Federal Circuit Review - December 2019
Specification’s Narrow Description of the Invention Results in Disavowal of Claim Scope
In Techtronic Industries Co. Ltd. v. ITC., Appeal No. 18-2191, the consistent description in the specification of a particular embodiment as the inventive aspect solving a problem in the prior art amounted to disavowal of claim scope, even in the absence of an express concession excluding alternative embodiments.
The Chamberlain Group filed a complaint at the U.S. International Trade Commission (“Commission”) alleging several companies, including Techtronic Industries, imported products that infringed its patent directed to a garage door opener. Although the Administrative Law Judge (“ALJ”) granted a summary determination of non-infringement, the Commission reversed the ALJ’s claim construction of the term “wall console” and vacated the initial determination of non-infringement. The ALJ then found the accused products infringed the patent and the Commission adopted the determination.
At issue before the Federal Circuit was whether the claim term “wall console” included wall-mounted garage door control units without passive infrared detectors. The court found it did not because the patent specification disclosed the invention as an improvement achieved by moving the passive infrared detector from the head unit to the wall console. The court noted the specification’s background section described the problems with the prior art garage door openers having the passive infrared detector in the head unit. The court then found the rest of the specification presented moving the detector to the wall console as the solution to the problem, and that the “entire specification focuses on enabling placement of the passive infrared detector in the wall console.”
The Federal Circuit rejected arguments that the disclosure did not amount to a disavowal when the specification did not state that it was “impossible” or “infeasible” to place the detector elsewhere. The Federal Circuit explained that, because the specification “plainly represents the scope of the invention to the exclusion of some embodiments,” such explicit statements were unnecessary to find disavowal. The Federal Circuit then reversed the Commission’s construction of “wall console” and final determination of infringement.
New Arguments Presented for the First Time During PTAB Oral Hearings Are Not Always Waived
Under The Chamberlain Group, Inc. v. One World Technologies, Inc., Appeal No. 18-2112, new arguments may be raised during PTAB oral hearings so long as they clarify an earlier position, are responsive to arguments presented in the opponent’s reply, and do not raise entirely new issues or evidence.
One World petitioned for inter partes review of a patent owned by Chamberlain directed to programmable garage door and gate operator systems. One World argued the limitation “activities to be completed by a user” should be construed to mean “establishing which of the pre-determined activities a user must complete.” Chamberlain argued the term should be construed to require identifying multiple activities. In its reply, One World argued for the first time that the prior art also identifies multiple activities. At the hearing, Chamberlain argued for the first time that the claim requires identifying multiple activities before a transmitting step. The Board held that Chamberlain waived the new argument by raising it for the first time at the oral hearing, and also found the argument unpersuasive on the merits. Chamberlain appealed.
The Federal Circuit held the Board erred in finding waiver because the new argument merely clarified Chamberlain’s earlier position, did not raise new issues or present new evidence, and was responsive to an argument in One World’s reply. Nonetheless, the Federal Circuit affirmed because the new argument was not persuasive and the Board’s decision was supported by substantial evidence.
Exceptional-Case Findings Must Consider the Full Case
In Intellectual Ventures I LLC v. Trend Micro Incorporated, Appeal No. 19-1122, the Federal Circuit ruled that an exceptional case finding may be based on a single isolated act, but the court must still find the case as a whole is exceptional.
Intellectual Ventures (“IV”) sued Trend Micro for patent infringement. The district court found IV’s expert changed his opinion and offered conflicting opinions in a co-pending action involving the same patents. After prevailing on the merits, Trend Micro moved for an exceptional case finding under Section 285. The district court found the case as a whole was not exceptional, but the circumstances surrounding the expert’s testimony were exceptional. The district court awarded attorneys’ fees to Trend Micro and IV appealed.
The Federal Circuit held that a district court may find a case exceptional based on a single isolated act and not a pattern of acts. Further, the amount of attorneys’ fees must “bear some relation to the extent of the misconduct.” However, the court must still find that the case as a whole is exceptional, not just a portion of the case. Because the district court did not find the overall case exceptional, the Federal Circuit vacated and remanded for a decision under the proper legal standard.
In Persion Pharmaceuticals LLC v. Alvogen Malta Operations Ltd., Appeal No. 18-2361, the FDA’s acceptance of safety data for a prior-art drug when evaluating a claimed drug treatment was evidence of obviousness even though the data was insufficient to establish the safety and efficacy of the claimed treatment.
Persion Pharmaceuticals LLC (“Persion”) sued Alvogen Malta Operations Ltd. for infringement of patents directed to treating pain with an extended-release hydrocodone-only formulation in a patient with hepatic impairment (i.e., compromised liver functionality).
The district court found the asserted claims invalid as obvious in view of (1) prior art that disclosed the same hydrocodone-only formulation as the asserted patents, but for treating patients without hepatic impairment, and (2) prior art that disclosed treating patients with hepatic impairment using hydrocodone in combination with other active ingredients. The district court reasoned that one of ordinary skill in the art would have been motivated to administer the hydrocodone-only formulation to patients with hepatic impairment and would have had a reasonable expectation of success when doing so.
When evaluating the motivation to combine the prior art, the district court relied on evidence that the FDA accepted safety data for a hydrocodone-combination drug when it was evaluating the appropriate administration of the hydrocodone-only drug. On appeal, Persion argued that the district court’s reliance on this evidence was clearly erroneous because the FDA found that data insufficient to establish the safety and efficacy of the hydrocodone-only drug for treating hepatically impaired patients.
The Federal Circuit found no clear error in the district court’s analysis. The district court explained that the standard to find a motivation to combine in an obviousness analysis is far below what is sufficient to prove safety and efficacy to the FDA. Thus, the FDA’s finding that the data for the hydrocodone-combination drug was insufficient to prove the safety and efficacy of the hydrocodone-only drug did not undermine the conclusion of obviousness. The Federal Circuit went on to address other attacks on the district court’s judgment but ultimately rejected them and affirmed the judgment that the asserted claims were invalid as obvious.