Despite PTAB “Sweet Talk” Federal Circuit Reverses Invalidity Of Deicing Patent

By Tom Engellenner
The Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) invalidity decision last week that had found a patent for a molasses-based, road deicing agent obvious over earlier patents on sugar-related inventions.  The Federal Circuit panel of Judges Pauline Newman, Raymond C. Clevenger and Kathleen M. O’Malley concluded that the U.S. Patent and Trademark Office (USPTO) finding of invalidity during reexamination proceedings was faulty because the USPTO had failed to set forth a prima facie case explaining why a person of ordinary skill in the art would have been motivated to combine references from disparate technological fields.  In Re Natural Alternatives, LLC (Fed. Cir. No. 2015-1911, August 31, 2016).

Univar, Inc., a licensee of U.S. Patent No. 6,080,330 owned by Natural Alternatives, LLC., filed three reexamination requests in 2011, seeking review of the licensed patent. The reexamination proceedings were consolidated, and the examiner found the claims drawn to a deicing composition comprising 25-99% desugared sugar beet molasses obvious in light of an earlier Polish patent combined with certain secondary prior art references.  Natural Alternatives appealed the reexamination decision to the PTAB but the board affirmed the examiner’s position, and the patent owner then appealed to the Court of  Appeals for the Federal Circuit.

In a decision handed down on August 31, 2016, the Federal Circuit disagreed with the PTAB’s reasoning.  First, the panel found the PTAB’s reliance on a 1990 Polish Patent No. PL 164018 to Zdzislaw (“Zdzislaw”) was misplaced because it did not teach the use of “desugared” molasses.  The process described in the Polish patent retained approximately 50% of the sugar in the molasses, while the patent at issue described processes for removal of most of the sugar.  Second, the Federal Circuit panel found one of the secondary references to be so far afield of the invention that a skilled artisan would not have motivated to combine it with Zdzislaw.  Finally, the panel found the examiner and the PTAB had improperly ignored the patent owner’s evidence of commercial success.

In particular, the decision criticized the PTAB’s reliance on U.S. Patent No. 5,639,319 to Daly (“Daly”); alone or together with a journal article titled “Winter is Hell,” published July 1997 in Public Works (“Public Works”).  The Daly patent was directed to the use of desugared sugar beet molasses (DSBM) as tire ballast, which served the unrelated purpose of stabilizing and balancing tires.  The Federal Circuit panel agreed with the patent owner that a person having ordinary skill in the art would not have found Daly to be reasonably pertinent to the problem of deicing road surfaces. Continue reading “Despite PTAB “Sweet Talk” Federal Circuit Reverses Invalidity Of Deicing Patent”

What Should A Jury Be Told About A Concurent PTO Trial?

By Anthony Pisano
Patent owners enforcing their rights who seek to exclude testimony about a pending administrative challenge to the patent-in-suit may face a Hobson’s choice – at least in Nevada. Particularly, the price for excluding evidence of pending administrative challenges to a patent may be a loss of the presumption of the patent’s validity in a district court trial.

In federal courts, judges may preclude evidence from being presented to a jury, particularly where the evidence has the potential to cause unfair prejudice. Such an opportunity is provided by Rule 403 of the Federal Rules of Evidence, which states that a court may exclude relevant evidence if its probative value is substantially outweighed by a danger of unfair prejudice, confusing the issues, misleading the jury, undue delay, wasting time, and/or needlessly presenting cumulative evidence.

Judges may use Rule 403 in patent infringement cases, particularly in cases where the patent in question is part of a concurrent reexamination proceeding in the Patent Office. In a recent ruling on a motion to preclude evidence concerning a concurrent reexamination of a patent, the District Court of Nevada held, consistent with precedent, that the evidence would be prejudicial, and therefore was inadmissible at trial. Server Technology, Inc. vs. American Power Conversion Corporation (3:06-CV-00698-LRH-VPC (D. Nev.)).

Particularly, District Court Judge Larry Hicks stated that the reexamination of the patent in question was not final, and that a final decision would not occur until long after the trial. Judge Hicks reasoned that the prejudicial effect of notifying the jury about the reexamination proceeding would influence the jury’s determination of the issues of infringement and invalidity. In addition, allowing the evidence would only confuse a jury because both the standard of proof and the applied claim construction by the Patent Office would be different from the standards to be applied at trial. Such differences, in addition to causing jury confusion, would also waste time and resources because it would be necessary to explain the differences to the jury. Continue reading “What Should A Jury Be Told About A Concurent PTO Trial?”

Too Many Cooks in the Kitchen? – PTAB Puts Parallel Reviews By Central Reexam Unit on Hold

By Ben Snitkoff
The regulations implementing Inter Partes Review (“IPR”), as well as Post-Grant Review (“PGR”), allow the Patent Trial and Appeal Board (“Board”) to join or stay certain proceedings by motion or sua sponte. See 37 C.F.R. § 42.122 (IPR), and 37 C.F.R. § 42.222 (PGR). This provision seems to make a good deal of sense in terms of avoiding duplication of effort and possible inconsistent results. Continue reading “Too Many Cooks in the Kitchen? – PTAB Puts Parallel Reviews By Central Reexam Unit on Hold”