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‘Similar Enough’ Claim Construction Doesn’t Violate the APA

'Similar Enough' Claim Construction Doesn't Violate the APA

'Similar Enough' Claim Construction Doesn't Violate the APAOn November 16, 2018, the United States Courtroom of Appeals for the Federal Circuit issued a choice in Hamilton Seashore Manufacturers, Inc. v. F’Actual Meals, LLC, No. 18-1274, 2018 (Fed. Cir. Nov. 16, 2018) (Earlier than Reyna, Wallach, and Taranto, Circuit Judges) (Opinion for the Courtroom, Reyna, Circuit Decide). Hamilton Seashore Manufacturers challenged the Patent Trial and Attraction Board’s last written choice upholding the patentability of declare 21 of U.S. Patent No. 7,520,662 beneath 35 U.S.C. § 103. Writing for the panel, Decide Reyna defined that the Board didn’t err in construing the related declare phrases. As a result of substantial proof supported the Board’s determination, the Federal Circuit affirmed.

The patent at challenge, USPN 7,520,662 titled “Rinseable splash shield and method of use” (the ’662 patent), pertains to a mixing machine for mixing contents inside a vessel. The vessel is roofed by a splash defend that’s positioned about the vessel to stop contents from forking out of the vessel. After the contents inside the vessel are combined, the vessel is lowered from the splash defend, and a nozzle positioned on the machine rinses the splash defend. Hamilton Seashore (Appellant) petitioned the Board for inter partes assessment of a single declare of the ’662 patent. The declare language of specific significance included “a nozzle oriented towards a splash shield” and “directing rinsing fluid onto the splash shield using the nozzle.” Hamilton Seashore cited three references in help of its argument that the declare was invalid as apparent beneath § 103. After construing the language of the Claim, the Board discovered the Claim to be nonobvious. Hamilton Seashore appealed.

The Federal Circuit’s first step was to think about the preliminary concern of whether or not Hamilton Seashore’s petition for IPR was barred beneath the one-year time bar of § 315(b). On October 6, 2014, f’actual Meals (“f’real,” Appellee) served Hamilton Seashore with a grievance alleging infringement of claims in the ’662 patent. Throughout litigation, f’actual found that it might lack standing to file the grievance due to an task mistake throughout a merger— f’actual assigned the patent to a holding firm and the patent was by no means reassigned to f’actual. Fifteen months after submitting the grievance, f’actual moved to voluntarily dismiss its patent infringement claims. On the similar day, January 26, 2016, and after acquiring the task of the patent, f’actual filed a brand new grievance asserting the similar infringement claims. On Might 27, 2016, Hamilton Seashore filed the petition for IPR. f’actual argued that the petition was time-barred, as a result of the unique grievance was filed one yr and 7 months previous to the petition. The Board held that the first grievance didn’t set off the time bar as a result of f’actual lacked standing to file the grievance, so the one-year bar of § 315(b) ran from the second grievance.

In the current case, f’actual contended that a current Federal Circuit choice, Click on-to-Name Applied sciences, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018), applies, and the Board lacked jurisdiction to institute the IPR. In Click on-to-Name, the Courtroom held that a defendant served with a grievance that’s later voluntarily dismissed stays “served” with the grievance. Nevertheless, this case introduced a novel problem of whether or not a grievance from a plaintiff that lacks standing triggers the one-year time bar. The Courtroom, nevertheless, didn’t attain this determination. As the Courtroom reasoned, a celebration should file a cross-appeal when acceptance of its argument would end in a reversal or modification of a judgment. Primarily, if f’actual is right, it required a reversal of the Board’s choice to institute the IPR. As a result of f’actual didn’t cross-appeal the determination to institute, the argument was moot. Thus, the standing problem stays for an additional case.


The subsequent situation for the Federal Circuit was Hamilton Seashore’s argument that the Board modified development theories midstream with out offering events a chance to reply, in violation of the Administrative Process Act. In help of this argument, Hamilton Seashore cited SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016), the place the Courtroom held that the Board “may not change theories midstream by adopting a construction in its final written decision that neither party requested nor anticipated.” The Courtroom right here, nevertheless, simply distinguished the Board’s actions in SAS Institute from the current case.

The Courtroom clarified that, in SAS Institute, the Board’s development was adopted with none additional dialogue throughout briefing or at oral listening to; there, the Board adopted a declare development totally different than the one the events agreed to for establishment. In SAS Institute, the Courtroom held that it was “difficult to imagine either party anticipating that already-interpreted terms were actually moving targets.” In the current case, nevertheless, Hamilton Seashore acquired sufficient discover of the development. f’actual proposed a development for the “nozzle” phrases in its post-institution response, which Hamilton Seashore argued towards in its temporary. Throughout the oral listening to, the Board requested Hamilton Seashore whether or not it disagreed with f’actual’s place that the nozzle is pre-positioned. Lastly, the Courtroom held the Board’s remaining development of the “nozzle” phrases have been “similar enough,” although not equivalent, to f’actual’s proposed development in order to not represent altering theories midstream. The Courtroom finally upheld the Board’s constructions of the limitations at concern as a result of these constructions have been based mostly on the declare language.

Lastly, the Courtroom upheld the Board’s discovering of non-obviousness over Hamilton Seashore’s three cited references, concluding that “substantial evidence supports the Board’s finding that Hamilton beach did not persuasively establish a motivation to combine the prior art references to arrive at [the] claim.” Citing KSR Int’l Co. v. Teleflex, Inc. and the Board’s determination, the Courtroom agreed that nothing supported the mixture of the three references “without relying on the claim as a roadmap for selecting and modifying the teachings.”

Find the Board didn’t err find no motivation to mix the references, the Federal Circuit affirmed the Board’s determination figuring out the Claim of the ’662 patent was not unpatentable.


Joseph Robinson

Joseph Robinson

has over 20 years of expertise in all features of mental property regulation. He focuses his follow in the pharmaceutical, life sciences, biotechnology, and medical gadget fields. His apply encompasses litigation, together with Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in quite a lot of patent and trademark disputes in many various jurisdictions, and has additionally served as appellate counsel earlier than the Courtroom of Appeals for the Federal Circuit. Joe additionally focuses on complicated inter partes issues earlier than the U.S Patent and Trademark Workplace, inventorship disputes, reexaminations and reissues. His expertise consists of quite a few interferences, a specific benefit in new U.S. Patent and Trademark Workplace post-grant proceedings. He additionally counsels on patent–associated U.S. Meals and Drug Administration points, together with citizen petitions, Orange Guide itemizing, and trademark points. For extra info and to contact Joe please go to his profile web page at the Troutman Sanders web site.

Joseph Robinson

Robert Schaffer

is an mental property companion at Troutman Sanders. Bob applies greater than 30 years of expertise to IP counseling and litigation. His work consists of patent procurement, strategic planning and transactional recommendation, due diligence investigations, district courtroom patent instances, and Federal Circuit appeals. He often handles complicated and high-profile home and worldwide patent portfolios, mental property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed courtroom instances Bob’s work consists of representing and counseling shopper in ANDA litigations, complicated patent infringement instances and appeals, and multidistrict and worldwide instances. In disputed Patent Workplace issues his work consists of representing and counseling shoppers in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For extra info and to contact Bob please go to his profile web page at the Troutman Sanders web site.

Joseph Robinson

Dustin Weeks

is an affiliate in the mental property apply group at Troutman Sanders. His follow spans all areas of mental property regulation, together with patent prosecution, patent litigation (together with Hatch-Waxman litigation), and shopper counseling. He represents shoppers starting from start-ups and solo inventors to Fortune 500 corporations. Dustin works intently together with his shoppers to study their enterprise goals in order that he can tailor methods to acquire, shield, and implement their mental property. Dustin focuses on post-grant proceedings (e.g. Inter Partes Critiques) earlier than the Patent Trial and Attraction Board (PTAB) the place he has in depth expertise representing each patent house owners and petitioners throughout a variety of applied sciences, together with wi-fi networking, prescription drugs, MEMs units, medical units, and electro-mechanical shopper units. Dustin’s broad expertise in patent prosecution, counseling, and patent litigation uniquely positions him to navigate the blended apply of post-grant proceedings.

For extra info or to contact Dustin, please go to his Agency Profile Web page.