Patent Law Practice Center

Federal Circuit says PTAB too narrowly interpreted case law regarding prior art publications in GoPro

On Friday, July 27th, the Court of Appeals for the Federal Circuit issued a precedential opinion in GoPro, Inc. v. Contour IP Holdings, vacating a final written decision coming from the Patent Trial and Appeal Board (PTAB) that had upheld patent claims in the face of a validity challenge petitioned by action camera company GoPro. The Federal Circuit panel of Circuit Judges Jimmie Reyna (author of the opinion), Evan Wallach and Todd Hughes found that the PTAB had erred in finding that a 2009 GoPro catalog did not qualify as a prior art printed publication for rendering the challenged claims invalid for obviousness.

There are two patents at issue in this case which have now been remanded back to the PTAB for further proceedings:

• U.S. Patent No. 8890954, titled Portable Digital Video Camera Configured for Remote Image Acquisition Control and Viewing. Issued to Contour in November 2014, it covers an integrated, hands-free, portable, wearable, viewfinderless point of view (POV) digital video camera equipped with a wireless Internet protocol and a global navigation and location positioning system.
• U.S. Patent No. 8896694, same title as the ‘954 patent. Also issued to Contour in November 2014, it claims a POV digital video camera system with GPS and Bluetooth capabilities for capturing action video, tracking data such as speed and elevation, as well as posting video online.

Contour IP, the patent owner, first asserted both of these patents against GoPro in a patent infringement suit filed in November 2015 in the District of Delaware; that case was transferred to the Northern District of California in August 2017. However, in April 2015, about six months before the patents were asserted against GoPro in Delaware, GoPro petitioned the PTAB for inter partes review (IPR) proceedings challenging the validity of both patents.

In both IPR petitions, GoPro submitted a 2009 sales catalog as prior art; the catalog disclosed a digital camera linked to a wireless viewfinder/controller that enables a user to preview the image before recording. Although the PTAB instituted both IPRs after making a determination that GoPro made a threshold showing that the catalog is prior art, both IPRs terminated in final written decisions which concluded that the catalog wasn’t disseminated or otherwise made available to the extent that persons ordinarily skilled in the art could have located it by exercising reasonable diligence.

On appeal, the Federal Circuit found that the PTAB erred in determining that a declaration from a GoPro employee, along with corroborating evidence, wasn’t sufficient to establish public accessibility of the catalog. The GoPro employee had testified that GoPro made the catalog accessible during an action sports vehicle trade show that occurred in July 2009, prior to the critical date of September 13th, 2009 (one year prior to the date of priority for both the ‘954 and ‘694 patents). The PTAB held that the dissemination at this trade show did not make the catalog publicly accessible because the trade show was only open to dealers and not the general public.

“The case law regarding accessibility is not as narrow as the Board interprets it,” the Federal Circuit found, noting that the PTAB only focused on one of several factors for determining public accessibility. Although the trade show was focused on action sports vehicles, the attendees were likely more sophisticated in that space than average consumers, making it more than likely that attendees were also skilled and interested in POV action cameras. “A dealer show focused on extreme sports vehicles is an obvious forum for POV action sports cameras,” the Federal Circuit’s opinion reads. The general public may not have been aware of the trade show but the appellate court found that dealers of POV action sports cameras would be part of the relevant audience. Thus, the Federal Circuit vacated the PTAB’s determination that the GoPro catalog was not prior art and remanded the case for further proceedings.

Federal Circuit confirms validity of patent for UCB’s Vimpat®

On May 23, 2018, the Federal Circuit issued a decision in UCB, Inc. v. Accord Healthcare, Inc. (Before Prost, C.J., Bryson, and Stoll, J.)(Opinion for the court, Stoll, J.), a case arising under the Hatch-Waxman Act. The Appellees UCB, Inc. et al own and/or license U.S. Patent No. RE38,551., titled Anticonvulsant enantiomeric amino acid derivatives. The ‘551 patent covers lacosamide, an anti-epileptic drug for the treatment of epilepsy and other central nervous system disorders. UCB holds New Drug Applications (“NDAs”) that cover its lacosamide anti-epileptic drug approved by the Food and Drug Administration (“FDA”) and marketed under the tradename Vimpat®. The ‘551 patent is listed in the FDA’s Approved Drug Products With Therapeutic Equivalence Evaluations (“Orange Book”) as covering Vimpat®.

Appellants were generic drug manufacturers who filed Abbreviated New Drug Applications (“ANDAs”), seeking approval for generic versions of Vimpat®. Pursuant to applicable Hatch-Waxman provisions, Appellants certified in their ANDAs that the ‘551 patent was invalid, unenforceable, or that their proposed generic lacosamide products would not infringe the ‘551 patent.

Consequently, as is their right under Hatch-Waxman, UCB sued Appellants for patent infringement in the United States District Court for the District of Delaware. Appellants stipulated to infringement of claims 9, 10, and 13 of the ‘551 patent but maintained that these claims are invalid for obviousness-type double patenting, obviousness, and anticipation.

Following a bench trial, the district court made exhaustive fact findings based on the trial evidence and concluded that the asserted claims of the ‘551 patent were not invalid. Appellants appealled that decision, arguing that the district court misapplied the legal standards for obviousness-type double patenting, obviousness, and anticipation, and that the prior art anticipates and/or renders the ‘551 patent obvious.

The Federal Circuit held that the district court applied the correct legal standards in its obviousness-type double patenting, obviousness, and anticipation analyses, and found no clear error in its underlying factual findings. As a result, the Federal Circuit affirmed the district court’s ultimate conclusion that the asserted claims were not invalid.

Federal Circuit Says Veterinarian’s Suggestion Covered Essential Patent Claim Element

On Thursday, May 3rd, the Court of Appeals for the Federal Circuit issued a decision in In Re VerHoef, a case stemming from a decision by the Patent Trial and Appeal Board (PTAB) to invalidate a patent during an ex parte proceeding on 35 U.S.C. § 102(f) grounds, which governs the patentability of inventions which have been derived from a person who is not listed as an inventor on the patent application. The Federal Circuit panel affirmed the PTAB’s finding that Jeff VerHoef was not the sole inventor of a mobility device for dogs because the device incorporated a suggestion made by a veterinarian working with VerHoef’s dog.

The patent application at issue in this appeal is U.S. Patent Application No. 20130152873, titled Dog Mobility Device and claiming priority to a patent application filed in December 2011; this patent application is subject to pre-America Invents Act Section 102(f). That patent application lists VerHoef as the sole inventor. In an affidavit, VerHoef stated that he had developed the mobility harness covered by the ‘873 patent application, which assists with a dog’s movement of his hind legs, after his dog Reilly had difficulty walking after a surgical operation.

VerHoef worked with a veterinarian, Dr. Alycia Lamb, to provide rehabilitative therapy for Reilly around the same time that VerHoef was working on the mobility device. VerHoef had previously acted on Dr. Lamb’s suggestion to purchase a commercially available harness to support Reilly’s hind leg, but this device caused Reilly to place the leg’s weight on his knuckles instead of his toes. VerHoef recognized that a harness connected to Reilly’s toes would solve the problem and discussing this issue with Dr. Lamb, the vet suggested a strap configured with a figure 8 structure to engage the toes might solve that problem. Incorporating the figure 8 design into the mobility device, VerHoef filed a patent application listing himself and Dr. Lamb as co-inventors. That relationship soured and VerHoef filed the ‘873 patent application on the same day that Dr. Lamb filed a substantially similar patent application listing herself as the sole inventor.

The examiner of VerHoef’s patent application issued a Section 102(f) final rejection after VerHoef submitted his affidavit because the examiner found that VerHoef did not invent the claimed subject matter. On appeal to the PTAB, the Board affirmed the examiner’s decision, finding that the figure 8 loop was an essential element of the invention and finding that VerHoef didn’t maintain “intellectual domination” over the inventive process. During oral arguments on appeal to the Federal Circuit, counsel for VerHoef argued that, while Dr. Lamb did provide the suggestion on the figure 8 loop, VerHoef maintained the work of making the invention and the mere suggestion from Dr. Lamb did not automatically raise her to the level of joint inventor.

(more…)

Mohawk Tribe wins stay from Federal Circuit

The United States Court of Appeals for the Federal Circuit issued an Order staying further proceedings at the PTAB relating to the RESTASIS patents now owned by the Saint Regis Mohawk Tribe. The stay will remain in place until at least one day after the oral argument scheduled for June 2018. The Court will consider whether the stay shall remain in effect or be lifted based on the merits of the case.

The dispute between the Saint Regis Mohawk Tribe and Mylan Pharmaceuticals arose when Allergan transferred the RESTASIS patents to the Tribe so a claim of sovereign immunity could be raised, which would divest the Patent Trial and Appeal Board (PTAB) of jurisdiction. The Tribe filed a motion to dismiss the various inter partes review (IPR) proceedings instituted against the RESTASIS patents by the PTAB at the request of Mylan. The PTAB panel assigned to the case refused to recognize the Mohawk claim of sovereign immunity. But it has since been learned through Freedom of Information Act (FOIA) requests, that the three Administrative Patent Judges (APJs) assigned to the case engaged in off-the-record deliberations with supervising APJs, which seemingly violates the Administrative Procedures Act (APA).

(more…)

USPTO Withdraws CAFC Brief, Actively Considering PTAB Practice

Josh Malone, the inventor of Bunch-o-Balloons; and Telebrands Corporation, the power behind As Seen on TV,  have been fighting over Malone’s invention of one of the most popular new toys to hit the market in years. Using Malone’s innovation, it is possible to fill 100 water balloons in under 60 seconds. The invention works like a charm, and it flies off the shelves of big-box retailers like Costco.

Telebrands has lost patent infringement decisions repeatedly in federal district court to Malone’s company, Tinnus Enterprises. Telebrands has even lost at the United States Court of Appeals for the Federal Circuit. Indeed, every federal judge and every federal jury that has decided cases in this ongoing battle has ruled for Malone and Tinnus.

Telebrands has done better at the Patent Trial and Appeal Board. Notwithstanding Telebrands successes at the PTAB, recently the PTAB published final written decisions (here and here) upholding claims from two of Tinnus’ patents — U.S. Patent No. 9,242,749 and U.S. Patent No. 9,315,282 — the same patents that a federal jury found infringed and which lead to an award of $12.4 million in damages last November. These decisions represent a rare case where the PTAB agreed with a jury.

(more…)