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Federal Circuit Flash Digest: Cases in Brief

Synopsys, Inc. v. Mentor Graphics Corp.

In Synopsys, Inc. v. Mentor Graphics Corp. (Fed. Cir. Oct. 17, 2016), the Federal Circuit held that a procedure that can be performed by talented human artists is an unpatentable mental process even if it is primarily meant to be performed using a computer.

At issue were the “Gregory Patents,” a series of patent claims providing a set of procedures for translating “hardware descriptive language” (HDL) code into a precise schematic for the fabrication of logic circuits. The algorithms were primarily used in circuit design software, but could be used by a human designer familiar with logic board design to do the same task.

Plaintiff Synopsys, Inc., owner of the Gregory Patents, brought suit against defendant Mentor Graphics Corp., alleging infringement of the Gregory Patents in Mentor Graphics’ logic board design software and emulators. The District Court for the Northern District of California granted summary judgment for Mentor Graphics on the grounds that the claims underlying the Gregory Patents were not patentable under 35 U.S.C. § 101. Synopsys appealed to the Federal Circuit.

The Federal Circuit court applied the test described in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014). Alice provides a two-step test: (1) consider “whether the claims at issue are directed to a patent-ineligible concept” and, if not, (2) “consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.” 134 S.Ct. at 2355. The court did not find that the Gregory Patents satisfied either test.

In examining the first step of the Alice test, the court agreed with the district court that the Gregory Patents described a mental process. According to CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011), mental processes “performed entirely in the human mind are the types of methods that embody the basic tools of scientific and technological work that are free to all men and reserved exclusively to none,” and are unpatentable.

Synopsys argued that the procedures are primarily meant to be performed on computers and are therefore not mental processes. The court responded by stating that the claim must be read on its face, and such a reading does not mention the use of computers at all. Further, this procedure is distinguishable from similar patentable claims in that it is even possible for a human to perform the procedures. Other cases could “not be conceivably performed in the human mind or with pencil and paper,” whereas this procedure was demonstrated within the patent application.

In regards to the second step of the test, the court held that the claims were not a technical advancement or improvement of the abstract idea of “translating a functional description of a logic circuit into a hardware component description of the logic circuit.” Because the claims do not improve computer efficiency and are only a mental process, they do not transform the abstract idea into one that is patentable.

See IP Watchdog and Lexology for additional coverage.

In Re Constantin Efthymiopoulous

The Federal Circuit in In re Constantin Efthymiopoulous (Fed. Cir. Oct. 18, 2016) determined that the Patent Trial and Appeal Board (“Board”) properly upheld the examiner’s rejection of a patent teaching the administration of an influenza drug by oral inhalation based on it being obvious over two other patents: one teaching intranasal inhalation of the same drug and the other teaching broad administration of a similar drug.

The patent at issue taught oral inhalation of the drug zanamivir only as a method of treating and preventing influenza in humans. The patent examiner rejected it as obvious over two other patents, Von Itzstein I and Von Itzstein II. Von Itzstein I taught the intranasal inhalation of zanamivir to treat and prevent influenza. Von Itzstein II taught a broader set of applications, including “inhalation” of a zanamivir homologue to treat and prevent influenza.

The examiner found that, in light of both of these patents, it would be obvious to administer zanamivir orally, and the examiner denied the patent. The Board affirmed the examiner’s decision, finding that “inhalation” included oral only, intranasal only, and both oral and intranasal administrations.

On appeal, the court addressed and resolved three arguments brought by the petitioner. First, the court addressed petitioner’s claim that no prior art teaches oral administration only of zanamivir to treat or prevent influenza. The court pointed to the combination of Von Itzstein I and Von Itzstein II, including Von Itzstein II’s use of “inhalation” and teaching of administration of the homologue via powder, which is typically administered orally, in holding that this patent application was obvious.

Second, the petitioner argued that no person of ordinary skill would expect administration through the mouth would be effective. The court wrote that there is general knowledge in the art that oral inhalation can deliver a greater quantity of medicine than intranasal administration, and that oral inhalation can treat influenza in the lower respiratory tract, as in young children.

Finally, the petitioner pointed to evidence that oral inhalation led to unexpected results. The court, however, discounted the evidence provided, saying the studies were for different issues and not statistically significant.

In a dissent, Judge Newman argued that administering via oral inhalation only was not obvious, because there was no extrinsic evidence aside from petitioner’s petition that oral inhalation was used. She wrote, “this mode of therapy is taught only by this inventory.”

Additionally, she wrote that medicine evidence in the prior art of this specific use would normally be required before a practitioner would attempt this particular treatment. Finally, she argued that the subjects and results of the presented studies were sufficiently close to provide a finding of unexpected results.

Reuters has a summary of the case.

MIT v. Shire Pharmaceuticals, Inc.

In MIT v. Shire Pharmaceuticals, Inc. (Fed. Cir. Oct. 13, 2016), the Federal Circuit found that the doctrine of prosecution disclaimer did not attach to MIT and that the term “three-dimensional scaffold” was sufficiently definite.

MIT had filed two separate patents directed to “three-dimensional scaffolding for growing cells in vitro to produce organ tissue in vivo.” MIT then brought an infringement suit in the District Court for the District of Massachusetts against Shire arguing that Shire’s Dermagraft scaffold used for the treatment of diabetic foot ulcers and reconstruction of patients’ dermis violated those patents. Following claim construction proceedings, the district court construed the terms “vascularized organ tissue” and “cells derived from vascularized tissue” within the MIT patents to include skin, and it determined that the term “three-dimensional scaffold” was sufficiently definite. The district court accordingly entered judgment validating the patents and finding infringement. Shire appealed to the Federal Circuit.

In its claim against construing “vascularized organ tissue” as including skin in this case, Shire conceded that the ordinary meaning of the term would include skin. Shire claimed, however, that MIT had disclaimed skin as a scope for its patent during the initial prosecution. The court did not find enough evidence for a “clear and unmistakable disavowal” of skin as within the scope of the patent. Similarly, the court supported the district court’s reading of the term “cells derived from vascularized tissue” and did not find enough evidence to determine there was a prosecution disclaimer in relation to this term. In examining whether “three-dimensional scaffolding” was sufficiently definite, the court agreed with the district court that the dictionary definition provided sufficient guidance to practitioners. This finding was supported by Shire’s expert, whose own definition corresponded with the relied upon dictionary definition.

In a concurrence, Judge O’Malley restated her opposition to Robert Bosch, LLC v. Pylon Manufacturing Corp., 719 F.3d 1305 (Fed. Cir. 2013) (en banc), where the court established jurisdiction over appeals entered before damages were determined. She concurred in judgment, but raised concerns that taking appeals before the findings of damages needlessly disrupted district court proceedings.

The National Law Review discusses MIT alongside Poly-America, L.P. v. API Industries, Inc. (Fed. Cir. Oct. 14, 2016) as it relates to claim scope, and Law360 has additional coverage.