prosecution considerations from the Federal circuit for Surviving - - PowerPoint PPT Presentation

88 89 January 2016 January 2016

ExpErt guidE: intEllEctual propErty 2016 usA

Brian hannon margaret Welsh

bhannon@sughrue.com +1 202 663 7362 mwelsh@sughrue.com +1 202 663 7395

prosecution considerations from the Federal circuit for Surviving Inter partes review challenges

ervoir which holds liquid difgused by the dispenser and a difgusion head “mounted” to the reservoir. On 7 March 2013, ScentAir Technolo- gies, Inc. fjled an inter partes review request of claims 1 and 2 of the ‘683 patent at the Patent Trials and Ap- peals Board (“the Board” or “PTAB”). One of the disputes in the inter par- tes review was the claim construc- tjon for the term “mounted.” Spe- cifjcally, claim 1 of the ‘683 patent recites: “a reservoir and a difgusion head mounted to the reservoir.” During the inter partes review, Scen- tAir challenged claim 1 as being an- tjcipated by PCT Internatjonal Publi- catjon No. WO 2004/080604 (“Bena- likhoudja”). Benalikhoudja discloses a device for difgusing liquids, such as perfumes, and includes a cartridge with a reservoir and a difgusion head fastened to the reservoir by a tam- per-proof ring. During the inter par- tes review, Prolitec argued that the term “mounted” should mean “per- manently joined,” and that Benalik- houdja’s tamper-proofjng seal did not meet this limitatjon. In support

• f its claim constructjon argument,

Prolitec argued that the purpose of the ‘683 patent was to provide a dis- posable cartridge for one-tjme use, and thus, in essence, the difgusion head and reservoir necessarily were permanently joined, since once they were disabled they could no longer be used. The Board disagreed with Prolitec’s argument, and found claim 1 invalid in view of Benalikhoudja. On appeal, the Federal Circuit also disagreed with Prolitec’s argument and upheld the Board’s decision. The Federal Cir- cuit pointed out that the ‘683 patent merely discloses that the cartridge may be used only one tjme, or al- ternatjvely may be reused. See ‘683 patent at col. 11, ll. 6-13. In view of the disclosure of the ‘683 patent, the Federal Circuit denied Prolitec’s claim constructjon and did not read Prolitec’s proposed limitatjons into the term “mounted.” While the specifjcatjon of the ‘683 patent describes that the difgusion head and reservoir may be joined by welding or chemical bonding, as mentjoned above, there were no dependent claims in this patent to further limit or defjne any of the A general axiom of patent prosecu- tjon is to obtain the broadest valid claim possible. While this principle largely remains true, in light of inter partes review (“IPR”) proceedings, it is increasingly important for practj- tjoners, during prosecutjon of a pat- ent, to questjon whether the claims in a pending applicatjon are too broad that they might be subject to an IPR challenge. Recent federal cir- cuit decisions with respect to inter par- tes reviews highlight some specifjcatjon and claim drafuing consideratjons for practjtjoners during patent prosecutjon. While these questjons may not be new for patent practjtjoners, the popularity of inter partes reviews stresses the impor- tance of considering these questjons when drafuing and prosecutjng pat- ent applicatjons. Are There Meaningful Dependent Claims Which Further Defjne the In- dependent Claim? During patent prosecutjon, practj- tjoners well-know to add dependent claims which further limit a broader independent claim in hopes that if the broader claim is not determined patentable, a narrower dependent claim might be. However, beyond de- termining patentable subject matuer and expeditjng patent prosecutjon, having strong dependent claims may be crucial for a patent to withstand an inva- lidity challenge while stjll having value to the patent owner. A recent federal cir- cuit decision, Prolitec,

• Inc. v. Scentair Tech-

nologies, Inc. (Fed. Cir., 4 Dec. 2015), illustrates the risk

• f not including valuable dependent

claims which more narrowly defjne the independent claim. U.S. Patent

• No. 7,712,683 (“the ‘683 patent”),
• wned by Prolitec, issued on 11 May

2010 with two claims. Both claims were independent. The ‘683 patent relates to air fresh- ener dispensers with removable car-

• tridges. The cartridge included a res-

By Brian Hannon & Margaret Welsh

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Benalikhoudja, does not disclose a three-chamber difgusion system, and instead, only discloses a two-cham- ber system. In the inter partes review, the Board disagreed with Prolitec be- cause the claim language recites only two chambers (i.e. “an initjal expan- sion chamber” and a “second cham- ber”). Thus, the Board construed “secondary chamber” to mean “sec-

• ndary in reference to the initjal ex-

pansion chamber.” The Federal Cir- cuit agreed with the Board’s opinion because the claim only recited two “chambers” and “the inventor chose to claim the element ‘head space’ using those precise words, rather than calling it another chamber.” See Prolitec, Inc. v. Scentair Technologies, Inc., Slip Op., Fed. Cir. (4 Dec. 2015) Page 8. Unfortunately for Prolitec, both of the independent claims, claims 1 and 2, similarly recited an “initjal cham- ber,” a “head space,” and “a sec-

• ndary chamber.” Thus, the Board

similarly found that claims 1 and 2 were antjcipated by Benalikhoudja. Perhaps if the ‘683 patent contained an independent claim with difgerent terminology than that of claim 1 or claim 2, Prolitec may have had more success during the IPR. Is the Plain Meaning of the Claim Uncertain? Straight Path IP Group, Inc. v. Sipnet EU S.R.O. (Fed. Cir. 25 Nov. 2015), shows the benefjt to a patent owner

• f having claim language with a clear

plain meaning. Sipnet EU S.R.O. fjled an inter partes review of U.S. Patent

• No. 6,108,704, owned by Straight

Path IP Group Inc. The ‘704 patent relates to a system for “real-tjme voice or video communicatjons be- tween two processing units over a network.” See Straight Path IP Group,

• Inc. v. Sipnet EU S.R.O., Slip Op., Fed.
• Cir. (25 Nov. 2015) Page 2. Claim 1
• f the ‘704 patent recites, “the com-

puter system executjng a fjrst pro- cess and operatjvely connectable to a second process,” “a computer us- able medium having a program code embedded in the medium,” where the program code includes “code for transmittjng, to the server, a query as to whether the second process is connected to computer network.” See ‘704 patent at claim 1 (emphasis added). terms in the independent claims. Thus, unfortunately, Prolitec was lefu to argue a narrow claim constructjon that read limitatjons into the inde- pendent claim, and Prolitec did not have a dependent claim to fall back

• n. While it may be hard for prac-

tjtjoners to predict, during prosecu- tjon, which terms might be of issue in a future IPR, familiarity with the prior art and knowing the important and signifjcant features of the pat- ent applicatjon will help guide prac- tjtjoners to carefully add dependent claims which may provide value, in the event that the broader indepen- dent claim is found invalid in an IPR. It should be noted that during this IPR proceeding, Prolitec fjled a mo- tjon to amend the term “mounted” to “permanently joined.” However, this motjon was denied by the Board and the Federal Circuit because Prolitec failed to meet its burden of showing that that the amended claim would have been patentable and non-obvi-

• us over Benalikhoudja and another

reference cited in the prosecutjon history. Are There A Variety of Independent Claims? Another issue in Prolitec, Inc. v. Scentair Technologies, Inc. was the meaning of the claim constructjon

• f the limitatjon “second/secondary

chamber.” Claim 1 of the ‘683 pat- ent claimed a difgusion head having a venturi with an opening to an “ini- tjal expansion chamber,” the expan- sion chamber having a plurality of

• penings into a “head space” and an
• utlet “including a secondary cham-

ber” in fmuid communicatjon with the head space. During the IPR, Prolitec argued that the ‘683 patent discloses a “three-chamber” system in which the partjcles fmow fjrst to the initjal expansion chamber, then into the head space, and then to the “second chamber.” See IPR2013-00179, Pat- ent Owner Response, Paper 29 (11

• Oct. 2013), Page 29. Thus, Prolitec

asserted that the term “secondary chamber” means “secondary in ref- erence to the head space,” and thus, the claim requires three chambers (i.e. the initjal chamber, the head space, and the secondary chamber). Prolitec argued that the prior art,

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At issue in the IPR was the meaning

• f “is connected to computer net-

work.” The partjes agreed that the term required a query of wheth- er the second process was online. However, Straight Path contended that the term referred to “a present- tense status” that the second pro- cess is online at that tjme, and Sipnet contended that the term “is” only re- quired being registered to the server (i.e. actjve and online at registratjon). The Board adopted Sipnet’s claim constructjon; however, the Federal Circuit disagreed and remanded the proceeding. In its ruling, the Federal Circuit noted that the term “is” “plainly states that the query transmitued to the servers seeks to determine whether the sec-

• nd unit is connected at that tjme.”

See id. Page 7. Thus, the court opined that “it is not a reasonable interpreta- tjon of the claim language, consider- ing its plain meaning, to say that it is satjsfjed by a query that asks only for registratjon informatjon, regardless

• f the its current accuracy.” See id.

As in Straight Path IP Group, patent

• wners may avoid inter partes re-
• ther computers” referred to any

two computers connected on the network (including a caching com- puter recited later in claim 6). On the other hand, Proxyconn argued that the term “two other computers” referred only to the sender/comput- er and the receiver/computer. The Board agreed with Microsofu; how- ever, the Federal Circuit over-turned the Board’s decision. In its decision, the Federal Circuit held that even under the broadest reasonable interpretatjon (the claim constructjon standard for most IPR proceedings), the constructjon “can- not be divorced from the specifjca- tjon and the record evidence.” See Microsofu Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). In this view, the Federal Circuit held that the Board erred in its claim con- structjon decision, in part, because the specifjcatjon uses the phrase “two other computers” as being lim- ited to the sender/computer and the receiver/computer. Further, the court noted that each tjme the speci- fjcatjon refers to the two other com- puters, the specifjcatjon describes these computers as being separate view challenges that rely on unrea- sonably broad claim constructjons for invalidity arguments if the claim language is clear on its face. As the court mentjoned in Straight Path IP Group “when the claim language has a plain meaning on an issue... leaving no genuine uncertaintjes... it is par- tjcularly diffjcult to conclude that the specifjcatjon reasonably supports a difgerent meaning.” See id. Page 8. Are Claim Terms Clearly Defjned in the Specifjcatjon? Lastly, Microsofu Corporatjon v. Proxy- conn, Inc. (Fed. Cir., 16 June 2015) il- lustrates the benefjt of clearly defjn- ing claim terms in the specifjcatjon. Microsofu fjled an inter partes review

• n U.S. Patent No. 6,757,717. Again,

this proceeding involved a claim con- structjon dispute. With respect to claim 6, for example, the limitatjon at issue was “a gateway... connected to said packet-switched network in such a way that the network packets sent between at least two other comput- ers pass through it...” See ‘717 pat- ent at claim 6 (emphasis added). Microsofu argued that the term “two from the gateway and caching com-

• puter. Later in its opinion the Board

notes that “nowhere does the ‘717 patent indicate that the gateway and caching computer are the same as, or can be subsumed within, the sender/computer and the receiv- er/computer.” See id. Page 1300. Thus, the court concluded that “the Board’s constructjon which expands the ‘two other computers 42 and 46’ to include the separately identjfjed caching computer, is unreasonably broad in light of the language of the claims and the specifjcatjon.” Practjtjoners should consider the teachings of Microsofu and decide whether clearly defjning claim terms in the specifjcatjon is appropriate. A comparison of this case with Prolitec,

• Inc. v. Scentair Technologies, Inc. dis-

cussed above, shows the impact of doing so. For example, in Prolitec, the specifjcatjon used broad descrip- tjons—that the cartridges were ca- pable of being used only one tjme or

• reused. Given this broad disclosure,

the court did not read additjonal limitatjons in the claim. However, as shown in Microsofu, if the specifjca- tjon clearly defjnes a claim term and

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nowhere defjnes an alternate mean- ing for the claim term, the court may fjnd such an alternate meaning to be unreasonably broad. Conclusion These Federal Circuit opinions high- light some areas which patent prac- tjtjoners should pay careful atuentjon to when drafuing and prosecutjng pat- ent applicatjons to help improve the chances of such patents withstanding invalidity challenges in an IPR. Brian Hannon is a Partner in the Washington DC offjce of Sughrue and Chair of the Electro/mechani- cal group. With more than 25 years

• f experience in the fjeld of intel-

lectual property law, Mr. Hannon handles patent matuers for emerg- ing and high-technology companies in various electrical and mechani- cal sciences, including optjcal fjbers, biomedical devices, electrical and

• ptjcal connectors, GPS, printers,

welding technologies and a broad range of automotjve technologies.

• Mr. Hannon’s current practjce is de-

voted to patent prosecutjon, inter partes review, strategic counseling

• n patent procurement and litjga-

tjon, opinion preparatjon on matuers relatjng to infringement and validity and infringement litjgatjon. Brian counsels both domestjc and foreign clients. Margaret M. Welsh is an associate in the fjrm’s Electrical/Mechanical

• Group. Her practjce focuses on the

‎preparatjon and prosecutjon of pat- ent applicatjons, counseling clients

• n ‎intellectual property matuers, inter

partes review proceedings, and pat- ent litjgatjon. She has experience in a wide range of mechanical and elec- trical technologies, including auto- motjve components, semiconductors, nanotechnologies, clean energy tech- nologies, and biomedical devices.