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All That Glitters: Use of Registered Mark To Describe Watch Color Was Fair Use

by | Mar 28, 2024 |

The US Court of Appeals for the Second Circuit affirmed a district court’s grant of summary judgement to a luxury-watchmaker defendant, holding that its use of a registered and incontestable trademarked term was fair use because it was used descriptively and in good faith. Solid 21, Inc. v. Breitling U.S.A., Inc., Case No. 22-366 (2d Cir. Mar. 14, 2024) (Wesley, Sullivan, JJ.) (Park, J., dissenting). The case is notable for its analysis of the fair use defense’s good faith prong, which, as the Second Circuit majority notes, “is not litigated frequently.” This was also the element that provoked Judge Park’s dissent, who argued that the majority’s analysis attempts to resolve factual disputes about Breitling’s intentions that should, instead, go to a jury.

“Red gold” and “rose gold” are terms used to describe a gold-copper alloy that causes gold to have a pinkish hue. Sellers of men’s watches sometimes prefer the term “red gold” because “rose gold” sounds effeminate. Solid 21 is a luxury watch and jewelry business that sells a collection of jewelry and watches under the RED GOLD mark, which was registered in 2003 and now has incontestable status. Breitling is a Swiss company that makes and sells luxury watches, some of which it advertises as available in “red gold,” among other color choices. Solid 21 filed a trademark infringement suit against Breitling, alleging that its use of the term “red gold” was “likely to cause confusion, reverse confusion, mistake, and/or deception as to the source” of Breitling’s watches. Breitling moved for summary judgment on the grounds that the term “red gold” was generic, and the trademark registration was invalid, or alternatively, that its use of the term fell under the Lanham Act’s fair use defense, which allows use of a protected mark to describe one’s goods so long as the use is in good faith and not used as a mark.

Initially, the district court denied Breitling’s motion for summary judgment, finding that Breitling could have used terms like “rose gold” to describe its products and thus did not satisfy the descriptive use requirement. However, on reconsideration, the district court decided that the mere existence of alternative terms for the alloy did not preclude summary judgment, and that Breitling’s materials showed clearly that it was using the term “red gold” descriptively to indicate hue. The district court also found that Breitling satisfied the good faith element, even if Breitling was aware of Solid 21’s RED GOLD mark. Solid 21 appealed.

The Second Circuit affirmed, finding that Breitling’s advertising materials clearly showed that it used the term “red gold” as a descriptor for color and not as a mark. The Court rejected the argument that this conclusion as to descriptive use was undermined by the availability of the term “rose gold” as an alternative descriptor and pointed out that Solid 21 bears the risk of some consumer confusion in choosing to trademark a descriptive term that describes a color of metal. Finally, the Court found that Breitling’s use of [...]

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PTO to Patent Examiners: Make Interpretation of Means-Plus-Function Claims Clear in the Record

by | Mar 28, 2024 |

On March 18, 2024, the US Patent & Trademark Office (PTO) issued a memorandum to patent examiners addressing means-plus-function and step-plus-function claim limitations and how to clearly articulate, in the prosecution record, the PTO’s interpretation of such claim limitations. The goal of the memorandum is to ensure consistency in connection with the examination of such limitations, provide both the applicant and the public with notice regarding the claim interpretation used by the patent examiner, and provide the applicant an opportunity to advance a different claim interpretation early in the prosecution.

As stated in 35 U.S.C. §112(f), “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” The memorandum does not suggest any changes in interpretation of the statute.

One aspect of the memorandum is to remind examiners of the resources and guidance available when examining means-plus-function and step-plus-function claim limitations, specifically MPEP §§ 2181-2187 and refresh training. In accordance with the guidance, the primary steps when examining such claim elements include:

  • Determining whether a claim limitation invokes § 112(f)
  • Ensuring the record is clear with respect to invoking § 112(f)
  • Evaluating the description necessary to support a § 112(f) claim limitation under §§ 112(a) and (b).

To determine whether a claim limitation invokes §112(f), the guidance instructs examiners to employ the three-prong analysis set forth in MPEP § 2181, subsection I. Using this analysis, recitation of the terms “means” or “step” in association with functional language, rather than structure, material or acts for performing that function, should be interpreted as claim limitations invoking § 112(f). However, where these terms are accompanied by structure, materials or acts for performing the function, § 112(f) is not invoked. On the other hand, a limitation reciting functional language along with a generic placeholder term instead of “means,” which fails to recite sufficiently definite structure for performing the function, would nonetheless invoke § 112(f), according to a proper analysis. Examples of such generic placeholders include “mechanism for,” “module for,” “device for,” “unit for,” “component for,” “element for,” “member for,” “apparatus for,” “machine for” and “system for.”

An important caveat in the memorandum states that “[e]stablishing the interpretation of § 112(f) limitations in writing during prosecution is critical in supporting the agency goal of establishing a clear prosecution record.” The guidance advises examiners that form paragraphs are available in support of meeting this objective, which serve to inform “the applicant, the public, and the courts . . . as to the claim construction the examiner used during prosecution. This further informs the applicant, the public, and the courts (and the PTO for any post-grant review procedures) as to how the examiner searched and applied prior art based on the examiner’s interpretation of the claim.”

The memorandum further emphasizes the need to [...]

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New PTAB Claim Construction? Give the Parties Review Opportunity

by | Mar 28, 2024 |

The US Patent & Trademark Office (PTO) Director vacated Final Written Decisions issued by the Patent Trial & Appeal Board that presented a sua sponte construction of a claim term in dispute, holding that the parties were not provided adequate notice of the Board’s new construction. Assa Abloy AB v. CPC Patent Technologies Pty., Ltd., IPR2022-01006, -01045, -01089 (PTAB Decision Review Mar. 15, 2024) (Vidal, PTO Dir.)

The Board issued Final Written Decisions in three inter partes reviews (IPRs), holding that the petitioner failed to demonstrate that any of the challenged claims were unpatentable. The petitioner requested Director Review, raising three issues concerning the Final Written Decisions’ treatment of the claim term “biometric signal”:

  1. The Board’s construction newly added a limitation that neither the petitioner nor the patent owner proposed
  2. The Board’s construction was erroneous
  3. The Board inconsistently addressed this claim limitation among the IPRs at issue.

The Director decided that review was appropriate.

The Director explained that in view of the petitioner’s and patent owner’s divergent post-institution positions regarding this limitation, the Board had authority to construe “biometric signal” even though its institution decisions indicated that the Board would give this claim term its plain and ordinary meaning. The petitioner argued that the term meant “the input and output of the biometric sensor,” and the patent owner argued that the term meant a “physical attribute of the user” (i.e., a fingerprint, facial pattern, iris, retina or voice). The Board held that it meant “a physical or behavioral biometric attribute that provides secure access to a controlled item.”

The Director vacated and remanded the Final Written Decisions, explaining that the Board failed to provide the petitioner and the patent owner reasonable notice of its new construction or the opportunity to present arguments concerning it, as required under the Administrative Procedure Act (APA). The Director noted that neither party requested the Board’s inclusion of a construction that required an attribute of the claimed signal to “provide[] secure access to a controlled item” and concluded this was the sort of “difficult to imagine” sua sponte construction that the US Court of Appeals for the Federal Circuit held (in its 2021 decision in Qualcomm v. Intel) lacked sufficient notice if appearing for the first time in a Final Written Decision.

The Director instructed that on remand the Board should authorize the petitioner to file a supplemental briefing that addresses the Board’s construction and its application to the asserted prior art and authorize the patent owner to respond to the petitioner’s supplemental briefing.

The Director also noted that the patent owner’s proposed claim construction in the IPRs was similar to the construction that the Board adopted in its institution decisions in other IPRs challenging two of the patents at issue. In recognition of this situation, the Director also invited the petitioner, in its supplemental briefing, to address the perceived inconsistencies in these claim constructions.



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Strong Signal: Personal Jurisdiction Over Foreign Defendant Based on Confluence of Factors

by | Mar 21, 2024 |

The US Court of Appeals for the Fifth Circuit concluded that a district court had personal jurisdiction over a foreign defendant’s website that purposefully targeted a US-based audience. DISH Network, LLC v. Bassam Elahmad, Case No. 23-20180 (5th Cir. Mar. 8, 2024) (Willett, Wilson, Ramirez, JJ.) (per curiam).

DISH Network sued Bassam Elahmad, a German resident doing business as Elahmad.com, for contributory copyright infringement, alleging that Elahmad unlawfully provided access to DISH’s copyrighted Arabic language channels. DISH alleged that Elahmad found, combined and organized illegal streams and loaded links onto Elahmad.com. DISH sent more than 60 copyright infringement notices to Elahmad, who never responded or removed the content. Although Elahmad resided in Germany, DISH argued that any court in the United States had jurisdiction over him under Fed. R of Civ. Pro. 4(k)(2) because his website reached into and targeted the US. DISH also argued that Elahmad was not subject to jurisdiction in any particular US state. The district court disagreed, concluding that it could not exercise personal jurisdiction over Elahmad because DISH’s complaint did not allege that any conduct had occurred in Texas. The district court twice denied DISH’s motions for default judgment and dismissed the complaint. DISH appealed.

The Fifth Circuit addressed the district court’s application of Rule 4(k)(2) and whether DISH had made a sufficient prima facie showing of specific personal jurisdiction to sustain its case.

Addressing Rule 4(k)(2), which provides personal jurisdiction in any US district court if a defendant is not otherwise subject to jurisdiction in a specific state, the Fifth Circuit clarified that for a finding of personal jurisdiction under this rule, the question is whether a defendant has sufficient minimum contact “with the entire United States, not a forum state.” The Fifth Circuit found that the district court’s analysis focused solely on Elahmad’s Texas contacts – not the entire US – and was therefore reversible error.

Turning to DISH’s burden to establish a prima facie case of personal jurisdiction, the Fifth Circuit noted that DISH had properly served Elahmad. DISH therefore only had to satisfy three other conditions: that its claims arose from federal law, that Elahmad was not subject to general jurisdiction in another state, and that exercising jurisdiction would be consistent with the US Constitution. The Court concluded that the first two conditions were easily met because copyright laws are federal and the burden to establish that another state has jurisdiction falls on the defendant. Elahmad had not answered the complaint or joined the appeal. Clearly, he had not met that burden.

The Fifth Circuit found that the third condition was “a closer question” that required consideration of whether Elahmad had sufficient ties to the US to satisfy constitutional due process concerns. Because DISH argued that the district court had only specific personal jurisdiction over the defendant (not general), DISH needed to show that Elahmad purposefully availed himself of “the privilege of conducting activities in the United States,” that DISH’s claim arose out of those contacts, and that it would be [...]

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District Court Subpoena Power Plays “Supporting Role” to PTO Rules

by | Mar 21, 2024 |

Addressing the subpoena power of district courts to compel evidence for use in US Patent & Trademark Office (PTO) proceedings, the US Court of Appeals for the Fourth Circuit upheld a district court’s decision (albeit on alternative grounds), holding that district courts’ authority to issue subpoenas in support of PTO proceedings is limited by the PTO Rules of Procedure. Xactware Solutions, Inc. v. Buildxact Software Ltd., Case No. 22-1871 (4th Cir. March 13, 2024) (Gregory, Harris, Floyd, JJ.)

Buildxact, an Australian company, filed a trademark application at the PTO for BUILDXACT. Xactware opposed the BUILDXACT application at the Trademark Trial & Appeal Board and requested to depose three of Buildxact’s officers via video. When Buildxact objected indicating it would only allow written depositions (citing the PTO rules, which state that foreign depositions must be in writing unless the parties stipulate otherwise or the deposing party shows good cause), Xactware subpoenaed Buildxact through service on Buildxact’s default agent – the PTO Director – for an in-person deposition of a Buildxact corporate representative.

Buildxact filed a motion in the district court to quash the subpoena. The district court magistrate judge granted Buildxact’s motion, finding that Buildxact, which has no office, employees, or regular business in or near Virginia, did not have sufficient contacts to qualify as “being within” the district. Xactware moved for a review of the order, but the district court agreed with the magistrate judge’s ruling. Xactware appealed.

Pursuant to 35 U.S.C. § 23, the PTO may establish its own rules for depositions in cases before the Board. Additionally, 35 U.S.C. § 24 grants the “clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office” the power to “issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits.”

Xactware argued that Buildxact is “within” the district because it has an agent designated to receive service of process there (i.e., the PTO Director). The PTO argued that even if Buildxact were “within” the district, the subpoena must still be quashed as the deposition was improper under the PTO rules. The Fourth Circuit agreed, noting that it consequently need not address whether Buildxact was “within” the district or not.

The Fourth Circuit held that the district court lacked the authority to issue a subpoena compelling Buildxact’s deposition because the deposition being sought was prohibited by PTO rules and would not be admissible in any PTO proceeding. Looking at the legislative history, the Fourth Circuit noted that the district court’s subpoena power under § 24 is only available to the extent the courts are empowered to aid the PTO: “Section 24 assigns a supportive role to the district courts to ensure the smooth functioning of the [PTO] procedures.” Moreover, the explicit language of § 24 requires that a district court can only subpoena testimony “for use [...]

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Specially Convened Rehearing Panel Vacates IPR Institution Denial

by | Mar 21, 2024 | ,

In a rehearing decision issued by a Delegated Rehearing Panel specially convened by the US Patent & Trademark Office (PTO) Director, the Patent Trial & Appeal Board vacated a prior panel decision denying institution, modified the claim construction to account for a “clear and unmistakable” prosecution history disclaimer, and remanded for further proceedings consistent with the modified claim construction. SynAffix B.V. v. Hangzhou DAC Biotech Co., Ltd., No. IPR2022-01531, Paper 23 (PTAB Mar. 4, 2024) (Kim, Acting Deputy Chief APJ; Gongola, Vice Chief APJ; Worth, Acting Senior Lead APJ).

SynAffix filed a petition for inter partes review (IPR) of certain patent claims owned by Hangzhou DAC Biotech. The claims at issue are directed to a hydrophilic linker of formula (I), reproduced below.

A Board panel issued a prior decision denying institution. In the prior decision, the Board noted that it was undisputed that moieties Y or Z enable connection of the linker to a cell-binding agent (Y) or a cytotoxic drug (Z), and that Q and T are one sulfone, sulfoxide or phosphinate. That said, the central issue was whether Y or Z must act independently or whether they can act in concert with an adjoined Q or T compound. The Board concluded that Y and Z must act independently to enable their respective chemical reactions without assistance from an adjoining Q or T compound, because during prosecution the patent owner disclaimed embodiments in which Y or Z was adjoined to a sulfone compound with no additional adjacent sulfone, sulfoxide or phosphinate to overcome a rejection based on a prior art reference (Lees). Thus, the Board denied institution.

SynAffix subsequently sought review by the Director. The Director issued an order delegating director review to a rehearing panel. The rehearing panel reviewed whether the prior decision misapprehended or overlooked any issue raised in the request for director review. In particular, the rehearing panel considered whether, when the hydrophilic linker contains a vinylsulfone group, one of Y and Z may be understood to be a vinyl group with one of Q and T as a sulfone group (i.e., the vinyl group and the sulfone group mapped to separate letters), or instead whether one of Y and Z must be a vinylsulfone group (i.e., the vinyl group and the sulfone group mapped to the same letter).

While the rehearing panel agreed with the first version of the prosecution history disclaimer in the prior decision, it rejected a second under which two sulfone groups would not fall within the scope of the claim. First, the rehearing panel accepted the Board’s prior finding that the patent owner disclaimed embodiments in which Y or Z was adjoined to a sulfone compound with no additional sulfone, sulfoxide or phosphinate. However, the conclusion (in the prior decision) that the challenged independent claim excludes compounds in which the sole terminal group is vinyl sulfone without one or more adjacent Q and [...]

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Be Cool: Don’t Construe the Construction

by | Mar 21, 2024 |

The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board decision after concluding that the patent owner’s proposed construction would require the parties to construe the construction. CoolIT Systems, Inc. v. Katherine Vidal, Director of the United States Patent & Trademark Office, Case No. 22-1221 (Fed. Cir. March 7, 2024) (Lourie, Bryson, Stark, JJ.) (nonprecedential).

CoolIT Systems owns a patent directed to a system for fluid heat transfer to cool electronic devices. The patent focuses on a heat exchange system comprising various components including a heat sink, a housing member and a compliant member. The patent claims priority from two provisional applications. Asetek Danmark petitioned for inter partes review (IPR) of the patent based on anticipation and obviousness. During the IPR proceeding, the parties disputed the meaning of the term “matingly engaged,” a term introduced in the later provisional application. To preserve validity, CoolIT argued that the term should be construed narrowly to mean “mechanically joined or fitted together to interlock.” Asetek sought a broader construction of “joined or fitted together to make contact,” which would encompass all methods of joining two surfaces.

The Board found both interpretations extreme and partially construed the term as being satisfied when at least a portion of the compliant member fits within the recessed region of the housing member. Despite agreement on the term “mate” to mean “join or fit together,” there was disagreement on the term “engage.” However, the Board did not determine whether “matingly engaged” could encompass forms of engagement beyond fitting.

The Board found that the cited prior art suggested a compliant member fitting the housing, thus rendering the claims obvious. CoolIT appealed. The US Patent & Trademark Office (PTO) intervened after Asetek withdrew from the appeal based on settlement.

CoolIT argued that the Board’s interpretation was flawed, and that the prior art did not meet the requirements of the “matingly engaged” limitation irrespective of the interpretation adopted. CoolIT contended that its proposed construction aligned with the invention’s purpose and properly distinguished between the 2007 and 2011 provisional applications. CoolIT also argued that the compliant member must partition features to control coolant flow, necessitating a specific type of joining or fitting.

In response, the PTO argued that CoolIT’s proposed construction read limitations from the specification into the claim. The PTO contended that neither the claims nor the specification required “interlock” and disputed CoolIT’s interpretation of the 2007 provisional application. The PTO did not propose an alternative construction, however.

The Federal Circuit concluded that “matingly engaged” should properly be construed as “mechanically joined or fitted together,” as that construction accurately reflected the term’s meaning and aligned with arguments presented by both parties. The Court rejected CoolIT’s proposal to add the word “interlock” because it would cause more confusion than clarity, noting that even CoolIT and the PTO still disagreed over what the term “interlock” meant and thus adding that term to the construction would provide little guidance.

The Federal Circuit found that the Board [...]

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Patenting Web Advertising? Ask Alice, I Think She’ll Know

by | Mar 14, 2024 |

In a wide-ranging opinion, the US Court of Appeals for the Federal Circuit affirmed the district court’s grant of summary judgment of invalidity for lack of patent eligible subject matter under 35 U.S.C. § 101 with respect to claims directed to web-based advertising. Chewy, Inc. v. International Business Machines, Corp., Case No. 22-1756 (Fed. Cir. March 5, 2024) (Moore, Stoll, Cunningham, JJ.)

Chewy filed suit against International Business Machines (IBM) seeking a declaration that Chewy’s website did not infringe multiple patents related to web-based advertising. IBM responded by filing infringement counterclaims. After claim construction and discovery, the district court granted Chewy’s motions for summary judgment of invalidity for lack of patent eligible subject matter with regard to the asserted claims of one patent and noninfringement of the asserted claims of a second patent.

The claims of the first patent relate to providing a targeted advertisement from an “information repository” to a user based on the user’s internet search. In affirming the district court, the Federal Circuit first determined that, under Alice step 1, “[t]he claims broadly recite correlating advertisements with search results using a generic process.” The Court noted that the claims “merely recite the concept of identifying advertisements based on search results, without any specificity as to how this is accomplished,” and are directed to “the abstract idea of identifying advertisements based on search results.”

Turning to Alice step 2, the Federal Circuit found that the claims used a generic database and conventional processing steps, and “claimed use of a conventional repository for storing advertisements and associated search results in a well-known way.” Because “the claims recite the generic process for obtaining search results from a search query and using the search results to identify advertisements,” they failed under Alice step 2 and did not claim patent eligible subject matter under § 101.

Regarding the second asserted patent, the district court construed the claim term “selectively storing advertising objects at a store established at the reception system” as requiring the “advertising objects” to be “pre-fetched” and retrieved before the user requested a page on a website. Because it was undisputed that “Chewy retrieves advertisements in response to a user requesting a page” and not before, the district court ruled that Chewy’s website did not meet this claim limitation. Looking to the intrinsic claim construction evidence, the Federal Circuit held that the district court’s claim construction was amply supported by the specification and prosecution history and affirmed the district court’s grant of summary judgment of noninfringement. Of note, the Court explained that the specification made multiple references to pre-fetching as being part “of the present invention” and therefore limited the scope of the claims.

With respect to one asserted claim of the second patent, which did not include the limitation at issue, the district court found that Chewy’s website did not practice the limitation of “establishing characterizations for respective users based on the compiled data” because “the record undisputedly showed they deliver advertisements based on the page the user is currently viewing, [...]

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Read the Fine Print: Covenant Not to Sue “At Any Time” Terminated Upon License Expiration

by | Mar 14, 2024 |

Illustrating the importance of carefully drafting and reviewing language in a covenant not to sue, the US Court of Appeals for the Federal Circuit found that the plain language of a covenant permitted a licensor to sue a licensee for breach of contract only after termination of the contract. AlexSam, Inc. v. MasterCard Int’l., Inc., Case No. 22-2046 (Fed. Cir. Feb. 28, 2024) (Lourie, Chen, Stoll, JJ.) (non-precedential).

In 2005, AlexSam and MasterCard entered into a patent licensing agreement that guaranteed AlexSam ongoing royalties under two of its patents that involved pre-paid cards used with point-of-sale devices. The agreement included a covenant not to sue, in which AlexSam agreed to “not at any time initiate, assert, or bring any claim . . . against MasterCard . . . relating to Licensed Transactions arising or occurring before or during the term of this Agreement.” The agreement also included a Term and Termination provision, which recited that the agreement would remain in full force for the life of the licensed patents unless a party breached, at which time, if the party failed to cure, the non-breaching party would have the right to terminate the agreement. The patents expired on July 10, 2017.

In May 2015, two years before the licensed patents expired, AlexSam sued MasterCard for breach of contract in the district court, claiming that MasterCard had not properly paid the royalties per transaction under the agreement. Separately, in March 2017, MasterCard filed a petition for Covered Business Method (CBM) Review, asking the Patent Trial & Appeal Board to review the patentability of the licensed patents. AlexSam argued that MasterCard lacked standing under 37 C.F.R. § 42.302(a), which required that MasterCard first be sued or charged with infringement of the patent on which it sought review. The Board determined that MasterCard lacked standing to bring the review. The Board also noted that it “need not, and do[es] not, address the question of whether [AlexSam’s] breach of contract claim in the New York Action itself violates the covenant not to sue.”

MasterCard moved for and was granted summary judgment in the district court on the grounds that AlexSam’s arguments before the Board regarding the covenant not to sue judicially estopped it from asserting its breach of contract claims. AlexSam filed its first appeal, and the Federal Circuit reversed the district court’s ruling, finding that it had abused its discretion in crediting AlexSam with a position it never actually took before the Board. The Court remanded the case for the district court to determine whether the covenant not to sue prohibited a claim for royalties. MasterCard again moved for summary judgment. The district court granted the motion, finding that the covenant not to sue barred AlexSam’s claim for unpaid royalties. AlexSam again appealed.

In this second appeal, AlexSam argued that the covenant not to sue in the 2005 License Agreement did not bar suit for breach of nonpayment of royalties since AlexSam would then have no remedy against a failure by MasterCard to pay [...]

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Optimizing Obviousness: Routine Optimization Can Fill in Prior Art Gaps

by | Mar 14, 2024 | ,

In an appeal from a Patent Trial & Appeal Board finding of invalidity, the US Court of Appeals for the Federal Circuit held that the result-effective variable doctrine can apply even when there is no overlap between a claimed range and a prior art range. The Court also held that before denying a motion to amend, the Board must address every element of proposed claims, and that a party cannot challenge the US Patent & Trademark Office (PTO) Director Review procedure if it cannot show prejudice. Pfizer Inc. v. Sanofi Pasteur, Inc., Case No. 19-1871 (Fed. Cir. Mar. 5, 2024), (Lourie, Bryson, Stark, JJ.)

Sanofi filed five inter partes review (IPR) petitions targeting a patent owned by Pfizer and directed to immunogenic glycoconjugates of Streptococcus antigens (i.e., combinations of sugar molecules found on the surface of Streptococcus bacteria capable of provoking an immune response). The challenged independent claim recited conjugates having a sugar from the 22F Streptococcus serotype and a molecular weight falling within a claimed range. Dependent claims further limited the independent claim by requiring combinations of specific sugars.

Sanofi challenged the claims based on a combination of two references: GSK-711 and Merck-086. GSK-711 described vaccines using sugars from 22F, and Merck-086 described immunogenic compositions using Streptococcus sugar conjugates. While neither reference disclosed the molecular weight of a 22F conjugate, the Board found that the molecular weight of a conjugate was a “result-effective variable” – i.e., a variable that affected the efficacy of the result – and thus it would have been obvious for a person of ordinary skill in the art (POSITA) to optimize the molecular weight of a 22F-based conjugate to achieve the claimed molecular weight range. The Board also found that the dependent claims would have been obvious, as GSK-711 disclosed the additionally claimed sugars. Pfizer filed a motion to amend to add new claims, but the Board denied the motion. Pfizer also requested Director Review of the Board’s decision, but the Director denied the request.

Pfizer appealed to the Federal Circuit alleging that the Board improperly applied the result-effective variable doctrine, that the Board improperly denied Pfizer’s request to amend the claims, and that the Director’s denial of review violated the Administrative Procedure Act (APA). The Federal Circuit affirmed the Board’s finding of invalidity, affirmed in part and remanded in part the issue of the proposed claim amendment, and finally held that any violation of the APA was harmless.

The Federal Circuit started with an analysis of the result-effective variable doctrine. Pfizer argued that the result-effective variable doctrine could not apply when there was no disclosure of an effective range in the prior art. Therefore, because neither GSK-711 nor Merck-086 disclosed an effective molecular weight range for a 22F conjugate, and because the relationship between molecular weight and efficacy was unpredictable, the independent claim was not obvious. The Court disagreed.

The Federal Circuit explained that, when there is a gap between the prior art and the claims, the relevant [...]

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