Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd.

Mental Step in Claim Receives No Patentable Weight as Per Printed Matter Doctrine

Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., __ F.3d __, 2018 WL 2224150 (Fed. Cir. May 16, 2018) (Prost, Newman (concurring in the judgment), LOURIE) (PTAB) (4 of 5 stars)

Fed Cir affirms IPR decision that eleven of Mallinckrodt’s patent claims were obvious, and reverses decision that one claim was not proved obvious. Mallinckrodt’s patent related to methods for distributing nitric oxide gas cylinders for pharmaceutical use. The PTAB did not err in applying the printed matter doctrine during claim construction, as it was part of interpreting the meaning of the claim language. The opinion rejects Mallinckrodt’s argument that the printed matter doctrine should be applied only in the assessment of patentability (not claim construction). The Board also did not err in concluding that certain limitations in Mallinckrodt’s claims reciting mental steps were not entitled to patentable weight. “Like the information claimed by printed matter, mental steps or processes are not patent eligible subject matter.” Op. at 12 (citing Gottschalk, 409 U.S. 63 (1972); Genetic Techs., 818 F.3d 1369 (Fed. Cir. 2016); and CyberSource, 654 F.3d 1366 (Fed. Cir. 2011)). “Because claim limitations directed to mental steps may attempt to capture informational content, they may be considered printed matter lacking patentable weight in an obviousness analysis.” Op. at 12. The PTAB did not err in its interpretation of “pharmaceutically acceptable,” and the opinion rejects Mallinckrodt’s argument that the Board violated any procedural requirements by adopting a claim construction neither party proposed. The PTAB also did not err in discounting certain evidence proffered as secondary considerations of nonobviousness; that evidence was “not relevant” to the claims at issue.

As to the sole claim held valid, the PTAB erred in concluding that the prior art did not render the claim obvious. The PTAB’s implicit interpretation of the claim was erroneous; properly interpreted the record established obviousness, and Mallinckrodt’s evidence of secondary considerations was not on point. Remand is unnecessary; “The Board’s uncontested findings regarding [the prior art] render claim 9 obvious under the proper reading of the claim.” Op. at 18.

The Board also erred in basing its obviousness determination for claim 11 on an incorrect recitation of that claim’s dependency. Claim 11 depends not from claim 7, but from claim 9, but as claim 9 is obvious, and Mallinckrodt presented no separate argument for claim 11’s validity, the error was harmless.

Concurrence in the judgment: Judge Newman would not have applied the printed matter doctrine to mental steps, and criticizes the panel majority for “convert[ing] the patentability analysis into eligibility under section 101[.]” Concur. Op. at 5. She would have found the claims obvious on the record, without resort to printed matter doctrine.

KEYWORDS: PRINTED MATTER; INTER PARTES REVIEW; OBVIOUSNESS (YES)