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Latest Federal Circuit Court Cases, 5/21/18

May 21, 2018

Overview

Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., Appeal Nos. 2016-2616, -2656 (Fed. Cir. May 16, 2018)

In an appeal from a inter partes review, the Federal Circuit reviewed a PTAB obviousness decision.  Importantly, the Court broadly expanded the “printed matter doctrine” to include information that is never printed.

The printed matter doctrine provides that “[c]laim limitations directed to printed matter are not entitled to patentable weight unless the printed matter is functionally related to the substrate on which the printed matter is applied.”  The rationale provided by the majority for the doctrine is that such claim limitations are not patent eligible subject matter under 35 U.S.C. § 101.  If the printed matter doctrine is held to apply to a claim limitation, then that claim limitation may not be relied upon in any novelty or obviousness analysis to distinguish the prior art.

The patent at issue generally relates to “supplying a medical provider with a cylinder of nitric oxide gas and providing the medical provider with certain prescribing information relating to the harmful side effects of nitric oxide for certain patients…”  At issue with respect to the independent claim were two claim limitations concerning “providing information” to a medical provider.  One of the dependent claims recited “weigh[ing] the potential benefit of treating… vs. the potential risk [of] pulmonary edema… in order to arrive at a decision of whether or not to treat…”  The PTAB found the disputed limitations “to be either printed matter or purely mental steps not entitled to patentable weight, as those limitations lacked a functional relationship to the other claim limitations…”  The PTAB proceeded to find the claims invalid, because the remaining limitations were obvious. 

The Court first addressed whether the PTAB had improperly applied the printed matter doctrine by applying it to the step of “providing information.”  The Court acknowledged that early cases involving the doctrine applied “it to claims literally encompassing ‘printed’ materials.”  However, it also noted that the doctrine had been expanded in recent years to cover “the content of information.”  On this issue, the Court found that “[b]ecause claim limitations directed to mental steps may attempt to capture informational content, they may be considered printed matter lacking patentable weight in an obviousness analysis. Accordingly, a limitation that merely claims information by incorporating that information into a mental step will receive patentable weight only if the limitation is functionally related to the substrate.”

Both the Court and PTAB also rejected Mallinckrodt’s argument that the disputed limitations were functionally related to the other claim limitations based upon the term “pharmaceutically acceptable” because it “incorporates the claimed information into the concrete step of supplying nitric oxide gas.”  The Court held that the term “pharmaceutically acceptable” did not create a functional relationship to its substrate.  Consequently, the Court affirmed the PTAB’s findings that nine of the ten challenged claims were obvious.

The remaining claim added further limitations, including one reciting ceasing treatment of nitric oxide “due to the neonatal patient’s pulmonary edema.”  Pulmonary edema is a potentially fatal condition.  The PTAB found the claim nonobvious because of this limitation, and the Federal Circuit reversed.  With respect to this claim, the Court held that the printed matter had a functional relationship to the rest of the claim because the limitation required the medical provider to take the specific action of discontinuing treatment based on the provided information.  However, prior art had taught that using the treatment disclosed in the patent required “careful observation and intensive monitoring” because of the risk of pulmonary edema, although it did not disclose discontinuing treatment in the event of pulmonary edema, as the claim recited.  The Federal Circuit held “it is undisputed that discontinuing a treatment in response to a serious side effect was known in the prior art,” and held that such a limitation was obvious, given the prior art.

Judge Newman concurred in the result, but dissented from the Court’s reasoning, finding the majority opinion to be an unwarranted expansion of the printed matter doctrine.  She would have held that the doctrine does not apply to unprinted matter and, in particular, mental steps.  Judge Newman also cautioned that “[t]he creation of a new printed matter doctrine in today’s jurisprudence serves no purpose other than adding to the uncertainty of patent eligibility.”

Opinion can be found here.

ALSO THIS WEEK

In re: BigCommerce, Inc., Appeal Nos. 2018-120, -122 (Fed. Cir. May 15, 2018)

The Federal Circuit granted petitions for writ of mandamus and vacated two venue-related district court orders.  Though district courts have reached differing conclusions about whether a corporation “resides” in every judicial district within its state of incorporation under 28 U.S.C. § 1400(b), the Federal Circuit held that it does not.  In a state having multiple judicial districts, a corporate defendant “resides” only in the single judicial district within that state where it maintains a principal place of business, or, failing that, the judicial district in which its registered office is located.

Opinion can be found here.

SAP America, Inc. v. InvestPic, LLC, Appeal No. 2017-2081 (Fed. Cir. May 15, 2018)

In an appeal from a judgement of invalidity based on subject matter ineligibility, the Federal Circuit affirmed.  The district court granted SAP’s motion for judgement on the pleadings because mathematical calculations and formulas are not patent eligible, and the claims failed to add any inventive concept to the mathematical calculations and formulas.  Under the first step of the Alice inquiry, the Federal Circuit distinguished the Thales case in which mathematics were used to achieve an improvement in a physical tracking system.  Under the second step, the Federal Circuit concluded that there were no factual allegations from which one could plausibly infer that the claims are “inventive.”  For a recent contrary result regarding the second step as it pertains to a motion for judgement on the pleadings, see our write up of the Berkheimer case, here.

Opinion can be found here.

Anacor Pharmaceuticals, Inc. v. Andrei Iancu, Appeal No. 2017-1947 (Fed. Cir. May 14, 2018)

In a Patent Owner’s appeal from an inter partes review, the Court affirmed the PTAB’s obviousness finding as to a rejected dependent claim.  Critically, in rejecting a dependent claim, the Board relied on three articles that suggested that a POSITA would have expected certain results.  Patent Owner appealed this rejection, arguing that the Board violated due process and the Administrative Procedure Act by failing to give it adequate notice of, and opportunity to respond to, the alleged new grounds of rejection.  The Court rejected Patent Owner’s argument that the Board adopted a new theory of obviousness, finding that it relied on the same combination of references on which the IPR was instituted, and that the three articles were properly relied on to document the state of the art.  The Court also rejected Patent Owner’s argument that it had not had an opportunity to respond to the evidence, as Patent Owner had discussed two of the three articles in its Response, and that it had extensively discussed the third during oral argument.

Opinion can be found here.

M-I Drilling Fluids UK Ltd. v. Dynamic Air Ltda., Appeal No. 2016-1772 (Fed. Cir. May 14, 2018)

In a patent plaintiff’s appeal from a dismissal for lack of personal jurisdiction, the Court reversed the ruling of the district court, finding that Fed. R. Civ. P. 4(k)(2) supported the exercise of personal jurisdiction over a Brazilian company.  The plaintiff accused the Brazilian defendant of infringing patents for transportation systems between offshore oil rigs and U.S.-flagged ships, which were considered U.S. territory (an issue defendant waived on appeal).  The Federal Circuit held that the defendant had “purposefully directed” its activities to the United States and that the claims arose out of defendant’s activities on the U.S. ships.  Judge Reyna filed a concurring opinion with further detail on the territorial reach of U.S. patent laws to U.S. ships in international waters.

Opinion can be found here.

In re: ZTE (USA) Inc., Appeal No. 2018-113 (Fed. Cir. May 14, 2018)

In another venue writ of mandamus order, the Federal Circuit considered (1) which body of law governs burden of proof for proper venue; and (2) which party has the burden of establishing whether venue is proper under 35 U.S.C. § 1400(b) in a particular case.  The Court first held that Federal Circuit law, and not the law of the regional circuit, applies to the questions of burdens of proof concerning § 1400(b).  The Court then established that “upon motion by the Defendant challenging venue in a patent case, the Plaintiff bears the burden of establishing proper venue.”

Opinion can be found here.

 

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