Spotlight on Upcoming Oral Arguments - March 2022

The following telephone arguments will be available to the public live.  Access information will be available by 9 AM ET each day of argument 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 petitioned for inter partes review (“IPR”) of Sanofi’s U.S. Patent No. RE47,614, challenging the claims as obvious over, among others, a secondary prior art reference de Gennes. In concluding the challenged claims were obvious, the Board determined de Gennes is analogous art in this particular case to the ’614 patent under the reasonable pertinence prong of the test for analogous art in this case.

On appeal, Sanofi argues that the Board erred in considering the problem addressed by a primary reference, Burren, in its determination of whether the secondary reference, de Gennes, qualified as analogous art. According to Sanofi, the Board must instead look at “the particular problem which with which the inventor” of the claimed invention is “involved,” citing In re Clay.  An “any-relevant-problem standard,” Sanofi argues, would not limit the scope of applicable analogous art.

Mylan responds that precedent does not preclude the Board from considering problems encountered in the same field of endeavor in an analogous-art inquiry. According to Mylan, Sanofi’s standard is contrary to KSR, which directs the Board to construe the scope of analogous art broadly and cautions against limiting the obviousness inquiry by “look[ing] only to the problem the patentee was trying to solve.” Mylan argues a secondary reference is analogous art where a skilled artisan, faced with a problem sought to be solved in the primary reference, would look to a secondary reference that solves that problem. 

Thursday, March 10, 2022

IPA Technologies Inc. v. Google LLC, No. 21-1438

In February 2019, Google petitioned for IPR of IPA’s U.S. Patent No. 7,036,128, challenging the claims as obvious over, among others, prior art reference Steiner. Before the Board, IPA argued that Steiner was not analogous art to the ’128 patent. The Board rejected IPA’s argument, concluding Steiner was analogous art under the reasonable pertinence prong of the analogous-art test and the challenged claims were unpatentable.

On appeal, IPA argues that, under Donner Technology, LLC v. Pro Stage Gear, LLC, the Board erred in finding that Steiner was analogous art because it failed to identify and compare the problems addressed by the claimed invention and Steiner. According to IPA, the reasonable pertinence analysis 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. Further, it argues, it is not sufficient for the Board to focus on what a skilled artisan would have known at the time of the invention; rather, the Board must determine whether a skilled artisan would have looked to Steiner to solve the problem addressed by the claimed invention.

Google responds that, under Donner, a prior art reference only needs to be reasonably pertinent to one of the problems addressed by the claimed invention, and the Board articulated one problem in the ’128 patent that Steiner addresses. Then, Google argues, the Board properly determined whether a skilled artisan would have found Steiner reasonably pertinent to solving that problem because Steiner likewise recognizes this problem. It argues requiring a prior art reference to address all the problems a claimed invention seeks to address would be contrary to KSR, which directs that the scope of analogous art be construed broadly.

In Re McDonald, No. 21-1697

McDonald sought reissue of U.S. Patent No. 8,572,111. On appeal from the Examiner’s rejections under 35 U.S.C. § 103, the Board affirmed and newly rejected the claims under the recapture rule of 35 U.S.C. § 251. The Board found that McDonald’s amendments to overcome rejections under 35 U.S.C. § 101 during the prosecution of the ‘111 patent amounted to surrendered subject matter that could not be recaptured in a reissue application.

On appeal, McDonald argues that § 251’s prohibition against recapture does not apply to amendments made to overcome § 101 rejections. It argues the Federal Circuit held in Cubist Pharmaceuticals, Inc. v. Hospira, Inc. that “the recapture rule applies only if the patentee surrendered subject matter . . . in order to overcome a prior art rejection,” which excludes rejections under § 101. McDonald likens the § 101 rejection here to the § 112 rejection at issue in In re Doyle, in which the Board found that recapture did not apply because the rejected claims were cancelled due to a restriction requirement, not to overcome any prior art. McDonald argues the Manual of Patent Examining Procedure likewise limits the recapture rule to those based on prior art, as do considerations of fairness and legislative intent.

The Director responds that amendments made to overcome § 101 rejections fall within § 251’s recapture rule because the key inquiry is whether the applicant intentionally surrendered material towards allowance. According to the Director, the Federal Circuit has never limited recapture to prior art rejections, only stated recapture applies in that situation. The Director argues broad applicability of the recapture rule is consistent with congressional intent because a patentee is only entitled to broader claims through reissue when the patentee claimed less than he or she had a right to. The Director argues a broad recapture rule also promotes fairness by ensuring the public can rely on a patentee’s surrender. Recapture, the Director argues, has been likened by the Federal Circuit to prosecution history estoppel, which the Supreme Court stated in Festo Corporation v. Kabushiki Co., Ltd. applies to all of §§ 101–103 and 112.

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

ImmerVision sued LGE asserting infringement of U.S. Patent No. 6,844,990. LGE petitioned for IPR of the ’990 patent, challenging the claims as obvious over a prior art reference, Tada. Following institution, ImmerVision identified an error in Tada’s disclosure and argued that this error prevented Tada from disclosing certain features of the challenged claims. Finding Tada’s error was “readily apparent,” the Board concluded that Tada’s disclosure could not be relied on to support obviousness and, accordingly, upheld the claims.

On appeal, LGE argues the Board applied the wrong legal standard in disregarding Tada’s disclosure. According to LGE, under In re Yale, the proper standard for disregarding an erroneous disclosure is whether the error is so obvious that a skilled artisan would immediately disregard or mentally correct it. If not, LGE argues, then the disclosure, even if erroneous, was placed in the public’s possession 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 Board applied the correct standard for an error in a disclosure. It argues there is no support in Yale or its progeny for LGE’s “immediately disregard or correct” standard. Rather, it argues, Yale requires only that an error be obvious or apparent to a skilled artisan when reading the prior art reference. It argues the Board has declined to disregard erroneous disclosures that are not immediately apparent, such as those evident only from internal inconsistencies that could lead a skilled artisan to discover the error.

Friday, March 11, 2022

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

Auris petitioned for IPR of Intuitive’s U.S. Patent No. 8,801,601, challenging the claims as obvious over a combination of two prior art references, Ganatra and Soper. In concluding the challenged claims were obvious, the Board found it was “reasonable to infer” from Ganatra and Soper that the claimed “guidance” was taught by the combination, noting that under KSR the skilled artisan “is a person of ordinary creativity, not an automaton.”

On appeal, Intuitive argues the Board improperly grounded its obviousness conclusion on “ordinary creativity” because the claimed “guidance” goes to the heart of the invention and is the advance over the prior art. According to Intuitive, under Arendi S.A.R.L. v. Apple Inc., ordinary creativity cannot be used to supply a missing element from the prior art in a complex technology when that element goes to the heart of the patent. Here, it argues, the Board found neither Ganatra nor Soper taught the claimed “guidance,” and the prosecution history shows this was the core advance over the prior art. It argues while Arendi allows ordinary creativity can be used to supply elements that are “unusually simple” or in a “particularly straightforward” technology, neither is the case here.

Auris responds that the Board did not rely on ordinary creativity to supply the claimed “guidance,” but only for why a skilled artisan would be motivated to combine Ganatra and Soper to arrive at the claimed “guidance.” According to Auris, Arendi speaks in terms of “limitations,” rather than “elements,” and Arendi nowhere required that “limitations” collected together in an “element” be found in a single prior art reference. Where all “limitations” of an “element” are found in a set of prior art references, though not arranged together as in the “element,” Auris argues, Arendi’s framework does not apply. It argues, here, the gap between the claimed “guidance” and Ganatra and Soper, if any, was small, and the Board drew on ordinary creativity only as one more reason why a skilled artisan would apply the guidance in Ganatra as in the claimed “guidance.”