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  • Tris Pharma, Inc. v. Actavis Laboratories FL, Inc. (Fed. Cir. 2018)

    By Kevin E. Noonan —

    Federal Circuit SealA certain amount of comment has recently been evinced from the patent bar by the voicing from several members of the Federal Circuit, including the Chief Judge, of their dismay over the number of patent cases coming to the Court.  In particular, this increase in the patent case census in Court is due in not some small degree to the number of cases arising from decisions by the Patent Trial and Appeal Board (PTAB) that the Court is tasked with reviewing regarding the validity vel non of patents from the various post-grant review proceedings (the largest number of which arise from inter partes reviews, IPRs).  Perhaps in reaction to its dismay, the Court in several cases has remanded PTAB decisions based on failure of the Board to properly support their decisions to be amenable to appellate review; see, for example, Securus Tech v. Global Tel*Link (Fed. Cir. 2017) (IPR2014-01278) (Pat. No. 7,860,222); Ultratec v. CaptionCall and Matal (Fed. Cir. 2017).  This basis for eschewing review has been much more rare in district court appeals but arose last week in the Court's decision in Tris Pharma Inc. v. Actavis Laboratories FL, Inc.

    The case arose in ANDA litigation regarding Quillivant XR®, an extended release methylphenidate (MPH) formulation for the treatment of Attention Deficit Hyperactive Disorder (ADHD).  The District Court found the asserted claims of U.S. Patent Nos. 8,465,765 ('765 patent), 8,563,033 ('033 patent), 8,778,390 ('390 patent), 8,956,649 ('649 patent), and 9,040,083 ('083 patent) were invalid as being obvious under 35 U.S.C. § 103.  As explained in the opinion, MPH is a widely used psychostimulant that has been used for treating ADHD since the 1950's.  Both immediate-release (IR) and extended-release (ER) formulations of the drug were also known in the art, and sustained-release (SR) formulations were developed more recently to overcome drawbacks of both IR and ER formulations.  Unfortunately, prior art SR formulations were disadvantageous for having slow onset action properties.  The claimed invention was a combination formulation comprising an IR component and an SR component that showed "a 45-minute therapeutic onset and 12 hours of therapeutic effect."

    Asserted claim 6 (dependent on claim 1) was at issue in the litigation and is representative:

    1.  A methylphenidate aqueous extended release oral suspension comprising (1) an immediate release methylphenidate component, (2) a sustained release methylphenidate component comprising a water-insoluble, water-permeable, pH-independent, barrier coated methylphenidate-ion exchange resin complex, and (3) water, wherein said suspension has a pH of about 3.5 to about 5 and said suspension provides a single mean average plasma concentration peak for methylphenidate and a therapeutically effective plasma profile for methylphenidate for about 12 hours.

    6.  The suspension according to claim 1, wherein the suspension has a pharmacokinetic profile in which the single mean plasma concentration peak for d-methylphenidate has an area under the curve (AUC)0-∞ of about 114 ng-hr/mL to about 180 ng-hr/mL, Cmax of about 11 ng/mL to about 17 ng/mL, Tmax of about 4 hours to about 5.25 hours and T1/2 of about 5 hours to about 7 hours following a single oral administration of an aqueous suspension at a dose equivalent to 60 mg racemic methylphenidate HCl in adults.

    The prior art considered by the District Court included several commercially available, extended-release MPH formulations (Concerta®, Daytrana®, Focalin XR®, Metadate CD®, and Ritalin LA®), U.S. Patent Application Publication No. 2010/0260844, and certain scientific publications.  The commercial products all exhibited various pharmacokinetic and pharmacodynamics properties regarding a single or multiple PK peak profile, initial onset time and total duration.  The '844 patent publication disclosed "a formulation of MPH that provides a rapid onset of action within 1 to 1.5 hours, a single Tmax of 5.5 to 7.5 hours, and a therapeutic duration of about 12 to 14 hours."  Actavis relied on the '844 application in combination with Concerta®, Daytrana®, and Metadate CD® as teaching "a single mean peak PK profile, exhibiting an early onset of action, and exhibiting an extended duration of effect" that would have suggested to the skilled worker the early onset and extended duration formulation in the asserted claims.  Tris Pharma argued to the contrary that the prior at taught combinations of IR and ER MPH formulations that resulted in a bimodal PK profile.  This feature of combined IR and ER MPH formulations was designed to "mimic the peaks and valleys of multiple immediate release dosing regimens" which was not a feature of the claimed invention.  In addition, the commercially available formulations showed a later Tmax that was important to achieve the longer duration.

    The District Court disagreed (too cryptically, according to the Court's opinion) stating that "'[w]hile [it] believe[d] Tris'[s] evidence regarding the second generation products [wa]s persuasive, it [wa]s not dispositive on the obviousness inquiry.'"  The District Court also found that the '844 application taught "an oral form of MPH with a long duration of action, rapid onset, and a single mean peak PK profile" and thus the skilled worker would have been motivated to produce the claimed formulations despite these formulations in the application had not in fact been made.  The opinion also notes that the District Court relied on Actavis's expert's testimony regarding how a skilled worker would have interpreted the cited art and the meaning of specific terms and relationships between the features recited in the claims.  Finally, the District Court rejected Tris Pharma's assertion of unexpected results, long-felt need, commercial success, and copying.  The Court's opinion did not find that Tris Pharma had performed the requisite comparison experiments to show the results were unexpected, and that the existence of some of the commercially available formulations (specifically, Concerta®, Metadate CD®, and Ritalin LA®) rebutted long-felt need based on Tris Pharma's own expert testimony.  The District Court also found only modest commercial success and that evidence of copying was "not compelling."  This appeal followed.

    The Federal Circuit vacated the District Court's decision and remanded, in an opinion by Judge Chen, joined by Judges Newman and O'Malley.  The opinion is based on Fed. R. Civ. P. 52(a)(1), which stated that "[i]n an action tried on the facts without a jury or with an advisory jury, the court must find the facts specially and state its conclusions of law separately."  Citing Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997), the opinion notes that "[w]hen the opinion explaining the decision lacks adequate fact-findings, meaningful review is not possible, frustrating the very purpose of appellate review as well as this court's compliance with its statutory mandate."  And fact finding is adequate only when "they are sufficiently comprehensive and pertinent to the issue to form a basis for the decision," citing Medtronic, Inc. v. Daig Corp., 789 F.2d 903, 906 (Fed. Cir. 1986) (quoting Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 873 (Fed. Cir. 1985)).  These considerations are important in this case because the paucity of the District Court's fact-finding made it impossible for the panel to properly assess the correctness of its legal conclusion of obviousness.  Specifically, the panel found it incapable of evaluating Tris Pharma's three arguments on appeal.  First, "that a skilled artisan would not have reasonably expected to successfully combine the claimed single mean peak PK profile with the claimed 45-minute onset of action and 12-hour duration of effect (PD characteristics) because the PK-PD relationship was unknown."  Second, "that the district court failed to address why the combination of an early Tmax and a 12-hour duration of effect would have been obvious."  Third, that "the district court mistakenly disregarded Tris's evidence of unexpected results based on a belief that Tris's experts did not compare the claimed invention to the closest prior art."  The panel opinion summarizes these deficiencies as follows:

    [T]he district court failed to make the necessary factual findings and provide sufficient analysis of the parties' arguments to permit effective appellate review.  Specifically, the district court's opinion merely recites the parties' arguments but fails to explain or identify which arguments it credits or rejects.  We thus cannot reach the merits of whether the Quillivant XR® formulation would have been obvious over the prior art.  Rather, we identify gaps in the district court's opinion and remand for the district court to conduct further fact-findings and detailed analysis consistent with this opinion.

    For example, regarding the obviousness of producing an MPH formulation having the characteristics of a single mean peak profile, 45-minute onset, and 12-hour duration, the Federal Circuit found that the District Court's opinion was devoid of adequate fact finding to support the conclusion that formulations having these properties would have been obvious.  For example, although the District Court found that the prior art would provide the skilled worker with an expectation that "a single mean peak PK profile could provide for rapid onset of action and extended duration of effect" it "never articulated which prior art references do so and how."  Even when asserting the factual bases for its opinion, the panel stated that "it is unclear if these statements amount to actual fact-findings as opposed to a mere recounting of Actavis's arguments."  The panel also found "holes" in the District Court's opinion, for example, "the district court never made explicit findings that Daytrana®, Concerta®, Metadate CD®, and/or the '844 application] also teach a 45-minute onset of action or 12-hour duration of effect."  The panel opinion also characterized certain portions of the District Court's opinion as being "vague" and "imprecise[]" regarding "central, disputes issues on appeal."

    The Court's opinion also criticized the District Court for not addressing "why a skilled artisan would have been motivated to use a single mean peak PK profile to achieve a formulation with a 45-minute onset of action and/or a 12- hour duration of effect with a reasonable expectation of success," particularly with regard to arguments both parties made on appeal.  And:

    Without the requisite factual findings and adequate explanation for such findings, we cannot affirm the district court's conclusion that a formulation with (1) a single mean peak PK profile, (2) 45-minute onset of action, and (3) 12-hour duration of effect would have been obvious over the prior art.  We thus vacate those portions of the district court's opinion and remand those issues to the district court for specific factual findings [citations omitted].

    The Federal Circuit found similar deficiencies in the District Court's opinion regarding issues related to the relationship between "early Tmax and [the] 12-hour duration of effect."  The District Court's opinion on these elements was "very cursory," according to the Federal Circuit, and "[t]he entirety of the district court's discussion of Tmax appears amounts to a mere recitation of Actavis's experts' testimony regarding how (1) Tmax does not control the onset or duration of effect and (2) Tmax ranges in the prior art formulations overlap with the claimed Tmax range of 3.6 to 5.78 hours (factoring in the district court's construction of "about")."

    Turning to the District Court's treatment of the objective indicia of non-obviousness, the Federal Circuit agreed with Tris Pharma that the District Court did not compare the properties of Tris Pharma's claimed invention with the prior art with regard to whether the invention showed unexpected results.  Regarding long-felt but unmet need the Federal Circuit criticized the District Court for finding prior art products each having properties of "(1) a liquid MPH product that does not require swallowing a tablet; (2) a 45-minute onset of action; and (3) 12-hour duration of effect" but did not find a product having all three of these properties.

    Based on all these deficiencies the Federal Circuit remanded to the District Court for "further fact-finding."  Whether an increased frequency of these types of decisions based on Rule 52(a) in appeals from District Court opinions by a beleaguered Federal Circuit remains to be seen.

    Tris Pharma, Inc. v. Actavis Laboratories FL, Inc. (Fed. Cir. 2018)
    Nonprecedential disposition
    Panel: Circuit Judges Newman, O'Malley, and Chen
    Opinion by Circuit Judge Chen

  • How to Draft Patent Claims for Machine Learning Inventions

    By Michael Borella —

    Introduction

    It seems like everyone is talking about artificial intelligence, especially the subset thereof referred to as machine learning.  While some of the discussion is cast in terms of politically-stirred angst about human jobs being replaced by robots or algorithms, a more informed and rational dialog would also set forth machine learning as a platform for the next great breakthroughs in science, technology, medicine, and lifestyle.  Regardless of rhetorical positioning, machine learning represents a fundamental shift in how problems are solved across industries and lines of business.  In the near future, a machine learning library may become a standard part of all computers, just like networking and database technologies have in the past.

    For the majority of the existence of computers, programmers wrote functions that were designed to take some input and produce a desired output.  Machine learning inverts this paradigm.  A data set (which in practice usually needs to be quite extensive) of mappings between inputs and their respective desired outputs is obtained.  This data set is fed into a machine learning algorithm (e.g., a neural network, decision tree, support vector machine, etc.) which trains a model to "learn" a function that produces the mappings with a reasonably high accuracy.  In other words, if you give the computer a large enough set of inputs and outputs, it finds the function for you.  And this function may even be able to produce the correct output for input that it has not seen during training.  The programmer (who has now earned the snazzy title of "data scientist") prepares the mappings, selects and tunes the machine learning algorithm, and evaluates the resulting model's performance.  Once the model is sufficiently accurate on test data, it can be deployed for production use.

    Such models are already in use today — they suggest what products you might want to purchase, and movies and music that you might find interesting.  They also silently improve the quality of photos taken from your digital camera, help security screeners at airports and sports stadiums, detect financial fraud, and improve your online search results.  And the real-world applicability of machine learning has yet to peak.

    Naturally, innovators in machine learning, like innovators in any other industry sector, seek to protect their work with patents.  Indeed, the number of patent application filings related to artificial intelligence and machine learning has been growing dramatically in the past several years, especially in the U.S.  Nonetheless, inventors, applicants, and even patent attorneys have often struggled to adopt a claiming strategy for inventions incorporating machine learning.

    Not surprisingly, the strategy to be taken when drafting such claims depends on the character of the invention and how machine learning is incorporated therein.  Thus, there is no one particular "silver bullet" approach.  Use of just a small number of guidelines, however, can help you focus your claim drafting approach in a direction that may bear the most fruit for your clients.

    In short, these guidelines involve looking to several areas where innovation is most likely to occur in machine learning inventions:  (i) the structure of the model, (ii) the training process, (iii) input data preparation, (iv) input data mapping to the model, and (v) post-processing and interpretation of output data from the model.  Along with these five "positive" rules are two "negative" rules of what not to do:  (i) do not mix the training phase and the execution phase in the same claim, and (ii) be careful with inventions that are no more than just conventionally applying an existing model to existing data.

    Each will be addressed in turn.  But throughout this discussion, it is important to remember that details matter.  Like claims to most inventions, claims to a machine learning process must specify enough detail for the reviewer (e.g., patent examiner or judge) to be able to determine that the invention as claimed is substantial enough for patenting.  High-level or vague claims are unlikely to meet the requirements of novelty and non-obviousness, much less subject-matter eligibility.

    Claim the structure of the model

    When the invention involves a new or unusual model structure, this aspect may be a candidate for claiming.  For example, is a neural network with a particular pattern of layers or number of neurons per layer key to providing a desirable result?  Or are multiple neural networks used in parallel or tandem?  Taking this point one step further, the best known solutions for some problems involve ensembles of two or more models.  If your problem is well-addressed by an ensemble, and the structure of the ensemble is new, that might be the starting point of a claim.

    Claim the training process

    Especially when an unconventional model is used, the training of this model may be unconventional as well.  This provides another avenue for claiming.  For instance, are parts of the model trained with specific subsets of the input data?  Or is the model trained in phases?  Does the training employ a clever form of parallel processing in order to reduce training time?  Regardless, if the execution of the trained model (i.e., its application to input data) is carried out in an orthodox manner, the training might be more easily protected and should be carefully considered.  On the other hand, detecting an infringing training phase might be difficult once the training is complete and the model is commercially deployed.

    Claim the input data preparation

    Data scientists spend a surprising amount of time preparing their data for introduction to a model.  Real-world data is messy and often needs to be normalized, transformed, have outliers removed, or otherwise processed so that its characteristics can help the model produce quality results.  Often, this is a trial-and-error procedure, with the data scientist attempting several approaches before finding one that is satisfactory.  For instance, some natural language processing models might be utilize word counts, but common words such as "and", "the", "it", and so on may be removed from these counts in order to force the model to focus of the words with a contextual meaning closer to that of the problem being addressed.

    Claim the input mapping to the model

    Once you have chosen your model and prepared your data, you have to map the input data to the model's input.  This is frequently an inherent process, as the model and input data preparation are selected to work together.  Nonetheless, this mapping can be of interest.  For example, a neural network that classifies sections of black and white images might have 64 inputs, one for each pixel in an 8×8 patch of an image.  The individual inputs may be numbers representing the intensity (brightness) of the respective pixels.  To the extent that such a mapping is innovative, it is fodder for a claim.

    Claim the post-processing and interpretation of the output data

    Just because a model provides a result, even a desirable result, that does not mean that the overall machine learning pipeline is over.  In some cases, the raw output of a model has to be transformed, normalized, or run through another algorithm to provide useful output data.  In other cases, and as hinted at above, the output of one model may be used (with or without intermediate processing) as input to another model.  For certain classes of models, part of the model itself is the output — perhaps a particular layer of a neural network that encodes a semantic meaning of the input.

    Do not mix the training phase and the execution phase in the same claim

    A machine learning model is first trained and then deployed for production use.  Thus, it is likely that the entity performing the training and the entity executing the model are different.  Accordingly, combining steps or elements directed to both training and execution in a claim can result in divided infringement of the claim by these entities.  Instead, draft separate independent claims for the training and execution phases.  In cases where the execution phase does not seem to have enough substance to stand alone, the details of the training phase can be provided in passive clauses (e.g., "wherein the model was trained by comparing random pixel inputs to ground-truth image classifications . . .").

    Don't claim conventionally applying an existing model to existing data

    As with any type of technology, some solutions are less patentable than others.  If the invention at hand applies an off-the-shelf model to a known data set in a non-specific manner, and none of the above "positive" rules are pertinent, then the machine learning aspects might not be where to focus your claiming efforts.  While machine learning is new, the general concept of applying any generic model to a data set is likely to be considered obvious, at least.  Instead, look to other aspects of the invention for protectable innovation.

    Conclusion

    While machine learning will almost certainly remain an active area of patenting in the coming years, the path to obtaining meaningful protection for machine learning inventions is scattered with pitfalls.  While the above guidelines are not exhaustive, following them will avoid most of the elementary traps.

    And finally, a note to patent agents and attorneys attempting to break into machine learning — do your homework.  Do not treat machine learning as a black box technique that can be added to claims as an afterthought.  Instead, educate yourself in how and why machine learning works.  Read papers and books, watch videos, take a course, do some programming — use whatever means are available.  Doing so will dramatically enhance your ability to draft meaningful claims (and other parts of patent applications) that employ these technologies.

  • Conference & CLE Calendar

    CalendarNovember 27, 2018 – "Patent Claim and Specification Drafting and Prosecution — Avoiding Traps That Lead to Royalty Free Licensing of Patented Technology" (Strafford) – 1:00 to 2:30 pm (EST)

    November 28, 2018 – "Ch-Ch-Changes: Updates to the PTAB's Patent Trial Practice Guide for AIA Proceedings" (Federal Circuit Bar Association PTAB/TTAB Committee) – 3:00 pm to 4:00 pm (EST)

    November 29, 2018 – "Privity at the PTAB since RPX" (Intellectual Property Owners Association) – 2:00 to 3:00 pm (ET)

    December 3, 2018 – "Phillips Construction in PTAB Trials: Strategies for Petitioners and Patent Owners" (Federal Circuit Bar Association PTAB/TTAB Committee) – 3:00 pm to 4:00 pm (EST)

    December 4, 2018 – "Conflicts in Patent Prosecution: Avoiding the Ethical Pitfalls — Minimizing Risks of Malpractice Liability and Ethics Sanctions" (Strafford) – 1:00 to 2:30 pm (EST)

    December 4, 2018 – Post-argument discussion on Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc. (American University Washington College of Law Program on Information Justice & Intellectual Property) – 4:00 pm (Eastern), Washington, DC

    December 6, 2018 – "Apportioning Patent Damages: Analysis, Calculations for Multi-Component Products, Impact of Claim Scope — Implications of Apportionment for Patent Drafting, Licensing and Enforcement" (Strafford) – 1:00 to 2:30 pm (EST).

    December 11, 2018 – "Patent Eligibility Post-Alice: Navigating the Nuances, Guidance From the Federal Circuit, the PTAB, and the USPTO" (Strafford) – 1:00 to 2:30 pm (EST)

  • IPO Webinar on Privity at the PTAB

    IPO #2The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled "Privity at the PTAB since RPX" on November 29, 2018 from 2:00 to 3:00 pm (ET).  Gasper LaRosa of Jones Day, Brian Murphy of Haug Partners LLP, and Dorothy Whelan, Fish & Richardson, PC will analyze the case law, and the resulting changes in PTAB practice, since the Federal Circuit's decision in Applications in Internet Time (AIT) v. RPX, which found that the PTAB took an "impermissibly shallow" look at evidence presented by the patent owner about the relationship between the petitioner and another party.  The panel will analyze and discuss:

    • The eventual boundaries of the "clear beneficiary" test for determining real-parties-in-interest, including whether joint defense groups will be impacted;
    • The PTAB's new approach to granting discovery before institution, and how this offers patent owners a not-to-be-missed opportunity; and
    • The PTAB's recent flexibility in sometimes allowing a petitioner to choose between naming additional RPIs to win institution or risking non-institution by contesting the need to do so.

    The registration fee for the webinar is $135 (government and academic rates are available upon request).  Those interested in registering for the webinar can do so here.

  • Webinar on Conflicts in Patent Prosecution

    Strafford #1Strafford will be offering a webinar entitled "Conflicts in Patent Prosecution: Avoiding the Ethical Pitfalls — Minimizing Risks of Malpractice Liability and Ethics Sanctions" on December 4, 2018 from 1:00 to 2:30 pm (EST).  David C. Hricik of Taylor English Duma, Amy E. Richardson of Harris Wiltshire & Grannis, and Sandra P. Thompson of Finlayson Toffer Roosevelt & Lilly will guide IP counsel on the conflicts issues that often arise in patent prosecutions, and will outline best practices to identify and address the risks—and to minimize conflicts that can lead to malpractice liability and ethical violations.  The webinar will review the following issues:

    • What policies and practices should counsel have in place to identify potential conflicts in patent prosecutions?
    • What steps can patent prosecutors take to minimize the risk of subject matter conflicts?
    • How should patent counsel respond after identifying conflicts?

    The registration fee for the webcast is $297.  Those interested in registering for the webinar, can do so here.

  • Washington College of Law Post-Argument Discussion of Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc.

    Washington College of LawAs part of its ongoing Supreme Court series, the American University Washington College of Law Program on Information Justice & Intellectual Property will be hosting a post-argument discussion on the Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc. case beginning at 4:00 pm (Eastern) on December 4, 2018 at the American University Washington College of Law in Washington, DC.

    Additional information about the post-argument discussion, including registration/CLE information, can be found here.

  • Webinar on Apportioning Patent Damages

    Strafford #1Strafford will be offering a webinar entitled "Apportioning Patent Damages: Analysis, Calculations for Multi-Component Products, Impact of Claim Scope — Implications of Apportionment for Patent Drafting, Licensing and Enforcement" on December 6, 2018 from 1:00 to 2:30 pm (EST).  Timothy P. McAnulty and Jeffrey C. Totten of Finnegan Henderson Farabow Garrett & Dunner will guide patent counsel on apportionment of patent damages, review how the courts have treated the issue of damages apportionment, discuss the damages analysis as well as calculating damages for multi-component products, and also consider how apportionment is affected by claim scope and the impact on patent drafting, licensing and enforcement.  The webinar will review the following issues:

    • How does the claim scope impact apportionment?
    • How can counsel draft patent claims to maximize the value of the invention?
    • What litigation strategies can companies and their counsel employ to improve their damages analysis?

    The registration fee for the webcast is $297.  Those interested in registering for the webinar, can do so here.

  • Webinar on Patent Eligibility Post-Alice

    Strafford #1Strafford will be offering a webinar entitled "Patent Eligibility Post-Alice: Navigating the Nuances, Guidance From the Federal Circuit, the PTAB, and the USPTO" on December 11, 2018 from 1:00 to 2:30 pm (EST).  Michael L. Kiklis of Bass Berry & Sims and Stephen G. Kunin of Maier & Maier will examine recent decisions applying the Supreme Court's decision in Alice Corp. v. CLS Bank on patent eligibility, and discuss the guidance from these opinions and offer best practices for addressing patent eligibility issues.  The webinar will review the following issues:

    • How are the courts applying the framework for patent eligibility created in Alice Corp.?
    • How can patent litigation defendants take advantage of the guidance for §101 challenges?
    • What are best practices for patent counsel to demonstrate patent eligibility?
    • How can patent counsel address subject eligibility rejections made by patent examiners?

    The registration fee for the webcast is $297.  Those interested in registering for the webinar, can do so here.

  • Happy Thanksgiving from Patent Docs

    ThanksgivingThe authors and contributors of Patent Docs wish their readers and families a Happy Thanksgiving.  Publication of Patent Docs will resume on November 23rd.

  • Acceleration Bay, LLC v. Activision Blizzard Inc. (Fed. Cir. 2018)

    What is a Printed Publication for Prior Art Purposes?

    By Joseph Herndon —

    Federal Circuit SealPatent owner Acceleration Bay, LLC ("Acceleration") appealed the final written decisions of the Patent Trial and Appeal Board holding unpatentable claims of U.S. Patent Nos. 6,829,634; 6,701,344; and 6,714,966.  Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive Software, Inc., 2k Sports, Inc., and Rockstar Games, Inc. (collectively, "Blizzard") cross-appealed portions of the Board's decisions holding that the Lin article is not a printed publication under 35 U.S.C. § 102(a), among other issues.

    Here, we look at the determination of features in a "preamble" as being limitations of the claim, as well as, requirements of an article being considered a printed publication for prior art purposes.

    The patents at issue are directed to a broadcast technique in which a broadcast channel overlays a point-to-point communications network.  The communications network consists of a graph of point-to-point connections between host computers or "nodes," through which the broadcast channel is implemented.

    Blizzard filed six inter partes review ("IPR") petitions—two for each of the '344, '966, and '634 patents—based principally on two different prior art references:  one set of IPRs challenged claims based on the Shoubridge article alone or combined with a prior art book Direct-Play ("Shoubridge IPRs"), and another set of IPRs challenged claims based on the Lin article alone or combined with DirectPlay ("Lin IPRs").

    The Board instituted an IPR on each petition, on many of the grounds and claims raised, and rendered six final decisions.  In the Shoubridge IPRs, the Board determined many claims to be unpatentable, and in the Lin IPRs, the Board concluded that Lin is not a printed publication under 35 U.S.C. § 102(a) and thus determined Blizzard failed to show the challenged claims are unpatentable over Lin.

    Shoubridge IPRs

    Acceleration appealed portions of the Board's decisions in the Shoubridge IPRs.  Claim 1 of the '966 patent is representative of the claim construction disputes in Acceleration's appeal (emphases added):

    1.  A computer network for providing an information delivery service for a plurality of participants, each participant having connections to at least three neighbor participants, wherein an originating participant sends data to the other participants by sending the data through each of its connections to its neighbor participants and wherein each participant sends data that it receives from a neighbor participant to its other neighbor participants, further wherein the network is m-regular, where m is the exact number of neighbor participants of each participant and further wherein the number of participants is at least two greater than m thus resulting in a non-complete graph.

    Claim 1 of the '344 patent is very similar and begins "1. A computer network for providing a game environment for a plurality of participants, …".

    Acceleration argued that the terms "game environment" and "information delivery service," appearing in the '344 and '966 patents, respectively, should have been given patentable weight despite appearing in the preambles because they provide structure for the remainder of the claims.  Acceleration alternatively argues that these terms appear in the body of the claims because there is no transition phrase denoting a preamble.

    Regarding the latter argument, the Federal Circuit responded that Acceleration's poor claim drafting will not be an excuse for it to infuse confusion into its claim scope, and simply concluded that "game environment" and "information delivery service" are part of the preamble of the claims.

    The Federal Circuit noted that there is no beneficial purpose to be served by failing to include a transition word in a claim to clearly delineate the claim's preamble from the body, and it "caution[ed] patentees against doing so."

    Then, because the terms at issue appear in preambles, it must be determined whether the terms are limitations.  General case law indicates that a preamble limits the invention if it recites essential structure or steps, or is necessary to give life, meaning, and vitality to the claim.

    The Federal Circuit agreed with the Board that the claim terms "game environment" and "information delivery service" are non-limiting because they merely describe intended uses for what is otherwise a structurally complete invention.  They do not impart any structure into or serve as antecedents for the claims at issue.  Instead, they simply provide an intended use for what is otherwise a claim for a network.

    Lin IPRs

    Blizzard cross-appealed many portions of the Board's decisions in the Lin IPRs, and here we only discuss the issue of whether Lin is a printed publication under § 102(a).

    Whether a reference qualifies as a printed publication under § 102 is a legal conclusion based on underlying fact findings.  One such fact question is public accessibility.  Because there are many ways in which a reference may be disseminated to the interested public, public accessibility has been called the touchstone in determining whether a reference constitutes a printed publication.

    Case law has indicated that a reference is considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.

    The Board found that Lin was not publicly accessible before the critical date.

    Based on the testimony of Glenn Little, a Systems Administrator at the Computer Science and Engineering ("CSE") department of the University of California, San Diego ("UCSD"), the Board found that Lin had been uploaded to the CSE Technical Reports Library's website as of November 23, 1999, which is not challenged on appeal.  As the Board explained, according to Mr. Little, "the CSE department regularly maintains electronic technical reports and records concerning those reports, and a staff member assigns a unique identifier to each report based on the year it was uploaded and the relative order it was uploaded in comparison to other papers."

    The Board then noted that public accessibility requires more than technical accessibility.  Because there was no evidence that Lin was disseminated to the public, the Board focused on whether an interested skilled artisan, using reasonable diligence, would have found Lin on the CSE Technical Reports Library website.  The Board found that despite some indexing and search functionality on the website, Lin was not publicly accessible.  It found the website allowed a user to view a list of technical reports indexed only by author or year and that there was no evidence as to how many reports were in the Library's database in 1999.  The Board determined that at best, Blizzard's evidence suggests that an artisan might have located Lin by skimming through potentially hundreds of titles in the same year, with most containing unrelated subject matter, or by viewing all titles in the database listed by author, when the authors were not particularly well known.  The Board also found the website's advanced search form to be deficient.  It found that while the advanced search form appeared to allow a user to search keywords for author, title, and abstract fields, evidence demonstrated that functionality was not reliable.  In sum, the Board determined that Blizzard had not shown sufficiently that the UCSD CSE Technical Reports Library was searchable or indexed in a meaningful way so that a person of ordinary skill in the art would have located Lin.  The Board, therefore, concluded Lin is not a printed publication under § 102(a).

    The Federal Circuit found no error in the Board's reasoning.  Namely, the Federal Circuit found that substantial evidence supports the Board's findings that Lin was not publicly accessible, including that Lin was not indexed in a meaningful way and that the website's advanced search form was deficient.  Mr. Little testified he does not know how the search works or how keywords are generated, that he never searched for Lin using the advanced search form, and that it was not the CSE department's practice to verify the advanced search capability for title and abstract when a new article was uploaded.  Mr. Little also admitted it was possible the search function did not work.

    Acceleration also presented evidence that a recent advanced search for keywords in the title and abstract of Lin failed to produce any results.

    Blizzard argued these results are unauthenticated hearsay and are based on searches conducted years after the critical date, but Mr. Little testified that as to the website, "[i]t's pretty much the same, actually, between [1999] and now.  We're running the same software."  The Federal Circuit found no reason to discount the Board's weighing of the evidence.  Substantial evidence was thus found to support the Board's finding that there was insufficient evidence of record to support a finding that a person of ordinary skill in the art in 1999 could have located Lin using the CSE Library website's search function.

    The Federal Circuit thus distinguished a similar case:  In re Lister, 583 F.3d 1307 (Fed. Cir. 2009).  In Lister, a reasonably diligent researcher with access to a database that permits the searching of titles by keyword would be able to attempt several searches using a variety of keyword combinations, and thus, the manuscript at issue was publicly accessible as of the date it was included in databases that permitted keyword searching of titles.

    The Federal Circuit noted that unlike in Lister, here the record supports the Board's finding that the CSE Library website's advanced search function did not successfully permit keyword searching of titles, a key feature in Lister.  The Board's fact finding that, with available reports indexed only by author or year, Lin was not meaningfully indexed, was found to be supported by substantial evidence.

    Blizzard argued that because Lin was indexed by title for a given year, author name, and unique sequence number, that was sufficient for public accessibility.  But, the Federal Circuit stated that the test for public accessibility is not "has the reference been indexed?"  Where indexing is concerned, whether online or in tangible media, the ultimate question has been whether the reference was available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.

    Here, the Board found that although Lin was indexed by author and year, it was not meaningfully indexed such that an interested artisan exercising reasonable diligence would have found it, which is a proper consideration under the Federal Circuit precedent.  As such, the Federal Circuit found that Lin was not a printed publication under § 102.

    Acceleration Bay, LLC v. Activision Blizzard Inc. (Fed. Cir. 2018)
    Panel: Chief Judge Prost and Circuit Judges Moore and Reyna
    Opinion by Circuit Judge Moore