Provisur Technologies, Inc. v. Weber, Inc., Appeal Nos. 2021-1942, -1975 (Fed. Cir. Sept. 27, 2022)

In this week’s Case of the Week, the Federal Circuit reviewed an IPR decision and addressed the Patent Trial and Appeal Board’s consideration of certain evidence submitted to supplement a prior art disclosure. The Court also found that the Board violated the Administrative Procedures Act (APA) by failing to sufficiently explain its rationale concerning its obviousness determinations. Ultimately, the Court vacated the Board’s decision and reversed for further consideration.

The patent at issue (’089 patent) “describes a method and system for ‘classifying slices or a portion cut from a food product according to an optical image of the slice.’” Weber petitioned for inter partes review of claims 1-14 of the ’089 patent, on the ground that it was unpatentable as obvious. In doing so, Weber cited four prior patents: Whitehouse, Antonissen, Hardy, and Wyslotsky. In its final written decision, the Board concluded that Weber “had proved unpatentable as obvious claims 1-10, 13, and 14, but not claims 11 or 12.” Each party appealed aspects of the decision.

Provisur first argued that the “Board abused its discretion when it denied Provisur’s motion to exclude the ELECTRIM-related evidence. In relation to the Antonissen prior art, Weber argued that such prior art disclosed a digital camera. Weber responded that Antonissen “does not disclose a digital camera because its camera uses an analog-to-digital converter external to the camera’s housing.” To address this argument, Weber submitted evidence pertaining to ELECTRIM cameras. Provisur then requested the Board exclude such evidence, arguing that “(1) it was unduly prejudicial under Rule 403 of the Federal Rules of Evidence and (2) violated the Board’s rules because Weber introduced it too late.” The Board ultimately rejected these arguments, finding that such evidence was “highly probative of how the camera mentioned in the ’089 patent operates.” Here, the Court held that the Board did not abuse its discretion with regard to this evidentiary ruling. In so holding, the Court explained that the reply evidence was both directly responsive to Provisur’s arguments and highly probative. The Court emphasized the fact that the reply did not fill any gaps or change Weber’s invalidity theories in any way. The Court affirmed the Board’s decision denying Provisur’s motion to exclude.

Second, Provisur argued “the Board violated the [APA] by failing to address all of Provisur’s patentability arguments.” Under the APA, “the Board must fully and particularly set out the bases upon which it reached its decision.” In its IPR decision, the Board did not explain how the Whitehouse/Antonissen/Hardy combination taught or suggested the limitations at issue. Instead, the Board limited its analysis to the independent claims of one specific limitation. “For all other claim limitations, including the surface-area limitations, it said only that Petitioner’s argument and evidence summarized above, which we adopt as our own, persuades us that the combination of Whitehouse, Antonissen, and Hardy collectively disclose or suggest all elements of claim 1 other than the digital image receiving device.” The Court further explained that in reaching the above conclusion, the Board mischaracterized Provisur’s arguments. Thus, the Court found that the Board violated the APA by adopting Weber’s arguments and evidence and mischaracterizing Provisur’s arguments without addressing the surface-area-limitations. Accordingly, the Court vacated the Board’s “decision with respect to claims 1, 9, and 13.” Further, “[b]ecause those three claims are all of the ’089 patent’s independent claims, [the Court] also vacate[d] the Board’s judgment as to all claims found unpatentable and remand[ed] for the limited purpose of the Board’s consideration of Provisur’s surface-area-limitation arguments.”

Next, the Court addressed Weber’s cross-appeal, which raised the issue of “whether the Board erred in upholding the patentability of claims 11 and 12. Specifically, Weber challenged the Board’s claim construction and asserted that the “Board incorrectly viewed Wyslotsky’s teachings in isolation rather than in the context of Weber’s asserted Whitehouse/Antonissen/Hardy/Wyslotsky combination.” The Court did not address Weber’s challenge to the Board’s claim construction because it agreed with Weber’s assertion that the “Board erred in considering Wyslotsky alone, and [the Court] concluded that [such] error warrant[ed] vacatur of the Board’s judgment as to claims 11 and 12.”

The Court affirmed in part, vacated in part, and remanded to the Board.

The opinion can be found here.

By Annie White


In re: Monolithic Power Systems, Inc., Appeal No. 2022-153 (Fed. Cir. Sept. 30, 2022)

On petition for a writ of mandamus directing the U.S. District Court for the Western District of Texas to dismiss or transfer this case to the Northern District of California, the Federal Circuit addressed whether mandamus was appropriate relief where the district court imputed employee homes to a defendant for purposes of venue. The Federal Circuit held that, ordinarily, mandamus relief is not available for rulings on improper venue motions because post-judgment appeal is adequate, and that immediate intervention was not necessary here to assure proper judicial administration (i.e., the legal question at issue was not one over which there is considerable litigation producing disparate results). The Federal Circuit also held that the district court’s ruling was not a clear abuse of discretion resulting in a patently erroneous result. Judge Lourie dissented, reasoning that the district court’s ruling was in error and that it threatens to bring confusion to the law relating to where a suit can properly be brought based on the location of employee homes. The case is notable because it is a rare departure from the Court’s string of opinions granting mandamus to transfer cases out of Judge Albright’s Western District of Texas court. For more, see here.

The opinion can be found here.

By Mario Delgato

Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp., Appeal No. 2021-2121 (Fed. Cir. Sept. 29, 2022)

In an appeal from a Patent Trial and Appeal Board decision upholding the claims of a patent directed to compounds useful in the treatment of Type 2 diabetes, the Federal Circuit affirmed. The Court found that substantial evidence supported the Board’s findings that the claims of the patent were not anticipated or obvious over the prior art. The opinion contains a discussion of when prior art disclosures of a genus of chemical compounds may anticipate a specific compound, as well as antedating issues concerning Merck’s own prior art patents and applications.

The opinion can be found here.

By Jason A. Wrubleski

Cooperative Entertainment, Inc. v. Kollective Technology, Inc., Appeal No. 2021-2167 (Fed. Cir. Sept. 28, 2022)

In an appeal from a district court dismissal of a case grounded in an opinion that the patent at issue was invalid under Section 101, the Federal Circuit reversed. The Federal Circuit did not address the first step of the Alice analysis, regarding whether Cooperative Entertainment’s ’452 patent focused on an abstract idea. Instead, it found that in the second step of the Alice analysis, even assuming that Cooperative Entertainment’s ’452 patent focused on an abstract idea, the amended complaint plausibly pled an inventive concept, sufficient to survive a Rule 12 motion. The Federal Circuit found that the amended complaint adequately pled that claim 1 of the ’452 patent contained at least two inventive concepts, inventive concepts that were specific improvements over the prior art, and was therefore sufficient to overcome a Rule 12 motion.

The opinion can be found here.

By Tyler Hall

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This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.

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