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  • Xilinx, Inc. v. Papst Licensing GmbH & Co. KG (Fed. Cir. 2017)

    Personal Jurisdiction Exists Due to Warning Letters and Prior Litigations in Forum

    By Joseph Herndon —

    Federal Circuit SealEstablishing personal jurisdiction in the United States over a company operating in a foreign country can be difficult.  How does a U.S. company protect itself in its home state when threatened with patent infringement by patents owned by a foreign company?  The Federal Circuit answered this question, and indicated that the U.S. courts will have personal jurisdiction over the foreign company in any declaratory judgement action found if sufficient minimum contacts are established and absent any rare undue burden on the defendant.

    In the instant case, Xilinx is a Delaware corporation that is headquartered in San Jose, California.  Xilinx designs, develops, and markets programmable logic devices for use in electronics systems.  U.S. Patent Nos. 6,574,759 and 6,704,891, which are owned by Papst, are directed to methods for generating and verifying memory tests in electronics.  Papst attempted to license these patents to Xilinx, but when negotiations failed, Xilinx filed a declaratory judgment action and Papst countered with a patent infringement action, but each were filed in different jurisdictions, and the District Court dismissed the declaratory judgment action for lack of personal jurisdiction.  On appeal, the Federal Circuit found that the District Court in which Xilinx filed has specific personal jurisdiction over Papst with respect to Xilinx's declaratory judgment action, and thus, the case was reversed and remanded.

    Turning to the facts of the case, Papst is organized under the laws of Germany and has its principal place of business there.  Papst is a non-practicing entity that is solely in the business of monetizing and licensing intellectual property rights.  According to Papst, it has always been in the business of obtaining and licensing patents, it does not manufacture or sell any consumer products, and it has always had fewer than 30 employees.  In fact, Papst's business model is to acquire and then assert patent rights.  Before agreeing to purchase a patent, Papst performs due diligence to identify patent infringement by comparing the patent claims against the potentially infringing products, and the due diligence involves identifying the companies potentially involved in infringements, and the markets they are selling their product in — where they are located, and how large they are, including where the product is made as well as where it is sold.

    When Papst identifies infringers, it notifies them that Papst believes they are infringing.  After technical discussions confirming the infringement, the conversation moves towards licensing the patents through an agreement.  If negotiations fail, Papst is prepared to effectively enforce the respective patents in courts.  Especially in the United States, Germany, and the Netherlands Papst has years and years of experience in patent litigation.  Papst has repeatedly filed patent infringement suits in California federal courts.  The record shows that Papst has filed patent infringement lawsuits in California at least seven times between 1994 and 2007 based on other patents in Papst's portfolio.

    For the patents-in-suit, in January 2014, Papst sent a patent infringement notice letter to Xilinx.  In the letter, Papst identified several of Xilinx's products that allegedly infringed the patents-in-suit, and stated that Papst proposes commencing discussions with Xilinx so that Xilinx can consider taking a license to the Papst Patents.  Negotiations failed, and Xilinx filed its declaratory judgment action in California, and on the same day, Papst filed an infringement suit against Xilinx in the District of Delaware asserting the same patents-in-suit.  Papst moved to dismiss the California declaratory judgment action for lack of personal jurisdiction, or in the alternative, transfer the action to the District of Delaware.  The California District Court granted Papst's motion and dismissed the declaratory judgment action for lack of personal jurisdiction.

    Personal Jurisdiction

    On appeal, the central issue in this case is whether the exercise of specific personal jurisdiction over Papst in California is fair and reasonable.  Determining whether jurisdiction exists over an out-of-state defendant involves two inquiries:  whether a forum state's long-arm statute permits service of process and whether assertion of personal jurisdiction violates due process.  California's long-arm statute permits service of process to the full extent allowed by the due process clauses of the United States Constitution.  Accordingly, in this case, the two inquiries collapse into a single inquiry:  whether jurisdiction comports with due process.

    In the case of specific, as opposed to general jurisdiction, the Federal Circuit summarized the Supreme Court's due process jurisprudence into a three-factor test:  (1) whether the defendant purposefully directed its activities at residents of the forum; (2) whether the claim arises out of or relates to the defendant's activities with the forum; and (3) whether assertion of personal jurisdiction is reasonable and fair.  The first two factors correspond with the minimum contacts prong of the International Shoe analysis, and the third factor corresponds with the fair play and substantial justice prong of the analysis.

    Papst makes no argument that its activities directed to Xilinx in California do not satisfy the minimum contacts prong of the specific jurisdiction test.  The Federal Circuit went on to make clear that there is no question that Papst has the required minimum contacts with California.  Papst purposefully directed its activities to California when it sent multiple notice letters to Xilinx and traveled there to discuss Xilinx's alleged patent infringement and potential licensing arrangements.  Xilinx's declaratory judgment action of non-infringement certainly relates to these contacts.  In the context of declaratory judgment actions involving assertions of patent non-infringement or invalidity, the Federal Circuit has concluded that cease-and-desist letters sent by the patentee defendant into the forum are relevant contacts in the personal jurisdiction analysis.

    In arguing against personal jurisdiction, Papst focused entirely on the "reasonable and fair" prong and argued that exercising specific jurisdiction over a patentee based solely on cease-and-desist letters, which contain notice of the sender's patent rights, accusations of infringement, and/or licensing offers, does not comport with fair play or substantial justice.

    The inquiry under the reasonableness prong (step two) is not limited to the specific facts giving rise to, or relating to, the particular litigation.  Once it has been decided that a defendant purposefully established minimum contacts within the forum State, these contacts may be considered in light of other factors to determine whether the assertion of personal jurisdiction would comport with fair play and substantial justice.  These other factors — the burden on the defendant, the plaintiff's interest in obtaining convenient and effective relief, etc. — often cannot be analyzed without looking to circumstances beyond those that give rise or relate to the specific lawsuit.

    Five considerations commonly considered relevant to the reasonableness analysis include:  [1] the burden on the defendant, [2] the forum State's interest in adjudicating the dispute, [3] the plaintiff's interest in obtaining convenient and effective relief, [4] the interstate judicial system's interest in obtaining the most efficient resolution of controversies, and [5] the shared interest of the several States in furthering fundamental substantive social policies.

    Papst makes no argument that factors [2]–[5] weigh against a finding of personal jurisdiction, nor could it.  Xilinx, which is headquartered in California, indisputably has an interest in protecting itself from patent infringement by obtaining relief from a nearby federal court in its home forum.  Also, California has a substantial interest in protecting its residents from unwarranted claims of patent infringement.  Jurisdiction over Xilinx's declaratory judgment claims in California would also result in an efficient resolution of the controversy.  Finally, there does not appear to be any conflict between the interests of California and any other state, because the same body of federal patent law would govern the patent invalidity claim irrespective of the forum.

    The only possible factor that Papst argued was the burden on the defendant.  With respect to this factor, Papst argued that its contacts with Xilinx in California are insufficient to justify the burden of litigating in that forum.  Namely, Papst argued that a patentee's sending of warning letters and offers to license, without more, are not sufficient to satisfy the requirements of Due Process in declaratory judgment actions.

    The Federal Circuit disagreed with Papst because Papst had done more than just send letters to Xilinx.  Representatives from Papst traveled to California to meet with Xilinx in person to discuss Papst's infringement contentions and licensing offer with respect to the patents-in-suit.  By the very nature of its business, Papst must litigate its patents in the United States in fora far from its home office in Germany.  In this context, the burden on Papst to litigate in California appears not undue.

    The lack of significant burden on Papst is also evidenced by Papst's prior litigations in California itself.  Papst has repeatedly availed itself of the California federal court system — at least seven times — by filing patent infringement lawsuits there.

    In light of the totality of circumstances present in this case, the Federal Circuit found that this case is not one of the rare situations in which sufficient minimum contacts exist but where the exercise of jurisdiction would be unreasonable.  Thus, the Federal Circuit held that Xilinx has established that personal jurisdiction over Papst is proper in California.  Accordingly, the District Court's dismissal of Xilinx's declaratory judgment complaint was reversed and remanded.

    Xilinx, Inc. v. Papst Licensing GmbH & Co. KG (Fed. Cir. 2017)
    Panel: Chief Judge Prost and Circuit Judges Newman and Dyk
    Opinion by Dyk

  • Conference & CLE Calendar

    CalendarFebruary 21, 2017 – "Structuring Collaborative Agreements in Life Sciences — Drafting Terms to Expand Product Lines, Reduce Costs and Risks, and Leverage and Protect Assets" (Strafford) – 1:00 to 2:30 pm (EST)

    February 22, 2017 – "Patent-Eligibility Update: Abstract Ideas in the Federal Circuit and USPTO" (McDonnell Boehnen Hulbert & Berghoff LLP) – 10:00 am to 11:15 am (CT)

    February 23, 2017 – "Willfulness, Enhanced Damages, and Opinion of Counsel Since Halo" (Intellectual Property Owners Association) – 2:00 to 3:00 pm (ET)

    February 23, 2017 – "Functional Claiming for Software Patents: Leveraging Recent Court Treatment — Surviving 112(f) and Disclosing Functional Basis for Software to Meet Heightened Standard of Review" (Strafford) – 1:00 to 2:30 pm (EST)

    February 24, 2017 – "International Patent Strategies" (Federal Circuit Bar Association) – 11:00 am to 12:00 pm (EST), Washington, DC

    February 28, 2017 – "Trends in Paragraph IV Challenges: What Lies Ahead in 2017 and Beyond" (The Knowledge Group) – 12:00 to 2:00 pm (EST)

    March 2, 2017 – "Responding to Patent Demand Letters: Leveraging State Laws on Bad Faith Assertion of Patents — Determining What to Include or Exclude in Response, Minimizing Risk of Litigation" (Strafford) – 1:00 to 2:30 pm (EST)

    March 8, 2017 – "How to Structure PTAB Proceedings and Appeals before the Federal Circuit" (American Bar Association Center for Professional Development and Section of Intellectual Property Law) – 1:00 to 2:00 pm (ET)

    March 9, 2017 – "How to Use Broadest Reasonable Interpretation to Your Advantage in Patent Prosecution — Establishing Scope of Claims, Avoiding Sect. 112(f), Preserving Enforceability" (Strafford) – 1:00 to 2:30 pm (EST)

    March 9-10, 2017 - Advanced Patent Law Seminar (Chisum Patent Academy) – Cincinnati, OH.

    ***Patent Docs is a media partner of this conference or CLE

  • IPO Webinar on Willfulness, Enhanced Damages, and Opinions of Counsel

    IPO #2The Intellectual Property Owners Association (IPO) will offer a one-hour webinar entitled "Willfulness, Enhanced Damages, and Opinion of Counsel Since Halo" on February 23, 2017 from 2:00 to 3:00 pm (ET).  Natalie Hanlon Leh of Wilmer Cutler Pickering Hale and Dorr LLP, Christopher Marchese of Fish & Richardson PC, and Michael Zeliger of K&L Gates LLP will examine how courts post-Halo have decided the sufficiency of pleading for enhanced damages at the motion-to-dismiss stage, and consider the factors that have most strongly influenced recent district court decision to enhance — or not enhance — damages, including notice by the patent owner (cases such as CH20 and Finjan), copying (Westerbeke, Imperium, and PPC), and opinions of counsel (Dominion, Presidio, and Boston University).

    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 Using Broadest Reasonable Interpretation in Patent Prosecution

    Strafford #1Strafford will be offering a webinar/teleconference entitled "How to Use Broadest Reasonable Interpretation to Your Advantage in Patent Prosecution — Establishing Scope of Claims, Avoiding Sect. 112(f), Preserving Enforceability" on March 9, 2017 from 1:00 to 2:30 pm (EST).  Charles Bieneman and Christopher Francis of Bejin Bieneman will provide guidance for patent prosecution in light of the Broadest Reasonable Interpretation (BRI) standard, and examine recent Federal Circuit decisions and decisions from the USPTO's Patent Trial and Appeal Board that provide practical lessons for using BRI to your advantage in prosecution.  The webinar will review the following issues:

    • What guidance do Federal Circuit and PTAB decisions give patent counsel on the application of BRI?
    • What arguments are effective in overcoming patent examiners' unreasonable claim interpretations?
    • Why is defining claim terms in specification and using the definitions critical?
    • How can patent counsel distinguish cases where extrinsic evidence has been used to supplement the specification?
    • If and when should extrinsic evidence be used?

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

  • FCBA Webast on International Patent Strategies

    Federal Circuit Bar AssociationThe Federal Circuit Bar Association (FCBA) will be offering a webcast entitled "International Patent Strategies" on February 24, 2017 from 11:00 am to 12:00 pm (EST) at the FCBA Office in Washington, DC.  Dr. Penny Gilbert of Powell Gilbert LLP; Gaëlle Bourout of Cabinet Plasseraud; Corey Salsberg, VP, Global Head IP Affairs, Novartis; and Erin Gibson of DLA Piper will explore international patent strategies and the variables at play.

    Those interested in registering for the webcast, can do so here.

  • Webinar on PTAB Proceedings and Appeals before the Federal Circuit

    ABAThe American Bar Association (ABA) Center for Professional Development and Section of Intellectual Property Law will be offering a live webinar entitled "How to Structure PTAB Proceedings and Appeals before the Federal Circuit" on March 8, 2017 from 1:00 to 2:00 pm (ET).  David Cochran of Jones Day (moderator); James Smith, Ecolab, former Chief Judge for the PTAB; and Paul Michel, former Chief Judge for the U.S. Court of Appeals for the Federal Circuit, will review key decisions of the Federal Circuit, establishing the level of review accorded to different issues on appeal from the PTAB and explore how these limits impact practitioners' approaches to conducting PTAB trials, and discuss and explore strategies and recommendations for conducting PTAB proceedings with an "eye" toward potential appeal to the Federal Circuit.

    The registration fee for the webcast is $150 for members and $195 for non-members.  Those interested in registering for the webinar, can do so here.

  • Webcast on Trends in Paragraph IV Challenges

    The Knowledge GroupThe Knowledge Group will offer a live webcast entitled "Trends in Paragraph IV Challenges: What Lies Ahead in 2017 and Beyond" on February 28, 2017 from 12:00 to 2:00 pm (EST).  Pablo D. Hendler of Jones Day, and Dean L. Fanelli and Jamaica Szeliga of Seyfarth Shaw LLP will provide an analysis of the recent trends in Paragraph IV patent challenges, and discuss significant court decisions and settlement outcomes on patent challenges.  The panel will cover the following topics:

    • Important rule changes
    • What's pending in the courts at various levels
    • Supreme Court treatment in these matters
    • Guidelines for providing notice
    • Practice tips IPR's and ANDA litigations
    • Recent Trends on Patent Challenges
    • Factors Influencing These Trends
    • Paragraph IV Court Decisions and Settlements

    The registration fee for the webcast is $299 (regular rate) or $199 (government/nonprofit rate).  Those interested in registering for the webinar can do so here.

  • PTAB Decides CRISPR Interference in Favor of Broad Institute — Their Reasoning

    By Kevin E. Noonan —

    Broad InstituteYesterday, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office rendered judgment that there was no interference-in-fact between the claims in interference between the Regents of the University of California/Berkeley and the Broad Institute.  Shortly after this judgment appeared, the Board issued its "Decision on Motions" (Paper No. 893) explaining its reasoning.

    Although both parties had received the Board's permission to file a number of briefs in the preliminary part of the interference, the Board rendered its decision on Broad Motion No. 2, that there was no interference in fact.  The basis of the requirement for an interference-in-fact can be found in the Rules governing interferences:

    An interference exists if the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa.

    37 C.F.R. 17 § 41.203(a).  In this case, the Board set out these requirements with respect to these parties:

    In this proceeding, to prevail on its argument that there is no interference, Broad must show that the parties' claims do not meet at least one of the following two conditions:

    1) that, if considered to be prior art to UC's claims, Broad's involved claims would not anticipate or render obvious UC's involved claims, or

    2) that, if considered to be prior art to Broad's claims, UC's involved claims would not anticipate or render obvious Broad's claims.

    Broad will prevail and a determination of no interference-in-fact will be made if a preponderance of the evidence indicates one of these conditions is not met.

    Here, it was undisputed that UC's claims would not anticipate the Broad's claims-in-interference because all of Broad's claims contained the affirmative limitation that the CRISPR technology be operative in eukaryotic cells, and the UC's claims were devoid of any limitation regarding the context in which CRISPR was applied.

    University of California-BerkleyThus, the question before the Board was whether the evidence presented by the parties established that the UC claims, if prior art, would have rendered the Broad's claims obvious.  The Board concluded that they would not, and hence there was no interference-in-fact between the parties' claims in the interference.

    In considering the evidence before it, the PTAB gave greater weight to contemporaneous, cautious statements in the art in view of Doudna's disclosure of in vitro CRISPR activity regarding whether the system would work in eukaryotic cells.  Specifically these statements convinced the Board that while the results "suggested the 'exciting possibility'" that CRISPR-Cas9 could be operative in eukaryotic cells, "it was not known whether such a bacterial system would function in eukaryotic cells."  And, "[i]n another report, Doudna was quoted as stating that she had experienced 'many frustrations' getting CRISPR to work in human cells and that she knew that if she succeeded, CRISPR would be 'a profound discovery.'"  UC's assertion of other statements by their inventors that could be interpreted more positively did not convince the Board that there was a reasonable expectation of success in the art for getting the CRISPR-Cas9 system to work in eukaryotic cells, the Board stating that:

    Although the statements express an eagerness to learn the results of experiments in eukaryotic cells and the importance of such results, none of them express an expectation that such results would be successful.

    The Board swept aside UC's argument that this reasoning was flawed because the standard is not the inventor's expectations but those of the worker of ordinary skill by stating that "if the inventors themselves were uncertain, it seems that ordinarily skilled artisans would have been even more uncertain."  Even UC's own expert voiced (contemporaneous) skepticism regarding whether the skilled worker would have had an expectation of success that the invention would be operative in eukaryotic cells in view of Inventor Doudna's success in vitro.  In particular, the Board quoted UC's expert as having said (contemporaneously with Inventor Doudna's report of in vitro CRISPR activity):

    There is no guarantee that Cas9 will work effectively on a chromatin target or that the required DNA-RNA hybrid can be stabilized in that context.

    The Board concluded that "[w]e fail to see how 'no  guarantee' indicates an expectation of success."

    All the other contemporaneous references cited by UC suffered the same fate, wherein scientists' characteristic caution in predicting how a developing technology will actually develop was interpreted by the Board as not supporting UC's argument that the skilled worker had a reasonable expectation of success in having the CRISPR-Cas9 system be operative in eukaryotic cells.

    Nor was the Board convinced based on the history of the development of CRISPR technology, which showed that many laboratories independent of the Doudna group quickly applied the new technology to manipulate eukaryotic cell genomic DNA:

    Regardless of how many groups achieved success in eukaryotic cells, we are not persuaded that such success indicates there was an expectation of success before the results from these experiments were known.  The unpublished results of research groups are not necessarily an indication of whether ordinarily skilled artisans would have expected the results achieved.  Instead of viewing such work as evidence of an expectation of success, we consider the number of groups who attempted to use CRISPR-Cas9 in eukaryotic cells to be evidence of the motivation to do so, an issue that is not in dispute.  We agree with Broad's argument that a large reward might motivate persons to try an experiment even if the likelihood of success is very low.

    The Board supported its determination with a survey of case law where the evidence showed there was, or was not, a reasonable expectation of success in obviousness determinations.  On balance, the Board found that this evidence further supported their decision that there was insufficient evidence of a reasonable expectation of success to support UC's allegation that their earlier work and publications would have rendered the Broad's invention obvious.  In this case, this evidence was that "differences in gene expression, protein folding, cellular compartmentalization, chromatin structure, cellular nucleases, intracellular temperature, intracellular ion concentrations, intracellular pH, and the types of molecules in prokaryotic versus eukaryotic cells, would contribute to this unpredictability [regarding whether the CRISPR-Cas9 system would be operative in eukaryotic cells]."  In response to UC's allegations that these considerations turned out not to be an impediment to CRISPR's activity in eukaryotic cells, the Board said "[t]he relevant question before us is whether those of skill in the art would have expected there to be problems before the experiments were done," not whether it turned out that the experiments were successful once they were tried.

    Finally, the Board rejected UC's citation of other prokaryotic genetic modification systems found to work in eukaryotes, generally on the grounds that there was no "commonality" in these methods that would have refuted the Broad's evidence that the skilled worker would not have had any reasonable expectation of success.

    In conclusion, the Board stated that "[w]e note that '[i]t is well-settled that a narrow species can be non-obvious and patent eligible despite a patent on its genus,'" citing AbbVie Inc. v. Mathilda & Terence Kennedy Inst. of Rheumatology Trust, 764 F.3d 8 1366, 1379 (Fed. Cir. 2014), and that "[a]n 'earlier disclosure of a genus does not necessarily prevent patenting a species member of the genus,'" citing Eli Lilly & Co. v. Bd. of Regents of Univ. of Wash., 334 F.3d 1264, 1270 (Fed. Cir. 2003).

    UC/Berkeley has suggested in public statements that it may appeal the Board's decision.  It is well to recognize in this regard that the question of whether there is a reasonable expectation of success in an obviousness determination is a question of fact (see, e.g.,  Par Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014)), and that the Federal Circuit must defer to the  PTAB's factual determinations under the substantial evidence standard of review.  Dickenson v. Zurko.  Accordingly, while appeal of this decision remains a possibility the manner in which the Board rendered its decision and its reasoning suggest that prevailing in such an appeal may be quite difficult.

  • Personal Web Technologies, LLC v. Apple, Inc. (Fed. Cir. 2017)

    By Michael Borella —

    AppleApple filed a successful petition for Inter Partes Review (IPR) of Personal Web Technologies' U.S. Patent No. 7,802,310.  In its final written decision, the Patent Trial and Appeal Board (PTAB) agreed with Apple's contention that the claims of the '310 patent were obvious.  On appeal, the Federal Circuit reversed.

    Obviousness is one of the most common issues dealt with during prosecution and post-grant proceedings.  While the determination of whether a claim is obvious is ostensibly an objective matter, reasonable minds can differ.  Thus, there is often a gray area where the subjective opinion of a patent examiner or finder of fact can sway the decision one way or the other.  Ten years ago, in KSR Int'l Co. v. Teleflex Inc., the Supreme Court attempted to add some color to the obviousness inquiry by requiring that there is a clearly articulated rationale to support a determination of obviousness.  Still, many obviousness contentions, whether made in the USPTO or the courts, are conclusory in nature.

    The '310 patent is directed to "locating data and controlling access to data by giving a data file a substantially unique name that depends on the file's content."  The patent describes generating the name through use of a hash function over the content.  When a user attempts to access the file, the invention requires "comparing that name with a plurality of values in a network, determining whether a user is authorized to access the data, and providing or denying access to the data based on that determination."

    Apple alleged that various claims of the '310 patent were obvious over two references, Woodhill and Stefik.  According to the Court, "Woodhill discloses a system for using content-based identifiers in performing file management functions, such as backing up files," while "Stefik discloses an authentication system designed to control access to digital works stored in a repository."

    The Court reviewed the PTAB's decision de novo for the determination of obviousness, and based on the substantial evidence standard for its findings of fact.  Under the latter, the Court asks "whether a reasonable fact finder could have arrived at the agency's decision, which requires examination of the record as a whole, taking into account evidence that both justifies and detracts from an agency's decision."

    This required that the PTAB justify and explain (i) that all claim elements at issue could be found in Woodhill and Stefik, and (ii) that "a person of ordinary skill in the art would have been motivated to combine the prior art in the way claimed by the '310 patent claims at issue and had a reasonable expectation of success in doing so."  The Court particularly emphasized the requirement of explanation, stating that "the amount of explanation needed will vary from case to case, depending on the complexity of the matter and the issues raised in the record."

    The Court further noted that its review of the PTAB in this fashion was also in accordance with administrative law.  Particularly, "the agency is obligated to provide an administrative record showing the evidence on which the findings are based, accompanied by the agency's reasoning in reaching its conclusions."  Thus, the PTAB "must articulate logical and rational reasons for decision."

    The Court went on to point out how the PTAB failed to meet these requirements.  For one claim element, the PTAB stated that it relied on Stefik as disclosing the element, and referred to a specific part of Apple's petition in doing so.  But this part of the petition only referenced Woodhill, and the PTAB did not address this apparent discrepancy.  For another claim element, the PTAB did not address all features therein.

    The Court also found that the PTAB did not properly articulate its reasoning as to why one of skill in the art would be motivated to combine Stefik and Woodhill in the manner recited by the claims.  The PTAB once again relied on reasoning from Apple's petition, but "that reasoning seems to say no more than that a skilled artisan, once presented with the two references, would have understood that they could be combined."  This, however, is insufficient, because "it does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention."  The issue is not whether the references could be combined, but whether they would be combined by one of skill in the art.  Moreover, the PTAB failed to explain and provide evidence for "how the combination of the two references was supposed to work."

    In the Court's view, the amount of explanation needed to support a conclusion of obviousness depends on the complexity of the technology at issue.  Here, the PTAB's explanation was lacking.  As a result, the Court remanded the case back to the PTAB to "reconsider the merits of the obviousness challenge, within proper procedural constraints."

    In some measure, this opinion centers on whether the PTAB set forth a sufficient explanation to be sustainable upon judicial review, based on the PTAB's disposition under an administrative agency.  But it also provides a colorable argument that patent examiners need to live up to that standard as well.  It is all too common for a patent examiner or a challenger in a PTAB proceeding to identify claim elements that exist in the prior art, then state, in a wholly conclusory fashion, that it would be obvious to combine the prior art references.  But, as clearly called out in this opinion, this is insufficient.  Obviousness rests on whether one of skill in the art would have a reason to combine the references in a manner that would lead to the claims.  Such reasoning is all too frequently missing, and this case provides patentees with language to rebut such improper contentions.

    Personal Web Technologies, LLC v. Apple, Inc. (Fed. Cir. 2017)
    Panel: Circuit Judges Taranto, Chen, and Stoll
    Opinion by Circuit Judge Taranto

  • PTAB Decides CRISPR Interference — No interference-in-fact

    USPTO SealThe U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) handed down its decision today that there is no interference-in-fact between several patents and patent applications owned by The Broad Institute and applications owned by the Regents of the University of California, Berkeley.  This decision ends the interference without any prejudice to any of the claims corresponding to the interference count.  Accordingly, both parties will be able to license (and assert) their patents to any third party.

    The basis for the PTAB's decision is contained in a paper (#893) entitled Decision on Motions.  That paper is not yet available on the PRAB website.  We will post on this decision when it becomes available.

    For additional information regarding this topic, please see:

    • "Guest Post — The Patient Side of the CRISPR Patent Battle," December 19, 2016
    • "CRISPR Interference Motions Set," March 23, 2016
    • "CRISPR Interference Declared," January 28, 2016