Insight on New Federal Circuit Decisions

  1. The Persistent Preamble Problem

SHOES BY FIREBUG LLC, v. STRIDE RITE CHILDREN’S GROUP, LLC,

(Appeals from the Patent Trial and Appeal Board in Nos. IPR2017-01809, IPR2017-01810; Decided: June 25, 2020)

Before LOURIE, MOORE, and O’MALLEY, Circuit Judges.

Opinion by LOURIE, Circuit Judge.

Once again, the preamble arises as a persistent problem in construing claim language.  This case involves two very similar claims directed to illuminated footwear.  In one case, the Court held the preamble to be limiting and in the other case the preamble was determined to be merely a statement of intended use.  The determination rested on the use of the definite article “the” versus the use of the indefinite article “a.”

Background

Firebug owns the ‘038 and ‘574 patents which are both directed to illumination systems for footwear.  Firebug sued Stride Rite for infringement of the ’038 and ’574 patents in the United States District Court for the Eastern District of Texas [Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, No. 4:16-cv-00899 (E.D. Tex. Nov. 22, 2016), ECF No. 1]. Stride Rite then filed petitions for inter partes review of claims 1–10 of the ’038 patent and claims 1–10 of the ’574 patent, asserting that the claims are obvious over the prior art.

In the inter partes review the Board determined that the preambles of the claims of the ‘038 and ‘574 patents were not limiting, that the claims were render obvious by the prior art references, and that Firebug’s of secondary considerations did not outweigh the disclosures of the prior art references.

Claims and Claim Construction Arguments

Claim 1 of the ‘038 patent and claim 1 of the ‘574 patent are reproduced below:

Claim 1 of the ‘038 patent

  1. An internally illuminated textile footwear comprises:

a footwear;

the footwear comprises

a sole and an upper;

an illumination system;

the illumination system comprises a power source and a plurality of illumination sources;

a liner;

a structure;

the structure comprises an interfacing layer and a batting;

the structure being adjacently connected to the upper;

the structure being positioned between the liner and the upper;

the interfacing layer being positioned adjacent to the liner;

the batting being adjacently connected to the inter-facing layer opposite the liner;

the interfacing layer being reflective;

the batting being light diffusing;

the plurality of illumination sources being adjacently connected to the interfacing layer;

the plurality of illumination sources being positioned between the interfacing layer and the batting;

the upper being perimetrically connected to the sole;

the liner being positioned interior to the upper;

the upper being light diffusing;

the illumination system being housed within the footwear;

the plurality of illumination sources emitting light, wherein the light first entering the batting and being diffused by the batting, the light diffused by the batting exits the batting, enters the upper, diffused again by the upper and then exits the upper, the twice diffused light creating a visual impression of internal radiant illumination across an outer sur-face area of the upper. 

Claim 1 of the ‘574 patent

  1. An internally illuminated textile footwear comprises:

a sole and an upper;

an illumination system;

the illumination system comprises a power source and a plurality of illumination sources;

a liner;

an interfacing layer;

the interfacing layer being adjacently connected to the upper;

the interfacing layer being positioned between the liner and the upper;

the plurality of illumination sources being adjacently connected to the interfacing layer;

the plurality of illumination sources being positioned between the interfacing layer and the upper;

the upper being perimetrically connected to the sole;

the liner being positioned interior to the upper;

the upper being a light diffusing section;

the illumination system being housed within the footwear; and

the plurality of illumination sources emitting light, wherein the light enters the light diffusing section, then exits the upper as diffused light, creating a visual impression of internal radiant illumination across an outer surface of the upper.

 

On the issue of claim construction, Firebug argued that the preambles of each these claims limits the claims to “textile footwear,” and, when read together with the limitation of the upper being light diffusing, requires that the upper be made of textile.

Stride Rite, on the other hand, argued that the preambles do not limit the claims because the body of each of the claims recites a structurally complete article, and that the preambles merely state3 an intended use of the claimed structure. Further, Stride Rite argued that, even if the preambles were construed as limiting the claims to require “textile footwear,” the Board’s claim construction was harmless error since the Board found that the prior art discloses footwear with a textile upper, and that this finding is supported by substantial evidence.

Court’s Findings on Preambles as Limitations

The Court succinctly defined the competing factors regarding preambles as limitations as follows: “Whether a claim preamble is considered to be a limiting part of the claim matters, inter alia, because, if it is not, the scope of the claim is broader, but the claim is vulnerable to more potentially-invalidating prior art.”

In this case, the Court held that the preamble of claim 1 of the ’574 patent was limiting, but determined that the preamble of claim 1 of the ’038 patent was not. The pivotal point of the determination was the use of the definite article “the” in the body of claim 1 of the ’574 patent versus the use of the indefinite article “a” in the body of claim 1 of the ’574 patent.

The Court reiterated the well-known test for when a preamble is a limitation, “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim” (Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)).  On the other hand, the preamble is not to be construed as a limitation when the claim body presents a structurally complete invention and the preamble only states a purpose or intended use.  Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997).

The primary factor the Court relied on it its determination was antecedent basis.  If the preamble is relied on for antecedent basis of a term, this indicates that both the body of the claim and the preamble are being used to define the invention.  Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995).

In claim 1 of the ‘038 patent, the preamble recites an “internally illuminated textile footwear,” but the body of the claim refers to “a footwear.”  Since “footwear” was independently recited in the body of the claim, the preamble was held to be non-limiting.  The Court further noted that the body of the claim placed no limits on the material of the footwear.  As a result, the preamble was determined to merely a non-limiting statement of intended purpose.

The preamble of claim 1 of the ‘574 patent also recites an “internally illuminated textile footwear.”  However, in this case, the body of the claim refers to “the footwear” thereby relying on the preamble for antecedent basis.  Therefore, the preamble was held to be a limitation. While the Court tempered this by stating that “While antecedent basis alone is not determinative of whether a preamble is limiting, use of preamble terms to define positive limitations in the body of claims can evince an inventor’s intent that the preamble limit the scope of the claim.”  They then asserted that in this case the antecedent basis did evince intent of the preamble limiting the scope of the claim.

It Just Doesn’t Matter

While the Court found that the Board had erred in construing the preamble of claim 1 of the ‘574 patent as not limiting, the error was held to be harmless.  The Board alternatively found that the prior art disclosed the use of textile footwear.  The Court agreed with Stride Rite that this finding by the Board was supported by substantial evidence.

Secondary Considerations

Firebug asserted secondary considerations of industry praise, commercial success, and copying.  The evidence included two license agreements, testimony by Ralph Shanks (a negotiator of the licenses), testimony by Paul Barcroft (Firebug salesman), and Testimony by Smith (owner and named inventor).

The licenses were found by the Board to lack nexus with the patents in question as they included other intellectual property rights (a total of 8 patents, two patent applications, and a trademark).  Firebug asserted that the testimony of Ralph Shanks supported nexus.  But the Court held that they didn’t need to decide the issue of nexus since the Board found that even if nexus was assumed for the licenses, the evidence of secondary considerations was weak.  The Court agreed.

The testimony by Paul Barcroft concerned mostly industry praise.  But the testimony was struck by the Board as Barcroft refused to be deposed.  Further, Smith’s testimony regarding industry praise was also given little weight as it amounted to statements of industry reaction allegedly reported to the inventor.  As for commercial success, the argument was based on 1.3 million in sales by one of Firebug’s licensees.  However, this figure included products not covered by the patents in question.  Finally, little weight was given to the evidence of copying since Firebug failed to demonstrate that Stride Rite has access to a sample of the product that could be reversed engineered.

 

HOLDING:  Affirmed

 

 

2.        Withdrawn/Improper Restriction Still Proper Notice under 35 U.S.C. §132

 

IDORSIA PHARMACEUTICALS, LTD. v. ANDREI IANCU (DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE)

(Appeal from the United States District Court for the Eastern District of Virginia in No. 1:17-cv-00922-TSE-TCB (Judge T. S. Ellis, III); Decided: May 11, 2020)

Before CHEN, HUGHES, and STOLL, Circuit Judges.

Opinion by STOLL, Circuit Judge.

Patent term adjustment (PTA) based on “A Delay” involves calculating the delay associated with the PTO failing to meet certain enumerated deadlines and adding the resultant delay to the patent’s term.  The issue in this case is whether the issuance of a Restriction Requirement that is subsequently withdrawn before an election is made constitutes sufficient notice to stop A Delay from accruing.

Relevant Statutes

35 U.S.C. 132(a):

(a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.

35 U.S.C. 154 (pre‑AIA) (b)(1)(A)(i)

(b) ADJUSTMENT OF PATENT TERM.

(1) PATENT TERM GUARANTEES.

(A) GUARANTEE OF PROMPT PATENT AND TRADEMARKOFFICE RESPONSES.

Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to

(i) provide at least one of the notifications under section132 or a notice of allowance under section151 not later than 14 months after

(I) the date on which an application was filed under section111(a); or

(II) the date of commencement of the national stage under section 371 in an international application;

[not applicable to any patent application subject to the first inventor to file provisions of the AIA] 

Background

Acetlion Pharmaceuticals (Idorsia’s predecessor) filed U.S. Patent Application Serial No. 12/745,358 as a national stage application under 35 U.S.C. § 371 on May 28, 2010.  The claims were directed to a genus of compounds defined by a chemical formula having a group P(O)R5R8.

On March 12, 2012, the Examiner issued a Restriction Requirement under 35 U.S.C. 121 identifying 6 invention groups.  The Restriction asserted that the 6 groups “[we]re directed to structurally dissimilar compounds that lack a common core” based on variations within the group P(O)R5R8.  Acetlion notified the Examiner by telephone that the 6 invention groups omitted certain subject matter from the scope of the claims. The Examiner agreed and indicated he would issue a new Restriction Requirement. Actelion did not elect any of the invention groups presented in the initial Restriction Requirement.

On April 18, 2012, the Examiner issued a second Restriction Requirement that superseded and replaced the first Restriction Requirement. In this second Restriction Requirement, all pending claims were divided into 8 invention groups. Actelion again notified the Examiner by telephone that these 8 invention groups still omitted claimed subject matter. The Examiner agreed and indicated that he would issue a third Restriction Requirement. Actelion did not elect any of the invention groups presented in the second Restriction Requirement.

On June 21, 2012, the Examiner issued a third Restriction Requirement wherein pending claims were divided into three invention groups. Actelion filed a response to this third Restriction Requirement wherein one of the three invention groups was elected and the Restriction was traversed.

The application issued as U.S. Patent No. 8,518,912 on August 27, 2013.  On the same date, the PTO issued an initial PTA determination of 314 days which included 229 days of A Delay.  Determination of A Delay is based on the time between 14 months from the commencement of the national stage under 35 U.S.C. §371 [see 35 U.S.C. 154 (pre‑AIA) (b)(1)(A)(i)] and the requisite notice required under 35 U.S.C. §132(a).

Actelion filed a request for reconsideration of PTA.  The PTO then issued a final decision of a total of 346 days of PTA, including 261 days of A Delay.  The PTO based the determination of the A Delay on the Examiner’s second Restriction Requirement being sufficient notice under 35 U.S.C. §132(a) to stop the accrual of A Delay.

Actelion then sued the PTO in the U.S. District Court for the Eastern District of Virginia, challenging the PTA determination. On March 2, 2016, the district court remanded the case to the PTO to reconsider its PTA calculation in light of Pfizer, Inc. v. Lee, 811 F.3d 466 (Fed. Cir. 2016).  The PTO then issued a final determination of PTA which totaled 311 days of PTA, including 226 days of A Delay, based on the finding that the Examiner’s first Restriction Requirement A Delay stop accrual of A Delay.

The district court granted summary judgment in favor of the PTO’s finding that the holding that the first restriction requirement complied with the notice requirement under 35 U.S.C. §132 based on the decision in Pfizer.

Notice is Notice Even Though the Underlying Basis is Improper

The Federal Circuit began their opinion by first pointing out that a written Restriction Requirement qualifies as the notification required 35 U.S.C. 132(a), citing their decision in Pfizer.  The Court further stated that their Pfizer decision held that the notice under 35 U.S.C. 132(a) merely requires that the applicant

‘at least be informed of the broad statutory basis for [the rejection of] his claims, so that he may determine what the issues are on which he can or should produce evidence.’” 811 F.3d at 472 (alteration in original) (quoting Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)).

The Court explained that this requires that the rejection must be sufficiently informative so that the applicant can respond (counter) the examiner’s rejection.  The notice cannot be “so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Pfizer at 471–72 (quoting Chester, 906 F.2d at 1578).

In this case, the Court noted that the first Restriction Requirement identified the invention groups for election, and provided reasons articulated why the examiner believed that the claims to cover multiple distinct inventions. The Court also noted that Actelion was able to respond to this first Restriction Requirement with a successful opposition to the Examiner’s description of the invention groups.  Thus, Actelion was able to counter grounds for rejection.

Idorsia’s argument was that the first and second Restriction Requirements could not qualify as sufficient notice under 35 U.S.C. 132(a) as Actelion lacked sufficient information as to how to proceed since the inventive groups omitted subject matter form the claim scope.  The Court disagree with this argument stating that “A restriction requirement need not be correct to satisfy the statutory notice requirement.” (emphasis added)  The Court further stated that the purpose of PTA is to compensate applicants for certain reductions in patent terms that are applicants’ fault, “not to guarantee the correctness of the agency’s every decision.” Pfizer at 476.

 

HOLDING:  Affirmed

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