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In this week’s Case of the Week, the Federal Circuit addressed issues of jurisdiction where a challenged claim was canceled through ex parte reexamination during pending inter partes review proceedings, and otherwise affirmed the Patent Trial and Appeal Board’s determination that challenged claims were obvious over the prior art. The Court’s decision turned in part on an analysis of the level of skill in the art that is appropriate for an obviousness analysis.

The patent at issue‎, U.S. Patent No. 6,393,096 (the ’096 patent), ‎is “generally directed to a method and apparatus for conformal radiation therapy of tumors using a pre-determined radiation dose.” Varian Medical Systems, Inc. filed two IPR petitions challenging various claims of the ’096 patent, and the Board instituted reviews of both. Shortly thereafter, Elekta Inc. petitioned for institution and joinder to Varian’s instituted IPR proceedings. The Board granted Elekta’s petition. Varian subsequently withdrew. ‎Prior to the Board’s final written decisions, Best Medical International canceled claim 1 (one of the challenged claims) due to the Examiner’s finding of statutory and obviousness-type double patenting in a separate ex parte reexamination. BMI’s decision to cancel was noted in the Examiner’s final rejection. BMI appealed the Examiner’s determination. Shortly thereafter, the Board issued its final written decisions in the two pending IPRs. Though BMI had canceled claim 1, the Board considered the merits of Elekta’s challenge to claim 1, explaining that claim 1 had not been canceled by final action as BMI had “not filed a statutory disclaimer.” The Board found that Elekta had proven claim 1 and all but one of the remaining challenged claims to be unpatentable as obvious. BMI appealed the Board’s final written decisions.

First, the Court addressed the question of jurisdiction. BMI sought vacatur of the Board’s patentability determination, arguing “the Board lacked authority to consider claim 1’s patentability because that claim was canceled before the Board issued its final written decision, rendering the patentability question moot.” The Court rejected this argument, finding the Board was correct in concluding that absent a cancelation by final action, it was required to address every challenged claim, including claim 1. Next, the Court addressed Elekta’s argument that BMI lacked standing to appeal the Board’s unpatentability determination. The Court found that BMI effectively admitted during oral argument that it “finally canceled claim 1 prior to filing its notice of appeal in this case.” Thus, the Court found there was no longer a case or controversy regarding claim 1’s patentability at that time. As such, the Court determined that BMI lacked standing to appeal the Board’s patentability determination for claim 1 and that the Court lacked jurisdiction over BMI’s appeal. Accordingly, the Court dismissed BMI’s appeal regarding claim 1.

Second, the Court addressed BMI’s challenge to the Board’s finding that a person of ordinary skill in the art would have had “formal computer programming experience, i.e., designing and writing underlying computer code.” BMI’s expert did not have such requisite computer programming experience, and thus, the Board discounted BMI’s expert’s testimony as to obviousness. The Court concluded that the Board, having relied on “the entire trial record,” “was not unreasonable in concluding that a skilled artisan would have had formal computer programming experience.”

Finally, the Court summarily addressed BMI’s challenges to the Board’s findings on claim construction, the teachings of the prior art, and motivation to combine. The Court rejected BMI’s arguments, finding the Board’s determinations were supported by substantial evidence.

The Court dismissed BMI’s appeal with regard to the Board’s unpatentability decision for claim 1. The Court affirmed with regard to the Board’s remaining findings of unpatentable as obvious.

The opinion can be found here.

By Annie White

ALSO THIS WEEK

In Re: Jeffrey A. Killian, Appeal No. 2021-2113 (Fed. Cir. Aug. 23, 2022)

In this case, the Federal Circuit affirmed a patent examiner’s rejection of application claims as patent-ineligible under 35 U.S.C. § 101. The claims were directed to a method of determining eligibility for Social Security benefits using a computer to compare information from state and federal databases, and the Court agreed that they were directed to generalized and conventional steps performed with a computer and were ineligible for patenting under the Alice/Mayo analysis. On appeal, the applicant launched “myriad” arguments “directed not to the specifics of [his] application to the corpus of § 101 jurisprudence.” The Court gamely addressed and rejected arguments that the Supreme Court’s standards promulgated in Alice and Mayo were vague, ambiguous, and ran afoul of the Administrative Procedures Act and the Fifth Amendment Due Process Clause in various particulars of application. The Court defended the standards and collected examples of guidance provided in its precedent, but also concluded it was bound to apply them in any event until they were overturned by the Supreme Court. The Patent Trial and Appeal Board’s decision affirming the rejections was affirmed.

The opinion can be found here.

By Jason A. Wrubleski

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This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.