December 4, 2022

Volume XII, Number 338

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December 02, 2022

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December 01, 2022

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Check Your Expert Skills and Standing

The US Court of Appeals for the Federal Circuit dismissed a portion of an appeal from the Patent Trial & Appeal Board (Board) regarding obviousness because the patentee did not have standing to challenge the decision regarding one of the claims. The Court also affirmed-in-part because the definition of person of ordinary skill in the art applied by the Board was not unreasonable or unsupported by the evidence. Best Medical International, Inc. v. Elekta Inc., Case Nos. 21-2099; -2100 (Fed. Cir. Aug. 29, 2022) (Hughes, Linn, Stoll, JJ.)

Best Medical International (BMI) owns a patent directed to a method and apparatus for conformal radiation therapy of tumors using a pre-determined radiation dose. The Board instituted two inter partes review (IPR) petitions filed by Varian Medical Systems and Elekta. During the pendency of the IPR proceeding, a parallel ex parte re-examination was ongoing. After institution of the IPRs, the examiner in the re-examination rejected claim 1, which BMI subsequently cancelled “without prejudice or disclaimer.” After BMI cancelled claim 1, the Board issued its final written decision in the IPR proceedings. The Board noted that BMI had cancelled claim 1 during re-examination, but concluded that claim 1 had “not yet been canceled by a final action” because BMI had “not filed a statutory disclaimer of claim 1.” The Board therefore considered the merits of Elekta’s patentability challenge and determined that claim 1 was unpatentable as obvious. The Board issued a split decision as to the other claims, finding one claim patentable and the others unpatentable. BMI appealed.

The Federal Circuit began by analyzing whether BMI had standing to challenge the Board’s invalidation of the now cancelled claim 1. BMI attempted to invoke Munsingwear vacatur, which allows courts to vacate underlying decisions on issues that have become moot during their pendency. As an initial matter, the Court found that the Board had the authority to invalidate the claim because it was not finally cancelled at the time the Board issued its final written decision. Regarding BMI’s vacatur argument, Elekta argued that BMI lacked standing to challenge the decision related to the cancelled claim. BMI countered that it had suffered an injury sufficient to create Article III standing because it believed that collateral estoppel might be applied by the examiner regarding other claims in another patent subject to re-examination. The Court was unpersuaded by this argument, in part because BMI could not cite any case law where collateral estoppel was applied in that fashion. The Court found that Munsingwear vacatur was inappropriate because the mooting event did not happen during the pendency of the appeal—it happened before the appeal was filed. The Court therefore concluded that BMI lacked standing to challenge the Board’s decision regarding the now cancelled claim.

Turning to the other claims the Board found unpatentable, BMI challenged the Board’s finding that a person of ordinary skill in the art must have formal computer programming experience. The Federal Circuit recited the non-exhaustive list of factors used to determine the requisite level of skill in the art, which include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” The parties did not present evidence regarding these factors to the Board, so the Board relied on the entire trial record to reach its conclusion. Under the substantial evidence standard, which does not permit the reweighing of evidence, the Court affirmed the Board’s decision because it was not unreasonable or unsupported by the evidence. The Court also considered BMI’s challenges to the Board’s construction of certain claim terms, its finding as to the teachings of the prior art and its findings on motivation to combine. The Court found these challenges unpersuasive and therefore affirmed the Board’s obviousness determinations.

Practice Note: This case raises two important points. First, Munsingwear vacatur cannot be used to vacate decisions where the mooting event happened prior to the filing of the appeal. Second, where there is a clear dispute on the level of skill in the art, parties should provide arguments based on the non-exhaustive list of factors identified by the Federal Circuit, particularly where a contrary finding would place a party’s expert outside one of the definitions.

© 2022 McDermott Will & EmeryNational Law Review, Volume XII, Number 251
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About this Author

Associate

Sarah J. Fischer focuses her practice on intellectual property patent litigation and patent licensing disputes, particularly for life-science, pharmaceutical and high-tech clients, in district court and before the PTAB, on behalf of both patent holders and defendants/petitioners. She handles all facets of pretrial discovery, case management and trial preparations. Sarah also counsels clients on due diligence, pre-suit matters and claim drafting strategies.

Sarah clerked for Chief Judge Ron Clark of the United States District Court for the Eastern District of Texas.

+1 617 535 5981
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