On July 17, 2017, the United States Court of Appeals for the Federal Circuit reversed, in a precedential opinion in Millennium Pharmaceuticals, Inc. v. Sandoz, Inc., No. 2015-2066 (Fed. Cir. July 17, 2017), a district court ruling that claims of a patent directed to the Velcade® cancer treatment drug compound were invalid as obvious. The Court held that the District of Delaware clearly erred by finding U.S. Patent No. 6,713,446 (the ‘446 patent) prima facie obvious to one of skill in the art, and by misapplying the secondary indicia of unexpected success and long-unmet need.
Today, the Federal Circuit, vacated-in-part and remanded the Patent Trial and Appeal Board’s obviousness determination regarding a Securus Technologies patent directed to systems and methods for reviewing conversation data for certain events and bookmarking portions of the recording when something of interest is said, finding that the Board failed to provide any explanation for its decision with respect to certain challenged claims.
In ClassCo, Inc. v. Apple, Inc. the Federal Circuit upheld a decision from the Patent Trial and Appeal Board (“the Board”), which invalidated several claims of ClassCo’s US Patent No. 6,970,695 (“the ’695 patent”) that discussed caller ID technology that would verbally announce the name of an incoming caller before the call is connected. The ’695 patent has been asserted in litigation against Apple, Samsung, LG, HTC America, Hewlett-Packard, Palm, Inc., Nokia, and ZTE Corp., in both the Northern District of Illinois, and another suit in the District of Massachusetts, respectively. Apple filed an Inter Partes Review (“IPR”) against the ’695 patent, whereby the Board found the ’695 patent obvious in view of two prior art references, the Fujioka and Gulick patents.
The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same portions to hold the claims unpatentable.
In re NuVasive (Appeal Nos. 2015-1672, -1673) involved the appeal of two separate inter partes review (“IPR”) proceedings initiated by Medtronic against U.S. Patent No. 8,187,334 directed to spinal implants. Both petitions relied on the Michelson reference for teaching a single implant whose length is both greater than 40 mm and at least 2.5 times its width as recited in the ‘334 patent claims. The petitions differed however in that one specifically discussed Michelson Figure 18 and the other did not. Not until its reply in the latter IPR did Medtronic point to Figure 18 and argue that it disclosed the dimensional limitations. Over NuVasive’s objection at the oral hearing and request to move to strike or file a sur-reply, the Board found that all challenged claims but one were obvious based, in large part, on Figure 18 of Michelson disclosing an implant with a length greater than 40 mm and at least 2.5 times its width. Slip. Op at 6-7.
A recent decision by the Federal Circuit suggests that relying on “common sense” in analyzing whether a patent is obvious in view of prior art cannot always be based on common sense alone. In a decision providing practitioners important guidance for relying on common sense in an obviousness inquiry, the Federal Circuit on August 10, 2016 handed down its decision in Arendi S.A.R.L. v. Apple Inc., No. 2015-2073, 2016 U.S. App. LEXIS 14652 *1 (Fed. Cir. Aug. 10, 2016), vacating the PTAB’s decision below. The petitioners had only relied on an expert declaration and testimony as support for their position before the PTAB that common sense rendered a patent obvious. Id. at *19-20. The Federal Circuit rejected the PTAB’s holding in favor of petitioners as “conclusory and unsupported by substantial evidence[.]” Id. at *22-23, 26-27.
The patent in this case is U.S. Patent No. 7,917,843, owned by Arendi S.A.R.L., and against which Apple, Google, and Motorola filed a petition for inter partes review (IPR). The ’843 Patent allows a user to coordinate with two computer programs: (1) to display a document with the first computer program while (2) accessing and conducting a search using a second computer program. Id. at *2. The patent discloses mechanisms for analyzing the document to identify the presence of name and address information in the document (e.g., from designators such as street, city, zip code, “Mr.,” “Mrs.” etc.), to determine if it can be used in the searches as part of the second computer program. Id. at *2-3. The claimed invention then displays the search results to the user, who can select the additional information obtained from the search for insertion into the document. Id. at *3.
Summary: Appellant appealed to the Patent Trial and Appeal Board (“Board”) an obviousness rejection to claims directed to a user interface that displays currency trading information. Appellant argued in the appeal that the references cited by the Examiner to form the obviousness rejection failed to teach all of the features recited in the claims, whether taken alone or in combination. The Board overturned the rejection earlier this year in Ex parte Breitenbach, concluding that the combining of the references cited by the Examiner was improper. No argument was presented by the Appellant to the Board relating to the improperness in combining the references. This case provides a reminder that such arguments are not futile on appeal.
A closer look at this case follows.
The independent claim on appeal recites (with emphasis added):
- A system comprising at least one computing device coupled to a plurality of other computing devices, the at least one computing device operable at least to:
retrieve market data for a plurality of risk reversals for a currency pair at a first time, at least one of the risk reversals having a first maturity and at least a second risk reversal having a second maturity different than the first;
determine a currency in which to quote skew for each of the risk reversals;
communicate to and therewith causing an interface screen to be displayed at least one of the other computing devices a listing comprising the first and second risk reversals, the market data, and an indication of the determined skew for each of the risk reversals;
retrieve market data for at least one of the first and second risk reversals at a later time;
determine that there has been a change in skew, based on the later retrieved market data, of the at least one of the first and second risk reversals; and
communicate to and therewith refresh the interface screen displayed at the at least one other computing device the later retrieved market data and an indication of the change in skew of the at least one of the first and second risk reversals.
Earlier this week, the Federal Circuit in Circuit Check Inc. v. QXQ, Inc. clarified the standard by which a reference may be considered prior art for the purposes of an obviousness determination. See No. 2015-1155, Slip. Op. (Fed. Cir. July 28, 2015). This opinion may be useful for parties asserting patent infringement because it has the potential to reduce the scope of prior art available to an accused infringer alleging obviousness of an asserted patent.
In order for a reference to be considered prior art for the purposes of an obvious determination, the reference must be analogous. Id. at 6 (citing Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993). In Circuit Check Inc., the Federal Circuit explained that just because something “is within the common knowledge of humankind does not mean that … [it] is analogous art.” Id. at 7. “Rather, the [pertinent] question is whether an inventor would look to this particular art to solve the particular problem at hand.” Id.
Last Friday the Patent Trial and Appeal Board (PTAB) denied four Sandoz Inc. petitions for instituting inter partes review (IPR) of U.S. 8,455,524 (IPR2015-00005), U.S. 7,612,102 (IPR2015-00006), U.S. 7,659,290 (IPR2015-00007), and U.S. 7,659,291 B2 (IPR2015-00008) (referred to herein as the “EKR Patents”). The EKR Patents are assigned to EKR Therapeutics, a wholly owned subsidiary of Chiesi USA, Inc. The PTAB concluded that the “Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim.” See, e.g., IPR2015-00005 at 2. The PTAB reached this conclusion based, in part, on Sandoz’s failure to “present sufficient evidence” in support of its arguments that the challenged claim elements in the four patents were inherent. Continue Reading Petitioners Must Present Sufficient Evidence to Establish Inherency