Sunday, March 13, 2011

CAFC affirms obviousness of Infosint's patent claims

PatentDocs covered the Infosint case in June 2010:

On June 17, Judge Lewis Kaplan of the U.S. District Court for the Southern District of New York granted the defendants judgment as a matter of law, finding Infosint's '973 patent invalid for obviousness. Judge Kaplan rejected Infosint's arguments for nonobviousness as being unpersuasive, and ruled that the method in the '973 patent was merely an obvious optimization. The judge was not convinced that any of the improvements claimed, including temperature optimization and the use of a specific reactor type, would have been beyond someone with ordinary skill in the art. Consequently, Judge Kaplan declared the '973 patent invalid, and granted the defendant's motion for judgment as a matter of law. Judge Kaplan also denied Infosint's motion to increase the $15 million reasonable royalty award to $43 million by adding additional damages and interest.

The CAFC affirmed the SDNY decision on March 11, 2011.

The SDNY decision had cited Integra:

See Integra Lifesciences I, Ltd. v. Merck KGaA, 496 F.3d 1334, 1345 (Fed. Cir. 2007)
(“[T]he court should give credence to the evidence favoring the nonmovant as well as that
‘evidence supporting the moving party that is uncontradicted and unimpeached.’” (quoting
9A WRIGHT & MILLER § 2529)) (reversing jury finding of patent infringement as
unsupported by substantial evidence); PharmaStem Therapeutics, Inc., 491 F.3d at 1351
(reversing jury finding of infringement, crediting “uncontradicted evidence at trial” that
favored defendant); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1362 (Fed. Cir. 2007)
(reversing jury verdict and holding patent obvious as matter of law, finding that “unrebutted
testimony from [defendant’s] expert, which we find compelling, supports an inference that
the skilled artisan actually would have been encouraged, rather than discouraged” to
combine prior art references); see also County of Suffolk v. Long Island Lighting Co., 907
F.2d 1295, 1314-15 (2d Cir. 1990) (affirming district court’s grant of motion for judgment
notwithstanding verdict in fraud suit and stating that “unimpeached and uncontradicted
evidence favorable to the movant [] can be considered by us in evaluating the merits of a
denial of a motion for judgment n.o.v.”) (citing 9A WRIGHT & MILLER § 2529).

Of teaching away:

“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.” A reference, however,
does not teach away if it “merely expresses a general preference for an alternative invention but does
not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.”42

Of what happens when one does NOT assert unexpected results:

As an initial matter, Infosint does not contend that the use of an open, non-pressurized
reactor produced any unexpected or superior results. Moreover, Infosint’s evidence of unexpected
results is insubstantial because it does not compare the claimed process to Forney 1970, which, as
shown above, discloses each limitation of Claim 24, including open, non-pressurized conditions. In
any event, evidence of unexpected results is not availing where, as here, there is an overwhelming
prima facie case of obviousness.66

Footnote 66: See Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 1342-43 (Fed Cir. 2008) (“Even
when we presume the jury found that the objective evidence of nonobviousness favored
Agrizap, this evidence is insufficient to overcome the overwhelming strength of
Woodstream’s prima facie case of obviousness.”); Pfizer, Inc., 480 F.3d at 1372 (“[W]e
hold that even if Pfizer showed that amlodipine besylate exhibits unexpectedly superior
results, this secondary consideration does not overcome the strong showing of obviousness
in this case. . . . Here, the record establishes such a strong case of obviousness that Pfizer’s
alleged unexpectedly superior results are ultimately insufficient.”).

** Of confirmation of pre-existing beliefs being obvious:

The Federal Circuit has explained that the use of
“routine research methods to prove what was already believed to be the case” is within the skill of
the art.68

footnote 68: PharmaStem Therapeutics, Inc., 491 F.3d at 1363-64 (Fed. Cir. 2007); see also Ritchie v.
Vast Res., Inc., 563 F.3d 1334, 1337 (Fed. Cir. 2009).

** Footnote 73 invokes KSR:

See KSR Int’l Co., 550 U.S. at 421, 127 S. Ct. at 1742 (“When there is a design need or
market pressure to solve a problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue the known options within his
or her technical grasp. If this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that instance the fact that a
combination was obvious to try might show that it was obvious under § 103.”) (holding that
court of appeals “conclude[d], in error, that a patent claim cannot be proved obvious merely
by showing that the combination of elements was ‘obvious to try’”); see e.g., Bayer
Schering Pharma AG v. Barr Labs., Inc., 575 F.3d 1341 (Fed. Cir. 2009) (“[T]he prior art
was not vague in pointing toward a general approach or area of exploration, but rather
guided the formulator precisely to the use of either a normal pill or an enteric-coated pill .
. . . Because the selection of micronized drospirenone in a normal pill led to the result
anticipated by the Krause series, the invention would have been obvious.”); Ecolab, Inc. v.
FMC Corp., 569 F.3d 1335, 1349-50 (Fed. Cir. 2009) (holding claimed method obvious
where all but one limitation disclosed in single prior art reference, and the “advantages” of
the additional limitation, pressure of “at least 50 psi,” “were known”); Pfizer, Inc., 480 F.3d
at 1366-67 (holding patent obvious where prior art “clearly pointed the skilled artisan to 53
anions that, as of 1974, were pharmaceutically acceptable” and “one of ordinary skill in the
art was capable of further narrowing that list of 53 anions to a much smaller group,
including benzene sulphonate, with a reasonable expectation of success”).


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