Bamberg v. Dalvey ( 2016 )


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  •   United States Court of Appeals
    for the Federal Circuit
    ______________________
    ULF BAMBERG, PETER KUMMER,
    ILONA STIBUREK,
    Appellants
    v.
    JODI A. DALVEY, NABIL F. NASSER,
    Appellees
    ______________________
    2015-1548
    ______________________
    Appeal from the United States Patent and Trademark
    Office, Patent Trial and Appeal Board in Nos. 105,961,
    105,964, 105,966.
    ______________________
    Decided: March 9, 2016
    ______________________
    STEPHEN HOLMES, Barlow, Josephs & Holmes, Ltd.,
    Providence, RI, argued for appellants. Also represented by
    JOSHUA A. STOCKWELL; KURT JOHN NIEDERLUECKE, LAURA
    LYNN MYERS, Fredrikson & Byron, PA, Minneapolis, MN.
    DEVAN V. PADMANABHAN, Winthrop & Weinstine,
    P.A., Minneapolis, MN, argued for appellees. Also repre-
    sented by PAUL J. ROBBENNOLT, NATHAN J. WITZANY.
    ______________________
    Before MOORE, HUGHES, and STOLL, Circuit Judges.
    2                                      BAMBERG   v. DALVEY
    HUGHES, Circuit Judge.
    Ulf Bamberg, Peter Kummer, and Ilona Stiburek ap-
    peal from the Patent Trial and Appeal Board’s consolidat-
    ed interference proceeding decision refusing to allow the
    claims of four patent applications because the specifica-
    tion failed to meet the written description requirement of
    35 U.S.C. § 112. Because the Board properly construed
    the claims and substantial evidence supports the Board’s
    determination that Bamberg failed to meet the written
    description requirement, and because it was not an abuse
    of discretion to deny Bamberg’s motion to amend, we
    affirm.
    I
    This case arises out of consolidated interference pro-
    ceeding No. 105,964 between Ulf Bamberg, Peter Kum-
    mer, and Ilona Stiburek (collectively, Bamberg) and Jodi
    A. Dalvey and Nabil F. Nasser (collectively, Dalvey). The
    claims at issue originated in four Dalvey patents issued
    between July 6, 2010, and April 22, 2014, which all claim
    priority to an application filed September 9, 1999.
    Bamberg, believing that they had earlier invented the
    claimed methods, intentionally copied the Dalvey claims
    into four patent applications to provoke an interference.
    Bamberg’s applications claim priority to an international
    application filed under the Patent Cooperation Treaty
    (PCT) on June 1, 1999. To determine which party had
    priority of inventorship, the Board declared three inter-
    ferences on September 26, 2013. 1 The Board declared
    Bamberg the senior party to the interference under 37
    C.F.R. § 2.96. As the junior party, Dalvey was required to
    prove an earlier priority date by a preponderance of the
    evidence.
    1   The three interferences were subsequently consol-
    idated into one, No. 105,964.
    BAMBERG   v. DALVEY                                       3
    The involved claims disclose a method for the transfer
    of printed images onto dark colored textiles by ironing
    over a specialty transfer paper. The transfer paper gen-
    erally contains: (1) a removable substrate coated with
    silicon, (2) a hot-melt adhesive, (3) a white layer, and (4)
    an ink-receptive layer. To use the transfer sheet, an
    image is first printed on the ink-receptive layer. The
    removable substrate is then peeled off and the remaining
    portion (the hot-melt adhesive, white layer, and the ink-
    receptive layer) is placed on the dark textile with the
    printed ink-receptive layer facing up. The user then
    places the removable substrate over the ink-receptive
    layer and applies heat with an iron which melts the hot-
    melt layer causing the white layer and the ink-receptive
    layer to adhere to the dark textile.
    During the interference proceeding, Dalvey filed a
    motion alleging that Bamberg’s claims were unpatentable
    for lack of written description, as required by 35 U.S.C.
    § 112. Dalvey alleged that the copied claims recite a
    white layer that melts at a wide range of temperatures,
    but Bamberg’s specification only discloses a white layer
    that does not melt at ironing temperatures (i.e., below
    220°C). Therefore, Dalvey argued that Bamberg’s specifi-
    cation failed to meet the written description requirement
    because it does not disclose an invention in which the
    white layer melts at temperatures below 220°C.
    Pursuant to Agilent Technologies, Inc. v. Affymetrix,
    Inc., 
    567 F.3d 1366
    , 1375 (Fed. Cir. 2009), the Board
    reviewed the claims in light of the Dalvey patent specifi-
    cation and concluded that the claims were not limited to a
    white layer that melts at or above 220°C, but rather the
    claims also include within their scope a white layer that
    melts below 220°C. After reviewing Bamberg’s specifica-
    tions, the Board granted Dalvey’s motion, finding that
    Bamberg failed to provide an adequate written descrip-
    tion of a white layer that melts below 220°C. Because the
    written description requirement is a threshold issue, the
    4                                       BAMBERG   v. DALVEY
    Board did not decide Dalvey’s remaining motions. See 37
    CFR § 41.201(2)(ii). The Board also denied Bamberg’s
    motion to amend because Bamberg failed to provide a
    claim chart as required by 37 C.F.R. § 41.110(c)(2).
    Bamberg appeals. We have jurisdiction under 28
    U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141.
    II
    Bamberg urges us to find that the Board erred in its
    claim construction by improperly importing a functional
    limitation requiring the white layer to melt below 220°C.
    We review underlying factual determinations concerning
    extrinsic evidence for substantial evidence and the ulti-
    mate construction of the claims de novo. Teva Pharm.
    U.S.A., Inc. v. Sandoz, Inc., 
    135 S. Ct. 831
    , 841 (2015).
    Because this is an interference, and Bamberg copied
    Dalvey’s claims, we give the claims their broadest reason-
    able construction in light of the Dalvey specifica-
    tion. Harari v. Lee, 
    656 F.3d 1331
    , 1340 (Fed. Cir. 2011);
    see also Agilent Techs., 
    Inc., 567 F.3d at 1375
    (“[W]hen a
    party challenges written description support for an inter-
    ference count or the copied claim in an interference, the
    originating disclosure provides the meaning of the perti-
    nent claim language.”); In re Spina, 
    975 F.2d 854
    , 856
    (Fed. Cir. 1992) (“When interpretation is required of a
    claim that is copied for interference purposes, the copied
    claim is viewed in the context of the patent from which it
    was copied.”). “[U]nder the broadest reasonable interpre-
    tation, the Board’s construction cannot be divorced from
    the specification and the record evidence, and must be
    consistent with the one that those skilled in the art would
    reach.” Microsoft Corp. v. Proxyconn, Inc., 
    789 F.3d 1292
    ,
    1298 (Fed. Cir. 2015) (internal quotations and citations
    omitted).
    The Board analyzed the scope of the contested claims
    based on Dalvey’s specification and concluded that the
    BAMBERG   v. DALVEY                                         5
    “white layer” does not have a minimum melting tempera-
    ture. See J.A. 21. Bamberg asserts that the Board im-
    properly imported a limitation into the claims and,
    instead, the Board should have concluded that the “white
    layer” is simply “a white layer that remains opaque after
    application.” Pet. Br. 18.
    Dalvey’s specification defines “white layer” as “a layer
    on a transfer sheet positioned between a release layer and
    a receiving layer. The white layer imparts a white back-
    ground on a dark substrate.” U.S. Patent No. 7,749,581,
    col. 3 ll. 32–36. The specification discloses embodiments
    in which the white layer melts at a number of different
    temperatures. 
    Id. at col.
    10 l. 65 – col. 11 l. 5 (“Heat 850
    was applied to the peeled printed layers 820 and the
    release paper 852. The heat 850 was applied at 200 F, 225
    F, 250 F, 300 F, 350 F, and 400 F. A good image transfer
    was observed for all of these temperatures.”); 2 
    id. at col.
    6
    ll. 32–37 (“When heat is applied to the image transfer
    sheet . . . [the white layer] exhibit[s] a melt point from
    20°C up to 225°C”); 
    id. at col.
    7 ll. 14–15 (“The LDPE
    polymer of the [white layer] melts at a point within a
    range of 43°–300°C.”). We find no error in the Board’s
    conclusion that the broadest reasonable interpretation of
    “white layer” includes within its scope a white layer that
    melts at temperatures both above and below 220°C.
    III
    Bamberg disputes the Board’s determination that the
    specification failed to provide adequate written support
    under 35 U.S.C. § 112. To satisfy the written description
    requirement under 35 U.S.C. § 112, the specification must
    sufficiently describe an invention understandable to a
    person of ordinary skill in the art and “show that the
    2  200°F ≈ 93°C; 225°F ≈ 107°C; 250°F ≈ 121°C;
    300°F ≈ 148°C; 350°F ≈ 177°C; 400°F ≈ 204°C.
    6                                        BAMBERG   v. DALVEY
    inventor actually invented the invention claimed.” Ariad
    Pharm., Inc. v. Eli Lilly & Co., 
    598 F.3d 1336
    , 1351 (Fed.
    Cir. 2010) (en banc). In other words, “the applicant must
    ‘convey with reasonable clarity to those skilled in the art
    that, as of the filing date sought, he or she was in posses-
    sion of the invention,’ and demonstrate that by disclosure
    in the specification of the patent.” Carnegie Mellon Univ.
    v. Hoffmann-La Roche Inc., 
    541 F.3d 1115
    , 1122 (Fed. Cir.
    2008) (quoting Vas-Cath Inc. v. Mahurkar, 
    935 F.2d 1555
    ,
    1563–64 (Fed. Cir. 1991)). Satisfying the written descrip-
    tion requirement is a question of fact that we review for
    substantial evidence. 
    Harari, 656 F.3d at 1341
    (citing
    Chen v. Bouchard, 
    347 F.3d 1299
    , 1304 (Fed. Cir. 2003)).
    Because the contested claims are properly construed
    in light of Dalvey’s specification to encompass a white
    layer that melts above and below 220°C, Bamberg’s
    specification must also support a white layer that melts
    above and below 220°C to satisfy the written description
    requirement. Substantial evidence supports the Board’s
    determination that Bamberg’s specification fails to meet
    the written description requirement.
    The white background layer in Bamberg’s specifica-
    tion “comprises or is composed of permanently elastic
    plastics which are non-fusible at ironing temperatures
    (i.e. up to about 220°C) and which are filled with white
    pigments—also non-fusible (up to about 220°C).” J.A.
    1390–91. The specification clarifies that the “elastic
    plastics must not melt at ironing temperatures in order
    not to provide with the adhesive layer . . . an undesired
    mixture with impaired (adhesive and covering) proper-
    ties.” 
    Id. at 1391.
    Additionally, Ulf Bamberg testified
    that “we came to understand that clarity and resolution
    are decreased where the white background layer is per-
    mitted to melt . . . . Accordingly, we developed a white
    background layer that nonetheless formed a strong bind
    with the ink-receiving layer but did not melt at conven-
    tional iron-pressing temperatures (i.e., [that is] tempera-
    BAMBERG   v. DALVEY                                        7
    tures up to about 220°C).”     
    Id. at 1911
    (alterations in
    original).
    In Tronzo v. Biomet, Inc., this court determined that
    the asserted claims of the patent at issue, which described
    a generic-shaped cup hip implant, were invalid because
    these claims could not claim priority to the parent patent
    and, without that priority date, they were anticipated by
    intervening prior art. 
    156 F.3d 1154
    (Fed. Cir. 1998). We
    determined that the asserted claims could not claim
    priority to the parent patent because it did not provide
    written description support where it described only a
    conically shaped cup and specifically distinguished the
    prior art (i.e., other shapes) as “inferior” by detailing the
    advantages of the conically shaped cup. 
    Id. at 1158–59.
    Because the specification detailed why the prior art was
    inferior, the court determined that the patent “discloses
    only conical shaped cups and nothing broader.” 
    Id. at 1159.
        Bamberg attempts to distinguish Tronzo by arguing
    that its specification does not distinguish the prior art as
    “inferior” but simply claims that a melting white layer is
    “undesired.” J.A. 1391. Bamberg asserts that it meets
    the written description requirement because it “obviously
    had an embodiment that did melt,” and therefore one
    reasonably skilled in the art would understand that one
    “could have a layer that melted, but it may not be as
    good.”      Oral Argument at 10:51–58, 13:35–44,
    http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
    15-1548.mp3. But there is insufficient evidence in the
    record to support such a conclusion or to overcome the
    deferential standard of review on appeal.
    Moreover, this is a distinction without a difference.
    We are not persuaded by the assertion that one skilled in
    the art would understand that an inventor possesses
    something that it deems undesirable, but not something
    that it deems inferior. An inventor aware of an “unde-
    8                                      BAMBERG   v. DALVEY
    sired” embodiment theoretically could possess that inven-
    tion, perhaps by including it in the description of a pre-
    ferred embodiment in the specification. But that is not
    the question. For purposes of the written description
    requirement, “the subject matter of the counts [must] be
    described sufficiently to show that the applicant was in
    possession of the invention.” Goeddel v. Sugano, 
    617 F.3d 1350
    , 1356 (Fed. Cir. 2010).
    Consequently, like in Tronzo, we find that Bamberg
    does not possess a white layer that melts below 220°C
    because it specifically distinguished white layers that
    melt below 220°C as producing an “undesired” result. Cf.
    
    Tronzo, 156 F.3d at 1159
    (Statements that the prior art is
    “inferior” “make clear that the [parent patent] discloses
    only conical shaped cups and nothing broader.”). Even
    Mr. Bamberg’s testimony confirms that his invention did
    not include a white layer that melted below a threshold of
    220°C so as to not decrease the clarity and resolution of
    the final image.
    Because substantial evidence supports the Board’s
    conclusion that Bamberg did not possess a white layer
    that melts below 220°C, Bamberg’s specification fails to
    meet the written description requirement of 35 U.S.C.
    § 112.
    IV
    Finally, Bamberg appeals the Board’s denial of its mo-
    tion to amend. During the interference proceeding, Bam-
    berg moved to amend the claims of its applications in
    response to Dalvey’s motion alleging lack of written
    description support. The Board denied the motion.
    A party seeking to add or amend a claim has the bur-
    den of establishing that the amended or new claim is
    supported by an adequate written description. See 37
    C.F.R. § 41.121(b) (“The party filing the motion has the
    burden of proof to establish that it is entitled to the
    BAMBERG   v. DALVEY                                        9
    requested relief.”). The PTO has determined that, in the
    context of interference proceedings, this burden is best
    satisfied with a claim chart. 37 C.F.R. § 41.110(c) (“Any
    motion to add or amend a claim must include: (1) A clean
    copy of the claim, (2) A claim chart showing where the
    disclosure of the patent or application provides written
    description of the subject matter of the claim, and
    (3) Where applicable, a copy of the claims annotat-
    ed . . . .”).
    We review a Board decision “pursuant to the permis-
    sive rules governing a patent interference proceeding for
    abuse of discretion.” Koninklijke Philips Elecs. N.V. v.
    Cardiac Sci. Operating Co., 
    590 F.3d 1326
    , 1334 (Fed. Cir.
    2010) (quoting Eli Lilly & Co. v. Bd. of Regents of the
    Univ. of Wash., 
    334 F.3d 1264
    , 1266 (Fed. Cir. 2003)).
    “An abuse of discretion occurs if the decision (1) is clearly
    unreasonable, arbitrary, or fanciful; (2) is based on an
    erroneous conclusion of law; (3) rests on clearly erroneous
    fact findings; or (4) involves a record that contains no
    evidence on which the Board could rationally base its
    decision.” 
    Id. (quoting Eli
    Lilly, 334 F.3d at 1266
    –67).
    Here, Bamberg did not provide a claim chart—the
    principal means for determining if Bamberg satisfied its
    burden of establishing that the proposed amended claims
    were supported by an adequate written description—and
    thus failed to comply with the regulations governing
    interference proceedings. See 37 C.F.R. § 41.110(c). The
    Board denied the motion after concluding that Bamberg’s
    failure to provide a claim chart improperly shifted to
    Dalvey the burden of establishing that the amended claim
    is not supported by an adequate written description. See
    37 C.F.R. § 41.121(b). We find that the Board’s decision
    to deny the motion for failing to comply with its interfer-
    ence regulations, which improperly shifted the burden, is
    not an abuse of discretion.
    10                                   BAMBERG   v. DALVEY
    V
    We have reviewed Bamberg’s remaining arguments
    and find them unpersuasive. For the foregoing reasons,
    we affirm the Board’s decision cancelling the claims of
    Bamberg’s patent applications for failure to meet the
    written description requirement of 35 U.S.C. § 112, and
    its denial of Bamberg’s motion to amend.
    AFFIRMED