 

Lourie

Linn

Dyk

No/Yes

 Listen

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009).

Predictability as discussed in KSR encompasses the expectation that prior art elements are capable of being combined, as well as the expectation that the combination would have worked for its intended purpose.  An inference that a claimed combination would not have been obvious is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements. 

Newman

Bryson

Linn

 No

 Listen

 

 Substituting One Known Element for Another 

In re ICON Health & Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007).

 

When determining whether a reference in a different field of endeavor may be used to support a case of obviousness (i.e., is analogous), it is necessary to consider the problem to be solved.

 

Mayer

Schall

Prost

Yes

Listen

Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337 (Fed. Cir. 2008).

 

Analogous art is not limited to references in the field of endeavor of the invention, but also includes references that would have been recognized by those of ordinary skill in the art as useful for applicant’s purpose.

 

Bryson

Moore

Wolle*

No

Listen

Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir.

2008).

 

Because Internet and Web browser technologies had become commonplace for communicating and displaying information, it would have been obvious to adapt existing processes to incorporate them for those functions.

 

Gajarsa

Plager

Prost

No

Listen

Aventis Pharma Deutschland v. Lupin, Ltd., 499 F.3d 1293 (Fed.

Cir. 2007).

A chemical compound would have been obvious over a mixture containing that compound as well as other compounds where it was known or the skilled artisan had reason to believe that some desirable property of the mixture was derived in whole or in part from the claimed compound, and separating the claimed compound from the mixture was routine in the art.

 

Mayer

Linn

Robertson*

No

Listen

Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353 (Fed. Cir. 2008).

 

A claimed compound would not have been obvious where there was no reason to modify the closest prior art lead compound to obtain the claimed compound and the prior art taught that modifying the lead compound would destroy its advantageous property. Any known compound may serve as a lead compound when there is some reason for starting with that lead compound and modifying it to obtain the claimed

compound.

 

Rader

Linn

Prost

Yes/No

Listen

Procter & Gamble Co. v. Teva Pharmaceuticals USA, Inc., 566 F.3d 989 (Fed. Cir. 2009).

 

It is not necessary to select a single compound as a ‘‘lead compound’’ in order to support an obviousness rejection. However, where there was reason to select and modify the lead compound to obtain the claimed compound, but no reasonable expectation of success, the claimed compound would not have been obvious.

 

Mayer

Dyk

Huff*

No/Yes

Listen

Altana Pharma AG v. Teva

Pharms. USA, Inc., 566 F.3d 999

(Fed. Cir. 2009).

 

Obviousness of a chemical compound in view of its structural similarity to a prior art compound may be shown by identifying some line of reasoning that would have led one of ordinary skill in the art to select and modify a prior art lead compound in a particular way to produce the claimed compound. It is not

necessary for the reasoning to be explicitly found in the prior art of record, nor is it  necessary for the prior art to point to only a single lead compound.

 

Newman

Gajarsa

Ward*

No

Listen

 

 

*Visiting judge sitting by designation

 

 

 

 

 

The Obvious to Try Rationale

In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009).

 

A claimed polynucleotide would have been obvious over the known protein that it encodes where the

skilled artisan would have had a reasonable expectation of success in deriving the claimed

polynucleotide using standard biochemical techniques, and the skilled artisan would have had a reason

to try to isolate the claimed polynucleotide. KSR applies to all technologies, rather than just the ‘‘predictable’’

arts.

 

Rader

Friedman

Linn

No

Listen

Takeda Chem. Indus. v.

Alphapharm Pty., Ltd., 492 F.3d 1350 (Fed. Cir. 2007).

 

A claimed compound would not have been obvious where it was not obvious to try to obtain it from a

broad range of compounds, any one of which could have been selected as the lead compound for further

investigation, and the prior art taught away from using a particular lead compound, and there was

no predictability or reasonable expectation of success in making the particular modifications necessary

to transform the lead compound into the claimed compound.

 

Lourie

Bryson

Dyk

Yes

Listen

Ortho-McNeil Pharmaceutical, Inc. v. Mylan Labs, Inc., 520  F.3d 1358 (Fed. Cir. 2008).

 

Where the claimed anti-convulsant drug had been discovered somewhat serendipitously in the course of

research aimed at finding a new anti-diabetic drug, it would not have been obvious to try to obtain a

claimed compound where the prior art did not present a finite and easily traversed number of potential

starting compounds, and there was no apparent reason for selecting a particular starting compound from

among a number of unpredictable alternatives.

 

Michel

Rader

Linn

Yes

Listen

Bayer Schering Pharma A.G. v. Barr Labs., Inc., 575 F.3d 1341 (Fed. Cir. 2009).

 

A claimed compound would have been obvious where it was obvious to try to obtain it from a finite and

easily traversed number of options that was narrowed down from a larger set of possibilities by the prior

art, and the outcome of obtaining the claimed compound was reasonably predictable.

 

Mayer

Friedman

———–

Newman(dissent)

No

Listen

Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075 (Fed. Cir. 2008).

 

A claimed isolated stereoisomer would not have been obvious where the claimed stereoisomer exhibits unexpectedly

strong therapeutic advantages over the prior art racemic mixture without the correspondingly

expected toxicity, and the resulting properties of the enantiomers separated from the racemic mixture

were unpredictable.

 

Newman

Lourie

Bryson

Yes

Listen

Rolls-Royce, PLC v. United Technologies Corp., 603 F.3d 1325

(Fed. Cir. 2010).

 

An obvious to try rationale may be proper when the possible options for solving a problem were known

and finite. However, if the possible options were not either known or finite, then an obvious to try rationale

cannot be used to support a conclusion of obviousness.

 

Michel

Rader

Schall

Yes

Listen

Perfect Web Techs., Inc. v. InfoUSA, Inc.,  587 F.3d 1324

(Fed. Cir. 2009).

 

Where there were a finite number of identified, predictable solutions and there is no evidence of unexpected

results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. Common

sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient

reasoning.

Linn

Dyk

Prost

No/Yes

Listen

 Consideration of Evidence

PharmaStem  Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342 (Fed. Cir. 2007).

 

Even though all evidence must be considered in an obviousness analysis, evidence of nonobviousness

may be outweighed by contradictory evidence in the record or by what is in the specification. Although a reasonable expectation of success is needed to support a case of obviousness, absolute predictability is

not required.

 

Bryson

Prost

——–

 

Newman (dissent)

No

Listen

In re Sullivan, 498 F.3d 1345 (Fed. Cir. 2007).

 

All evidence, including evidence rebutting a prima facie case of obviousness, must be considered when

properly presented.

 

Newman

Lourie

Gajarsa

Yes

Listen

Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357 (Fed. Cir. 2010).

 

Evidence that has been properly presented in a timely manner must be considered on the record. Evidence

of commercial success is pertinent where a nexus between the success of the product and the

claimed invention has been demonstrated.

 

Lourie

Rader

Schall

Yes

Listen

Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310 (Fed. Cir. 2008).

 

Evidence of secondary considerations of obviousness such as commercial success and long-felt need may

be insufficient to overcome a prima facie case of obviousness if the prima facie case is strong. An argument

for nonobviousness based on commercial success or long-felt need is undermined when there is a

failure to link the commercial success or long-felt need to a claimed feature that distinguishes over the

prior art.

 

Michel

Newman

Bryson

No

Listen

 

 

 

Sharon Barner Arguing at the Federal Circuit

Wednesday, September 1st, 2010

Prior to taking one of the top positions at the USPTO as Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, Sharon Barner was in private practice in Chicago.  She has argued at least once before the United States Court of Appeals for the Federal Circuit. 

You can listen to her argument before the Federal Circuit in Automed Technologies v. Microfil, LLC, 2006-1620 (Fed. Cir. Jul. 16, 2007) here: [Listen].

You can read the court’s opinion in that case here: [Read].