Procuring multiple patents (guns) is good patent strategy

In Institut Pasteur v. Focarino (Fed. Cir. Dec. 30, 2013), the Federal Circuit dealt with three different patents all related to one parent patent application in three different ways.  One of the patents did not survive but the other two did.  For patent owners, a good patent strategy is to have a multiplicity of patents in the event that not all of the patents or claims of the patents survive litigation.  You only need one claim in one patent to be held valid and infringed to seek damages and an injunction.  For alleged infringers, it is significantly more difficult to avoid infringement and prove invalidity for all of the claims in several patents being asserted.

Now to the opinion and how the Federal Circuit dealt with each of the patents, namely, U.S. Pat. No. 7309605 (‘605 patent), 6610545 (‘545 patent) and 6833252 (‘252 patent).

The alleged infringer (Forcarino) filed a request for inter partes reexamination (IPR) of the ‘605 patent. Focarino challenged the validity of the patent at the Patent Office instead of in court. In reexamination, the examiner and the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board) found:

1. the ‘605 patent to be invalid and any proposed claim amendment could not be entered since the ‘605 patent has expired,
2. the ‘545 patent was invalid for being obvious, and
3. the ‘252 patent was invalid for being obvious.

Pasteur appealed the Board’s decision.  The Federal Circuit affirmed the Board’s decision invalidating the ‘605 patent but reversed and remanded the ‘545 patent and the ‘252 patent for further consideration.

• ‘605 Patent – No substantive amendments are allowed if the patent expires during reexamination

Focarino was successful in invalidating the claims of the ‘605 patent during reexamination.  Pasteur proposed certain claim amendments which may have allowed the examiner to allow the rejected claims.   But under 37 CFR 1.530(j), (k), claims amended during reexamination cannot issue as a patent if the scope of the claims have changed during reexamination and the patent has expired.  The examiner and the Board refused to enter the amendments to the claims to allow the patent to issue.  The patent owner appealed to the Federal Circuit.

The Federal Circuit affirmed the refusal and determined that the scope of the claims had changed because “the original claims covered situations where non-chromosomal DNA is the targeted DNA”, whereas “[t]he amendment substantively narrowed the claims in requiring chromosomal DNA as the target.”  Put simply, if the new amended claims do not cover all of the embodiments covered by the original claims, then there is a change of scope in the claims.  Hence, the Federal Circuit affirmed the Board’s decision.  The ‘605 patent was invalid and the amendments were not allowed.

• ‘545 patent – Board failed to review the teaching of the prior art and evidence of secondary considerations

Here, the Board held that one of ordinary skill in the art would have been motivated to make the claimed invention based on two prior art references.  However, the Board failed to consider two different categories of evidence which showed that the claimed invention would have been non-obvious.

The first category of evidence was based on the teachings of the prior art.  The patent owner provided evidence that  there was no reasonable expectation of success in making the claimed invention based on the teachings of the prior art.  Put simply, the prior art taught away from the combination of the claimed invention.  In particular, the prior art taught that the claimed combination would lead to an undesireable level of toxicity.  As such, one of ordinary skill in the art would not have had a reasonable expectation of success in making the claimed combination.  Instead of the specific teachings of the prior art, the Board relied on a general interest in the art for the end result achieved by the claimed combination.  The court stated that “[T]he prior art confirmed the great potential payoff of a method that produced a particular result.  The desire for that payoff could motivate pursuit of the method, but ‘knowledge’ of the goal does not render its achievement obvious.”

The Federal Circuit remanded the case for further consideration as to whether one of ordinary skill in the art would have been motivated to make the claimed combination in spite of the toxicity concerns arising from one of the prior art references.

The second category of evidence revolved around secondary considerations of non-obviousness such as licensing activity and industry praise.  Pasteur brought forth evidence that competitors and customers had licensed the patented technology.  The Board rejected this evidence because the evidence did not prove that the licenses were established so that the licensees could have access to the claimed invention and not merely access to subject matter disclosed but not claimed in the patent.

The Federal Circuit held that the Board too finely parsed Pasteur’s licensing activity as the possibility that the competitors and customers licensed the technology for the claimed subject matter still provided strong probative value of non-obviousness.

Pasteur also submitted evidence of industry praise.  The Board rejected this evidence because the technology being praised was already in the prior art.  However, the Federal Circuit held that the Board erroneously read the prior art and what the prior art teaches.

• ‘252 Patent – Board failed to identify a proper motivation to combine

The Board held that the ‘252 patent was invalid for the same reasons discussed in relation to the ‘545 patent.  However, the Federal Circuit vacated the decision and remanded for further consideration as to whether other motivations would have made the claimed combination recited in the ‘252 patent obvious.  Specifically, they were looking for some motivation to make the claimed combination even if there was no reasonable expectation of success in making the claimed combination.