35 U.S.C. §§ 102, 103

Design Choice and Obviousness under 35 U.S.C. § 103 at the Federal Circuit: Uber Tech., Inc. v. X One, Inc.

The Federal Circuit has reversed a PTAB determination of non-obviousness because, where the PTAB found no motivation to combine references, the Federal Circuit found a combination of references presented a simple design choice between a predictable, finite number of possibilities. Uber Tech., Inc. v. X One, Inc., No. 2019-1164 (May 5, 2020) (Chief Judge Prost, joined by Judges Dyk and Wallach) (precedential). This is an interesting case for patent applicants, patent owners, and patent challengers alike. On the one hand, for patent examiners and patent challengers, this decision reinforces the looseness of the requirement to show a reason to combine references to show obviousness under 35 U.S.C. § 103 and KSR Intern. Co. v. Teleflex Inc. (S. Ct. 2007). On the other hand, for patent applicants and owners, the court did identify a specific showing to support obviousness that will be unavailable in many cases. Claims of U.S. Patent No. 8,798,593 recite techniques for mobile devices to exchange location information according to a “buddy list” that could be dynamically generated and updated. Claim 1 of the ’593 patent, with the limitation at issue in this case shown in bold, is reproduced below: An apparatus, comprising: a server; a database representing… Read More »Design Choice and Obviousness under 35 U.S.C. § 103 at the Federal Circuit: Uber Tech., Inc. v. X One, Inc.

CAFC: Obviousness and Non-Limiting Reference Numerals in Claims: Grit Energy Solutions, LLC v. Oren Technologies, LLC.

The Federal Circuit, in vacating the Patent Trial and Appeal Board’s (PTAB) decision in an inter partes review (IPR) that claims in a patent were not obvious, held that, for an obviousness inquiry, reference numerals in the claims “do[] not limit the disclosure of the claims.” Grit Energy Solutions, LLC v. Oren Technologies, LLC, 2019-1063 (Fed. Cir. Apr. 30, 2020) (patent-in-suit is U.S. Patent No. 8,585,341). The ‘341 patent “requires (a) the container to have a gate with a pin fixedly affixed thereto, and (b) the support structure to have an actuator with a receptacle.” During the IPR, Grit Energy argued that the ‘341 patent was obvious over U.S. Patent No. 7,252,309 and French Patent Application No. 2,640,598. The court noted that it is undisputed that the ‘309 Patent “discloses the opposite of the ‘341 configuration,” and the ‘598 application’s “non-limiting example, standing alone, discloses the opposite of the ‘341 configuration.” However, the parties disputed whether claim 5 of the ‘598 application discloses the ‘341 configuration. Claim 5 of the ‘598 application is reproduced here. 5. Device according to any one of the preceding claims, characterized in that the mechanical connecting means of the shutter are constituted by at least… Read More »CAFC: Obviousness and Non-Limiting Reference Numerals in Claims: Grit Energy Solutions, LLC v. Oren Technologies, LLC.

Prior Art Anticipates Claims because “A” means “One or More”

The Central District of California held that claims directed to “‘an induction actuated container which is capable of automatically opening when a user is approaching, and automatically closing when the user has left’” are invalid because they are anticipated by prior art. Nine Stars Group (U.S.A.), Inc. v. Factory Direct Wholesale, LLC, No. 18-6471 PSG (PJWx) (C.D.Cal. Apr. 6, 2020) (patents-in-suit are U.S. Patent Nos. 7,911,169 and 8,129,930). A representative claim from the ‘169 patent is reproduced here: 1. An induction actuated container cover for a container body having a storage cavity and a container opening at an upper portion of said container body, wherein said induction actuated container cover comprises:  a control housing, having a cover opening, adapted for mounting at said container body at said container opening thereof to communicate said cover opening with said receiving cavity of said container body; a cover panel pivotally mounted to said control housing to pivotally move between a closed position that said cover panel covers at said cover opening to enclose said receiving cavity and an opened position that said cover panel exposes said cover opening for communicating with said receiving cavity; an automatic driving arrangement, which comprises: a sensor mounted… Read More »Prior Art Anticipates Claims because “A” means “One or More”

CAFC: Obviousness and Design Patents: Spigen Korea Co., LTD. v. Ultraproof, Inc.

The Federal Circuit, in reversing a court’s decision to grant summary judgment of invalidity of claims of three design patents, held that the identification of multiple differences between the claimed design and a cited reference created a factual issue as to “whether [the cited reference] is a proper primary reference” to support an obviousness inquiry for design patents. Spigen Korea Co., LTD. v. Ultraproof, Inc., 2019-1435 (Fed. Cir. Apr. 17, 2020) (patents-in-suit are U.S. Design Patent Nos. D771,607; D775,620; and D776,648). This was a precedential opinion authored by Judge Reyna and joined by Judge Newman. Judge Lourie dissented without opinion. The court first noted that “[s]ummary judgment of obviousness is appropriate if “the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors.” MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1331 (Fed. Cir. 2014). Spigen argued that “there is a material factual dispute over whether [U.S. Design Patent No. D729,218] is a proper primary reference that precludes summary judgement.” The court then explained that “[a] ‘primary reference’ is ‘a… Read More »CAFC: Obviousness and Design Patents: Spigen Korea Co., LTD. v. Ultraproof, Inc.

Claim Interpretation and the Enablement Requirement

Providing a reminder about how to interpret elements of a patent claim when analyzing the claim against prior art during patent prosecution, in Technical Consumer Products, Inc. v. Lighting Science Group Corp. (April 8, 2020), the Federal Circuit vacated a PTAB decision that Appellant Technical Consumer Products’ (“TCP”) failed to show that claims of U.S. Patent No. 8,201,968 were invalid based on anticipation and/or obviousness. The ‘968 patent is owned by Appellee Lighting Science Group Corp. (“LSG”). The ‘968 patent is directed toward an LED assembly this is configured to be retrofitted into an existing light fixture, such as a recessed can lighting fixture. Application of the prior art turned on interpretation of the claim recitation of a “heat sink.” Claim 1 recites: a heat spreader and a heat sink thermally coupled to the heat spreader, the heat sink being substantially ring-shaped and being disposed around and coupled to an outer periphery of the heat spreader; … wherein the heat spreader, the heat sink and the outer optic, in combination, have an overall height H and an overall outside dimension D such that the ratio of H/D is equal to or less than 0.25. Figure 12 from the ‘968 patent… Read More »Claim Interpretation and the Enablement Requirement

Anticipation of Software Patent Claims: Arguments Must Be Consistent with Court’s Claim Construction

In a decision instructive on patent claim interpretation and anticipation analysis in software cases, claims directed to “computerized fitness equipment” that “simulates… actual race conditions with other users” were held invalid because as anticipated by prior art. VR Optics, LLC v. Peloton Interactive, Inc, No. 16-cv-6392 (JPO) (S.D.N.Y. Apr. 2, 2020) (patent-in-suit is U.S. Patent No. 6,902,513). The court noted that “[a]nticipation requires ‘that a single prior art reference disclose each and every limitation of the claimed invention, either expressly or inherently.’” SRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295, 1306 (Fed. Cir. 2019). Peloton identified U.S. Patent No. 6,997,852 as a single prior art reference and there was “no dispute that the [‘852] patent discloses all of the independent claims’ limitations, save one.” The disputed independent claim limitation is reproduced here: logic configured to drive the display in response to both the first and second performance parameters, such that a performance comparison between the    fitness equipment and at least one remote fitness equipment is visually displayed.               The court had “previously construed the limitation, consistent with its plain and ordinary meaning, to disclose ‘logic configured to drive the display to visually display a difference in performance between the… Read More »Anticipation of Software Patent Claims: Arguments Must Be Consistent with Court’s Claim Construction

CAFC Affirms Use of “General Knowledge” in Obviousness Analysis

The Federal Circuit affirmed a decision by the PTAB finding that the claims of U.S. Patent No. 7,529,806 are “obvious over [the prior art] in light of the general knowledge of a skilled artisan.” Koninklijke Philips N.V. v. Google LLC, et al., No 19-1177, (Fed. Cir. Jan. 31, 2020). The claims of the ‘806 patent are directed towards “download[ing] the next file [of a media presentation] concurrently with playback of the previous file.” Philips argued that the Board erred in instituting an IPR “because 35 U.S.C. § 311(b) expressly limits inter partes reviews to ‘prior art consisting of patents or printed publications,’ and because…§ 311(b) prohibits use of general knowledge to supply a missing claim limitation in an inter partes review.” The court found that the Board did not err “in relying on ‘general knowledge’” to institute an IPR because “[a]lthough the prior art that can be considered in inter parte reviews is limited to patents and printed publications, it does not follow that we ignore the skilled artisan’s knowledge when determining whether it would have been obvious to modify the prior art.” The court noted that “[r]egardless of the tribunal, the inquiry into whether any ‘differences’ between the invention… Read More »CAFC Affirms Use of “General Knowledge” in Obviousness Analysis

Insufficient Written Description in Provisional Application Triggers On-Sale Bar of Subsequent Patent

A provisional patent application must include sufficient description to allow a person having ordinary skill in the art to make an invention as claimed in an asserted patent claiming priority to the provisional application, as recently upheld in Speedfit LLC et al v. Woodway USA, Inc. et al, No. 2-13-cv-01276 (E.D.N.Y. Jan. 9, 2020). Plaintiff Speedfit, LLC owns U.S. Patent Nos. 8,308,619 and 8,343,016, directed to a leg-powered treadmill. Speedfit, LLC and Aurel Astilean sued Defendant Woodway USA, Inc. for infringement of these patents. Defendant filed a motion motion for summary judgment of invalidity of the ‘619 and ’016 patents, asserting that Plaintiffs violated the on-sale bar of pre-AIA 35 U.S.C. § 102. The asserted patents have a critical date of October 29, 2009, one year before the filing date of the ‘619 patent. Plaintiffs filed Provisional Patent Application No. 61/280,265 on Nov. 2, 2009, and the asserted patents claim priority to the ‘265 provisional. Plaintiffs conceded that they offered a leg-powered treadmill for sale at a trade show in March 2009, six months before the critical date. Plaintiffs argued that the asserted patents were entitled to the priority date of the ‘265 provisional, filed within a year of the… Read More »Insufficient Written Description in Provisional Application Triggers On-Sale Bar of Subsequent Patent

Federal Circuit Defines Scope of Reasonably Pertinent Analogous Art

The Federal Circuit vacated a PTAB decision reversing the examiner’s obviousness rejection under 35 U.S.C. § 103 of patent claims directed to “a fire prevention and suppression system that prevents and extinguishes fire using breathable air” because the PTAB “erred in its analogous art analysis.” Airbus S.A.S. v. Firepass Corp., No. 2019-1803 (Fed. Cir. 2019) (See U.S. Patent No. 6,418,752). The court found that the PTAB declined “to consider record evidence relied on…to demonstrate the knowledge and perspective of a person of ordinary skill in the art at the time of the invention.” The ‘752 patent disclosed providing “a low-oxygen (‘hypoxic’) but normal pressure (‘normbaric’) atmosphere” in enclosed facilities so “fires are suppressed while humans can continue to breathe.” During an inter partes reexaminaAirbus v Firepasstion, the examiner rejected the claims as obvious in view of U.S. Patent No. 5,799,652 (Kotliar), which discloses “equipment for providing hypoxic air in an enclosed area for the purposes of athletic training or therapy.” Firepass appealed this rejection asserting that Kotliar was not analogous art. As the court notes, “[t]wo separate tests define the scope of analogous prior art: “‘(1) whether the art is from the same field of endeavor, regardless of the problem… Read More »Federal Circuit Defines Scope of Reasonably Pertinent Analogous Art

Court Overturns § 102 Rejection Due to Limiting Preamble

The Federal Circuit overturned a PTAB decision affirming anticipation rejections under 35 U.S.C. § 102 of patent claims directed to “the construction of travel trailers” because the the PTAB “erred in concluding [the preamble] does not limit the scope of the claims.” In Re: Fought et al., No. 2019-1127 (Fed. Cir. 2019) (See U.S. Patent Application PG-Pub. No. 2014/0008932). The court held the preamble is limiting because “it serves as antecedent basis for a term appearing in the body of a claim.” The court noted that although the “claim[s] do[] not use the typical claim language (comprising) which denotes the transition between the preamble and the body, the word ‘having’ performs the same role here.” Claims 1 and 2 are reproduced here: A travel trailer having a first and second compartment therein separated by a wall assembly which is movable so as to alter the relative dimensions of the first and second compartments without altering the exterior appearance of the travel trailer. A travel trailer having a front wall, rear wall, and two side walls with a first and a second compartment therein, those compartments being separated by a wall assembly, the wall assembly having a forward wall and at… Read More »Court Overturns § 102 Rejection Due to Limiting Preamble