VASLAW Intellectual Property

Regents of the University of Minnesota v. Gilead Sciences, Inc., March 6, 2023, Fed. Cir.

Intellectual Property:

In an interesting decision, in 2023, the Court of Appeals for the Federal Circuit cited Yogi Berra in a ruling against the U of M. The Federal Circuit invalidated a U of M patent as being anticipated in view of a prior art patent issued to Gilead Sciences.
The U of M patent was directed to a drug preventing viruses from reproducing or cancerous tumors from growing. The U of M patent claimed priority to an earlier filed provisional patent application.

The Federal Circuit held that the U of M provisional patent application disclosure relied upon to establish priority recited a compendium of common organic chemical functional groups, yielding a laundry list disclosure of different moieties for every possible side chain or functional group, where the listings of possibilities were so long, and so interwoven, that it is was very unclear as to how many compounds actually fell within the described genera and subgenera of the patent claims.

Thus, the Federal Circuit cited Yogi Berra’s quote “when one comes to a fork in the road, take it.”

The Federal Circuit ruled that the provisional patent application of the U of M did not meet the written description requirement of 35 U.S.C. § 112, and that priority to the provisional application was not available to the U of M.

The U of M provisional patent application did not constitute a full, clear, concise and exact description of the invention claimed in the later issued U of M patent, as understood by a person of ordinary skill in the art.

The intervening prior art patent to Gilead Sciences was therefore prior art to the U of M patent, and the U of M patent was anticipated and held to be invalid.

www.cafc.uscourts.gov

ROKU, INC., v. UNIVERSAL ELECTRONICS, INC., March 31, 2023

UNIVERSAL prevailed in a PTAB inter partes review proceeding where claims 1, 3, 5 and 7 of the 9,716,853 patent were upheld as nonobvious in view of the prior art asserted by Roku. The Fed. Cir. affirmed in a 2 to 1 decision with a dissent.
The PTAB focused the teaching of the prior art, and whether the asserted prior art reference disclosed the claim element of “a listing comprised of at least a first communication method and a second communication method different than the first communication method”. The Fed. Cir. determined that this question was a question of fact on appeal.

The Fed. Cir. then limited their review to the factual support for the decision by the PTAB, and found that substantial evidence to support the PTAB decision existed.

The dissent asserted that the Fed. Cir. should apply de novo review to the issue on appeal, that is, the legal issue of obviousness of the 9,716,853 patent, as opposed to the limited issue of factual support for the PTAB decision.

IBM won an appeal to the PTAB (Patent Trial and Appeal Board) reversing a patent examiner's 102 (anticipation) and 103 (obviousness) rejections of claims 1-20.

The claimed subject matter “relates to data storage management, and . . . to dynamically determining an optimal storage location for data, based on characteristics of various available data storage.”

See the decision at

developer.uspto.gov

Today Motorola obtained a reversal of an Examiner rejection to claims 1-20. The examiner rejected these claims as anticipated by a reference, and equated "bearer" to equipment rather than a person. The examiner was reversed. This decision could be usefully cited whenever an examiner is misconstruing a person (a user or bearer or whatever) for a non-person.

See the decision at PTAB Open Data

developer.uspto.gov