Federal Circuit Review | March 2023
March 2023 Federal Circuit Newsletter (Japanese)
March 2023 Federal Circuit Newsletter (Chinese)
In Regents Of The University Of Minnesota v. Gilead Sciences, Inc., Appeal No. 21-2168, the Federal Circuit held that for drug patents, adequate written description of a broad genus claim requires (1) description of the outer limits of the genus and (2) identification of a representative number of genus members or description of structural features common to genus members such that a skilled artisan can visualize or recognize genus members.
Gilead petitioned for inter partes review of Minnesota’s prodrug patent. The parties agreed that the “Sofia” reference disclosed every limitation of each challenged claim. However, the parties disagreed about the priority date of Minnesota’s patent. In particular, Gilead argued that the claims in Minnesota’s application were not entitled to their claimed priority date and that the Sofia reference was therefore prior art to Minnesota’s patent. The PTAB agreed with Gilead, finding that the applications from which Minnesota claimed priority did not contain adequate written description support. Minnesota appealed.
On appeal, Minnesota argued that its patent application (from which it claimed priority) contained adequate written description because it had (1) ipsis verbis disclosure of the prodrug subgenus and (2) sufficient blaze marks to provide written description support. To the first point, Minnesota argued that ispsis verbis disclosure could be found by combining parts of various claims from its provisional application. The Federal Circuit disagreed, describing Minnesota’s proposal as a “maze-like” path with “each step providing multiple alternative paths,” and that differed from a description wherein “each of the optional steps had been set forth as the only option.”
The Federal Circuit also rejected Minnesota’s argument that the priority application provided written description support by providing “blaze marks,” i.e., indicia sufficient to guide one of skill in the art to the claimed invention. The Federal Circuit reasoned that, even if the chief claim cited in Minnesota’s ipsis verbis argument “‘blaze[ed] a trail through the forest’ that runs close by the later-claimed tree, the priority applications ‘do [] not direct one to the proposed tree in particular, and do [] not teach the point at which one should leave the trail to find it.” In neither instance did Minnesota describe the genus members nor structural features sufficient to guide a skilled artisan. Thus, Minnesota failed to show it was entitled to the claimed priority, and the Federal Circuit affirmed the Board’s decision.
Stipulation of Non-Infringement Found Insufficient for Appeal
In Alterwan, Inc. v. Amazon.Com, Inc., Amazon Web Services, Inc., Appeal No. 22-1349, the Federal Circuit declined to reach the merits of a claim-construction appeal after finding the parties’ stipulation of non-infringement did not provide sufficient detail.
AlterWAN sued Amazon alleging infringement of patent claims relating to implementing wide area networks. The district court construed two claim terms at issue on appeal. Thereafter, the parties filed a stipulation that Amazon does not infringe under those constructions. The district court entered final judgment and AlterWAN appealed the district court’s claim construction.
The Federal Circuit held that the stipulation of non-infringement did not provide sufficient detail to allow the Court to resolve the claim construction issues presented on appeal. The Court found it unclear whether, under the stipulation, Amazon would prevail on infringement if the construction of either disputed term was correct or only if both were correct. Accordingly, the Federal Circuit vacated the judgment and remanded to clarify the parties’ infringement positions, and to determine whether a stipulation of non-infringement is possible in the case.
A “Known Technique” for Showing a Motivation to Combine References
In Intel Corp. v. Pact Xpp Schweiz AG, Appeal No. 22-1037, the Federal Circuit held that, under the “known-techniques” rationale, a motivation to combine two prior art references exists when the references address the same problem and one of the references provides a known technique that would suitably address that problem.
Intel petitioned for inter partes review of Pact’s patent directed to computer memory access. Pact argued that Intel failed to demonstrate a motivation to combine two asserted references. Intel argued a motivation to combine existed using the “known-technique” rationale: the two references related to the same field and addressed the same problem, and the second reference provided a known technique that would suitably address that problem. The PTAB rejected Intel’s argument and upheld the patentability of the petitioned claim. The PTAB reasoned that there was no motivation to use the known technique of the second reference because the first reference already addressed the problem. Thus, the PTAB concluded that using the technique of the second reference would not improve the teaching of the first. Intel appealed.
On appeal, the Federal Circuit reversed and remanded. It specified that the known technique of the second reference need not categorically improve the teaching of the first; the combination need not be “the best option, only [] a suitable option.” The Federal Circuit concluded that the PTAB’s reasoning “belies its conclusion”: the fact that the two references “address the same problem and that [the technique of the second reference] was a known way to address that problem is precisely the reason that there’s a motivation to combine.”
Not So Obvious: Substantial Evidence Review of a Factual Issue Underlying Obviousness
In Roku, Inc. v. Universal Electronics, Inc., Appeal No. 22-1058, the Federal Circuit held that when an appeal from the PTAB addresses only a factual issue, the substantial evidence standard of review applies.
Roku petitioned for inter partes review of Universal Electronics’ universal control engine (universal remote) patent. The PTAB found that Roku did not prove that the challenged patent was obvious. In particular, the PTAB found that Roku failed to demonstrate that the prior art disclosed or rendered obvious a particular limitation of the challenged claim. Roku appealed.
The Federal Circuit affirmed the PTAB decision. In its briefing Roku conceded that the only issue on appeal was a factual one—whether the prior art taught a claim element. The Federal Circuit acknowledged that what the referenced disclosed “was highly contested and closely decided.” Although the Federal Circuit stated that it could “see both sides of [the] factual dispute,” under the substantial evidence standard of review for factual questions, it held that the PTAB’s determination on whether the prior art disclosed the claim limitation was supported by substantial evidence.
Judge Newman dissented, arguing that de novo review should have applied because the appeal addressed the legal determination of obviousness, not merely a factual issue.
