The following telephone arguments will be available to the public live. Access information will be available by 9 AM ET each day of argument at: http://www.cafc.uscourts.gov/public-access-arguments.

Monday, January 4, 2021

Mylan Laboratories Ltd. v. Sanofi Mature IP, No. 20-1302

Mylan petitioned for inter partes review ("IPR") against U.S. Patent No. 8,927,592 (the "'592 patent") held by Sanofi. The Patent Trial and Appeal Board ("PTAB") held that all of the challenged claims were unpatentable as obvious and denied Sanofi's motion to amend several claims, including amendments to the preamble of a method claim to include "increasing survival" as an intentional purpose. Sanofi appealed to the Federal Circuit, which held that the preamble with the intentional purpose was limiting and remanded the case to the PTAB for reconsidering its denial of Sanofi's motion to amend. On remand, the PTAB granted the motion and concluded that the proposed amended method claim is patentable because Mylan failed to prove that a person of ordinary skill in the art ("POSA") would have reasonably expected success in achieving the "increasing survival" limitation. The PTAB also held that the limitation recites a purely mental step but is still patent-eligible because it is practically integrated into a technical solution. Moreover, the PTAB determined that the proposed amended method claim is not anticipated by a public use because the evidence of the public use was itself published after the '592 patent priority date.

On Appeal, Mylan contends that the PTAB committed three legal errors. First, it argues that the PTAB erred by requiring a POSA to have reasonably expected that the intentional purpose would be achieved. Mylan argues that an intentional purpose is not equivalent to an actual result, relying on Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359 (Fed. Cir. 2016). Mylan proposes that the correct test, in this case, should inquire whether a POSA could reasonably have expected that the intentional purpose may be achieved as a result of the claim. Under such an inquiry, Mylan further argues that it succeeds in proving what is claimed may be achieved by performing prior-art method steps with the intentional purpose in mind, so the proposed amended claim should be unpatentable. The second error asserted by Mylan is that the PTAB erroneously concluded the patent eligibility of the proposed amended method claim that adds a mental state to a prior art method. The third error asserted by Mylan is that the PTAB erroneously concluded that a post-priority date reference could not provide evidence of a pre-priority date anticipating use, as long as the pre-priority date use is "successfully performed" and non-experimental.

In response, Sanofi first argues that the PTAB did not incorrectly raise the bar of the reasonable expectation standard, and the record does not show that the reasonable expectation standard is met even assuming the PTAB applied a lower standard. Sanofi further argues that even if the Federal Circuit agrees with Mylan on the reasonable expectation standard, the case should be remanded to the PTAB to address whether Mylan meets its burden of proof for obviousness. Second, Sanofi argues that the proposed amended method claim is patent-eligible because it is not directed to any judicial exception, and even if it is, Mylan still fails to show that it lacks an inventive concept as a whole. Finally, Sanofi contends that the reduction to practice mandates evidence of possession and enablement at the time of the asserted use, and the asserted use is experimental regardless.

Tuesday, January 5, 2021

SK Hynix Inc. v. Iancu, No. 19-2340

SK Hynix filed a petition for IPR against U.S. Patent No. 9,606,907 (the "'907 patent") held by Netlist, Inc. ("Netlist"). The PTAB found 63 of the 65 challenged claims as invalid but upheld the two remaining dependent claims. The patentability of the two claims turned on two disputed features, an "input buffer" and an "output buffer." During the IPR, SK Hynix argued that a first reference rendered the "input buffer" as obvious, and that a combination of the first reference and a second reference rendered the "output buffer" as obvious. Netlist did not specifically respond to those arguments in the IPR but focused on addressing challenges to the independent claims. Neither Netlist nor the PTAB raised the two claims at the hearing. However, the PTAB ultimately disagreed with SK Hynix based on a new theory not raised by either party that SK Hynix failed to prove that the prior art teaches or suggests both the "input buffer" and "output buffer" being "associated with" a "write command," as required by the two claims.

On appeal, SK Hynix asserts that the PTAB violated the Administrative Procedure Act ("APA") and SK Hynix's due process rights on two grounds: (1) the PTAB relied on the never-raised theory to uphold the validity of the two claims, effectively changing its theories midstream without noticing SK Hynix or affording it an opportunity to be heard; (2) the PTAB ignores, without explanation, SK Hynix's alternative argument that a combination of the two references renders the two claims as obvious. SK Hynix argues that the PTAB's new theory contradicts its expert's opinion that either the first reference alone or the combination of the two references teaches the "output buffer." Further, SK Hynix argues that the PTAB rejected, based on the two references, patentability of another claim that recites a "tristate buffer" deemed as equivalent to the "output buffer" by SK Hynix, reaching inconsistent conclusions. SK Hynix also contends that the PTAB's conclusion contradicts Netlist's silence regarding the challenges to the two claims as well as other factual findings during the IPR. Moreover, SK Hynix complains that the PTAB's decision contradicts its Institution Decision, which held that SK Hynix's arguments met the reasonable likelihood threshold.

In its intervenor brief, the USPTO contends that SK Hynix has waived its opportunity to be heard on the new theory. The USPTO argues that SK Hynix squandered multiple opportunities to be heard by failing its burden of proof throughout the IPR to establish unpatentability of the two disputed claims, and points out that the Federal Circuit precedent cited by SK Hynix for the new theory relates to ex parte proceedings and is not applicable to IPRs. As a result, the PTAB is free to adopt any new theory in its Final Written Decision, even if the outcome deviates from the Institution Decision. Further, the USPTO contends that the PTAB does respond to SK Hynix's alternative argument. On the merits, the USPTO argues that, even though the prior art discloses the "tristate buffer" and renders the other claim reciting the "tristate buffer" as obvious, the "tristate buffer" is not equivalent to the "output buffer," and SK Hynix failed to meet its burden of proof. Finally, the USPTO argues that the PTAB is not bound by any findings made in its Institution Decision with a lower evidentiary threshold.

Friday, January 8, 2021

McCoy v. HEAL Systems, LLC, No. 20-1484

HEAL filed a petition for IPR against U.S. Patent No. 9,790,779 (the "'779 patent") held by James N. McCoy ("McCoy"). The PTAB found that all challenged claims were invalid as anticipated and obvious and adopted HEAL's definition of a POSA as a person "having access to and being able to consult with other experts," despite HEAL conceding that such access to experts would "elevate" the POSA's ability to solve a problem. In its anticipation finding, the PTAB relied on the '779 patent itself as prior art and relied on a Barnhart reference as anticipating the '779 patent. In its obviousness finding, the PTAB combined the Barnhart reference with a Gilbert reference.

On appeal, McCoy argues that a POSA is a fictional construct intentionally limited to ordinary skill rather than expert skills, and the PTAB-adopted definition deviates from the ordinary skill level because having access to experts would "elevate" the POSA to become an expert. Further, McCoy argues that the PTAB erred by using the '779 patent as prior art to invalidate its claims. Also, McCoy argues that the Barnhart reference lacks express disclosure of some claim elements and that the PTAB improperly relied on HEAL's expert testimony to conclude that the Barnhart reference may inherently disclose those missing claim elements. Moreover, McCoy also asserts that the Barnhart and Gilbert references teach away from each other due to their incompatible application to different types of problems.

In response, HEAL defends its definition of a POSA, relying on the admission of McCoy's expert that field engineers are not beyond ordinary skill level and are still POSAs, on opinions of HEAL's expert that having access to experts does not necessarily make the POSA an expert, and on the PTAB's rejection of McCoy's expert's opinion for lacking support of objective evidence. Next, HEAL contends that the '779 patent includes admissions of prior art in its specification, and the PTAB only used such admissions to reject some elements of its claims on anticipation ground. Regarding anticipation, HEAL relies on the testimony of both parties' experts and McCoy's admission as support for the anticipation of some claim elements, and on the PTAB's finding of insubstantial differences of the Barnhart reference as support for the anticipation of some other claim elements. Moreover, HEAL argues that there is no teaching away and that the PTAB has offered substantial evidence to support the combination of the Barnhart and Gilbert references.

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