Thursday, October 19, 2017

Plaintff LUFTHANSA TECHNIK AG loses at CAFC on indefiniteness issue

Proceduraly, the district court was affirmed on an alternative ground:

Lufthansa Technik AG appeals from the district
court’s grant of summary judgment of invalidity with
respect to all claims of U.S. Patent 6,016,016. Because we
conclude that the claim term “control means” is indefinite,
we affirm on that alternative ground.

Of note:

By contrast, reciting a generic term for an electronic
component is insufficient if an ordinary artisan would not
associate the claimed component with a specific, wellknown
structure. Ergo Licensing, 673 F.3d at 1365. In
Ergo Licensing, the patent claimed a “programmable
control means having data fields describing metering
properties of individual fluid flows.” Id. at 1363. The
patent disclosed a “control device” as the corresponding
structure, without any additional details about its design
or circuitry. Id. Importantly, the control device in Ergo
Licensing could have been one of “at least three different
types of control devices commonly available and used at
the time to control adjusting means.” Id. at 1364. We
held that “[t]he recitation of ‘control device’ provides no
more structure than the term ‘control means’ itself, rather
it merely replaces the word ‘means’ with the generic term
‘device.’” Id. at 1363–64. Thus, an ordinary artisan
would not associate the “control device” with a specific
electronic component. Id.

Here, every claim of the ’016 patent requires a “control
means” that is responsive to plug detection and
renders the voltage supply means operative when two
contact pins are detected within a predetermined time value.


Thus, the ’016 patent does not call out a
specific, well-known component to perform the claimed
function. Instead, the “control means” refers to a nebulous
set of logic functions within a black box that also
performs other functions. Like in Ergo Licensing, the
specification “provides no more structure than the term
‘control means’ itself.” Ergo Licensing, 673 F.3d at 1363–

Footnote 2 is of interest:

Lufthansa’s shifting approach to claim construction
underscores how, without a specific corresponding
structure, the “control means” limitation becomes whatever
structure the patentee conveniently identifies during

CAFC reverses D. Del. on obviousness in vaginal ring (NuvaRing® ) case

Procedurally, this was an appeal by patentee Merck of a finding of obviousness.
The ’581 patent in question relates to a vaginal ring used for contraception,
and its commercial embodiment is sold under
the brand name NuvaRing®. Warner Chilcott is seeking
to introduce a generic version of NuvaRing®, and concedes
that its generic product would infringe the ’581
patent if the claims are found valid.

In an appeal from the United States District Court for the
District of Delaware in No. 1:13-cv-02088-GMS, District Judge
Gregory M. Sleet, the CAFC concluded:

The dosage rates disclosed in PCT ’015, however, apply
to a two-compartment ring. Thus, an ordinary artisan
would need to calculate the relative concentrations for a
two-compartment ring, and apply those concentrations to
a single compartment. But again, PCT ’015 warns that
release rates for single compartment rings are difficult to
control. Indeed, PCT ’015 explains that its design can
achieve consistent release rates because there are two
compartments. See, e.g., J.A. 3040 at ll. 7–23 (describing
how a ring-shaped device containing two separate compartments
fulfills the requirement of a good release
pattern). Therefore, an ordinary artisan would not discard
the two-compartment design but still expect the ring
to deliver a controlled dose of both compounds.

Because it was not obvious to load the claimed concentrations
of progestogenic compounds and estrogenic
compounds in one compartment, we reverse the district
court’s finding of invalidity.

Merck wins.

The district court had treated the issue
as one of obviousness because of routine

the court reasoned that “a person of ordinary
skill would have been motivated to optimize PCT ’015
such that the second compartment released physiologically
required amounts of ETO and EE.” J.A. 19–20. The
district court also found that PCT ’015 discloses target
release rates for ETO and EE, and that “it would have
been obvious for a person of skill to derive the claimed
ratios of progestin and estrogen” from the target release
rates. J.A. 21. Accordingly, the district court held that
claims 4 and 11 are invalid as obvious.

Wednesday, October 18, 2017

CAFC affirms ITC in Cisco/Arista matter

From the case

Cisco argues that inferring is a form of detection, and therefore Arista’s products infringe. The Commission, however, had before it evidence that showed that the accused functionality, ProcMgr, has no access to a subsystem’s configuration, and thus cannot definitely know whether a configuration has changed. For example, the ProcMgr system does “not have access to each agent’s configuration. Instead, ProcMgr only determines the last time the heartbeat file was updated.” J.A. 541. Evidence showed that ProcMgr can only infer a change but it does not know what the change was, only that a change may have occurred. J.A. 6070–71. Where, like here, there is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion,” we affirm the Commission’s noninfringement determination. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). Because we affirm the Commission’s finding of no violation with respect to the ’597 patent, we do not reach Arista’s “alternative ground” for affirmance that the Commission should have reversed the ALJ’s determination that assignor estoppel barred Arista from challenging the ’597 patent under 35 U.S.C. § 101.

Judge Linn's dissent in Smart Systems; asserting majority engaging in "reductionist exercise"

Judge Linn's dissent in Smart Systems begins:

The court once again concludes that the judicially crafted “abstract idea” exception to patent eligibility now renders invalid the asserted claims of four U.S. patents covering apparatus and methods created by human activity to overcome heretofore perceived limitations in the use of ordinary bankcards to access transit systems. The majority commits the same error as the district court in engaging in a reductionist exercise of ignoring the limitations of the claims in question and, at least with respect to the ’003 and ’617 patents, in failing to appreciate that the abstract idea exception—if it is to be applied at all—must be applied narrowly, consistent with its genesis. Because the representative claims of the ’003 and ’617 patents are not directed to abstract ideas under any reasonable application of the Alice/Mayo test, I respectfully dissent. Because the majority’s determination with respect to the representative claims of the ’816 and ’390 patents is consistent with past decisions finding ineligibility, I concur with that part of its decision, not because the inventions covered by the claims do not deserve patent protection but because I am bound by precedent to reach that conclusion.

As to abstract idea:

The narrow character of the law of nature and natural phenomenon exceptions is relatively self-evident, but the contours of the abstract idea exception are not easily defined. For that reason, the abstract idea exception is almost impossible to apply consistently and coherently. To determine whether a claim is patent ineligible as merely an abstract idea, the Supreme Court instructed that the inquiry may be broken into two parts or steps: first, determine if the claim is “directed to an abstract idea,” and second, consider whether the claim contains something more in terms of an “inventive concept.” Alice, 134 S. Ct. at 2355; Mayo, 132 S. Ct. at 1296–97. The problem with this test, however, is that it is indeterminate and often leads to arbitrary results. Moreover, if applied in a legal vacuum divorced from its genesis and treated differently from the other two exceptions, it can strike down claims covering meritorious inventions not because they attempt to appropriate a basic building block of scientific or technological work, but simply because they seemingly fail the Supreme Court’s test.


Step one cannot be a hunt for the abstract idea underlying the claim, because underlying virtually every claim is an abstract idea. And if the task under step one is to assess whether the claim is directed to no more than an abstract idea, what is left for determination under step two? Where do you draw the line between properly determining what the claim is directed to and improperly engaging in an overly reductionist exercise to find the abstract idea that underlies virtually every claim? See Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016) (“At step one, therefore, it is not enough to merely identify a patent-ineligible concept underlying the claim; we must determine whether that patent-ineligible concept is what the claim is ‘directed to.’”).


Ultimately, the fundamental question in “abstract idea” cases is whether the claim is directed to such a basic building block of scientific or technological activity as to foreclose or inhibit future innovation or whether the claim instead is directed to a tangible application that serves a “new and useful end.” Benson, 409 U.S. at 67; see also Diehr, 450 U.S. at 188 (“While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.” (quoting Mackay Radio, 306 U.S. at 94)). Claims directed not merely to basic building blocks of scientific or technological activity but instead to innovative solutions to real problems that result from human activity and are not capable of performance solely in the human mind should be fully eligible for patent protection and not lightly discarded.

The dissent agreed on the 816 and 390 patents but noted:

The inventions recited in the asserted claims of both of these patents are the result of human activity and facilitate the use of bankcards for a new purpose heretofore considered practically foreclosed. Regrettably, however, and for the reasons set forth in the majority opinion, our precedent leaves no room for such an argument. The claims of the ’816 patent and the ’390 patent are directed to what we have generally characterized as a “fundamental economic practice long prevalent in our system of commerce,” see Alice 134 S. Ct. at 2356. Such inventions are categorically rejected as “abstract ideas,” regardless of merit. While I disagree with such a categorical exclusion, I am bound by the precedent cited and relied on by the majority and, for that reason, am constrained to concur with the majority’s holding of patent ineligibility of the asserted claims of the ’816 and ’390 patents.

Tuesday, October 17, 2017

COACH prevails in SD Texas; Huawei prevails in ED Texas

In Coach v. Trendy Texas, 2017 U.S. Dist. LEXIS 171103 :

Pending before the court is a motion for default judgment and permanent injunction against

defendant Trendy Texas, Inc. ("Trendy"). Dkt. 20. Trendy has not responded to the motion. Having

considered the motion and applicable law, the court is of the opinion that the motion should be


Trademarks and copyright were involved:

Plaintiffs Coach, Inc. and Coach Services, Inc. (collectively, "Coach") own the trade name

"COACH" and the trademark for various different distinctive marks relating to that name. See

Dkt. 20 (listing different marks that are registered with the U.S. Patent and Trademark Office).

Coach contends that it has continuously used and never abandoned the marks at issue in this case.

Id. Coach also has valid copyrights for the following designs: "Legacy Stripe" design, "Signature

C" design,"Op Art" design, and "Horse & Carriage" design. Id. (listing the registration numbers).

On or about August 10, 2016, undercover officers entered Trendy's location at 7171 Harwin

Drive, Suite 103, Houston, Texas, and purchased several allegedly counterfeit items that were for

sale. Id.; Dkt. 22 (affidavit of investigator). Investigators confirmed the items were counterfeit, and

then police officers [*2] re-entered with a search warrant and seized 371 purportedly Coach-trademarked

items. Dkts. 20, 22. Coach contends that Trendy has no license, authority, or permission from

Coach to use its trademarks, trade dress, copyrights, or design elements. Dkt. 20. Coach asserts that

Trendy has engaged in illegal counterfeiting and infringing activities negligently or knowingly and

intentionally and with reckless disregard or willful blindness, or with bad faith. Id. Moreover,

Coach alleges that Trendy's activities are likely to create a false impression and deceive consumers

into believing its products have a connection with Coach. Id.

Separately, Huawei did well against T-Mobile in ED Texas ( 2017 U.S. Dist. LEXIS 170481 ):


(1) Huawei's motion to strike portions of Dr. Lyon's invalidity reports, Dkt. 243, is GRANTED. Paragraphs 157-159, and 211-214 in Dr. Lyon's '575 Patent Invalidity Report, Dkt. 243-2, and paragraphs 103 (only the discussion of the Nortel reference), 179-182, 315-346, and 537-552 in Dr. Lyon's '675 and '627 Patent Invalidity Report, Dkt. 243-3, are STRICKEN from the reports.

(2) T-Mobile and Intervenors' Daubert motion to exclude Dr. Leopold's Opinions Concerning Prior Art, Dkt. 247, is DENIED.

(3) Huawei's motion for leave to supplement Dr. Leopold's and Dr. Wells' expert reports, Dkt. 336, is GRANTED. T-Mobile and Intervenors are given leave to promptly supplement the report of their expert, Dr. David Lyon, with a response to the new opinions.

CAFC affirms 101 patent ineligibility in SECURED MAIL SOLUTIONS LLC

A decision of CD Cal was affirmed by the CAFC in Secured Mail Solutions, 2017 U.S. App. LEXIS 20105.

Alice is cited:

In Alice, the Supreme Court applied a two-step framework for analyzing whether claims are patent-eligible under section 101. First, we determine whether the claims at issue are "directed to" a judicial exception, such as an abstract idea. 134 S. Ct. at 2355. If not, the inquiry ends. Thales Visionix Inc. v. United States, 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are determined to be directed to an abstract idea we next consider under step two whether the claims contain an "inventive concept" sufficient to "transform the nature of the claim into a patent-eligible application." Alice, 134 S. Ct. at 2355.

Enfish is discussed:

On appeal, Secured Mail argues that its claims are patent-eligible under Enfish, an opinion issued after the district court's decision in this case. In particular, the district court quoted the since-reversed district court decision in Enfish to hold that courts "should recite a claim's purpose at a reasonably high level of generality." Secure Mail, 169 F. Supp. 3d at 1048 (quoting Enfish, LLC v. Microsoft Corp., 56 F. Supp. 3d 1167, 1173 (C.D. Cal. 2014), rev'd, 822 F.3d 1327 (Fed. Cir. 2016)). The Federal Circuit in Enfish held that the district court had described the claims at too high a level of abstraction, and "describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule." 822 F.3d at 1337. Here, despite the district court's statement that "a reasonably high level of generality" should be used, the district court's analysis correctly found that Secured Mail's claims are directed [*9] to an abstract idea.

The court in Enfish held the claims relating to a computer database implementation to be patent-eligible under Alice step one because the claims focused on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity. Id. at 1332-33. The claims in Enfish related to organization of data in a table in computer memory and a system for indexing that data. Id. at 1332-332. In contrast, the claims of Secured Mail's patents are not directed to an improvement in computer functionality. For example, the claims are not directed to a new barcode format, an improved method of generating or scanning barcodes, or similar improvements in computer functionality.

CAFC affirms PTAB's inter partes review decisions in Boundary Solutions

Within Boundary Solutions v. CoreLogic, 2017 U.S. App. LEXIS 20214 (CAFC) :

Rather than look to whether individual elements of the Asserted Claims are present in the prior art, the actual question we must address is whether the PTAB's determination, that the "subject matter as a whole" would have been obvious, 35 U.S.C. § 103(a), is supported by substantial evidence. "[T]he test for obviousness is what the combined teachings of the references would have suggested to [a PHOSITA]." In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (emphasis added); see In re Keller, 642 F.2d 413, 426 (C.C.P.A. 1981) ("[One] cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references."). Through this lens, we address BSI's conten-tion that the combined teachings of Harder and Longley do not disclose a "jurisdiction look up table."


We do not agree with BSI's contention that there is nothing to support a finding that a PHOSITA would be motivated to combine Harder and Longley. See Appel-lant's Br. 29; Reply Br. 22-25. As CoreLogic's expert, Michael Goodchild, explained, and the PTAB found per-suasive, see J.A. 21-22, it would have been obvious to a PHOSITA to modify the GIS database system of Harder to use an index for locating jurisdictional identifiers associated with parcel data in the database as disclosed by Longley "to more easily manage parcel information across multiple jurisdictions" and make "searching parcel data more efficient," J.A. 416-17. On appeal, BSI avers that its expert, Mr. William Huxhold, offered more accurate testimony regarding the motivation to combine. See Appellant's Br. 32-34. However, we have repeatedly stated that "[w]e may not reweigh evidence on appeal." Warsaw, 832 F.3d at 1333. CoreLogic's expert testimony, along with the PTAB's other findings, is sufficient to support a conclusion that a PHOSITA would have been motivated to combine Harder and Longley.


An upcoming law review article in the Marquette law journal by Judge John J. Mulrooney had the distinction of being cited by "60 Minutes" on Sunday, 15 October 2017.


The conclusion of this article:

As administrative litigation regarding practitioner sanctions has become increasingly complex and nuanced, a greater degree of specialized knowledge of the practice and advance preparation are required to avoid unintended, adverse results. An unprepared or unschooled counsel can unwittingly choose a tactic or make a concession that can result in the loss of a medical or pharmaceutical practitioner's livelihood. Gone are the days when an able litigator can step in at the last minute with a plan no more complex than testing the other side's evidence and realistically anticipate a good result. The stakes are simply too high, and many of the tried and true tactical allies of the experienced trial lawyer operate in a different dimension in these proceedings. An ill-advised concession can be as disastrous as an across-the-board demurer. [*396] Representation in this forum requires a skillful trial attorney who, at a minimum, has acquired an understanding of the CSA, its attendant regulations, and the circuit and Agency precedents that serve as the navigation points through the murky, drug-infested waters of diversion litigation.

Footnote 444 discusses arbitrary and capricious:

Humphreys v. DEA, 96 F.3d 658, 660 (3d Cir. 1996) (citing 5 U.S.C. § 706(2)(A) (2012)); Trawick v. DEA, 861 F.2d 72, 77 (4th Cir. 1988); accord Craker v. DEA, 714 F.3d 17, 26 (1st Cir. 2013) ("[An agency] decision is arbitrary and capricious "if the agency has relied on factors which Congress has not intended it to consider, entirely failed to consider an important aspect of the problem, offered an explanation for its decision that runs counter to the evidence before the agency, or is so implausible that it could not be ascribed to a difference in view or the product of agency expertise.'" (quoting Motor Vehicle Mfrs. Ass'n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983))); Morall, 412 F.3d at 178.

Of the article to be published in Marquette Law Review and mentioned on "60 Minutes", the Milwaukee Journal Sentinel noted:

But a soon-to-be-published article in the review has emerged as a key piece in an explosive investigative report that claims Congress helped disarm the Drug Enforcement Administration even as the country was dealing with a spiraling opioid crisis.

The article, to appear in the review's winter issue, was written by DEA Administrative Law Judge John J. Mulrooney II, and his former legal clerk, Katherine E. Legel, a recent Marquette University Law School graduate.

Mulrooney and Legel sought to detail the impact of an April 2016 law passed by Congress that critics say diminished the agency's authority over drug distributors.

"If it had been the intent of Congress to completely eliminate the DEA’s ability to ever impose an immediate suspension on distributors or manufacturers, it would be difficult to conceive of a more effective vehicle for achieving that goal," the article says, according to a draft.

In a joint investigation, the Washington Post and CBS News' "60 Minutes" found "a handful of members of Congress, allied with the nation’s major drug distributors, prevailed upon the DEA and the Justice Department to agree to a more industry-friendly law, undermining efforts to stanch the flow of pain pills."


Thursday, October 12, 2017

Biogen and Roche on MS drug Ocrevus [ocrelizumab ]

From a post at Reuters :

U.S.-based Biogen is entitled to between 13.5 and 24 percent of U.S. sales and 3 percent of sales elsewhere from Roche’s new multiple sclerosis drug Ocrevus, whose annual revenue may hit $4 billion by 2022.

from Double Whammy for Roche

See also previous IPBiz post:

Lipoic acid and secondary progressive multiple sclerosis

“Inadvertent repetition of biographical boilerplate was not an egregious theft intentionally performed?”.

A post at the Guardian on the Bialosky matter begins:

More than 70 authors, including Pulitzer prize winners Jennifer Egan and Louise Glück, have come to the defence of the editor and poet Jill Bialosky after she was accused of plagiarism, saying that Bialosky’s “inadvertent repetition of biographical boilerplate was not an egregious theft intentionally performed”.

The problem with the word "inadvertent" is that there was a deliberate substitution of certain words to avoid explicit word-for-word plagiarism; as noted in the Guardian:

Logan provided examples of Bialosky’s writing and the passages from Wikipedia, adding that “many of Bialosky’s changes here and elsewhere – ‘barely’ for ‘seldom’, ‘verse’ for ‘poetry’, ‘unleashed’ for ‘gave rise to’, ‘total’ for ‘complete’ – are the slight, guilty revisions of the serial plagiarist”.


Owens Corning wins at CAFC

Fast Felt Corporation owns U.S. Patent No. 8,137,757, which describes and claims methods for printing nail tabs or reinforcement strips on roofing or building cover material. Fast Felt sued Owens Corning for infringement, and Owens Corning then filed a petition with the Patent and Trademark Office (PTO) seeking an inter partes review of claims 1, 2, 4, 6, and 7 under 35 U.S.C. §§ 311–19. The Patent Trial and Appeal Board, acting as the delegate of the PTO’s Director under 37 C.F.R. § 42.4(a), instituted a review of all of the challenged claims on grounds of obviousness. Institution of Inter Partes Review at 26, Owens Corning v. Fast Felt Corp., No. IPR2015-00650 (P.T.A.B. Aug. 13, 2015), Paper No. 9 (Institution Decision). After conducting the review, the Board concluded that Owens Corning had failed to show obviousness of any of the challenged claims. Final Written Decision, Owens Corning v. Fast Felt Corp., No. IPR2015-00650, 2016 WL 8999740, at *23 (P.T.A.B. Aug. 11, 2016) (Final Decision).

Owens Corning appeals from the Board’s decision. It contends that, once the key claim term is given its broadest reasonable interpretation, the record conclusively establishes obviousness. We agree, and we reverse the Board’s decision.


Owens Corning first argues that the Board, when evaluating obviousness in light of the prior art, at least implicitly adopted an erroneous claim construction. Specifically, it contends that the Board effectively treated the “roofing or building cover material” as limited to material that either has been or would be coated or saturated with asphalt or asphalt mix. And it contends that such a construction is legally incorrect under the broadest-reasonable-interpretation standard applicable in the IPR. We agree as to both parts of this contention


In this case, it is not necessary or appropriate to remand for the Board to reassess the evidence in light of the correct claim construction. On the evidence and arguments presented to the Board, there is only one possible evidence-supported finding: the Board’s rejection of Owens Corning’s challenge, when the correct construction is employed, is not supported by substantial evidence. See, e.g., Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077, 1082 (Fed. Cir. 2015) (reversing rejection of IPR challenge). Moreover, in this court, after Owens Corning sought outright reversal on this ground in its opening brief, Fast Felt in its responsive brief did not ask for a remand if this court adopted a claim interpretation not limited by any requirement of asphalt coating or saturation.


Owens Corning’s petition did not restrict the claim scope based on coating or saturation; the Institution Decision did not adopt such a limiting construction, Institution Decision at 5; and when Fast Felt relied on a limitation based on asphalt coating or saturation in its Patent Owner’s Response, Owens Corning clearly asserted in its Reply that “Asphalt Saturated Substrates Cannot Be Used To Distinguish The Prior Art Because No Such Limitation Is Recited In The Claims,” J.A. 339. In these circumstances, where only one answer is supported by substantial evidence and there is neither a request nor an apparent reason to grant a second record-making opportunity, reversal is warranted.

The CAFC addresses Grammatical Ambiguity in Organik Khimya

Grammatical Ambiguity

Organik also argues that the ’435 specification provides an open-ended definition of “swelling agent,” and that the Board improperly adopted the narrower of two possible constructions of a “grammatically ambiguous passage.” Organik Br. 34. Organik argues that the broader construction of any ambiguity is required by law, citing In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268, 1275-79 (Fed. Cir. 2015), aff’d sub nom. Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), as authorizing the broadest reasonable construction in PTO examination practice. The asserted ambiguity is in the following passage in the specification:

Suitable swelling agents include, are those which, in the presence of the multistage emulsion polymer and monomer, are capable of permeating the shell and swelling the core. Swelling agents may be aqueous or gaseous, volatile or fixed bases or combinations thereof.

Thursday, October 05, 2017

CAFC in Amgen v. Sanofi

Appellants Sanofi, Aventisub LLC, Regeneron Pharmaceuticals
Inc., and Sanofi-Aventis U.S., LLC (collectively,
“Appellants”) appeal from a final judgment of the
district court holding U.S. Patent Nos. 8,829,165 (“’165
patent”) and 8,859,741 (“’741 patent”) not invalid and
granting a permanent injunction enjoining sales of Appellants’
Praluent® alirocumab (“Praluent”).1 In particular,
Appellants argue that the district court improperly excluded
evidence regarding written description and enablement,
improperly instructed the jury on written
description, improperly denied Appellants’ motion seeking
JMOL of no written description and no enablement,
improperly granted Appellees’ motion seeking JMOL of
non-obviousness, and improperly issued the permanent
injunction. Appellants’ Br. 1. Because we conclude that
the district court (i) erred by excluding Appellants’ evidence
regarding written description and enablement, and
(ii) improperly instructed the jury on written description,
we reverse-in-part and remand for a new trial on written
description and enablement. We also conclude that
Appellants are not entitled to JMOL of no written description
and no enablement. We affirm the district
court’s grant of Appellees’ JMOL of non-obviousness.
Finally, we vacate the district court’s permanent injunction.

En banc CAFC in Aqua: very little but cogitations and academic exercises?

The en banc CAFC in Aqua v. Matal noted:

Upon review of the statutory scheme, we believe that
§ 316(e) unambiguously requires the petitioner to prove
all propositions of unpatentability, including for amended
claims. This conclusion is dictated by the plain language
of § 316(e), is supported by the entirety of the statutory
scheme of which it is a part, and is reaffirmed by reference
to relevant legislative history. Because a majority of
the judges participating in this en banc proceeding believe
the statute is ambiguous on this point, we conclude in the
alternative that there is no interpretation of the statute
by the Director of the Patent and Trademark Office
(“PTO”) to which this court must defer under Chevron,
U.S.A. Inc. v. Natural Resources Defense Council, Inc.,
467 U.S. 837 (1984). And we believe that, in the absence
of any required deference, the most reasonable reading of
the AIA is one that places the burden of persuasion with
respect to the patentability of amended claims on the
petitioner.1 Finally, we believe that the Board must
consider the entirety of the record before it when assessing
the patentability of amended claims under
§ 318(a) and must justify any conclusions of unpatentability
with respect to amended claims based on that record.

Because the participating judges have different
views—both as to the judgment we should reach and as to
the rationale we should employ in support of that judgment,
as explained below, today’s judgment is narrow.
The final written decision of the Board in this case is
vacated insofar as it denied the patent owner’s motion to
amend the patent. The matter is remanded for the Board
to issue a final decision under § 318(a) assessing the
patentability of the proposed substitute claims without
placing the burden of persuasion on the patent owner.

Footnote 1 notes:

To the extent our prior decisions in Microsoft
Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015);
Prolitec, Inc. v. ScentAir Techs., Inc., 807 F.3d 1353 (Fed.
Cir. 2015), petition for reh’g pending; Synopsys, Inc. v.
Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016);
and Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir.
2016), are inconsistent with this conclusion, we overrule
those decisions.

Within the conclusion

This process has not been easy. We are proceeding
without a full court, and those judges who are participating
disagree over a host of issues. As frustrating as it is
for all who put so much thought and effort into this matter,
very little said over the course of the many pages that
form the five opinions in this case has precedential
weight. The only legal conclusions that support and
define the judgment of the court are: (1) the PTO has not
adopted a rule placing the burden of persuasion with
respect to the patentability of amended claims on the
patent owner that is entitled to deference; and (2) in the
absence of anything that might be entitled deference, the
PTO may not place that burden on the patentee. All the
rest of our cogitations, whatever label we have placed on
them, are just that—cogitations. Even our discussions on
whether the statute is ambiguous are mere academic