Menu
Get In Touch
Share

Legal Articles

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

January 11, 2016

Overview

By Peter E. Heuser

Urbanski – The panel affirms a determination of obviousness based upon two references that are directed to achieving different food properties. The claims at issue are directed to a food additive in which soy fiber and enzyme are mixed in water for 60 to 120 minutes to provide a product having a claimed degree of hydrolysis, water holding capacity, and free simple sugar content. Gross teaches a method that converts dietary fibers into stable, homogeneous colloidal gels, using a hydrolysis time of 5 to 72 hours. Wong teaches production of a soy product of improved sensory properties, including smoothness and mouth feel, without substantially reducing the fiber content, using a preferred hydrolysis time of 120 minutes. The panel finds that substantial evidence supports the Board's determination that a skilled artisan seeking to produce soy fiber with improved palatability and high fiber content, as taught by Wong, would have modified Gross to use a shorter reaction time to achieve a lower degree of hydrolysis with the claimed water holding capacity and free simple sugar content.

The panel rejects Urbanski's argument that, because modifying the Gross process by shortening the hydrolysis time would have rendered the modified process inoperable for Gross's intended purpose, viz., forming stable dispersions, Gross teaches away from the claimed method of making a hydrolysate of a soy fiber. Although Gross teaches the benefit of stable dispersions, Wong teaches other desirable properties, viz., improved sensory properties without substantially reducing the fiber content. The panel thus rules that the Board properly found that one of ordinary skill would have been motivated to pursue the desirable properties taught by Wong, even at the expense of foregoing the benefit taught by Gross.

Wi-LanWi-Lan sued Apple, Dell, Hewlett-Packard and HPC for infringement of its patent directed to a wireless data communication technique called "MultiCode Direct-Sequence Spread Spectrum" (MC-DSSS), arguing that the patented technique is embodied in several modern wireless communications standards, including the technique in Apple's iPhones and iPads. All of the defendants other than Apple settled with Wi-Lan, an NPE, but Apple proceeded to trial. A jury found that Apple did not infringe and that the claims are invalid, but the E.D. of Texas granted Wi-Lan's JMOL of no invalidity, issuing a clarifying claim construction and thus concluding that there was no substantial evidence supporting the jury's verdict of anticipation. The panel reverses the granting of the motion, ruling that, while a court may adjust constructions post-trial if the court merely elaborates on a meaning inherent in the previous construction, that is not what happened here. According to the panel, this "clarification" was in fact an impermissible post-verdict reconstruction. Because the JMOL was based on this re-construction, the grant of the JMOL must be reversed. The panel also affirms the denial of JMOL based upon infringement under the doctrine of equivalents.



In re Gregory E. Urbanski,Fed. Cir. Case 2015-1272
(January 8, 2016)

At issue is an application directed to a method of enzymatic hydrolysis of soy fiber, such that the product has a reduced water holding capacity suitable for use as food additives. Claim 43 is representative, and requires that the soy fiber and enzyme be mixed in water for 60 to 120 minutes to provide a fiber product having a claimed degree of hydrolysis, water holding capacity, and free simple sugar content. According to the application, "the skilled artisan will be able to control the duration of the hydrolysis reaction to achieve any desired degree of hydrolysis."

The Examiner rejected claim 43, among others, as obvious over Gross in view of Wong. Both Gross and Wong disclose methods of enzymatic hydrolysis of dietary fibers. Gross teaches a method that converts dietary fibers into "stable, homogeneous colloidal dispersions or gels," which uses a relatively longer hydrolysis time, e.g., 5 to 72 hours. Wong's method produces a soy fiber product of improved sensory properties, including smoothness and mouthfeel, without substantially reducing the fiber content, and uses a shorter hydrolysis time, e.g., 100 to 240 minutes, preferably, 120 minutes.

The Examiner found that Gross and Wong, both relating to enzymatic hydrolysis of dietary fibers, are readily combinable, and that "both recognize that the degree of hydrolysis of the fiber is a result effective variable." The Examiner acknowledged that Gross teaches a longer reaction time, but found that a skilled artisan seeking to produce soy fiber with improved palatability and high fiber content, as taught by Wong, would have modified the Gross process to use a shorter reaction time to achieve a lower degree of hydrolysis. The Examiner also found that one of ordinary skill in the art would have expected that modifying the Gross process to use a shorter reaction time would have resulted in the claimed water holding capacity and free simple sugar content.

During prosecution Urbanski submitted a declaration in which he asserted that "the methods and products of Gross are significantly different from those claimed and that Gross teaches away from the modification that would have been necessary to arrive at the claimed methods and products." He presented evidence that hydrolyzed soy fiber prepared according to the application failed to form a stable, homogeneous dispersion as disclosed in Gross. Urbanski thus argued that reducing the hydrolysis time would have rendered the fiber product unsatisfactory for Gross's intended purpose of forming stable dispersions. The Examiner found Urbanski's argument unpersuasive so Urbanski appealed to the Board, which affirmed the obviousness rejections.

The Obviousness Determination Is Affirmed

Urbanski argues that the Board failed to articulate a sufficient reason why one of ordinary skill would have been motivated to combine the processes of Gross and Wong. According to Urbanski, the declaration establishes that modifying the Gross process by shortening the reaction time, as taught by Wong, would render the modified process unsatisfactory for Gross's intended purpose, and thus that Gross teaches away from the modification. Urbanski faults the Examiner for failing to address, and the Board for failing to properly consider, the declaration. Additionally, Urbanski asserts that neither the Board nor the Examiner established that the cited references teach or suggest the claimed degree of hydrolysis, water holding capacity, or free simple sugar content.

We hold that substantial evidence supports the Board's finding that one of ordinary skill would have been motivated to modify the Gross process in view of Wong to use a shorter reaction time, and that the claimed degree of hydrolysis, water holding capacity, and free simple sugar content would be expected properties of the hydrolysis product. Both Gross and Wong relate to enzymatic hydrolysis of dietary fibers. Gross teaches a longer reaction time, whereas Wong teaches a shorter reaction time that falls within Urbanski's claimed range. Wong also teaches that its method produces soy fiber with improved sensory properties without substantially reducing the fiber content. It is undisputed that the properties disclosed in Wong would be favorable properties of dietary fibers. Substantial evidence thus supports the Board's finding that a person of ordinary skill would have been motivated to modify the Gross process by using a shorter reaction time, in order to obtain the favorable properties disclosed in Wong.

Additionally, the Board properly found that both Gross and Wong recognize that reaction time and degree of hydrolysis are result-effective variables that can be varied in order to adjust the properties of the hydrolyzed fiber in a predictable manner. See In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result effective."). The degree of hydrolysis is dependent on the reaction time because the longer the fiber is in contact with the enzyme, the greater the extent of hydrolysis. The degree of hydrolysis in turn affects the attributes of the resulting fiber product. Wong suggests that a shorter reaction time and a lower degree of hydrolysis improves soy fiber's sensory properties without substantially reducing the fiber content; whereas Gross suggests that a longer reaction time and a higher degree of hydrolysis results in fibers capable of forming a stable dispersion. Substantial evidence thus supports the Board's finding that a person of ordinary skill would have expected that, by adjusting the reaction time, the degree of hydrolysis and the properties of the fiber would be altered.

Gross and Wong Do Not Teach Away From the Claimed Invention

Moreover, we agree with the Director that both the Examiner and the Board properly considered and weighed Urbanski's declaration. We are unpersuaded by Urbanski's argument that, because modifying the Gross process by shortening the hydrolysis time, as taught by Wong, would have rendered the modified process inoperable for Gross's intended purpose, viz., forming stable dispersions, Gross teaches away from the claimed method of making a hydrolysate of a soy fiber.

As indicated, the Board correctly found that Gross and Wong are combinable, as both references concern the enzymatic hydrolysis of dietary fibers and recognize that reaction time and degree of hydrolysis can be varied in order to adjust the fiber's properties. Although Gross teaches the benefit of stable dispersions, Wong teaches other desirable properties, viz., improved sensory properties without substantially reducing the fiber content. On this record, the Board properly found that one of ordinary skill would have been motivated to pursue the desirable properties taught by Wong, even at the expense of foregoing the benefit taught by Gross.

Here, the cited references do not teach away from the claimed method. Wong teaches that its method produces soy fiber with improved sensory properties without substantially reducing the fiber content. Wong thus provides the motivation to modify the Gross process and suggests the desirability of such modification. Moreover, both Gross and Wong suggest that hydrolysis time may be adjusted to achieve different fiber properties. Nothing in the prior art teaches that the proposed modification would have resulted in an "inoperable" process or a dietary fiber product with undesirable properties.

Substantial evidence, moreover, supports the Board's finding that Gross does not otherwise teach away from the claimed method. A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. Although Gross generally discloses a relatively longer reaction time that results in fiber capable of forming stable dispersions, Gross does not criticize or discredit the use of a shorter reaction time. Accordingly, the Board did not err in affirming the Examiner's decision as to obviousness.

Wi-Lan, Inc. v. Apple Inc., Fed. Cir. Case 2014-1437, -2014, -1485 (January 8, 2016)

Wireless communication devices use radio waves to communicate digital data by modulating the frequency, amplitude, or phase of those waves according to preestablished patterns. Devices that detect the radio waves can observe and interpret the patterns to recover the transmitted symbols. "Direct-Sequence Spread Spectrum" (DSSS) is a prior art modulation technique that prevents third parties from intercepting radio communications. A third party scanning the spectrum would detect only what appears to be natural ambient noise, while the intended recipient could use the corresponding code to decode the communication. A drawback of DSSS is that each communication occupies an entire band of frequency, which makes it difficult for multiple users to transmit data simultaneously. "Code Division Multiple Access" (CDMA) is another prior art modulation technique that addresses the bandwidth shortcomings of DSSS by allowing multiple users to transmit on the same band using different spreading codes.

Wi-Lan's patent discloses a "multi-code" variation of DSSS (MC-DSSS), which enhances throughput by permitting a single transmitter to utilize multiple codes simultaneously.

Asserted claim 1 recites a transceiver for transmitting data using three components:

1. A transceiver for transmitting a first stream of data symbols, the transceiver comprising:

a converter for converting the first stream of data symbols into plural sets of N data symbols each;

first computing means for operating on the plural sets of N data symbols to produce modulated data symbols corresponding to an invertible randomized spreading of the first stream of data symbols; and

means to combine the modulated data symbols for transmission.

The district court construed "modulated data symbols" to mean "data symbols that have been spread by a spreading code." The court rejected Apple's argument that the modulated data symbols must be randomized, explaining that "randomization is a desirable feature that is addressed by other claim language, such as the term 'invertible randomized spreading,' which appears in Claim 1." At trial, Apple argued that it did not infringe because claim 1 requires randomizing the data symbols before combining them, and that Apple's products perform these steps in the reverse order. The parties agreed that Apple's products randomize the data symbols only after combining them.

Apple also argued that claims 1 and 10 are invalid because several prior art publications anticipated the claims. The jury agreed, finding claims 1 and 10 invalid and not infringed. Wi-Lan moved for JMOL on both issues, and for a new trial on noninfringement. Wi-Lan argued that the court's claim constructions precluded the ordering requirement underlying Apple's non-infringement defense. Wi-Lan also argued that the prior art did not anticipate the asserted claims because the prior art did not randomize using complex multipliers, which Wi-Lan argued the claims require.

The district court upheld the jury's finding of noninfringement, and reversed on invalidity. Regarding non-infringement, the court held that the ordering requirement was consistent with the court's claim constructions and that a reasonable jury could have found non-infringement under those constructions. Regarding invalidity, the court determined that, although its construction of computing means does not specifically provide for a complex multiplier, a complex multiplier was nevertheless necessary because complex multipliers are part of the structure of the first computing means as taught by the '802 patent. It was undisputed that such multipliers were absent from the prior art.

Wi-Lan appeals the denial of JMOL on noninfringement. Apple cross-appeals the grant of JMOL of no invalidity.

The Claim Construction of Non-Randomized Signals Is Correct so There Is No Literal Infringement

On appeal, Wi-Lan challenges the denial of JMOL on non-infringement on the grounds that the claim constructions precluded the ordering requirement underlying Apple's noninfringement defense. Wi-Lan argues that, even with the ordering requirement, Apple's products would still infringe under the doctrine of equivalents because it is undisputed that the different orderings produce mathematically identical results.

The text of the asserted claims requires randomizing the modulated data symbols before combining them. The ordering requirement is consistent with the specification. The intrinsic record is therefore clear that the asserted claims cover only structure that randomizes data symbols in parallel before combining them for transmission. Because Apple's products do not randomize the symbols before combining them, Apple does not literally infringe the asserted claims.

There Is No Infringement Under the Doctrine of Equivalents

Wi-Lan argues that even if claim 1 requires a structure that randomizes before combining, structure that performs these steps in the reverse order nevertheless infringes under the doctrine of equivalents because the resulting output of the two orderings is mathematically identical.

We disagree and hold that substantial evidence supports the jury's verdict that the order difference between Apple's products and the claimed invention is not insubstantial. Apple's expert, Dr. Acampora, explained that the two structures are "fundamentally different because the order of randomizing and combining is wrong." Dr. Acampora elaborated that even though the different orderings produce mathematically equivalent results, they require structurally different hardware pipelines to implement.

Wi-Lan points to Dr. Acampora's testimony that in a configuration such as that found in Apple's products, changing the order of operations would save as few as twenty transistors out of the millions found on the chip. But Dr. Acampora testified that because that portion of the chip contains only a few hundred transistors, a savings of 20 out of a few hundred transistors is a big deal in wireless communications. It was therefore reasonable for the jury to credit Dr. Acampora's testimony and to conclude that a person of ordinary skill would have found the design differences not insubstantial.

JMOL of No Invalidity Is Reversed Since It Is Based on Post-Trial Change in Claim Construction

The district court vacated the jury's verdict of invalidity because a reasonable jury should have understood that the first computing means must randomize the symbols using complex multipliers while the prior art used only real multipliers. While acknowledging that its construction "does not specifically provide for a complex multiplier," the court nevertheless found such a component required because "throughout the trial, both sides took the position that the complex multiplier found in Figure 8 was necessarily included in the Court's construction."

On appeal, Apple argues that the court's post-verdict addition of a complex multiplier requirement was a new claim construction, which the district court may not issue at the JMOL stage. We agree.

Here, the jury was instructed that the "first computing means" is the structure corresponding to elements 12 of Figures 1 and 4, and equivalents thereof. This construction does not specifically provide for a complex multiplier. In fact, nothing in the cited portions of the specification refers to Figure 8 or even mentions complex multipliers. When tested by the construction the court provided, it was reasonable for the jury to conclude that the "first computing means" need not include the complex multiplier of Figure 8.

Wi-Lan argues that the trial court's JMOL order was based, not on an impermissible reconstruction, but on a permissible clarification of the existing construction. Wi-Lan echoes the district court's conclusion that expert testimony from both sides established that the complex multiplier of Figure 8 was implicit within the construction. Wi-Lan notes that Dr. Acampora agreed that "the randomizer transform in Figure 8 is part of the transforms that are in Figure 4 and Figure 1 of the patent." Therefore, Wi-Lan argues, the clarification at JMOL only made explicit what was already implicit in the original construction.

We have recognized that a trial court may "adjust constructions post-trial if the court merely elaborates on a meaning inherent in the previous construction." Mformation Techs., Inc. v. Research in Motion Ltd., 764 F.3d 1392 (Fed. Cir. 2014). For example, in Cordis Corp. v. Boston Scientific, the district court construed the term "undulating" to mean "rising and falling in waves," but clarified in granting JMOL that the plural "waves" could not be met by a single "U" shape. 658 F.3d 1347 (Fed. Cir. 2011). We held that clarification permissible because it only made plain what should have been obvious to the jury.

This is not a case, however, where the inclusion of an implicit component should have been obvious to the jury. Contrary to the court's characterizations of the expert testimony, the parties clearly did not agree that the claims required complex randomization. Dr. Acampora made clear that "the Court's claim construction told us what the first computing means is, and it didn't say complex randomizer." Dr. Acampora's entire invalidity theory rested on the premise that the claims do not require complex randomization. The court's characterization of Dr. Acampora's testimony as requiring a complex randomizer is at odds with his testimony. Even had Dr. Acampora opined that the invention's computing means required a complex multiplier, the jury was instructed that it was not required to accept that opinion, and that "it is solely up to you to decide whether to rely upon that opinion or not." Dr. Acampora's testimony did not require a reasonable jury to conclude that a complex multiplier was necessary.

In sum, the JMOL of no invalidity was based on a reconstruction of the claims that went far beyond clarifying a meaning inherent in the construction or making plain what should have been obvious to the jury. Instead, the post-verdict reconstruction altered the scope of the original construction and undermined Apple's invalidity case post-verdict.

Professionals

Related Services

Written By

Share