The Software IP Report

Federal Circuit: No “Teaching Away” Without Discouragement

The University of Maryland Biotechnology Institute (“Maryland”), owner of U.S. Patent No. 6,673,532 B2 (“the ‘532 patent”), recently lost the ‘532 patent when the United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) rejected Maryland’s argument that a cited reference is teaching away from combining it with another reference to reach a conclusion of obviousness.  The Federal Circuit affirmed a determination by the PTAB of obviousness of the claims in an interpartes reexamination of the ‘532 patent on 35 U.S.C. §103 grounds.  The reexamination was requested by Presens Precision Sensing GMBH (“Presens”), a seller of equipment that uses technology related to that in the ‘532 patent.   University of Maryland Biotechnology Institute v. Presens Precision Sensing GMBH, 2016-2745, 2017-1057 (November 3, 2017).

The claim rejections relied on two technical papers, Bernhard H. Weigl et al., Optical Triple Sensor for Measuring pH, Oxygen and Carbon Dioxide, 32 J. Biotechnology 127 (1994) (“Weigl”), and Shabbir B. Bambot et al., Potential Applications of Lifetime-Based, Phase-Modulation Fluorimetry in Bioprocess and Clinical Monitoring, 13 Trends in Biotechnology 106 (1995) (“Bambot”).  The references were combined to reject claims including a limitation not expressly found in either reference: “at least two types of optical chemical sensors positioned within the single continuous volume”.

The Federal Circuit looked for all of the claimed elements in the references, and for the predictability of the result of the combination.  The Federal Circuit also looked for evidence of discouragement of the combination within the references. 

In its discussion of the predictability of the result, the Federal Circuit referenced its earlier decision, In re Mouttet, 686 F.3d 1322, 1322 (Fed. Cir. 2012) (“Mouttet”).  In Mouttet, the Federal Circuit limited the guidance of In re Ratti, 270, F.2d 810, 813 (CCPA 1959) (“Ratti”) with the application of KSR Int’l Co. v. Tele-flex Inc., 550 U.S. 398, 418 (2007) (“KSR”):

“Unlike in Ratti, we cannot say here that the ‘suggested combination of references would require a substantial reconstruction and redesign of the elements shown’ in Bambot, or a ‘change in [its] basic principles.’ 270 F.2d at 813. Rather, Bambot and Weigl taught every element of the claimed invention and the combination of the references accords with their teachings. ‘The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.’ KSR, 550 U.S. at 416.”   

Maryland argued that Weigl taught away from using the features of Bambot to reach the claimed device.  The Federal Circuit was not receptive to Maryland’s arguments.  Maryland argued “. . . that because Weigl’s sensors are positioned outside the cultivation vessel, Weigl cannot be modified in view of Bambot without ‘completely chang[ing] the fundamental principle of operation of Weigl.’ Appellant’s Br. 20.”  However, the Federal Circuit was persuaded by Presens “. . . that the Board’s obviousness holding was based on Bambot’s sensor configuration, not Weigl’s, so Maryland’s application of Ratti is misplaced.”    Other arguments by Maryland based on the shortcomings of Weigl were also rejected. 

The Federal Circuit, in citing a case from earlier this year, makes it clear that it wants to see within the references an express or near express discouragement of the asserted combination:

“. . . teaching away requires ‘clear discouragement’ from implementing a technical feature. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017).”

The Federal Circuit placed the burden on Maryland to show “discouragement,” and found Maryland’s arguments lacking, stating “Maryland directs us to no such discouragement.” 

Maryland’s difficulty in persuading the Federal Circuit that the references should not be combined was greatly increased by what may have been a speculative  comment in Bambot highlighted by the Federal Circuit:

“. . . Bambot indicated that measurement of ‘oxygen (and other analytes)’ in cultivation vessels was feasible, J.A. 132, and proposed a separate ‘multianalyte sensing system,’ J.A. 131.” 

Even though the combination was not expressly enabled, it was encouraged, not discouraged, by Bambot.  That affirmative suggestion was just too much for Maryland to overcome.  The Federal Circuit shortly thereafter reached its conclusion, affirming the PTAB’s decision of obviousness.

Lessons for Practice

  1. When constructing a “teaching away” argument, find express statements within the references that would counter the combination relied on in the rejection.
  2. If there is no express discouragement of the combination to be found in the references, consider alternative arguments (e.g., not all of the claim elements have been found in the references).
  3. Have an appreciation for the (low) likelihood of success when pursuing an appeal that relies on a “teaching away” argument without clear evidence of “discouragement.”
  4. When drafting patent applications, remain aware of the potential patentability impact on later-filed applications of speculative remarks included in the patent application being drafted.

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