Spotlight on upcoming pleadings – March 2022 – Intellectual Property

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The following telephone arguments will be available to the public live. Access information will be available at 9 a.m. ET each oral argument day at: http://www.cafc.uscourts.gov/public-access-arguments.

Wednesday, March 9, 2022

Sanofi-Aventis Deutschland GmbH v Mylan Pharmaceuticals Inc.No. 21-1981

Mylan requested an inter partes review (“IPR”) of Sanofi’s US Patent No. RE47,614, challenging the claims as being obvious on, among other things, a Gennes secondary reference. In finding that the impugned claims were obvious, the Board determined that de Gennes is analogous art in this particular case to the ‘614 patent under the reasonable relevance branch of the analogous art test in this case.

On appeal, Sanofi argues that the Board erred in considering the issue addressed by a primary reference, Burren, in its determination of whether the secondary reference, de Gennes, qualified art. Rather, according to Sanofi, the board must examine “the particular problem in which the inventor” of the claimed invention is “involved”, citing In the clay. A “standard of any relevant issue,” Sanofi argues, would not limit the scope of applicable analogous art.

Mylan replies that the precedent does not preclude the Commission from examining problems encountered in the same field of activity in an investigation of similar techniques. According to Mylan, Sanofi’s standard is contrary to KSRwhich directs the Board to interpret the scope of analogous art broadly and cautions against limiting the review of the obvious by “looking[ing] only to the problem that the patent owner was trying to solve. Mylan argues that a secondary reference is an analogous art where a skilled person, faced with a problem that is sought to be solved in the primary reference, would turn to a secondary reference that solves that problem.

Thursday, March 10, 2022

IPA Technologies Inc. c. Google LLCNo. 21-1438

In February 2019, Google applied for the intellectual property rights to U.S. Patent No. 7,036,128 from IPA, disputing the claims as obvious, among other things, the Steiner prior art reference. Before the Board, IPA argued that Steiner was not a technique analogous to the ‘128 patent. The Board rejected the IPA’s argument, finding that Steiner was an analogous work of art under the reasonable relevance prong of the analogous art test and that the impugned claims were not patentable.

On appeal, IPA argues that, under Donner Technology, LLC vs. Pro Stage Gear, LLC, the Board erred in concluding that Steiner was an analogous embodiment because it failed to identify and compare the problems addressed by the claimed invention and Steiner. According to the IPA, the analysis of reasonable relevance requires the Board to articulate a problem addressed by the claimed invention from the perspective of a skilled artisan, and the Board failed to do so. Moreover, according to it, it is not enough for the Commission to focus on what a person skilled in the art would have known at the time of the invention; rather, the Board must determine whether a person skilled in the art would have turned to Steiner to solve the problem addressed by the claimed invention.

Google responds that, under To givea reference to the state of the art need only be reasonably relevant to a problems addressed by the claimed invention, and the Board set out a problem in the ‘128 patent that Steiner addresses. Then, according to Google, the Commission correctly determined whether a skilled craftsman would have found Steiner reasonably relevant to solving this problem because Steiner also recognizes this problem. It argues that to require a reference to the prior art to solve all the problems that a claimed invention seeks to solve would be contrary to KSRwhich directs that the scope of analogous art be construed broadly.

In Re McDonald’sNo. 21-1697

McDonald’s has applied for the reissue of US Patent No. 8,572,111. On appeal of the Examiner’s dismissals under 35 USC § 103, the Board affirmed and newly dismissed the claims under the recovery rule of 35 USC § 251. The Board concluded that McDonald’s amendments to overcome the Discharges under 35 USC § 101 during the prosecution of ‘111 amounted to an abandoned item that could not be taken up in an application for reissue.

On appeal, McDonald argues that the § 251 prohibition on salvage does not apply to changes made to overcome rejections in § 101. He argues that the Federal Circuit required to Cubist Pharmaceuticals, Inc. v. Hospira, Inc. that “the clawback rule only applies if the patentee has waived the object[inordertoovercomearejectionofthepriorart”whichexcludesrejectionsunder§101McDonaldcomparingtherejectionof§101herewiththerejectionof§112atissuein[afindesurmonterunrejetdel’artantérieur»quiexclutlesrejetsenvertudu§101McDonaldcomparelerejetdu§101iciaurejetdu§112encausedansIn re Doyle, in which the board concluded that clawback did not apply because the rejected claims had been canceled due to a restriction requirement, not to overcome the state of the art. McDonald argues that the Patent Examination Procedure Manual also limits the clawback rule to those based on prior art, as do considerations of fairness and legislative intent.

The Director responds that the changes made to overcome Section 101 rejections fall under the Section 251 clawback rule because the key question is whether the claimant intentionally turned over material for compensation. According to the Director, the Federal Circuit has never limited salvage to prior art releases, only declared salvage applies in this situation. The Director argues that the broad applicability of the Clawback Rule is consistent with Congressional intent, because a patentee is only entitled to broader claims through reissue if he claims less than what he was entitled. The Director argues that a general clawback rule also promotes fairness by ensuring that the public can rely on a patentee’s disclaimer. The clawback, the director argues, has been equated by the Federal Circuit with the estoppel of prosecution history, which the Supreme Court said in Festo Corporation v Kabushiki Co., Ltd. applies to all §§ 101–103 and 112.

LG Electronics Inc. v ImmerVision, Inc.No. 21-2037

ImmerVision sued LGE alleging infringement of US Patent No. 6,844,990. LGE applied for the intellectual property rights to the ‘990 patent, disputing the claims as being obvious over a prior art reference, Tada. Following the institution, ImmerVision identified an error in Tada’s disclosure and argued that this error prevented Tada from disclosing certain features of the disputed claims. Finding that Tada’s error was “readily apparent”, the Board concluded that Tada’s disclosure could not be relied upon to substantiate the obvious and, therefore, upheld the allegations.

On appeal, LGE argues that the Commission applied the wrong legal standard by disregarding Tada’s disclosure. According to LGE, under In re Yale, the appropriate standard for ignoring an erroneous disclosure is if the error is so obvious that a person skilled in the art would immediately ignore it or mentally correct it. If not, LGE argues, then the disclosure, even if erroneous, has been made available to the public and should be considered. LGE argues that the narrowness of this standard is consistent with §§ 102 and 103, under which inventors cannot claim what is already publicly available for others to use.

ImmerVision responds that the Commission applied the correct standard for an error in a disclosure. He argues that there is no support in Yale or its offspring for LGE’s “immediately disregard or correct” standard. Rather, he argues, Yale only requires that an error be obvious or apparent to a person skilled in the art when reading the prior art reference. He argues that the Commission refused to disregard the erroneous disclosures that are do not immediately apparent, such as those evident only from internal inconsistencies that might lead an experienced craftsman to discover the error.

Friday, March 11, 2022

Intuitive Surgical Operations, vs. Auris Health, Inc.No. 21-1473

Auris applied for the IPRs of Intuitive’s U.S. Patent No. 8,801,601, disputing the claims as being obvious to a combination of two prior art references, Ganatra and Soper. In finding that the disputed claims were obvious, the Board concluded that it was “reasonable to infer” from Ganatra and Soper that the claimed “guidance” was taught by the suit, noting that under KSR the skilled craftsman “is a person of ordinary creativity, not an automaton”.

On appeal, Intuitive argues that the Board incorrectly based its finding of obviousness on “ordinary creativity” because the claimed “guidance” goes to the heart of the invention and constitutes an advance over the state of the art. According to Intuitive, under Arendi SARL c. Apple Inc., ordinary creativity cannot be used to fill in a missing piece of prior art in a complex technology when that piece goes to the heart of the patent. Here, he argues, the Board found that neither Ganatra nor Soper taught the claimed “advice”, and the prosecution history shows that this was the essential advance over the prior art. . He argues while Arendi allows ordinary creativity to provide “unusually simple” elements or in “particularly simple” technology, this is not the case here.

Auris responds that the Council did not rely on ordinary creativity to provide the claimed “advice”, but only on why a skilled craftsman would be motivated to combine Ganatra and Soper to arrive at the claimed “advice”. According to Auris, Arendi speaks in terms of “limits” rather than “elements” and Arendi nowhere required that the “limitations” grouped together in an “element” be found in a single prior art reference. When all of the “limitations” of an “element” are found in a set of prior art references, although they are not arranged together as in the “element”, Auris argues, Arendiframework does not apply. He argues, here, that the gap between the claimed “advice” and Ganatra and Soper, if any, was small, and the Commission relied on ordinary creativity only as one more reason why a skilled craftsman would apply the guidance in Ganatra as in the claimed case. “advice.”

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