Federal Circuit Review - November 2020

| Daniel KiangIrfan Lateef

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No Shortcuts to the “Reasonable Pertinence” Analysis in the Analogous Art Inquiry

In Donner Technology, LLC v. Pro Stage Gear, LLC, Appeal No. 20-1104, the Federal Circuit  determination as to whether a reference is analogous art to a claimed invention requires, in part, an identification and comparison of the purposes or problems to which the reference and the invention relate, from the perspective of a person having ordinary skill in the art (“PHOSITA”).

Donner requested IPR of a patent owned by Pro Stage relating to a mounting board for guitar effects pedals.  In its IPR request, Donner asserted that the patent was obvious, in part, in view of a prior art reference related to electrical relay structures (“Mullen”).  The PTAB rejected Donner’s obviousness challenges on the ground that Donner failed to demonstrate that Mullen was analogous art.  Donner appealed.

The Federal Circuit vacated the Board’s decision.  It was undisputed that Pro Stage’s patent and Mullen were not from the “same field of endeavor.”  Thus, the analogous art inquiry hinged on whether Mullen “is reasonably pertinent to the particular problem with which the inventor [of Pro Stage’s patent] is involved.”  The Federal Circuit first found that the Board erred in improperly dismissing Donner’s detailed expert testimony concerning reasons that would have compelled a pedalboard inventor to consider art in the field of electrical relay technologies.  The Federal Circuit then held that the Board failed to identify and compare the purposes or problems to which Mullen and Pro Stage’s patent related from the perspective of the PHOSITA and improperly conflated the “reasonable pertinence” and “field of endeavor” tests.  The Federal Circuit also noted that the relevant question in the analogous art inquiry is not whether there are “significant differences” between the reference and the patent or whether the PHOSITA would understand every detail of the reference, but rather, whether the PHOSITA “would reasonably have consulted” the reference when attempting to solve the relevant problem.  Vacating the Board’s decision, the Federal Circuit remanded the case for resolution of the relevant factual issues under the proper standard for analyzing reasonable pertinence.


Claim Construction Arguments Not Made to the PTAB Are Forfeited on Appeal 

In Re: Google Technology Holdings LLC, Appeal No. 19-1828, the Federal Circuit claim construction arguments are forfeited if not raised before the PTAB. 

The PTAB sustained the final rejection of Google Technology Holdings LLC’s (“Google”) claims as obvious. Google appealed. 

On appeal, Google argued that the PTAB’s claim interpretations were incorrect and improperly resulted in the claims being found obvious. The Federal Circuit found that Google failed to raise its claim construction arguments rebutting obviousness to the PTAB or during examination; therefore, Google forfeited its ability to raise its claim construction arguments on appeal. Google argued that an exception applied—that because the PTAB sua sponte construed terms in Google’s claims, Google should be allowed to raise a rebuttal construction before the Federal Circuit. The Federal Circuit rejected this argument, ruling that Google should have raised its preferred claim construction argument before the Board and that any attempt to do so for the first time before the Federal Circuit “deprives the Board . . . of its important role in reviewing the rejection of patent applications.” The Federal Circuit also noted that its holding was important to discourage future litigants from concealing new arguments until the appellate stage. Thus, the Federal Circuit affirmed the PTAB’s obviousness determination.


Eligibility for CBM Review Is Not Appealable

In Sipco, LLC v. Emerson Electric Co., Appeal No. 18-1635, The Board’s determination that a patent qualifies for CBM review is non-appealable under 35 U.S.C. § 324(e).

Emerson petitioned the Patent Trial and Appeal Board (Board) for covered business method (CBM) review of SIPCO’s patent. The Board determined the patent qualified for CBM review, instituted review, and issued a final written decision finding the challenged claims patent-ineligible under § 101 and obvious under § 103. The Federal Circuit vacated the Board’s decision, including its determination that the patent qualified for CBM review.

Emerson petitioned for writ of certiorari to the U.S. Supreme Court based on 35 U.S.C. § 324(e), which prohibits appeals of the Board’s decision to institute CBM review. Emerson asserted that § 324(e) extends to prohibit appeals of the Board’s determination that a patent qualifies for CBM review. The Supreme Court granted Emerson’s petition, vacated the Federal Circuit’s opinion, and remanded for further consideration in light of the Supreme Court’s decision in Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020).

On remand in light of Thryv, the Federal Circuit agreed that § 324(e) extends to prohibit appeals of the Board’s determination that a patent qualifies for CBM review. In Thryv, the Supreme Court held that a no-appeal provision for inter partes review (IPR) prohibits appeals of the Board’s determination regarding whether an IPR petition is time barred. The Federal Circuit noted that, as set forth in Thryv and other precedent, judicial review is not available “where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.” Applying that rationale to the CBM context, the Federal Circuit reasoned that a patent’s qualification for CBM review is expressly and exclusively tied to the decision to institute the proceeding. The Federal Circuit therefore held that it was precluded from reviewing the Board’s determination that SIPCO’s patent qualified for CBM review. The Federal Circuit affirmed the Board’s determination that the challenged claims would have been obvious, and did not reach the Board’s patentability decision under § 101.


To Limit or Not to Limit: What is the Basis of Your Prior Art Distinction? 

In Vectura Limited v. Glaxosmithkline LLC., Appeal No. 20-1054, the Federal Circuit distinguishing prior art based on the structure of the particles, not the process used to manufacture them, does not import a process limitation into the claims. 

Vectura sued GlaxoSmithKline and Glaxo Group (“GSK”) for patent infringement.  The asserted patent described a method of producing composite particles using high-energy milling.  The asserted claims covered the particles not the method of producing them.  GSK argued it did not infringe because the claims should be construed to require milling and GSK’s process does not include milling.  The district dourt construed the claims to not require milling and the jury found that GSK infringed.  The district court denied GSK’s post-trial motions and GSK appealed.  

GSK argued the claim construction was erroneous because (1) the specification indicates that the milling process is essential and (2) the applicants disclaimed processes other than milling by distinguishing a prior art reference on the ground that it did not include the same milling step.  The Federal Circuit recognized some portions of the specification suggested that milling is required but otherwise made clear that milling was merely a preferred process.  The Federal Circuit also found that the applicant had distinguished the prior art based on the unique structure of the claimed particles, not the process to make them.  Thus, the Federal Circuit affirmed.


It’s a Date – Twitter Reply Proves Prior Art Publication Date

In Vidstream LLC v. Twitter, Inc., Appeal No. 19-1734, the Federal Circuit evidence of a prior art reference’s publication date submitted after an IPR petition may be appropriately considered by the Board if the evidence is a legitimate reply to a challenge by the patent owner.

Twitter requested two inter partes reviews of a patent assigned to VidStream LLC. having a priority date of May 9, 2012. Twitter asserted that the system was not patentable as obvious, identifying a book authored by Anselm Bradford and Paul Haine (“Bradford”) as prior art to VidStream’s patent. 

Twitter’s petitions included a copy of Bradford’s copyright page that contained the following legend: “Copyright © 2011.”  In response, VidStream argued that Bradford was not prior art because a page in Bradford indicated it was published on December 13, 2015. In its reply, Twitter cited additional documents evidencing the 2011 publication date, including: (i) a copy of Bradford that was obtained from the Library of Congress marked, “Copyright © 2011,” (ii) a copy of Bradford’s Certificate of Registration with the Copyright Office that stated Bradford’s date of first publication was November 8, 2011, and (iii) evidence from the Internet Archive showing Bradford was available on Amazon in 2011. Relying on the collective evidence submitted in Twitter’s petitions and replies, the Board held Bradford was prior art and invalidated claims in VidStream’s patent. VidStream appealed, arguing that the Board erred by relying on evidence first presented in reply briefs.

The Federal Circuit affirmed the Board’s decision. The Federal Circuit explained that both parties were permitted an opportunity to provide evidence concerning the reference date of the Bradford book, that VidStream was provided with an opportunity to respond to Twitter’s evidence submitted in its replies, and that the collective evidence submitted well supported the Board’s finding that Bradford had been published and publicly available before VidStream’s 2012 priority date.