Federal Circuit Review | March 2024 | Knobbe Martens
Defining Indefiniteness: When Are Claim Limitations Contradictory?
In Maxell, Ltd., v. Amperex Technology Limited, Appeal No. 23-1194, the Federal Circuit held that two claim limitations are not contradictory if they can be satisfied simultaneously.
Maxell asserted that Amperex infringed its battery patent. Amperex challenged the validity of the patent, alleging that the claims were indefinite under 35 U.S.C. § 112 for reciting (1) “wherein M1 represents at least one transition metal element selected from [cobalt, nickel, or manganese]” and (2) “wherein the content of [cobalt] in the transition metal M1 . . . is from 30% by mole to 100% by mole.” At claim construction, the district court agreed that limitations (1) and (2) were contradictory and therefore indefinite. The district court reasoned that the claim language was contradictory because limitation (1) only optionally required cobalt, but that limitation (2) necessarily required cobalt. Maxell appealed.
The Federal Circuit found that limitations (1) and (2) were not contradictory and therefore not indefinite. The court reasoned that a transition metal element could both contain cobalt, nickel, or manganese and include 30% by mole to 100% by mole of cobalt. Thus, the Federal Circuit reversed the district court’s judgment.
Claim Construction When Uniformly Referring to Aspects of an Invention
In Chewy, Inc. v. International Business Machines Corporation, Appeal No. 22-1756, the Federal Circuit held that a patentee cannot transform an abstract idea into a patent-eligible, specific implementation of that abstract idea merely by reciting conventional techniques.
Chewy, Inc. sued International Business Machines Corp. (IBM) seeking declaratory judgment of noninfringement of two IBM patents generally related to web-based advertising. In response, IBM filed counterclaims alleging infringement. The district court granted Chewy’s motion for summary judgment of noninfringement of the asserted claims of the first patent. The court also granted Chewy’s motion for summary judgment that the asserted claims of the second patent were invalid under § 101. IBM appealed both summary judgment rulings.
The Federal Circuit upheld the grant of summary judgement on most claims of the first patent as no reasonable factfinder could find that Chewy’s website or mobile applications perform the “selectively storing advertising objects” limitation recited in the claims. The Federal Circuit affirmed the lower court’s claim construction that this limitation requires storing advertising objects in anticipation of a user request and not in response to a user request. IBM argued that the passages of the patent which support this construction did not apply to the asserted claims. The court rejected this argument because the patent uniformly referred to pre-fetching advertising objects as an aspect of the invention as a whole.
The court also affirmed the ruling that the asserted claims of the second patent were ineligible under §101. Applying step one of the Alice framework, the court determined that the asserted claims were directed to the abstract idea of identifying advertisements based on search results. Moving to step two, the court held the claims failed to recite an inventive concept. IBM relied on various limitations – such as one reciting off-line batch processing – to argue that the claims recited specific implementations of the abstract concept of using search results to identify relevant advertisements. The Federal Circuit disagreed, ruling that the additional limitations recited only conventional techniques rather than an inventive concept sufficient to transform the claimed abstract idea into patent-eligible subject matter.
Routine Optimization of Result-Effective Variable Can Bridge Gaps in Prior Art
In Pfizer Inc. v. Sanofi Pasteur Inc., Appeal No. 19-1871, the Federal Circuit held that evidence that a claimed parameter is recognized as a result-effective variable can overcome the lack of explicit disclosure of the exact claimed parameter in the prior art to render a claim obvious.
Merck and Sanofi requested inter partes review of a patent owned by Pfizer. The patent at issue claimed a molecular weight range of a specific type of glycoconjugate. The PTAB recognized, and Petitioners conceded, that none of the asserted prior art disclosed any molecular weight for the specifically claimed glycoconjugate. However, the PTAB found that glycoconjugate molecular weight is a result-effective variable for improving stability and good immune response. Thus, a person of ordinary skill in the art would have been motivated to optimize the glycoconjugate molecular weight. Based on this finding, the PTAB invalidated the claims as obvious over the prior art.
On appeal, the Federal Circuit affirmed the Board’s decision. Pfizer contended that the PTAB erred in applying the “result-effective variable doctrine,” arguing that the doctrine is only appropriate where actual overlap exists between a claimed range and a range disclosed in the prior art. The Court disagreed. The Court recognized that overlap between a claimed range and a prior art range creates a presumption of obviousness that can be rebutted with evidence that a claimed parameter is not recognized as result-effective. The Court then held that the contrapositive is also true—evidence that a claimed parameter is recognized as result-effective can bridge gaps in the prior art to render a claim obvious. Here, although the prior art did not teach a molecular weight for the particularly claimed glycoconjugate, it did teach molecular weight ranges for other similar glycoconjugates. Because those ranges overlapped with the claimed range, and because glycoconjugate molecular weight is a result-effect variable, optimization of the variable was within the grasp of a person of ordinary skill in the art.
Being Known is not Enough
In Virtek Vision International Ulc, v. Assembly Guidance Systems, Inc., Dba Aligned Vision, Appeal No. 22-1998, the Federal Circuit held that Merely showing that prior art elements were known to a person skilled in the art without providing a reason to combine the references does not prove obviousness.
Assembly Guidance Systems, Inc. d/b/a Aligned Vision (“Aligned Vision”) petitioned for an inter partes review of a patent owned by Virtek Vision International ULC (“Virtek”). The patent described a two-part alignment method for aligning a laser projector on to a work surface using a secondary light source and a laser beam. Aligned Vision asserted four grounds of unpatentability over various combinations of four prior art references. The Board issued a final written decision invalidating some challenged claims of the patent on two grounds of unpatentability. However, the Board found that Aligned Vision failed to prove unpatentability of other challenged claims based on two other grounds. Virtek appealed the the Board’s invalidation of some challenged claims, while Aligned Vision cross-appealed the Board’s holding that Aligned Vision failed to prove unpatentability of the remaining challenged claims.
The Federal Circuit reversed the Board’s decision as to the invalidated claims and affirmed as to the remaining claims. In both cases, the Federal Circuit emphasized that a showing of obviousness requires substantial evidence of why a skilled artisan would have been motivated to combine the references to arrive at the claimed invention, and noted that it is not sufficient merely to show that the skilled artisan had the knowledge required to make the combination if desired. The Federal Circuit found no record evidence that a design need, market pressure, or any common-sense reason would have motivated a skilled artisan to combine the references. Thus, the Federal Circuit applied the well-established principle that the mere existence of the claim elements in the prior art is not substantial evidence of a motivation to combine.
Jury Instructions Must Describe All Relevant Objective Indicia of Non-obviousness
In Inline Plastics Corp v. Lacerta Group, LLC, Appeal No. 22-1954, the Federal Circuit held that jury instructions must instruct the jury to consider all relevant objective indicia of non-obviousness.
Inline Plastics Corp. (“Inline”) sued Lacerta Group, LLC (“Lacerta”) for infringement of several of its patents relating to tamper-proof containers. At trial, the jury determined that the asserted claims at issue were invalid and not infringed.
Inline appealed, arguing (among other things) that the district court provided erroneous jury instructions. Specifically, Inline argued that the jury instructions had failed to describe and instruct the jury to consider several relevant objective indicia of non-obviousness. For example, the instructions failed to mention the objective indicia of copying, licensing, and industry praise, although Inline had provided evidence of each of them. Instead, the jury instructions only mentioned the objective indicia of commercial success and long-felt need.
The Federal Circuit agreed with Inline and remanded the case for a new trial on invalidity. The court ruled that the jury instructions were improper because they failed to describe all the relevant objective indicia. Furthermore, the Federal Circuit found the error was not harmless because it was clear from the verdict that the jury relied only on obviousness to determine that at least some claims were invalid, and because the prima facie case of obviousness was not too strong for a reasonable jury to find that the objective indicia, taken as a whole, outweighed it.
