IP News

Federal Circuit: In An IPR Proceeding, The Burden Lies With The Petitioner To Show 'Substantial Evidence' That The Prior Art Patent Is Entitled To The Priority Date Of Its Provisional Application

On Sept. 4, 2015, a Federal Circuit panel of Judges Lourie, Bryson, and O'Malley issued a unanimous opinion, authored by Judge Lourie, in Dynamic Drinkware, LLC v. National Graphics, Inc., Case No. 2015-1214. The panel reviewed whether a patent prior art reference was entitled to a priority date based on its provisional patent application, and affirmed the Patent Trial and Appeal Board (PTAB) finding that the patent at issue in inter partes review was not anticipated.

Dynamic Drinkware (Dynamic) filed in the PTAB for inter partes review of National Graphics' U.S. Patent 6,635,196, ('196 patent) 'directed to making molded plastic articles,' arguing several claims of the '196 patent were anticipated by U.S. Patent 7,153,555 ('Raymond patent'). Slip op. at 2. The PTAB had made two findings: 'Dynamic failed to prove that the Raymond patent was entitled to the benefit of its ' provisional filing date,' and 'National Graphics reduced to practice its invention by March 28, 2000, before the May 5, 2000 filing date of the Raymond patent.' Id. at 3. Based on these findings, the PTAB held that Dynamic did not prove anticipation of the '196 patent. Dynamic appealed the PTAB decision to the Federal Circuit.

The Federal Circuit reviewed the PTAB decision de novo. The panel explained that '[i]n an inter partes review, the burden of persuasion is on the petitioner to prove 'unpatentability by a preponderance of the evidence.' Id. at 6 (citing 35 U.S.C. '316(e)). Dynamic did not shift this burden. Dynamic also had the burden of production, which was met, 'by arguing that Raymond anticipated the asserted claims of the '196 patent.' Id. at 7. National Graphics then met its shifted burden of production by arguing that its invention was reduced to practice prior to the filing date of the Raymond patent. The burden of production shifted again, back to Dynamic, who argued a presumption that the priority date of the Raymond patent provisional application, prior to that of the '196 patent reduction to practice.

'A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with '112, ' 1.' Id. at 11 (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). The panel found that because Dynamic did not show support for the claims of the Raymond patent in its provisional application, the Raymond patent as a reference patent was not entitled to priority to the filing date of the provisional application. Therefore, the panel held that Dynamic did not prove by substantial evidence that the Raymond patent anticipated the '196 patent, and did not carry its burden of showing unpatentability of the '196 patent.

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Federal Circuit: Scope Of Reexamination Claims Is Reviewed De Novo

On Sept. 17, 2015, a Federal Circuit panel of Judges Newman, O'Malley, and Wallach issued a unanimous opinion, authored by Judge O'Malley, in R+L Carriers, Inc. v. Qualcomm, Inc., Case No. 2014-1718. The panel reviewed the scope of a reexamined patent claim at issue and affirmed the district court's dismissal of infringement claims.

Patentee R+L Carriers, Inc. (R+L) filed suit against Qualcomm, Inc. et al. in 2009 for infringement of U.S. Patent No. 6,401,078. The case was consolidated in a multidistrict litigation in the Southern District of Ohio. The '078 patent contains a single claim directed to manual and computerized methods of optimizing the loading of shipment freight. While the district court action was pending, R+L filed for a reexamination of the '078 patent. The reexamination resulted in an amended claim limited to only 'computer-prepared loading manifests.' Slip op. at 5. The district court ruled that the reexamination 'amendment to original claim 1 substantively narrowed the claim, thereby precluding recovery of damages for infringement prior to the date the PTO issued the reexamination certificate.' Id. Qualcomm then 'sold its allegedly infringing business unit before the PTO issued the reexamination certificate for the '078 patent,' and R+L stipulated to dismissal of its claims. Id. at 5-6. R+L appealed.

By statute, '[a] patentee of a patent that survives reexamination is only entitled to infringement damages for the time period between the date of issuance of the original claims and the date of issuance of the reexamined claims if the original and the reexamined claims are 'substantially identical.” Id. at 6 (citing 35 U.S.C. ' 252). Federal Circuit precedent has held that the substantive change in reexamined claims is judged by 'whether the scope of the claims are identical.' Id. In light of the U.S. Supreme Court decision in Teva v. Sandoz, the Federal Circuit reviews district court 'subsidiary' factual findings in claim construction for clear error, 'but the ultimate conclusion regarding the scope of the claims de novo.' Id. at 7.

The Federal Circuit panel stated that 'in determining whether an amended claim is narrower, we determine whether there is any product or process that would infringe the original claim, but not infringe the amended claim.' Id. at 8-9. In the '078 reexamination, a limitation was added that 'the advance loading manifest be 'for another transporting vehicle.” Id. at 10 (emphasis in original) (citing J.A. 3088). Therefore, since the original claim would have encompassed 'the current shipping vehicle,' the panel determined that the amended claim was not 'substantially identical' to the original claim, and affirmed dismissal of the infringement claims against Qualcomm. Id. at 10-11 (emphasis in original).

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Howard J. Shire'is Editor-in-Chief of this newsletter and a Partner in the New York office of Kenyon & Kenyon LLP.'Brent T. Hagen'is a Law Clerk with the firm.

Federal Circuit: In An IPR Proceeding, The Burden Lies With The Petitioner To Show 'Substantial Evidence' That The Prior Art Patent Is Entitled To The Priority Date Of Its Provisional Application

On Sept. 4, 2015, a Federal Circuit panel of Judges Lourie, Bryson, and O'Malley issued a unanimous opinion, authored by Judge Lourie, in Dynamic Drinkware, LLC v. National Graphics, Inc., Case No. 2015-1214. The panel reviewed whether a patent prior art reference was entitled to a priority date based on its provisional patent application, and affirmed the Patent Trial and Appeal Board (PTAB) finding that the patent at issue in inter partes review was not anticipated.

Dynamic Drinkware (Dynamic) filed in the PTAB for inter partes review of National Graphics' U.S. Patent 6,635,196, ('196 patent) 'directed to making molded plastic articles,' arguing several claims of the '196 patent were anticipated by U.S. Patent 7,153,555 ('Raymond patent'). Slip op. at 2. The PTAB had made two findings: 'Dynamic failed to prove that the Raymond patent was entitled to the benefit of its ' provisional filing date,' and 'National Graphics reduced to practice its invention by March 28, 2000, before the May 5, 2000 filing date of the Raymond patent.' Id. at 3. Based on these findings, the PTAB held that Dynamic did not prove anticipation of the '196 patent. Dynamic appealed the PTAB decision to the Federal Circuit.

The Federal Circuit reviewed the PTAB decision de novo. The panel explained that '[i]n an inter partes review, the burden of persuasion is on the petitioner to prove 'unpatentability by a preponderance of the evidence.' Id. at 6 (citing 35 U.S.C. '316(e)). Dynamic did not shift this burden. Dynamic also had the burden of production, which was met, 'by arguing that Raymond anticipated the asserted claims of the '196 patent.' Id. at 7. National Graphics then met its shifted burden of production by arguing that its invention was reduced to practice prior to the filing date of the Raymond patent. The burden of production shifted again, back to Dynamic, who argued a presumption that the priority date of the Raymond patent provisional application, prior to that of the '196 patent reduction to practice.

'A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with '112, ' 1.' Id. at 11 (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)). The panel found that because Dynamic did not show support for the claims of the Raymond patent in its provisional application, the Raymond patent as a reference patent was not entitled to priority to the filing date of the provisional application. Therefore, the panel held that Dynamic did not prove by substantial evidence that the Raymond patent anticipated the '196 patent, and did not carry its burden of showing unpatentability of the '196 patent.

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Federal Circuit: Scope Of Reexamination Claims Is Reviewed De Novo

On Sept. 17, 2015, a Federal Circuit panel of Judges Newman, O'Malley, and Wallach issued a unanimous opinion, authored by Judge O'Malley, in R+L Carriers, Inc. v. Qualcomm, Inc., Case No. 2014-1718. The panel reviewed the scope of a reexamined patent claim at issue and affirmed the district court's dismissal of infringement claims.

Patentee R+L Carriers, Inc. (R+L) filed suit against Qualcomm, Inc. et al. in 2009 for infringement of U.S. Patent No. 6,401,078. The case was consolidated in a multidistrict litigation in the Southern District of Ohio. The '078 patent contains a single claim directed to manual and computerized methods of optimizing the loading of shipment freight. While the district court action was pending, R+L filed for a reexamination of the '078 patent. The reexamination resulted in an amended claim limited to only 'computer-prepared loading manifests.' Slip op. at 5. The district court ruled that the reexamination 'amendment to original claim 1 substantively narrowed the claim, thereby precluding recovery of damages for infringement prior to the date the PTO issued the reexamination certificate.' Id. Qualcomm then 'sold its allegedly infringing business unit before the PTO issued the reexamination certificate for the '078 patent,' and R+L stipulated to dismissal of its claims. Id. at 5-6. R+L appealed.

By statute, '[a] patentee of a patent that survives reexamination is only entitled to infringement damages for the time period between the date of issuance of the original claims and the date of issuance of the reexamined claims if the original and the reexamined claims are 'substantially identical.” Id. at 6 (citing 35 U.S.C. ' 252). Federal Circuit precedent has held that the substantive change in reexamined claims is judged by 'whether the scope of the claims are identical.' Id. In light of the U.S. Supreme Court decision in Teva v. Sandoz, the Federal Circuit reviews district court 'subsidiary' factual findings in claim construction for clear error, 'but the ultimate conclusion regarding the scope of the claims de novo.' Id. at 7.

The Federal Circuit panel stated that 'in determining whether an amended claim is narrower, we determine whether there is any product or process that would infringe the original claim, but not infringe the amended claim.' Id. at 8-9. In the '078 reexamination, a limitation was added that 'the advance loading manifest be 'for another transporting vehicle.” Id. at 10 (emphasis in original) (citing J.A. 3088). Therefore, since the original claim would have encompassed 'the current shipping vehicle,' the panel determined that the amended claim was not 'substantially identical' to the original claim, and affirmed dismissal of the infringement claims against Qualcomm. Id. at 10-11 (emphasis in original).

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Howard J. Shire'is Editor-in-Chief of this newsletter and a Partner in the New York office of Kenyon & Kenyon LLP.'Brent T. Hagen'is a Law Clerk with the firm.