Yita LLC v. MacNeil IP LLC, Appeal Nos. 2022-1373, -1374 (Fed. Cir. June 6, 2023)
In appeals from two inter partes reviews before the Patent Trial and Appeal Board (the Board) on related patents, the Federal Circuit affirmed the Board’s judgment upholding claims of one patent and reversed the Board’s judgment of nonobvious as to other patent. The Court’s decision is notable in the latter case for its review of the Board’s analysis of secondary considerations of non-obviousness, as the Federal Circuit held that where commercial success is due to a feature of the patented invention that was known in the prior art, it does not establish a “nexus” sufficient to support the non-obviousness of the claims. Readers are also encouraged to read the other cases discussed in our other write-ups below—the Court considered several cases this week where the question of obviousness turned on the “objective indicia” or “secondary considerations” factors.
U.S. Patent No. 8,382,186, owned by MacNeil IP LLC, addresses a vehicle floor tray thermoformed from a polymer sheet of substantially uniform thickness that is intended to have a close conformance to the vehicle foot well and stay in place once installed. Yita LLC petitioned for IPRs of the ’186 and a related patent, challenging all claims. During its review of the ’186 patent, the Board determined that a relevant artisan would have been motivated to combine—and had a reasonable expectation of success in combining—the teachings of three asserted prior-art references. Nonetheless, the Board rejected Yita’s obviousness challenge because it found that MacNeil’s evidence of secondary considerations was compelling and indicative of non-obviousness. In so finding, the Board recognized that “to accord substantial weight to secondary considerations, there must be a ‘legally and factually sufficient connection’”—i.e., a nexus—“between the evidence and the patented invention.” And “if the marketed product embodies the claimed features, and is coextensive with them, then a nexus is presumed.” Despite finding that the prior art disclosed the close conformance limitation, the Board found that MacNeil was nonetheless entitled to a presumption of nexus because (1) the evidence did not establish that close conformance was “well-known” and (2) MacNeil’s vehicle trays embody the claimed invention and are coextensive with the claims.
On appeal, the Federal Circuit principally addressed Yita’s argument that the Board made a result-determinative legal error regarding MacNeil’s secondary-consideration evidence in rejecting Yita’s challenge. The Federal Circuit rejected the Board’s two reasons for finding that the prior art’s disclosure of the close conformance limitation did not undermine any nexus between the products’ commercial success and the claimed invention.
First, the Federal Circuit held it was legally incorrect for the Board to find the prior art did not establish that close conformance was “well known.” The Court emphasized that the case law makes clear that “objective evidence of nonobviousness lacks a nexus if it exclusively relates to a feature that was ‘known in the prior art’”—not necessarily “well known.” The Court further emphasized that, where prior art teaches a feature that a relevant artisan would have been motivated to combine with other prior-art teachings and have a reasonable expectation of success to arrive at the claimed invention, a secondary consideration related exclusively to that feature does not logically undermine the inference from those premises that the claimed invention would have been obvious from the full body of prior art.
Second, the Federal Circuit corrected the Board’s interpretation of its case law, which the Board found instructed that the claimed combination as a whole serves as the nexus for secondary considerations of non-obviousness. In other words, the Board reasoned that proof of nexus is not limited to only when objective evidence is tied to the supposedly “new” features. The Federal Circuit explained that this was incorrect, and that its precedent recognized that secondary-consideration evidence may be linked to an individual element of the claimed invention or to the inventive combination of known elements in the prior art. The Court further explained that the Board’s rationale was only applicable when no single feature (and only the combination) is responsible for the secondary consideration evidence. Here, the Board was required to deny force to the secondary considerations that were exclusively related to a single feature in the prior art—namely the close-conformance limitation.
The opinion can be found here.
By Mario A. Delegato
ALSO THIS WEEK
Blue Gentian, LLC v. Tristar Products, Inc., Appeal Nos. 2021-2316, -2317 (Fed. Cir. June 9, 2023)
In this case, the Federal Circuit affirmed a district court’s finding for appellee Tristar on Tristar’s correction-of-inventorship counterclaim under 35 U.S.C. § 256. The decision required non-party Gary Ragner to be added as an inventor to four utility patents and two design patents owned by Blue Gentian and originally listing Blue Gentian’s principal Michael Berardi as the sole inventor. The patents were all directed to an expandable water hose. The evidence showed that Mr. Ragner had sought an investment from Mr. Berardi for Mr. Ragnar’s own expandable hose product, had showed Mr. Berardi confidential information and a prototype during a meeting at Mr. Berardi’s house for that purpose, and had discussed aspects of its construction with Mr. Berardi at the meeting. Immediately after the meeting, Mr. Berardi had begun constructing prototypes of the expandable hose that would ultimately be claimed in the patents.
The Federal Circuit considered issues pertaining to contribution, corroboration, and collaboration. The Court rejected Blue Gentian’s argument that claim construction was always required before performing a contribution analysis, holding that, as in other contexts, claim construction was required only to resolve material disputes about the scope of the claims and finding that Blue Gentian had not demonstrated how the contribution analysis may have been impacted by any particular construction. The Court also affirmed that Mr. Ragner had meaningfully contributed to the conception of the design patents where the claimed design—described as a “crumpled” look to the hose—was a result of Mr. Ragner’s functional contributions to the invention.
The Court also found Mr. Ragnar’s testimony on contribution sufficiently corroborated under a rule-of-reason analysis. Specifically, while other meeting attendees could not fully corroborate exactly what Mr. Ragnar communicated to Mr. Berardi, the Court found that the strong evidence of similarity between Mr. Ragnar’s own in-process design and the prototype that Mr. Berardi constructed immediately after the meeting, among other physical and documentary evidence, was sufficient to find credible Mr. Ragnar’s account of his direct contributions. The Court also rejected Blue Gentian’s argument that Mr. Ragnar needed to have intended to invent the expandable hose ultimately claimed in the patents, holding that such a “unity of vision” was not required to find that Mr. Ragnar and Mr. Berardi collaborated on the invention. Accordingly, the Federal Circuit affirmed the district court’s determination that Mr. Ragner should have been named as an inventor on all six patents.
The opinion can be found here.
By Jason Wrubleski
Medtronic, Inc. v. Teleflex Innovations S.A.R.L., Appeal Nos. 2021-2357, -2360, -2364 (Fed. Cir. June 5, 2023)
In an appeal from inter partes reviews finding three patents not invalid as obvious, the Federal Circuit affirmed. The Court also affirmed the Board’s decision granting Teleflex’s motion to amend certain claims of two of the patents. This 35-page opinion concerns Teleflex’s patents directed to catheters used in interventional cardiology. The prima facie case of obviousness—considering the disclosures in the prior art and the motivations to combine those disclosures—was a “close case.” Thus, the analysis largely turned on objective indicia of nonobviousness presented by Teleflex. The Court considered a number of appeals concerning the legal standards applied by the Board and the analyses it used in its obviousness analysis, including nexus between the objective indicia and the patented invention, copying, commercial success, industry praise, and long-felt-but-unsolved needs. The Court found that each of these factors was appropriately found in Teleflex’s favor, providing “strong evidence” that the patented inventions were not obvious. With respect to copying, the Court held that direct evidence of copying is not required—an inference of copying, similar to that allowed in the copyright context, is sufficient to support the use of copying as objective indicia of nonobviousness. The Court also considered the Board’s prima facie case and found it did not commit legal error. The Court also affirmed the Board’s decision to allow amendment of certain claims, finding that the written description of the parent patent supported the claims and that the claims were not obvious.
The opinion can be found here.
By Nika Aldrich
Medtronic, Inc. v. Teleflex Innovations S.A.R.L., Appeal Nos. 2021-2359, -2362, -2366 (Fed. Cir. June 5, 2023)
In a related case, the Federal Circuit affirmed the Board’s findings of nonobviousness in relation to a number of other claims directed to the same family of patents discussed immediately above. A primary issue was the Board’s analysis concerning a particular piece of prior art, and whether it would have been obvious to remove a feature from it. Medtronic challenged the Board’s decision as legal error, arguing it conflicted with Intel Corp. v. Qualcomm Inc., in which the Federal Circuit held that the “intended purpose of [a reference] does not control” the obviousness inquiry. But the Court held that the issue here was one of fact. The Board found that this prior art taught away from removing the feature from the device at issue because such an alteration would have undermined a goal that the prior art shared with the challenged claims. The Court held that “[t]he Board reasonably recognized that modifying a device in a manner that would undermine a purpose it shares with the challenged claims counsels against a motivation to make such modifications.” The Court held that Intel was both consistent with the Board’s analysis but distinguishable from the facts here. The Court also considered several other factual conclusions by the Board and found no error. The Court also found that proposed substitute claims were patentable and supported by adequate written description and that the Board’s decisions concerning those substitute claims did not conflict with the Board’s other decisions.
The opinion can be found here.
By Nika Aldrich
This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.