Precedential Federal Circuit Opinions
1. BLUE GENTIAN, LLC v. TRISTAR PRODUCTS, INC. (21-2316, 6/9/23) (Prost, Chen, and Stark)
Prost, J. The Court affirmed the district court’s decision finding that a nonparty should have been named an inventor. On contribution, the Court declined to require courts to prospectively address hypothetical claim construction disputes before making inventorship determinations, where no dispute about claim scope was presented. Next, the Court explained that for a determination of significant contribution, key features that the patent owner itself acknowledges distinguish the invention of the patents from the prior art are necessarily tied to the claims. With respect to the design patents, no one disputed that the identified key features necessarily contributed to the patented designs. Furthermore, the Court rejected arguments that the inventor’s contributions were mere explanations of the state of the art because the proper lens requires considering the elements in combination, not in isolation, and the overall contribution is what matters for determining inventorship, not the significance of certain elements standing alone.
On corroboration, there was no flaw in the district court’s analysis because, where the focus of the co-inventorship analysis was on contributions to conception and collaboration, the absence of a specific call-out to the word “communication” in the district court’s opinion was unsurprising, the same evidence that is relevant to conception can be relevant to communication, and no single piece of evidence alone needs to establish the credibility of the account of inventorship because corroboration is based on evaluation of the evidence as a whole.
On collaboration, the Court found that a co-inventor does not need to conceive of the entire invention and also does not need to be intent on inventing the full invention ultimately claimed before collaborating. While the co-inventors cannot be completely ignorant of what the other has done, there need not be a unity of vision for the invention.
2. PARUS HOLDINGS, INC. v. GOOGLE LLC (22-1269, 6/12/23) (Lourie, Bryson, and Reyna)
Lourie, J. The Court affirmed the Patent and Trial Appeal Board’s decision finding the challenged claims unpatentable. The Board was not required to consider evidence regarding conception and reduction to practice that a patent owner incorporated by reference, which is prohibited by 37 C.F.R. § 42.6(a)(3). While petitioners bear the ultimate burden of persuasion on invalidity, when a patent owner attempts to antedate an asserted prior art reference, the patent owner assumes a temporary burden of production. This burden of production cannot be met without some combination of citing the relevant record evidence with specificity and explaining the significance of the produced material in briefs—the burden of production cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of the relevant portions of that evidence. Once a patent owner takes on an affirmative burden to show that they were the first to make their claimed invention, it must comply with the rules and regulations of the USPTO, including not incorporating material by reference. Furthermore, the Board is not required to review evidence and issues introduced by a party in violation of its rules or not introduced at all.
The Court also held that, by reaching issues of written description, the Board did not exceed its statutory authority under 35 U.S.C.§ 311(b) because the Board needed to determine whether the challenged claims satisfied the written description requirement in order to resolve the invalidity grounds under § 103. And substantial evidence supported the Board’s finding that the challenged claims were not entitled to their earlier priority date, where the Board gave more credit to one expert over another.
3. In re COUVARAS (22-1489, 6/14/23) (Lourie, Dyk, and Stoll)
Lourie, J. The Court affirmed the Patent and Trial Appeal Board’s decision finding that the challenged claims were unpatentable as obvious over the prior art. The undisputed fact that the two types of active agents recited in the claims were individually known to be useful for the same purpose could alone serve as a motivation to combine because the idea of combining these compounds flows logically from their having been individually taught in the prior art. Reciting the mechanism for known compounds to yield a known result cannot overcome a prima facie case of obviousness, even if the nature of a mechanism is unexpected. The Board was not required to address reasonable expectation of success where the applicant failed to present any such arguments to the Board.
The Court also found substantial evidence supported the Board’s conclusions regarding objective indicia of nonobviousness, where no such evidence existed.
