Thursday, September 03, 2015

Dome loses appeal related to US Patent 4,306,042

Dome lost its appeal to the CAFC:

Dome owns a patent for making contact-lens material.
On reexamination, the U.S. Patent and Trademark Office
found that the claimed method at issue was obvious and
therefore unpatentable. The district court agreed with
the Patent Office that the claimed method was unpatentable.
On appeal, Dome challenges both the standard of
review employed by the district court and the court’s
ultimate conclusion on obviousness. Because we conclude
that the district court applied the proper legal standard
and because its factual findings were not clearly erroneous,
we affirm.


In June 1999, the Patent Office ordered reexamination
and, as a result, the district court stayed litigation
pending a final determination in the reexamination
proceeding. The Patent Office confirmed the patentability
of claims 2, 3, and 4 of the ’042 patent, but it found claim
1 obvious under 35 U.S.C. § 103(a) (2006).

As to the evidentiary burden:

Before reaching Dome’s appeal of the obviousness
conclusion, we first address Dome’s allegation that the
district court erred by only requiring the Patent Office to
show that claim 1 of the ’042 patent is obvious by a preponderance
of the evidence, rather than by clear and
convincing evidence. We conclude that the district court
correctly applied the preponderance of the evidence


Alternatively, for ex parte reexaminations filed before
November 29, 1999, a complaint can be filed in district
court against the Patent Office. See 37 C.F.R. § 1.303(a)
(2012); 35 U.S.C. § 145 (“The [district] court may adjudge
that such applicant is entitled to receive a patent for his
invention, . . . and such adjudication shall authorize the
Director to issue such patent . . . .”). “The thrust of such a
complaint is that the decision of the board is erroneous on
the facts, the law, or both. Indeed, the board’s decision is
the jurisdictional base for the suit. . . . [I]t is in essence a
suit to set aside the final decision of the board.” Fregeau
v. Mossinghoff, 776 F.2d 1034, 1036–37 (Fed. Cir. 1985).
Accordingly, if the Patent Office decides after an ex
parte reexamination that a preponderance of the evidence
establishes the claimed subject matter is not patentable,
§ 145 authorizes the district court to review whether that
final decision is correct. The § 145 action in such a case
does not concern the different question of whether, as part
of a defense to an infringement action, clear and convincing
evidence establishes that an issued and asserted
patent should be held invalid. See id. at 1037 (“it cannot
seriously be contended that a § 145 action is other than
one to overturn the board’s decision”).
Citing 35 U.S.C. § 282 and Microsoft Corp. v. i4i Ltd.
Partnership, 131 S. Ct. 2238 (2011), Dome argues that the
district court erred by refusing to hold the Patent Office to
the clear and convincing evidence standard of proof.
According to Dome, the presumption of validity in § 282
applies to its claimed invention because the district court
action concerns a claim that the Patent Office previously
allowed to be patented.


The clear and convincing evidence standard in the litigation
context “stems from our suggestion that the party
challenging a patent in court ‘bears the added burden of
overcoming the deference that is due to a qualified government
agency presumed to have done its job.’” Sciele
Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1260 (Fed. Cir.
2012) (quoting PharmaStem Therapeutics, Inc. v. ViaCell,
Inc., 491 F.3d 1342, 1366 (Fed. Cir. 2007)). But “[i]n
reexamination proceedings, ‘a preponderance of the
evidence must show nonpatentability before the [Patent
Office] may reject the claims of a patent application.’”
Rambus, 731 F.3d at 1255 (quoting Ethicon, Inc. v. Quigg,
849 F.2d 1422, 1427 (Fed. Cir. 1988)). This standard is
“substantially lower than in a civil case, . . . [and] there is
no presumption of validity.” In re Swanson, 540 F.3d
1368, 1377 (Fed. Cir. 2008) (citations omitted).
“[A]n examiner is not attacking the validity of a patent,
but is conducting a subjective examination of claims
in the light of prior art.” In re Etter, 756 F.2d 852, 857–58
(Fed. Cir. 1985); see also id. at 857 (“litigation and reexamination
are distinct proceedings, with distinct parties,
purposes, procedures, and outcomes”). When the Patent
Office institutes ex parte reexamination, it reopens prosecution
to determine whether the claimed subject matter
should have been allowed in the first place. At that point,
there is no need to presume that the Patent Office had
“done its job” in the previous examination. Accordingly,
the presumption of validity is no longer applicable.
Our conclusion aligns with the purpose of the reexamination
process, which includes allowing the Patent Office
to take a second look at “patents thought ‘doubtful.’” In re
Etter, 756 F.2d at 857 (quoting H.R. Rep. No. 66-1307, at
3–4 (1980), reprinted in 1980 U.S.C.C.A.N. 6460, 6462).
“In a very real sense, the intent underlying reexamination
is to ‘start over’” in the Patent Office. Id. We would
hinder this intent if we required the district court here to
presume that the reexamined claim is valid because of the
Patent Office’s previous determination and, consequently,
to impose a burden to defend its own subsequent reexamination
decision by clear and convincing evidence.

As to the obviousness issue

If all elements of a claim are found in the prior art, as
is the case here, the factfinder must further consider the
factual questions of whether a person of ordinary skill in
the art would be motivated to combine those references,
and whether in making that combination, a person of
ordinary skill would have had a reasonable expectation of
success. Id. at 1164. The Supreme Court has cautioned,
however, that an obviousness determination cannot be
confined by formalistic rules. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 419 (2007). Rather, courts must take
an “expansive and flexible approach” to the question of
obviousness. Id. at 415.
Evidence of a motivation to combine prior art references
may flow from “‘the nature of the problem to be
solved.’” Tokai Corp. v. Easton Enters., Inc., 632 F.3d
1358, 1371 (Fed. Cir. 2011) (quoting Ruiz v. A.B. Chance
Co., 357 F.3d 1270, 1276 (Fed. Cir. 2004)). Here, the
record supports the district court’s finding that a person
of ordinary skill understood that high oxygen permeability
in contact-lens materials was desirable.


The record, however, supports the district court’s finding
that other prior art references disclose roadmaps on
how to offset the disadvantages associated with using
Tris-type monomers to obtain a material suitable for
contact lenses.


While Dome’s argument that the claimed subject matter
would not have been obvious in light of Tanaka’s
disclosures is plausible, “[t]he burden of overcoming the
district court’s factual findings is, as it should be, a heavy
one.” Polaroid Corp. v. Eastman Kodak Co., 789 F.2d
1556, 1559 (Fed. Cir. 1986). Our standard of review
requires that we uphold the district court’s factual findings
on this point, rather than revisiting them de novo. In
this case, the district court did not clearly err in finding a
person of ordinary skill would have been motivated to
combine the identified prior art to arrive at the claimed
invention, notwithstanding Tanaka’s disclosures regarding
Tris-type compounds.



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