Publications – Oblon, McClelland, Maier & Neustadt, L.L.P.

5 IP Rules to Know to Protect Your Business in the United States (article in French)

17 Jan 2024 00:00:00 -0800

Philippe J.C. Signore, Partner with Oblon, discusses the differences between the American and French intellectual property systems.

USPTO Releases Examiner Guidance for The Amgen Enablement Decision

10 Jan 2024 00:00:00 -0800

The USPTO today published its guidance to the examiners on the impact of the Amgen v. Sanofi,143 S. Ct. 1243 (2023), on USPTO practice. The Guidance is basically steady as she goes but with the caveat that the enablement requirement and the Wands factors (In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)) apply across all technologies, noting the Court’s reliance on cases involving the telegraph, incandescent lamp filaments and wood glue. The Guidance also noted that the post-Amgen Federal Circuit decisions had reaffirmed the continued validity of the Wands factors as consistent with Amgen, citingMedytox, 71 F.4th at 998- 999, Baxalta Inc, v. Genentech, Inc., 81 F.4^th 1362 (Fed. Cir. 2023), and In re Starrett, 2023 WL 3881360 (Fed. Cir. 2023) (non-precedential).

A copy of the guidance is here.

Penumbra, Inc. v. RapidPulse, Inc.

08 Dec 2023 00:00:00 -0800

Summary

The U.S. Patent Trial & Appeal Board (“PTAB”) designated a portion of its decision in Penumbra, Inc. v. RapidPulse, Inc., as precedential on November 15, 2023.[1]^,[2],[3] This decision distinguishes the priority rules applicable to prior art patents cited against post-AIA patents from the priority rules applicable to pre-AIA patents. In 2015, the Federal Circuit issued an opinion in Dynamic Drinkware, LLC v. National Graphics, Inc., which established that any patent being used as a prior art reference can only have the benefit of priority to a provisional application if the provisional application provided support for the claims in the prior art reference.[4] However, the PTAB’s decision in Penumbra upends that rule for post-AIA patents.

The PTAB held that the language of AIA 35 U.S.C. §§ 102(a)(2) & 102(d) was sufficiently different from the corresponding language in the pre-AIA §102(e) to change the requirements for a reference patent to be entitled to the benefit of a parent provisional application’s filing date. As a result of the PTAB’s holding, there is no longer “[a] need to evaluate whether any claim of a reference patent document is actually entitled to priority when applying such a reference patent as prior art.”[5] Accordingly, for consideration of priority, a reference patent only needs to meet the ministerial requirements of 35 U.S.C. §§ 119 and 120, and the provisional in question need only describe the subject matter relied upon in the reference patent as prior art.[6]

Background

Petitioner Penumbra filed an IPR Petition to challenge U.S. Patent No. 10,531,883 (“the ’883 patent”) held by patent owner RapidPulse, Inc. The ’883 patent describes a medical device designed to aspirate blood clots from cerebral vasculature for the treatment of ischemic strokes. The device functions by alternatively applying and eliminating a vacuum at the distal end of the device such that a clot may be rocked back and forth before aspiration, thereby overcoming the static force of friction so that it can be removed more easily.

Analysis

The PTAB examined Claims 1-18 of the ’883 patent under Petitioner’s arguments that 35 U.S.C. § 103 may render the ’883 patent unpatentable over cited prior art. The cited prior art included U.S. patents to Teigen,[7] Grey,[8] Rubenstein,[9] Yang,[10] and Matteo[11], but only Teigen was of material significance to the precedentially designated portion of this PTAB decision.

The PTAB found that Teigen, along with various combinations of the other prior art references, was sufficient to invalidate all 18 challenged claims of the ’883 patent under 35 U.S.C § 103. However, the application which issued as the Teigen reference was filed on August 24, 2021, which postdated the July 18, 2019, filing date of application no. 16/516,232 (“the ’232 application”) which issued as the ’883 patent. Accordingly, Petitioner argued that Teigen was entitled to the benefit of priority to two provisional applications that predated the ’883 patent’s effective filing date: U.S. provisional application nos. 62/778,708 (“the ’708 provisional”), filed December 12, 2018, and 62/702,804 (“the ’804 provisional”), filed July 24, 2018. Patent Owner likewise argued that the ’883 patent was entitled to priority back to U.S. provisional application no. 62/750,011 (“the ’011 provisional”).

Accordingly, the relevant timeline is as follows:

the ’804 provisional (1^st priority for Teigen) – 7/24/2018
the ’011 provisional (priority for the ’883 patent at issue) – 10/24/2018
the ’708 provisional (2^nd priority for Teigen) – 12/12/2018
the ’232 application (’883 patent at issue) – 7/18/2019
Teigen – 8/24/2021

Priority for Patent at Issue

The PTAB determined that for the ’883 patent to be entitled to the benefit of priority extending back to the ’011 provisional, the ’011 provisional would need to provide written support for the claims of the ’883 patent, notably at issue here, “prevent[ing] forward flow.” The PTAB held that while the ’011 provisional described some embodiments of the device with very little forward flow, it also described embodiments with higher levels of flow and at no point was the key feature of “prevent[ing] forward flow” ever considered by the ’011 provisional as an important or desirable feature. The PTAB ultimately held that the challenged claims were not sufficiently supported by the written description of the ’011 provisional and so the ’883 patent was only entitled to a priority date of July 18, 2019.

Priority for Teigen

The PTAB held that a reading of AIA 35 U.S.C. §§ 102(a)(2) & 102(d) should distinguish AIA patents from pre-AIA patents. The PTAB stated that “AIA § 102 draws a distinction between actually being entitled to a right of priority to, or the benefit of, a prior-filed application … of a claimed invention … and merely being entitled to claim a right of priority to, or the benefit of, a prior-filed application for prior-art purposes.”[12]

Therefore, the requirements to establish priority for a prior art patent cited against an AIA patent are lower than the requirements to establish priority for an AIA patent otherwise. For the purposes of prior art, this means that a patent can be entitled to the benefit of priority to a provisional application so long as it satisfies the ministerial requirements of priority under 35 U.S.C. §§ 119 and 120, and the provisional application provides written description support for the relevant disclosure.

The PTAB also held that while the ’804 and ’708 provisionals did not meet the pre-AIA Dynamic Drinkware priority requirements, they did satisfy this new interpretation. Accordingly, Teigen had the benefit of its earlier priority date back to the ’804 provisional filing date of July 24, 2018.

Conclusion

Because Teigen’s provisional applications both satisfied these new requirements, the earliest priority date available for the Teigen patent was the ’804 provisional’s filing date of July 24, 2018, which predated the ’883 patent’s applicable priority date of July 18, 2019. Therefore, the relevant disclosure in Teigen was available as prior art against the ‘883 patent. This ultimately resulted in a holding of unpatentability for challenged claims 1-18 of the ’883 patent under 35 U.S.C. § 103.

The Penumbra opinion serves as an important reminder that the effective prior art date of a prior art patent may change depending on whether the patent being challenged is subject to the AIA or pre-AIA versions of the patent statute. That said, the Federal Circuit has not yet weighed in to affirm Penumbra’s interpretation of the AIA statute. Stay tuned until the appeals court has also addressed this interesting issue.

[1] Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023)

[2] https://www.uspto.gov/patents/ptab/precedential-informative-decisions

[3] §II.E.3 designated precedential, see pgs. 28 - 35

[4] Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)

[5] Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) at pg. 32, emphasis added.

[6] Id. at pgs. 30-32

[7] Teigen et al., US 11,096,712 B2, issued Aug. 24, 2021

[8] Grey et al., WO 2014/151209 A1, published Sept. 25, 2014

[9] Morton K. Rubenstein, US 3,955,574, issued May 11, 1976

[10] Yang et al., US 2017/0238953 A1, published Aug. 24, 2017

[11] Joseph Matteo, US 2012/0138833 A1, published June 7, 2012

[12] Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) at pg. 31

Fed. Cir. Puts More Patents At Risk of Double-Patenting Ax

31 Aug 2023 00:00:00 -0800

Richard Kelly is quoted in the Law360 article, “Fed. Cir. Puts More Patents At Risk of Double-Patenting Ax.”

Pure AIA Patents and Applications Cannot Be Involved in Interferences

16 Aug 2023 00:00:00 -0800

In SNIPR TECHNOLOGIES LIMITED V. ROCKEFELLER UNIVERSITY, No. 2022-1260 (July 14, 2023) (Chen,* Wallach, and Hughes), a panel of the Court addressed the issue of which patents and patent applications can be the subject of an interference.

SNIPR is the owner of five patents directed to methods of selectively killing bacteria in a mixed set of bacteria using CRISPR gene editing. All of the SNIPR patents claimed priority to a PCT application filed on May 3, 2016. Accordingly, all of the applications from which the SNIPR patents issued were deemed “pure AIA” applications (i.e., applications that only ever contained claims with an effective filing date after March 16, 2023) and so examined and issued under the AIA’s first-inventor-to-file patentability requirements.

Rockefeller University had a pending application that was also directed to methods of selectively killing bacteria. Rockefeller’s application claimed priority to a PCT application filed on February 4, 2014, and a U.S. provisional application filed on February 7, 2013. Based on the filing date of Rockefeller’s provisional application, Rockefeller’s pending application was deemed a “pure pre-AIA” application (i.e., an application that has only ever contained claims with effective filing dates before March 16, 2013).

The Board declared an interference between certain claims of Rockefeller’s pending application and all of the claims of the SNIPR patents. The Board initially identified Rockefeller as the senior party based on the February 2014 filing of the Rockefeller PCT application. SNIPR moved to terminate the interference on the grounds that interferences are unavailable to assess patents governed by the AIA. The Board subsequently redeclared the interference, but this time gave Rockefeller benefit of the pre-AIA filing date of the Rockefeller provisional application.

SNIPR again moved to terminate the interference on the grounds that the AIA eliminated interferences for pure AIA patents and patent applications. The Board again denied SNIPR’s motion using the rationale that Rockefeller’s pending application, as a pure pre-AIA application, had to comply with the pre-AIA version of 35 U.S.C. § 102(g) (which required an interference under pre-AIA 35 U.S.C. § 135 between the claims of Rockefeller’s pending application and the claims of the SNIPR patents).

SNIPR did not file a priority statement alleging an earlier date of invention than the filing date of the Rockefeller provisional application. The Board therefore entered judgment against SNIPR and cancelled all of the claims of all of the SNIPR patents. SNIPR then appealed.

In an opinion by Judge Chen, the panel reversed the Board’s decision and held that first-inventor-to-file patents and patent applications exclusively governed by the AIA, i.e., pure AIA patents and applications, cannot be subject to an interference.

The panel rejected the argument from Rockefeller and the Director of the U.S. Patent & Trademark Office, who had intervened, that AIA § 3(n) required Rockefeller’s pending application, as a pure pre-AIA application, to be evaluated under pre-AIA 35 U.S.C. § 102(g) (which required an interference under pre-AIA 35 U.S.C. § 135(a) to determine priority of invention). In particular, the panel rejected the argument the language of pre-AIA 35 U.S.C. § 135(a) authorizing an interference between an application and “any unexpired patent” gave the Director the authority to declare an interference that included a pure AIA patent like the SNIPR patents.

The panel first reviewed the statutory language of AIA § 3(n) and concluded that only pure pre-AIA and “mixed” patents and patent applications (i.e., patents and applications that contain (or contained at any time) at least one claim with a pre-AIA effective filing date and at least one claim with a post-AIA effective filing date) may be part of an interference. Finding “no hint” of congressional intent to expose pure AIA patents and patent applications to interference, the panel reasoned that AIA § 3(n)(1) and § 3(n)(2) created two separate worlds for interferences: pure pre-AIA and mixed patents and patent applications, which are subject to interferences; and pure AIA patents and patent applications which are not subject to interferences. The panel therefore concluded that the AIA bars pure AIA patents from being subject to an interference.

The panel then turned to the language of pre-AIA 35 U.S.C. § 135(a) and concluded that the language “any unexpired patent” did not include pure AIA patents. Noting that the words of a statute must be read in context and with a view to their place in the overall statutory scheme, the panel concluded that such a reading would be inconsistent with the plain language of AIA § 3(n) (which the panel had concluded did not allow pure AIA patents to be part of interferences). The panel further noted that interpreting “any unexpired patent” in the manner proposed by Rockefeller and the Director would undermine “a central purpose” of the AIA, which was to do away with the first-inventor-to-file system and interferences for future applications. Under the interpretation proposed by Rockefeller and the Director, pure AIA patents could conceivably be dragged into interferences until the year 2034. The panel also noted that the interpretation proposed by Rockefeller and the Director would render superfluous the limited exception of AIA § 3(n)(2), thereby providing another reason to support the conclusion that the phrase “any unexpired patent” in 35 U.S.C. § 135(a) did not include pure AIA patents.

The panel therefore reversed. Because the panel reversed the Board's decision, the claims of all five SNIPR patents were reinstated. And, because the SNIPR patents are ineligible to be included in an interference with the Rockefeller pending application, the PTO will have to issue the Rockefeller pending application without further amendment. Interestingly, this means that there will be multiple patents owned by different parties that claim the same subject matter. While this situation may be resolvable in the future through an AIA trial proceeding or in a district court litigation challenging the validity of the SNIPR patents or the Rockefeller patent, it nevertheless creates a significant potential issue for any third party looking to enter the field.

Joint Inventor Need Not Conceive of Entire Invention – Contribution of Elements of Invention Sufficient for Inventorship

17 Jul 2023 00:00:00 -0800

In BLUE GENTIAN, LLC v. TRISTAR PRODUCTS, INC., No. 2021-2316 (June 9, 2023) (Prost*, Chen, and Stark), a panel of the Court addressed the requirements for co-inventorship of utility and design patents.

Blue Gentian sued Tristar in 2012 for infringement of six patents, four utility patents and two design patents, all of which related to an expandable hose. Among the features of the claimed hose were a flexible elongated outer tube made of a fabric material and a flexible elongated inner tube made from an elastic material which were unsecured to one another except at their ends. Each of the asserted patents named a single inventor, Michael Berardi, who was Blue Gentian’s principal.

Tristar counterclaimed to correct the inventorship of all six asserted patents by adding a co-inventor, Gary Ragner. Ragner was the named inventor on two other patents to expandable hoses that had been licensed by Tristar.

Berardi had filed his first patent application for an expandable hose in November 2011. Significantly, however, three months prior to that filing, on August 23, 2011, Berardi had met with Ragner, who was the founder of Ragner Technology Corporation and had been seeking investors to help Ragner Tech. bring its first product — an expandable hose called the “MicroHose” — to market. At that meeting, Ragner had shown Berardi a document that detailed the manufacturing process of the MicroHose, including an inner elastomer layer and a reinforcement layer made of polyester yarn, as well as a prototype which had a vinyl inner tube and a yarn cord attached to the outside. Berardi was also told that the version of the MicroHose that Ragner Tech. intended to market would have a full fabric cover.

Following an evidentiary hearing, the district court concluded that Ragner should have been named as inventor on all six asserted patents. In particular, the district court found that Ragner conveyed three key elements of the host to Berardi, viz. the fabric outer tube; the elastic inner tube; and attaching the tubes only at their ends, and that these key elements amounted to a significant contribution to at least one claim in each of the asserted patents. The district court therefore entered judgment in favor of Tristar and ordered correction of all six asserted patents under 35 U.S.C. § 256.

Blue Gentian then appealed. In an opinion by Judge Prost, however, the Federal Circuit rejected Blue Gentian’s arguments and affirmed the district court.

The panel first addressed Blue Gentian’s challenges relating to the district court’s findings relating to Ragner’s contribution. The panel rejected Blue Gentian’s suggestion that the district court erred by failing to construe any of the claims of the asserted patents before finding that Ragner had contributed to the invention thereof. The panel noted that Blue Gentian had failed to identify even a single dispute about claim scope that was material to inventorship and found that Blue Gentian’s argument that claim construction is always a threshold requirement was “without merit.”

The panel also rejected Blue Gentian’s attack on the district court’s conclusion that Ragner has made a significant contribution to the claimed inventions, noting that Blue Gentian had relied on the elements attributed to Ragner in distinguishing the claimed invention from the prior art. The panel found that features that a patentee relied upon in distinguishing the prior art are necessarily significant. The panel also found that the same three-element contribution applied to the design patents, since a hose with those elements would necessarily have the appearance shown in the claimed designs.

Turning to the issue of corroboration, the panel rejected Blue Gentian’s argument that the district court erred by only requiring corroboration that Ragner conceived of the three key elements, and not requiring separate corroboration that he communicated those elements to Barardi. The panel found that the evidence relied on by the district court was sufficient to conclude that Ragner had, in fact, conveyed those three elements to Barardi at their meeting. The panel also rejected Blue Gentian’s attacks on individual items of evidence, including the prototype that Ragner showed Barardi, noting that corroboration is based on evaluation of the evidence as a whole.

Finally, on the issue of collaboration, the district court had concluded that the information exchange between Ragner and Barardi at their single meeting was sufficient. The panel agreed, rejecting Blue Gentian’s argument that there could be no collaboration in a situation such as this, where one inventor (Ragner) was trying to design a device different from the other inventor (Barardi). The panel noted the principal that a joint inventor need not conceive of the entire invention, and so found it was irrelevant that Ragner did not intend to invent the hose ultimately claimed in the asserted patents. The panel further noted that the meeting between Ragner and Barardi involved the requisite element of joint behavior, viz., one inventor hearing another’s suggestion at a meeting. The panel therefore concluded the district court had not erred.

Show Me the Money – USPTO Fee Proposals Include Fee Provisions to Impact Applicant Behavior

19 Jun 2023 00:00:00 -0800

The USPTO has opened the discussion on its fees to be effective in 2025. While the PTO is to be applauded for getting ahead of the fee curve, unfortunately some proposed fees are not only outrageous but beyond the PTO’s fee setting authority. The PTO in its fee setting objectives listed as one objective to “Promote efficient operations and efficient filing behaviors.” [Emphasis added]. The PTO’s executive summary quoted in this post is found here along with other supporting documentation. The PTO’s fee setting authority is not unbounded but restricted by several laws. First, the House Report describes the fees in 35 U.S.C. § 41 as the reference point for future adjustments. It provides in part for these fees for over 3 independent claims with a column added for 45% inflation since 2011[1]:

However, the proposal is for $200 for each claim over 20 or a 100% increase and a $600 fee for each independent claim over 3 or a 25% increase. The PTO did not, in its submissions, provide any cost data for FY 2022 or any other previous FY. In its executive summary the PTO described the objective to “Encourage applicants to be more efficient in the number of claims filed.” There is nothing in the PTO’s fee setting authority to use it to influence applicants’ habits. The fee setting provision of the AIA provides:

(a) FEE SETTING.—
(1) IN GENERAL.—The Director may set or adjust by rule any fee established, authorized, or charged under title 35, United States Code, or the Trademark Act of 1946 (15 U.S.C. 1051 et seq.), for any services performed by or materials furnished by, the Office, subject to paragraph (2).
(2) FEES TO RECOVER COSTS.—Fees may be set or adjusted under paragraph (1) only to recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents (in the case of patent fees) and trademarks (in the case of trademark fees), including administrative costs of the Office with respect to such patent or trademark fees (as the case may be). [Emphasis added]

Despite the PTO’s ill-fated attempt to reduce the filing of continuation applications in 2007 it is trying again in the proposals. See Tafas v Doll, 559 F.3d 1345, (Fed. Cir. 2009). The PTO is proposing:

Note that the second and, especially, subsequent requests would exceed the PTO’s cost and represent an 80% increase. It is important to remember that the objective of the fees was to recover 50% of the PTO’s operating costs from pre-issuance fees and 50% post issuance.

Another example of price gouging is the proposed PTE fees:

Note that the proposed fee exceeds the PTO’s cost by a factor of 2.6. The initial interim extension fee does not include the application fee which is separate and must be filed with the interim extension. As for the interim extension fee, the PTO’s cost figure seems high. The fee for a redetermination might be fair if the redetermination simply confirmed the correctness of the initial one, but why should the patentee pay a fee if the PTO performed the determination incorrectly.

Another example of the PTO’s greed can be seen in the terminal disclaimer fee where it is determined by when the disclaimer is filed:

The executive summary justifies the new fees because the sliding fee will prompt early filing of terminal disclaimers, ignoring the fact that many double patenting rejections are in error. It would also punish those who challenge the rejection and lose. The PTO claims that the fees will reduce its costs but does not explain how. How much does it cost to process a terminal disclaimer in a patented application? The PTO doesn’t tell us. This is not cost recovery but an attempt to modify applicant’s actions which is not authorized by statute.

These are but a few of the fees the PTO proposes to use to control applicants. Those in the life science arena will be disproportionately affected if the proposals are adopted.

[1] This table is taken from David Boundy’s May 25, 2023 letter to the Public Advisory Committee which provides a detailed explanation of the PTO’s fee making authority, available here.

CAFC Addresses Requirements for Award of Attorneys' Fees

16 Jun 2023 00:00:00 -0800

In a pair of precedential opinions last month, two different panels of the Federal Circuit addressed the requirements for an award of attorneys’ fees.

The first was issued in United Cannabis Corporation v. Pure Hemp Collective Inc., No. 2022-1363 (May 8, 2023) (Lourie, Cunningham and Stark*), which involved an appeal of a denial of a motion for attorneys’ fees under 35 U.S.C. & 285, 28 U.S.C. & 1927, and the district court’s inherent authority. United Cannabis had filed suit against Pure Hemp for patent infringement in 2018, asserting U.S. Patent No. 9,730,911. In April 2020, UCANN had filed for bankruptcy, which stayed the district court litigation, and the parties had stipulated to the dismissal thereof following discharge of the bankruptcy petition in January 2021. UCANN’s infringement claim was dismissed with prejudice, and Pure Hemp’s invalidity and inequitable conduct claims were dismissed without prejudice.

In April 2021, Pure Hemp moved for an award of attorneys’ fees on the following grounds: first, UCANN’s prosecution counsel had committed inequitable conduct during prosecution of the ‘911 patent by copying text from a prior art U.S. Patent Publication (“Whittle”) but had not disclosed the reference to the PTO; and, second, UCANN’s litigation counsel took conflicting positions in representing UCANN and another client, GW Pharma (which was also the owner of Whittle). Pure Hemp did not, however, seek an evidentiary hearing or trial with respect to its motion.

The district court denied Pure Hemp’s motion, finding that Pure Hemp had failed to establish that Pure Hemp was a “prevailing party” under section 285, that the case was exceptional, or that UCANN’s counsel had acted in a vexatious or otherwise unreasonable manner. Pure Hemp then appealed, asserting three supposed errors by the district court, viz., failing to find Pure Hemp to be the prevailing party in the litigation, not concluding that the undisputed facts established inequitable conduct had occurred during prosecution of the patent-in-suit, and not recognizing that UCANN’s counsel had a conflict of interest for which they should have been sanctioned.

In an opinion authored by Judge Stark, the panel affirmed the district court’s denial of Pure Hemp’s motion for attorneys’ fees. First, with respect to the question of whether Pure Hemp was a “prevailing party” under the statute, the panel held that the district court had, in fact, erred by not finding that Pure Hemp was the prevailing party in the underlying action. The panel further held, however, that, despite this error, the district court had correctly denied Pure Hemp’s motion because it had concluded that Pure Hemp had failed to establish that the case was exceptional — an essential element of Pure Hemp’s motion. The panel therefore concluded that the district court’s error was harmless.

Turning to the issue of the alleged inequitable conduct, the panel noted that it had no findings on either materiality or intent to deceive that it could review because the district court had made no findings. The panel further noted that the district court had not been required to make any findings because Pure Hemp had voluntarily dismissed its counterclaims before any findings had been made and had expressly stated that it did not seek a further evidentiary hearing when it filed its motion.

Despite the lack of specific findings by the district court, Pure Hemp nevertheless contended that it was entitled to prevail because UCANN’s prosecution counsel had copied and pasted material from Whittle without ever disclosing that prior art reference to the PTO. The panel disagreed that undisclosed cutting-and-pasting was sufficient, noting that the district court cases on which Pure Hemp attempted to rely both included specific findings that the copied and pasted prior art disclosures were material—findings which were undeniably lacking in Pure Hemp’s appeal. The panel also declined Pure Hemp’s attempt to have the panel make the necessary findings on materiality and intent to deceive based on the undisputed facts in the record.

The panel also rejected Pure Hemp’s argument that the case should be found exceptional because UCANN’s attorney’s had a conflict of interest in prosecuting identical applications for two different clients. First, the panel found that Pure Hemp had waived this argument by failing to cite the applicable rule of professional conduct to the district court. Secondly, even considering Pure Hemp’s argument, the panel held that Pure Hemp’s challenge lacked merit. Not only was there was no evidence that the patents that UCANN’s attorney were actually identical, Pure Hemp had also failed to show that anything that counsel’s representation of UCANN was directly adverse to the interests of GW Pharma.

Finally, in response to UCANN’s contention that Pure Hemp’s appeal was frivolous, the panel held that even though Pure Hemp’s position was extremely weak, it was neither frivolous as filed nor frivolous as argued. In support of this conclusion, the panel noted that Pure Hemp had, in fact, prevailed on its appeal of the district court’s erroneous decision with respect to the “prevailing party” issue.

The second opinion was issued in OneSubsea UK Limited v. FMC Technologies, Inc., No. 2022-1099 (May 23, 2023) (Moore, Clevenger* and Dyk). OSS had originally brought suit against FMC in the United States District Court for the Eastern District of Texas in March of 2015, asserting ninety-five claims spread across ten patents. FMC countersued, alleging infringement of twenty-nine claims from two patents, and sought transfer to the Southern District of Texas where both parties maintained their respective headquarters. The case was transferred over OSS’s objections in December 2015 and assigned to Judge Atlas.

In July 2016, after conducting a Markman hearing, the district court issued a claim construction order construing the disputed claims terms. Three weeks after the Markman order was issued, FMC moved for summary judgment of non-infringement. OSS opposed, and offered the declaration of an expert to support its argument that FMC’s accused apparatus satisfied all of the limitations of the asserted claims. Before the district court could act on FMC’s motion, however, the PTO instituted IPR proceedings on three of the asserted OSS patents. Although FMC argued that a stay was unnecessary given the pending summary judgment motion, the district court nevertheless entered an order staying proceedings. That stay would remain in effect for nearly three years, during which time the PTO invalidated seventy-six of OSS’s claims (decisions which were affirmed by the Federal Circuit).

In July 2019, the district court lifted the stay and, following some additional briefing, FMC renewed its motion for summary judgment in March 2020. OSS again opposed, but, for reasons unexplained, chose to rely on a different expert to support its arguments. FMC subsequently moved to exclude this expert’s opinions under Fed. R. Evid. 702 and Daubert for allegedly failing to adhere to certain stipulations between the parties regarding the meaning of a particular claim term. In December 2020, the district court issued an order granting FMC’s motion to exclude OSS’s expert’s opinions and FMC’s motion for summary judgement of non-infringement.

In January 2021, FMC filed a motion for attorneys’ fees under 35 U.S.C. & 285, arguing that OSS’s “substantively weak infringement claims” and “litigation misconduct” satisfied the test for an “exceptional” case. In particular, FMC argued that the court’s Markman order had foreclosed any legitimate argument that FMC’s apparatus infringed the asserted claims and that OSS had engaged in litigation misconduct by, inter alia, offering the opinions of an expert who disregarded claim constructions and by filing the original complaint in the Eastern District of Texas. Two days after briefing on FMC’s motion concluded, the case was re-assigned due to the retirement of Judge Atlas.

In September 2021, the district court denied FMC’s motion for fees, stating that “[I]ndustry competitors zealously advocating their positions often results in resource- and time-intensive litigation. But that alone is insufficient to make a case ‘exceptional,’ and the prevailing competitor is not entitled to fees simply because it won the hard-fought case.” FMC appealed.

In an opinion authored by Judge Clevenger, the panel first addressed FMC’s contention that the Court should apply de novo review to the decision denying FMC’s motion, rather than the abuse-of-discretion standard required by precedent. FMC argued that such a deviation would be appropriate in this case because the judge that had denied the motion had “only briefly” been involved. The panel rejected this argument, noting the very substantial body of law in which appellate courts had reviewed discretionary decisions of successor judges for abuse of discretion.

Turning to the merits of FMC’s appeal, the panel rejected FMC’s argument that the case was objectively baseless after the district court issued its Markman order construing certain disputed claim terms. The panel noted that the district court itself had stated that it was “unclear” whether FMC would ultimately prevail on that issue when deciding to stay the case and had specifically pointed out at the time that OSS had offered the opinions of an expert that raised a disputed issue of fact. The panel also rejected FMC’s argument that OSS’s failure to produce admissible evidence to support its infringement theory alone made the case exceptional, noting specifically that FMC had cited no case either at the district court or on appeal that found a case exceptional solely because a party relied on evidence that was ultimately found to be inadmissible.

Are you actually a Joint Inventor?

22 May 2023 00:00:00 -0800

The Court of Appeals for the Federal Circuit (CAFC), on May 2, 2023, reversed the Delaware District Court’s decision in HIP, Inc. v. Hormel Foods Corp., that David Howard of Unitherm should be added as a joint inventor on US 9,980,498 (herein, the ‘498 patent), a patent owned by Hormel and directed to methods of precooking bacon and meat pieces. The decision on appeal considered whether Howard contributed to the conception of the invention and whether the determination of his joint inventorship should be upheld.

In 2005, Hormel and Van Doorn of Unitherm entered into a joint agreement to develop an oven to be used in a two-step cooking process. During this agreement, two different ovens were utilized for testing. One oven was an infrared oven and the other was a more conventional spiral oven. Howard claimed during these initial meetings that he disclosed the infrared preheating concept at issue on appeal. In 2008, Hormel conducted additional testing using Unitherm’s mini spiral test oven at Unitherm’s research facility upon leasing the oven from Unitherm. Subsequent testing at Hormel’s own facility resulted in a two-step cooking process being developed. The first step involved preheating the bacon and the second step involved cooking the meat in a superheated steam oven. Upon developing the process, Hormel filed a non-provisional patent on the two-step cooking process in August 2011. The application issued in May 2018 as the ‘498 patent. The ‘498 patent named four inventors, who all assigned their interests in the patent to Hormel.

In 2021, HIP sued Hormel in the District Court of Delaware claiming that Howard was either the sole inventor or a joint inventor of the ‘498 patent based on various claims. At the bench trial, the district court determined Howard was not the sole inventor, but that he was a joint inventor based solely on his alleged contribution of the infrared preheating in claim 5. The court stated that the infrared preheating concept in claim 5 was significant based on the differences between independent claim 1 and independent claim 5. The differences between claim 1 and claim 5 are shown below:

Claim 1: A method of making precooked bacon pieces using a hybrid cooking system, comprising:
Preheating bacon pieces with a microwave oven to a temperature of 140° F. to 210° F… .

Claim 5: A method of making precooked bacon pieces using a hybrid cooking system, comprising:
Preheating bacon pieces in a first cooking compartment using a preheated method selected from the group consisting of a microwave oven, an infrared oven, and hot air to a temperature of at least 140° F… .

The district court determined that Howard was a joint inventor based on his contribution of the concept of preheating with an infrared oven identified in claim 5. This was corroborated by testimony from Van Doorn, pork loin testing date, and by three of the Hormel inventors stating they had not conceived of this particular element. The district court ordered the USPTO to add David Howard as a joint inventor on the ‘498 patent and to issue a Certificate of Correction accordingly.

On appeal to the CAFC, Hormel raised two issues. Firstly, Hormel argued that the district court erred in determining Howard was a joint inventor because the alleged contribution of preheating with an infrared oven was well known and part of the state of the art. Hormel asserted that its claim to alternatively using an infrared oven was not significant when measured against the scope of the full invention. Secondly, Hormel contended that the court erred in holding that HIP met its burden of establishing by clear and convincing evidence that Howard is a joint inventor because Howard’s testimony was insufficiently corroborated.

The CAFC identified that inventorship is a question of law, reviewed without deference to the district court, and noted that the burden of proving that an individual should be added as an inventor to an issued patent is a heavy one, because the patent that issued creates a presumption that the named inventors are the true and only inventors, citing to Pannu v. Iolab Corp, 155 F.3d 1344, 1349 (Fed. Cir. 1998) and Garrett Corp. v. United States, 422 F.2d 874, 880 (Ct. Cl. 1970). As a result, an allegedly excluded inventor must prove a claim to joint inventorship by clear and convincing evidence. e.g., Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997). Inventorship in the US has always been conception, but a test for sufficiency of the contribution to qualify in joint inventorshipcontests to that conception was set forth in Pannu, which the CAFC applied. Pannu, 155 F.3d at 1351. The Pannu factors require that a joint inventor: (1) contributed in some significant manner to the conception of the invention; (2) made a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention; and (3) did more than merely explain to the real inventors well-known concepts and/or the current state of the art.

Hormel argued that Howard (from HIP) did not satisfy factor (3) of the Pannu test, based on a prior printed publication, i.e., US 2004/0131738 A1 (Holm), that identified preheating pieces of meat with an infrared oven. Hormel argued that the district court erred by not taking into account this prior disclosure and only looking at the claim language to determine whether preheating with an infrared oven reflected the state of the art. Hormel additionally argued that Howard did not satisfy factor (2) of the Pannu test, stating that the district court’s finding that Howard was not the sole inventor clearly identifies that he did not contribute to the overall conception of the claimed method, but only suggested using a piece of equipment. Hormel noted that the specification of the ‘498 patent mentions “infrared ovens” only once, compared to “microwave ovens” mentioned multiple times, including the figures. Finally, Hormel argued that the infrared oven recitation in claim 5 does not make the ‘498 patent patentable, and therefore the recitation should not make the infrared oven contribution significant.

The CAFC agreed with Hormel’s argument regarding the second Pannu factor, thus not addressing the other arguments. The court held that Howard’s alleged contribution of pre-heating meat pieces using an infrared oven was “insignificant in quality” to the claimed invention given the frequency of microwave ovens in the description and drawings of the ‘498 patent. The CAFC noted the single usage of “infrared oven” in the specification, as well as the single recitation in claim 5, determining that the use of a microwave was much more significant in determining the dimension of the full invention. The majority of the specification, the examples and corresponding figures for the preheating step employed a microwave oven, and not an infrared oven, according to the CAFC. The HIP Court summarized that “the specification, claims, and figures all illustrate that Howard’s alleged contribution of preheating the bacon or meat pieces with an infrared oven is ‘insignificant in quality’ when ‘measured against the dimension of the full invention,’ … which squarely focuses on a preheating step using a microwave oven.” The CAFC did not need to visit the other Pannu factors, as a failure to meet any one factor is dispositive on the question of inventorship. Thus, the CAFC did not address HIP’s argument that Holm, describing a technique never described in a marketing or sales brochure or in a textbook, was too obscure to qualify as a well-known concept and/or the current state of the art, relevant to factor (3) in the Pannu test.

Application

The decision in HIP, Inc. v. Hormel Foods Corp affirmed that the Pannu test is controlling law in determining qualification for joint inventorship. The CAFC found it persuasive that the ubiquity in the written description of an undisputedly prior art technique, i.e., microwave heating, suffices to discount the claiming of a lesser known technique, i.e., infrared heating, likely because neither heating technique was itself necessary to the inventive concept of a first heating step to form a fat or grease barrier layer around the pre-cooked meat to reduce condensation and flavor dilution. Ensuring correct inventorship for applications in joint inventorship situations may require considering the frequency in the description and drawings of an alternative claim element, particularly regarding a use of alternative prior art elements for achieving a result important to conception. In considering the second factor of the Pannu test and the issue of frequency, Howard's technique was “recited only once in a single claim ..., in a Markush group reciting a microwave oven, an infrared oven, and hot air,” whereas the other (two) independent claims “only recite[d] … preheating … with a microwave oven and d[id] not recite preheating with an infrared oven.” The CAFC will weigh the "significance," in the Pannu test, of an optional technique to the claimed invention substantially based on the frequency in the description and drawings, as well as recitation in the claims.

PTAB Denies Motion to Amend Claims After Determining the Term "High Pressure" is Indefinite

16 May 2023 00:00:00 -0800

The Patent Trial and Appeals Board denied U.S. Well Services, LLC’s (the Patent Owner) Motion to Amend the claims of U.S. Patent No. 10,254,732 B2 (the ‘732 Patent) during inter partes review after determining that the term “high pressure” as used in the amended claims was indefinite under 32 U.S.C. §112(b). See Haliburton Energy Services, Inc., v. U.S. Well Services, LLC, IPR2022-00074, Final Written Decision Granting in Part and Denying in Part Patent Owner’s Revised Non-Contingent Motion to Amend at 3. The Patent Owner moved to cancel claims 1-13 and substitute the canceled clams with claims 14-26. As a preliminary matter, the Board found that the Patent Owner met the statutory threshold for amending the claims by ruling that the recited camera data bypass feature did not constitute “new matter.” Id. at 21.

Claim 14 recites a system for use with a fracturing operation, comprising “a plurality of…pumps fluidly connected to a well…and configured to pump fluid into the well at high pressure so that the fluid passes from the well into the formation, and fractures the formation” (emphasis added). Id. at 7. Haliburton challenged claim 14 arguing that the term “high pressure” was an indefinite term of degree because the “baseline” of the term was unclear in the art of fracking. Id. at 26. The Board reiterated that under Interval Licensing, terms of degree are considered definite when the context of the invention provides enough certainty to a person of ordinary skill in the art. The Board also pointed to Liberty Ammunition, Inc. when stating that terms of degree are considered indefinite when the term’s “baseline” is unclear.

The Board ultimately concluded that the ‘732 Patent did not provide any guidance for what the patent meant by “high pressure.” Decision at 27. The Board found that the ‘732 Patent did not disclose a minimum pressure, nor did the ‘732 Patent describe how to measure pressure to determine if “high pressure” was being employed. The Board also noted that the prosecution history did not address the meaning of “high pressure.”

The Patent Owner was forced to rely on its Expert Witnesses, who gave conflicting answers when proffering pressure ranges that might meet the definition of “high pressure” as used in claim 14. The Patent Owner’s first expert, Mr. William Marscher, testified that a person of ordinary skill in the art would estimate “high pressure” as between 5,000 and 15,000 psi. Mr. Marscher also indicated that what was considered “high pressure” would also depend on the field, pointing out that in the waterjet cutting industry “high pressure” ranged from 20,000 to 40,000 psi. But Mr. Marscher concluded his statement that in the fracking industry, “high pressure” would range from 5,000 to 15,000 psi. Id. at 28.

The Patent Owner’s second expert, Mr. Robert Schaff, testified that a person of ordinary skill in the art of fracking would consider “high pressure” to range from 8,000 to 12,000 psi. Id. at 29. Mr. Schaaf refuted Mr. Marscher’s testimony, saying that a person of ordinary skill in the art of fracking would not consider 5,000-15,000 psi to be “high pressure.” Id. Mr. Schaaf also explained that the pressure needed to fracture the formation often depended on the formation itself and that certain fracking jobs cold be done as “pressures that are not high pressure.” Id.

Faced with no information in the ‘732 Patent itself that clarified what “high pressure” meant, and the conflicting ranges offered by the Patent Owner’s own experts, the Board agreed with the Petitioner’s Expert, Dr. Robert A. Durham, who testified that there generally was no consensus as to what ranges qualified as “high pressure.” Id. at 30.

The Board’s ruling should serve as a reminder that if a term of degree is used in the claims, the specification needs to provide a baseline definition for that term of degree to avoid indefiniteness issues.