Federal Circuit Review | June 2023
In Medtronic, Inc. v. Teleflex Innovations, Appeal No. 21-2357, the Federal Circuit held that a close prima facie case of obviousness can be overcome by strong evidence of objective indicia of non-obviousness.
Medtronic petitioned for inter partes review of Teleflex’s patents relating to guide extension catheters, arguing obviousness over various combinations of references. The Board instituted and found the claims not unpatentable, granting Teleflex’s contingent motion to amend certain claims. The Board found Medtronic presented a “close” prima facie case regarding the references and motivations to combine. However, it also found that Teleflex overcame this showing with “strong” evidence of objective indicia of non-obviousness. The Board found that Teleflex proved that its product that embodied the claims was commercially successful and was copied by competitors, including Medtronic. The Board acknowledged that Medtronic demonstrated that every element of the claims was individually known but concluded that Teleflex proved there was a nexus between the commercial success and the claims because the evidence was tied to a combination of the features as a whole, and the combination was not previously known. The Board held that Teleflex sufficiently established copying through circumstantial evidence, including that Medtronic had access to Teleflex’s patented product and that there were substantial similarities between Medtronic’s and Teleflex’s products.
The Federal Circuit affirmed the Board’s decision on appeal. The Federal Circuit held the Board did not err in finding a nexus based on the combination of features and that there was more than sufficient circumstantial evidence to support the Board’s finding of copying. The Federal Circuit also rejected Medtronic’s contention that direct evidence of copying (i.e., photos of patented features or disassembled products) was required.
Yita LLC v. Macneil Ip LLC, Appeal No. 22-1373, the Federal Circuit held that evidence of commercial success that relates entirely to an individual claim element disclosed in the prior art cannot support a finding of non-obviousness.
Yita LLC challenged the claims of two U.S. patents assigned to MacNeil IP LCC before the Patent Trial and Appeal Board in two inter partes reviews (IPRs). In the first IPR, the Board determined that a relevant artisan would have been motivated to combine the teachings of the prior art references and would have had a reasonable expectation of success in doing so. However, the Board found MacNeil’s evidence of secondary considerations, which was linked to a particular claim limitation, compelling and indicative of non-obviousness, thus holding the claims not unpatentable for obviousness. Yita appealed.
On appeal, the Federal Circuit reversed the Board’s decision regarding the first IPR. The Federal Circuit held that the Board offered legally incorrect reasoning for rejecting Yita’s obviousness challenge based on MacNeil’s secondary-consideration evidence. The Federal Circuit recognized that secondary-consideration evidence “may be linked to an individual element” of the claimed invention or “to the inventive combination of known elements” in the prior art. However, MacNeil’s evidence of commercial success related entirely to an individual element, one that was disclosed in the prior art. Consequently, the Federal Circuit held that the evidence of success was not pertinent and did not undermine the obviousness of the claimed invention.
Regarding the second IPR, the Federal Circuit affirmed the Board’s decision not to consider an argument raised for the first time by Yita in a footnote in its petitioner’s reply.
Parus Holdings, Inc. v. Google LLC, Appeal No. 22-1269, the Federal Circuit held that PTAB did not err in declining to consider evidence in an IPR that was incorporated by reference without adequate explanation.
Google LLC and several others petitioned for inter partes review of two patents owned by Parus Holdings, Inc. The parties disputed whether one of the cited references qualified as prior art to the challenged patents. Parus attempted to swear behind the disputed reference and filed over 1,000 pages of declarations, exhibits and claim charts in support of its claimed conception and diligence in reducing the invention to practice. However, Parus provided cites to only small portions of that material in its brief and provided limited explanation. Instead, Parus relied on incorporating its filings by reference. The Board declined to consider Parus’s arguments and evidence that the challenged patents were conceived and reduced to practice before the prior art reference’s priority date because Parus failed to comply with the prohibition on incorporation by reference. Accordingly, the Board found the disputed reference to be prior art. The Board also found that a second reference, a publication of the application to which the challenged patents claimed priority, was prior art because the application to which the challenged claims claimed priority did not provide written description support for all claim elements. The Board found all challenged claims unpatentable as obvious.
The Federal Circuit affirmed, holding that the Board did not improperly decline to consider Parus’s evidence concerning conception and that the Board’s decision on written description was supported by substantial evidence. The Federal Circuit explained that once Parus chose to submit a response to Google’s petitions, it assumed the burden of complying with the Board’s rules and regulations, including those prohibiting incorporation of arguments by reference and requiring detailed explanations of the evidence. Because Parus failed to comply with those rules, the Board did not err in refusing to consider Parus’s evidence concerning conception date. Regarding written description, the Federal Circuit found no error in the Board’s decision, explaining that the Board did not exceed its statutory authority by addressing written description for purposes of evaluating a priority claim because the analysis was necessary to determine whether Google’s asserted references qualified as prior art.
Blue Gentian, LLC v. Tristar Products, Inc, Appeal No 21-2316, the Federal Circuit held that alleged an joint inventor contributed significantly to conception where the patent owner relied on contributed features to distinguish the invention from prior art.
Gary Ragner designed and patented several expandable hose prototypes. Seeking investors to bring his hose to market, Ragner met with Michael Berardi. Ragner showed Berardi a prototype and related documents. After the meeting, Berardi built his own expandable hose prototype. Berardi then patented his design and assigned his patents to Blue Gentian. Ragner assigned his patents to Tristar Products.
Blue Gentian sued Tristar for infringement of Berardi’s patents. Tristar counterclaimed to add Ragner as a joint inventor. The district court found that Ragner conveyed three key claim elements to Berardi during the investor meeting and therefore should have been named an inventor. Blue Gentian appealed.
The Federal Circuit affirmed. First, the Federal Circuit found that the three elements contributed by Ragner were present in at least one claim of each asserted patent. Additionally, Blue Gentian had used the three elements to distinguish the invention from the prior art. The court reasoned that features that the patent owner itself acknowledges distinguish the invention from the prior art are necessarily tied to the claims. Likewise, contributing such materially distinguishing features was not insignificant in quality when measured against the full invention.
The court also held that specific corroboration of Ragner’s communications with Berardi was not required. The flexible, rule-of-reason test considers all pertinent evidence to determine whether the inventor’s story is credible. Lastly, the court held that Ragner’s contributions need not have been provided with the intent to invent the hose that was ultimately claimed. Ragner’s sharing of confidential technical details and design alternatives was sufficient to demonstrate collaboration.