A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Yita LLC v. MacNeil IP LLC, Nos. 2022-1373, -1374 (Fed. Cir. (N.D. Cal.) June 6, 2023). Opinion by Taranto, joined by Chen and Stoll.
Yita filed two IPR petitions challenging the patentability of all claims in two patents assigned to MacNeil related to vehicle floor trays made from a polymer sheet. In the first IPR, the Patent Trial and Appeal Board issued a final written decision rejecting Yita’s obviousness challenges. The Board concluded that although the prior art taught the challenged claims, MacNeil’s evidence of secondary considerations was “compelling and indicative of non-obviousness.” In the second IPR, the Board rejected most of Yita’s challenges after declining to consider an argument that Yita had raised in a footnote in its reply brief. The Board concluded that the reply-footnote position was a “new position” and “outside the scope of a proper reply.” Yita appealed.
Addressing the first IPR, the Federal Circuit reversed. The court concluded that although the Board found MacNeil’s secondary-consideration evidence “compelling,” the Board’s finding of nexus for that evidence “rests on legal errors, and once those errors are corrected, the finding is not supported by substantial evidence.”
The Board had found that a claim limitation requiring “close conformance” of the vehicle floor tray with a foot well was known in the prior art, but was not “well known” in the prior art. The Board concluded that these findings did not undermine its determination of a nexus. The Federal Circuit disagreed with that approach, stating that the court’s “case law makes clear that objective evidence of nonobviousness lacks a nexus if it exclusively relates to a feature that was known in the prior art—not necessarily well-known.”
Second, the Board had relied on Federal Circuit precedent stating that “it is the claimed combination as a whole that serves as a nexus for objective evidence; proof of nexus is not limited to only when objective evidence is tied to the supposedly ‘new’ feature(s).” The Federal Circuit clarified that this statement applies when the secondary-consideration evidence is linked to an “inventive combination of known elements,” not an individual element as was presented here. Thus, on the whole, the Federal Circuit concluded that under the proper application of the court’s precedent, MacNeil’s secondary-consideration evidence was “of no relevance to the obviousness inquiry in this case.”
Turning to the second IPR, the Federal Circuit concluded that the Board did not abuse its discretion in declining to consider Yita’s argument “because it was presented too late—in a footnote in Yita’s reply brief.” The court explained that it has “repeatedly held that the Board acts within its discretion when it declines under section 42.23(b) to consider a new theory of unpatentability raised for the first time in reply.”
Blue Gentian, LLC, et al. v. Tristar Products, Inc., Nos. 2021-2316, ‑2317 (Fed. Cir. (D.N.J.) June 9, 2023). Opinion by Prost, joined by Chen and Stark.
Blue Gentian sued Tristar for alleged infringement of four utility patents relating to an expandable hose and two design patents relating to the ornamental design for an expandable hose. Tristar filed counterclaims to correct the inventorship of all six patents. The district court determined that, for all six patents, nonparty Gary Ragner should have been a named co-inventor alongside the sole named inventor, Michael Berardi. The district court found that Mr. Ragner had conveyed three key elements of the hose to Mr. Berardi during a meeting, and found that these key elements amounted to a significant contribution to the conception of at least one claim in all six patents. Blue Gentian appealed.
The Federal Circuit affirmed. The court rejected Blue Gentian’s appellate arguments that the district court erred by not construing the claims, by not sufficiently tying the elements contributed by Mr. Ragner to the claims, and by finding Mr. Ragner’s contributions significant despite that, according to Blue Gentian, the claims do not reflect those contributions. The Federal Circuit rejected each of these arguments.
First, regarding claim construction, the Federal Circuit observed that “Blue Gentian has not identified a dispute about claim scope that is material, or even relates to, inventorship.” The court explained that a district court “is not required to prospectively address hypothetical claim-construction disputes,” which “is as true for inventorship analyses as it is for invalidity and infringement analyses.”
Second, regarding the district court’s analysis of the contributed elements being tied to specific claims, the Federal Circuit agreed with the district court that the three elements contributed by Mr. Ragner, “taken together, were a significant contribution to at least one claim of each asserted patent.” The contributed elements were “plainly reflected” in the patents’ claim language, and they were “the very elements Blue Gentian has used to distinguish the invention of the asserted patents from the prior art.”
Third, addressing the significance of Mr. Ragner’s contributions, the Federal Circuit explained that “it is the significance of Mr. Ragner’s overall contribution that matters for determining inventorship, not the significance of certain elements standing alone.” Blue Gentian did not argue that the combination of elements was known in the prior art or that the contribution of all three elements together was insignificant.
Lastly, the Federal Circuit upheld the Board’s findings regarding corroboration of Mr. Ragner’s testimony “both by physical and circumstantial evidence.” The district court “properly engaged in a rule-of-reason analysis aimed at determining whether Mr. Ragner’s story was credible overall.” The Federal Circuit explained that “no single piece of evidence alone needed to establish that Mr. Ragner’s account of inventorship was credible.” The analysis instead considers the evidence as a whole, and the district court did not err in its analysis.
Medtronic, Inc., et al. v. Teleflex Innovations S.à.r.L., Nos. 2021-2359, ‑2362, -2366 (Fed. Cir. (PTAB) June 5, 2023). Opinion by Moore, joined by Lourie and Dyk.
Medtronic filed IPR petitions challenging various claims of three patents owned by Teleflex relating to certain coaxial extension catheters insertable into standard guide catheters. The Patent Trial and Appeal Board issued final written decisions holding some claims unpatentable as obvious and others not unpatentable. The Board also granted Teleflex’s contingent motion to amend certain claims and determined that the amended claims were not unpatentable. Medtronic appealed these rulings on a variety of grounds.
Medtronic’s obviousness theories included a modification of the “Ressemann” prior art reference. On appeal, Medtronic contended that the Board legally erred by focusing on “the detrimental effects of Medtronic’s modifications to one of Ressemann’s intended purposes … to the neglect of Ressemann’s other purpose.” Medtronic argued that the Board’s reasoning conflicts with Federal Circuit precedent that the “intended purpose of a reference does not control” the obviousness inquiry.
The Federal Circuit disagreed with Medtronic. The Board had found that Ressemann’s “entire premise” was to use sealing balloons to prevent embolic flow and that removing the balloons, per Medtronic’s modification, would “render Ressemann completely inoperable for its stated purpose.” The Federal Circuit determined that substantial evidence supported the Board’s finding. The court explained that “the Board reasonably recognized that modifying a device in a manner that would undermine a purpose it shares with the challenged claims counsels against a motivation to make such modifications.”
The Federal Circuit addressed a host of additional arguments by Medtronic, but concluded that the arguments are unavailing. The court also upheld the Board’s determination that Teleflex’s substitute claims had adequate written description support and would not have been obvious over Medtronic’s asserted grounds. Although certain aspects of the Board’s reasoning was “imprecise,” the Federal Circuit recounted that, “as we have explained many times, we do not require perfect explanations of the Board … ; rather, we only require that its path be reasonably discernible.” That standard was met here.
Medtronic, Inc., et al. v. Teleflex Innovations S.à.r.L., Nos. 2021-2357, ‑2360, -2364 (Fed. Cir. (PTAB) June 5, 2023). Opinion by Moore, joined by Lourie and Dyk.
In addition to the IPRs addressed in the preceding summary, Medtronic filed additional IPR petitions challenging various claims of three Teleflex patents (one of which was common to the appeal summarized above). Here again the Patent Trial and Appeal Board issued final written decisions holding some claims unpatentable as obvious and others not unpatentable. And the Board again granted Teleflex’s contingent motion to amend certain claims and determined that the amended claims were not unpatentable. Medtronic appealed these rulings on a variety of grounds.
Medtronic’s obviousness theories included a modification of the “Kontos” prior art reference. On appeal, Medtronic contended that “the Board committed a host of legal errors in its analysis of Teleflex’s objective evidence and the parties’ prima facie arguments.” The Federal Circuit disagreed, concluding “that the Board did not err in its analysis and that its findings are supported by substantial evidence.”
In one of its arguments, Medtronic contended that the Board erred in finding a nexus between Teleflex’s objective evidence of nonobviousness and certain challenged claims. The Board had acknowledged that Medtronic showed every element of the claims was individually known in the prior art, but the Board, the Federal Circuit ruled, “correctly concluded this did not preclude nexus where the evidence was tied to the combination of features as a whole and the combination was not previously known.” The Board explicitly grounded its nexus finding on a combination of features that “were not disclosed, at least as a combination, in the prior art,” and the Federal Circuit saw “no legal error in this analysis.” Thus, the Board did not err in finding a nexus between Teleflex’s objective evidence and the claims.
The Federal Circuit also upheld the Board’s finding that Medtronic copied a Teleflex product while developing its own product, which was a relevant consideration in assessing nonobviousness. Medtronic argued that the Board erred by relying on substantial similarity between the two products to infer copying. The Federal Circuit disagreed, explaining that the court has “never held … that copying cannot be established through evidence of access to and substantial similarity with a patented product.” “Evidence of access and substantial similarity is evidence of copying.” Additional objective indicia of nonobviousness, including copying by other competitors, commercial success, and industry praise—none of which Medtronic challenged on appeal—also supported the Board’s finding of nonobviousness.
Medtronic also argued that the Board legally erred by ignoring two of Medtronic’s proposed motivations to combine and failing to address every motivation in its written decisions in violation of the Board’s obligations under the Administrative Procedure Act. The Federal Circuit disagreed, stating that the “central inquiry” is whether the court can “reasonably discern that the Board followed a proper path, even if that path is less than perfectly clear.” Here, “the Board’s path in this case is discernible,” the court concluded.
Lastly, the court upheld the Board’s determination that Teleflex’s substitute claims had adequate written description support and would not have been obvious over Medtronic’s asserted grounds.