University Successfully Argues Prior Art’s Disclosures Were Not “by Another”
In Lsi Corporation v. Regents Of The University Of Minnesota, Appeal No. 21-2057, the Federal Circuit held that determining whether a patent or application’s disclosure is “by another” under § 102(e) requires evaluating the relied-upon portions of the disclosure to determine if the source of this disclosure is truly “by another;” a Board’s determination of untimeliness must be appealed even if the Board reaches the merits of the argument.
LSI petitioned for inter partes review of U.S. Pat. No. 5,859,601 (“’601 patent”) owned by the University of Minnesota (“UMN”) and relating to computer coding and bit processing. The Board held that claims 14 and 17 of the ’601 patent were not anticipated by either U.S. Pat. No. 5,392,270 (“Okada”) or U.S. Pat. No. 5,731,768 (“Tsang”). With respect to Okada, the Board found that certain arguments were untimely raised and, in any event, failed on the merits because they did not address the claimed constraints on processing. Tsang in contrast, did address the claimed constraints but those aspects from Tsang were not considered “by another” under 35 U.S.C. § 102(e). LSI appealed.
With respect to anticipation by Tsang, the Federal Circuit reviewed the Board’s determination as to whether the relevant portions of Tsang that LSI relied upon described an invention “by another.” Tsang undisputedly recited a different inventive entity than the ’601 patent. And LSI relied upon the disclosure of processing constraints from the Background section as anticipating claims 14 and 17. However, that section of Tsang was a summary of an annual report written by the ’601 patent’s inventors and describing their work that was provided to Tsang’s named inventor. Thus, even though LSI technically relied on Tsang and not the annual report written by the ’601 patent’s inventors, the relevant inquiry was whether the relied upon portions of Tsang were “by another.” Because they were not, the Federal Circuit affirmed the Board’s decision that Tsang did not anticipate under § 102(e).
Regarding Okada, LSI admitted at oral argument that it did not appeal the Board’s decision regarding timeliness and asserted this was not necessary because the Board reached the merits of the argument. The Federal Circuit disagreed, holding that it was necessary for LSI to have appealed the Board’s timeliness decision despite the Board having reached the merits of the argument because untimeliness was an independent ground for the decision. Accordingly, the Federal Circuit concluded that LSI forfeited any challenge to untimeliness and affirmed the Board’s determination without addressing the merits.
(Software & Information Technology, Anticipation, PTAB procedure; prepared by Matt Pham)
Unsuccessful Remolding of a Finding of a Product-By-Process Claim Element
In Kamstrup A/S v. Axioma Metering Uab, Appeal No. 2019-01640, the Federal Circuit held that rebutting a finding of a product-by-process claim element requires a showing of a structural description of the term alongside structural and functional differences found in the prior art.
Axioma Metering UAB (“Axioma”) petitioned for Inter Partes Review of all 15 claims of Kamstrup A/S’s U.S.’957 patent which describes ultrasonic flow meters and housings. The Patent Trial and Appeal Board (“Board”) construed the claims as a product-by-process claim as the claims described the process of “casting” the polymer housing and not the housing’s structure. In doing so, the Board concluded that it should not impart patentable weight to the claims and that they should not be considered as part of any anticipation or obviousness analyses. The Patent Trial and Appeal Board (“Board”) found the challenged claims unpatentable as anticipated and obvious in in view of analogous references.
The Federal Circuit affirmed the Board’s construction and findings of anticipation and obviousness. It noted that the claim language confirmed the construction of “cast in one piece” as a product-by-process claim element as the claim element claims a process of a structure “being” cast in a particular way. Arguments that the mentioning of a process should not convert a limitation into a process limitation were not successful as the Court noted that the disclosure did not describes any structure for the term. Instead, the relied-on disclosure discussed the fabrication process for the device, further supporting the product-by process construction. The Court then turned to whether the product-by-process claim element imparts patentable weight, which the Court found that it does not. First, there were no functional or structural differences between structures cast in a single mold versus multiple molds as the Court noted that the claim elements described a manufacturing method with restrictions. Second, the alleged differences identified between casting in one mold compared to multiple molds were detached from the claims since the claims were directed to casting the part in one piece and not in one mold. The Board was correct to not impart the narrower interpretation of requiring a single mold. In affirming the PTAB’s patentability finding, the Federal Circuit upheld the Board’s various claim constructions and agreed that the asserted references were analogous. The Court therefore affirmed the Board’s final written decision.
(Mechanical; Claim Construction; Electronics; Prepared by Alex Martin del Campo)
The Patent Office Need Not Consider Requests for Director Review of IPR Institution Decisions
In Re: Palo Alto Networks, Inc. Appeal No. 22-145, the Federal Circuit held that the USPTO policy of refusing to consider Requests for Director Rehearing of decisions denying institution of IPR and PGR does not violate the Appointments Clause of the Constitution.
Palo Alto Networks, Inc. (“PAN”) petitioned for inter parties review (“IPR”) of one patent and post-grant review (“PGR”) of another. While the petitions were pending, the U.S. Patent and Trademark Office (“USPTO”) updated its interim guidance to note that the agency does not accept requests for Director review of institution decisions. The Patent Trial and Appeal Board denied institution of PAN’s IPR and the PGR. PAN filed Requests for Director Rehearing seeking review of the non-institution decisions by the Director, but the USPTO refused to consider the requests. PAN petitioned the Federal Circuit for writ of mandamus, challenging the USPTO policy on which the refusal was based.
Relying on United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), PAN argued that the USPTO’s categorical refusal to accept requests for Director review of institution decisions violated the Appointments Clause. Arthrex found a violation of the Appointments Clause where the Director—an executive officer appointed by the President—lacked control over final written decisions by administrative patent judges—who are inferior officers not appointed by the President. The Federal Circuit distinguished PAN’s situation from Arthrex because PAN sought review of institution decisions, rather than final written decisions. No structural impediment prevents the Director from reviewing institution decisions, and the Director has occasionally done so sua sponte. Thus, the USPTO’s policy of refusing to consider requests for such review did not violate the Appointments Clause.
(Software & Information Technology, Appointments Clause; Prepared by Brianne Kingery)