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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…

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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…

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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…

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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…

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When Is Hindsight Impermissible in an Obviousness Rejection?

According to the PTAB, impermissible hindsight can be found in an obviousness analysis that modifies a reference without providing a rationale for such modification independent of the patent sought to be invalidated. In Apple Inc. v. Voip-pal.com, LLC., IPR 2016-01201, Paper 54 (Nov. 20, 2017), the PTAB refused to invalidate patent claims as being obvious, under 35 U.S.C. § 103, based on a proposed modification that relied on the claims as a destination to guide a PHOSITA (person having ordinary skill in the art) to the modification, i.e., the proposed modification depended on impermissible hindsight reasoning. At issue was US Patent 8,542,815, owned by Viop-pal.com. Representative claim 1 includes the following features: in response to initiation of a call by a calling subscriber, receiving a caller identifier and a callee identifier; locating a caller dialing profile comprising a username associated with the caller and a plurality of calling attributes associated with…

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