By Colette Ghazarian – Edited by Yunnan Jiang
Evidence of Prior Art Cannot be Excluded for Untimeliness
In Ariosa Diagnostics v. Verinata Health, Inc., 2015-1215, 2015-1226 (Fed. Cir. Nov. 16, 2015), the U.S. Court of Appeals for the Federal Circuit held that evidence of prior art must still be considered by the Patent Trial and Appeal Board in its determination of the validity of the patent even if it is identified after the initial petition stage of an inter partes review. Ariosa Diagnostics filed a petition for inter partes review against patents held by Verinata Health related to prenatal testing products. Ariosa claimed that the patents were obvious in light of three prior-art references, which were not included in its initial petition. The references in question were contained in a brochure that was attached as an exhibit to an expert declaration. Ariosa claimed that the brochure showed the background knowledge a skilled artisan would have possessed about this particular topic. The Board declined to consider this document because, based on the language in its decision, it was not presented along with the initial petition and was only introduced at Ariosa’s expert’s deposition. The Court held that the Board’s decision not to consider the brochure was in error. It held that evidence of prior art can be considered by the Board even though it was not included in the initial petition for review. Since the Court could not determine whether the error was prejudicial or not, the decision was vacated and remanded to the Board.
Consent Decree Still Enforceable Even if Patent Later Found Invalid
In Delorme Publishing Company, Inc. v. International Trade Commission, 2014-1572 (Fed. Cir. Nov. 12, 2015), the Federal Circuit held that the invalidity of a patent could not retroactively eliminate the liability and penalty of an infringer of that patent under a consent decree. DeLorne Publishing Company sued the International Trade Commission (ITC) over its decision to enforce a consent decree prohibiting DeLorne from importing “certain two-way global satellite communication devices, system and components thereof” that infringed on certain patent claims, or gave instructions for users to infringe on the claims. The Court first held that by selling infringing devices containing infringing components with instructions to infringe still violated the consent decree. Next, and more importantly, the Court held that the fact that the patent claims referenced in the consent decree were later found to be invalid did not eliminate DeLorne’s liability and the $6,242,500 civil penalty for its actions while the patent was still valid. In reaching its conclusion, the Court referred to Part 4 of the consent decree, which states “The Consent Order shall not apply to any claim…that has expired or been found or adjudicated invalid or unenforceable.” The Court argued that based on the language in the decree, if the invalidity of a patent were to apply to past infringement, then the inevitable expiration of the patent would as well. This would be an absurd interpretation of the consent decree. The Court affirmed the ITC’s enforcement of the consent decree and the civil penalty against DeLorne.
Description of Pros and Cons of Patent Features Not Required for Negative Claims Limitation
Federal Circuit precedent holds that negative claim limitations in a patent claim (describing a patent by stating what it is not) satisfy the written description requirements for patents when the specification describes a reason to exclude the relevant limitation. Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). In Inphi Corporation v. Netlist, Inc., 2015-1179 (Fed. Cir. Nov. 13, 2015), the Court extended this precedent by holding that “properly describing alternative features – without articulating advantages or disadvantages of each feature” – would constitute a reason to exclude the relevant limitation. In this case, Netlist, a manufacturer of computer system memory modules, amended one of its patents to include a negative claim limitation that excluded three types of signals from the description of its patent. Inphi argued that simply stating “DDR chip selects that are not CAS, RAS, or bank address signals” was not adequate under Santarus. Inphi argued that the phrase “reason to exclude” requires more than properly describing alternative features of the patented invention, while Netlist disagreed. The Court sided with Netlist, holding that Santarus did not create a heightened written description standard for negative claim limitations, beyond what is required by statute (35 U.S.C. § 112). All that is required to satisfy the written description standard of § 112 for negative claim limitations according to the Court are “properly described alternative features.”