Fresh From the Bench: Latest Precedential Patent Case

CASE OF THE WEEK

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.

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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 opinion can be found here.

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.

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.

Editors:

Nika Aldrich, IP Litigation Group Leader, Schwabe, Williamson & Wyatt, P.C.

Jason A. Wrubleski, Shareholder

Contributor:

Mario E. Delegato, Associate