Missing Experience Undermines Expert’s Rebuttal of Obviousness Arguments
In Best Medical International, Inc. v. Elekta Inc., Appeal No. 21-2099, the Federal Circuit held that Expert testimony was properly discounted when substantial evidence supported the Board’s finding that a POSA would have possessed experience that the expert was missing; there is no standing to appeal a claim’s unpatentability determination from an IPR when the claim is finally canceled during parallel ex parte re-examination prior to appealing the IPR determination.
Elekta filed petitions for inter partes review challenging four claims of Best Medical International’s (“BMI”) patent directed towards the radiation therapy of tumors by computing an optimal radiation beam arrangement. Review was instituted and ex parte reexamination of two challenged claims (1 and 18) was also underway in a parallel proceeding. During re-examination, BMI canceled claim 1 in response to a rejection. In the IPR, however, the Board proceeded to analyze claim 1 reasoning that it had not yet been statutorily disclaimed or canceled by any final action in the re-examination. Ultimately, the Board concluded in the IPR that challenged claims 1, 43, 44, and 46 would have been obviousness. In reaching this conclusion, the Board found that a person of ordinary skill in the art (“POSA”) would have had formal computer programming experience. Because BMI’s expert did not have this experience, the Board discounted BMI’s expert testimony in its obviousness analysis.
On appeal from the IPR decision, the Federal Circuit affirmed the Board’s determination that claims 43, 44, and 46 would have been obvious. The Federal Circuit observed that the parties provided little evidence relating to factors that may guide the Board to the appropriate level of skill in the art. Despite competing expert testimony regarding a POSA’s training, the Federal Circuit held that it was not unreasonable or lacking in substantial evidence for the Board to conclude that a POSA would have had formal computer programming experience because the specification repeatedly referred to the invention being implemented on a computer and, though not discussed by the Board, an inventor’s deposition also supported the Board’s conclusion. As for claim 1, BMI argued that its cancellation before the Board issued a final written decision, rendered the patentability question moot and denied the Board authority to analyze the claim. Yet, BMI conceded during oral argument that claim 1 was only finally canceled when it failed to appeal the Examiner’s rejection of the claim, which occurred after the Board issued its final written decision and prior to the appeal of the Board’s IPR decision. Thus, the Federal Circuit held it was proper for the Board to analyze claim 1 during the IPR under the Supreme Court’s decision in SAS Institute. However, because of the timing of the final cancelation of claim 1, there was no case or controversy as to claim 1’s patentability at the time the IPR determination was appealed to the Federal Circuit and BMI therefore lacked standing to appeal the Board’s determination as to claim 1 and the Federal Circuit held it lacked jurisdiction over this part of BMI’s appeal.
(Inter Partes Review; Obviousness and Standing; Prepared by Kenneth McNeill)
Mere Capability by itself is not enough to establish patent essentiality
In Invt Spe LLC v. International Trade Commission, Htc America, Inc., Htc Corporation, Appeal No. 20-1903, the Federal Circuit held that Determination of reasonable functional capability requires proof that an accused product executes all the claimed functions at least some of the time or at least once in the claim-required environment when put into operation.
INVT SPE LLC filed a case in International Trade Commission (ITC) alleging that the respondents’ 3G and certain LTE enabled communications infringed five INVT patents, including the ’439 patent. The ’439 patent at issue relates to a wireless communication system where a user device (receiving side) determines and sends some parameters to a base station (transmission side) which encodes the data using the same parameters and sends the encoded data back to the user device for decoding the data. INVT SPE LLC asserted that the ’439 claims were essential to the LTE standard and the accused products practiced the asserted claims. The ITC disagreed and established that the asserted claims of the ’439 patent were not essential to the LTE standard and were not infringed.
The Federal Circuit affirmed the Commission’s decision with respect to the ’439 patent. The Federal Circuit acknowledged that the ’439 patent claims were drawn to “capability” and not to actual operation. However, the Federal Circuit asserted that the asserted claims were not standard essential as they did not cover every possible implementation of the LTE standard. In addition, the Federal Circuit also held that there was no infringement as INVT failed to establish that the accused devices will ever perform the functions recited in the asserted claims.
(Communications Technology, Patent Essentiality; Prepared by Geetha Durairaj)
Unforced Error: An IPR Challenger Cannot Rely on an Error that a POSITA Would Have Corrected
In lg Electronics Inc. v. Immervision Inc., Appeal No. 21-2037, the Federal Circuit held that where a reference contains an “obvious” error in a disclosure, even if not immediately apparent on the face of the disclosure, the erroneous information may not support a finding of obviousness.
LG Electronics (“LG”) filed an IPR against two of Immervision’s patents. LG argued that a reference contained an embodiment of a panoramic objective lens having image point distribution functions claimed in the challenged claims. When attempting to recreate the embodiment, Immervisions’s expert was unable to create a lens that matched the embodiment. He later determined that a transcription error occurred between the priority application and the published patent such that the aspherical coefficients of the table relied upon by LG’s expert were meant for a different embodiment. The Board determined that this transcription error was the type of obvious error that a POSITA would have recognized and corrected. Because, when the correct coefficients were used, the embodiment did not satisfy the language of the challenged claims, the Board found LG had not met its burden of proving obviousness.
On appeal, the Federal Circuit asked whether substantial evidence supported the Board’s fact finding that the error would have been apparent to a POSITA such that the person would have corrected the error or disregarded the disclosure. The Federal Circuit found that the aspherical coefficients’ (1) differing values between the patent and the priority application, (2) differing values between the embodiment table and the table encompassing embodiments into the entire lens system, and (3) identical values for two substantially different embodiments within the relied upon reference would have indicated an obvious error to a POSITA. With the correct information substituted in, the Federal Circuit found substantial evidence for the Board’s determination that the reference did not disclose the claimed image distribution. The Federal Circuit found LG’s arguments that (1) the error would have taken too long to find by a POSITA and (2) the error here differed from previous cases as a transcription error rather than a typographical one unpersuasive, as the obviousness of the error is determined by more than the time to discover the error or the nature of the error.
Judge Newman dissented, arguing that the error would not have been obvious to a POSITA given the effort in finding the error by Immervision’s expert, the lack of detection of the error at any point during examination or in the 20 years since publication, and the error being non-typographical in nature.