January, 24th, 2017

By Paul L. Fraulo

In ex parte Schulhauser, a decision recently designated precedential, the Patent Trial and Appeal Board (“PTAB”) construed a method claim with separate steps reciting mutually exclusive conditions precedent:

A method for monitoring cardiac conditions having the following steps:

  1. collect heart data;
  2. compare heart date to criteria;
  3. IF CRITERIA IS NOT MET, trigger alarm;
  4. IF CRITERIA IS MET, perform additional steps.

The PTAB held that when a claim, as shown above, recites separate steps having mutually exclusive conditions precedent, an anticipatory reference need only disclose one of the steps having a condition precedent. In reference to the illustrative claim, an anticipatory reference need only disclose steps 1–3, or steps 1, 2, and 4. The PTAB grounded its holding in the maxim that “it is axiomatic that that which would literally infringe if later anticipates if earlier.”[1] The claim was held obvious over a combination of three references that disclosed steps 1–3, but not step 4. In contrast, the PTAB held an analogous system claim that recited structure for performing each step was not obvious over the same combination of references. The Board explained that even if the performance of the various functions only occurs when a condition precedent is met, the structure for performing the functions is “present in the system regardless,” and therefore required.[2]

The PTAB did not explain why it designated the decision precedential, a relatively rare occurrence. There are four different categories of classification for PTAB decisions: (1) precedential; (2) informative; (3) representative; and (4) routine. Opinions are generally designated precedential for resolving conflicts or addressing novel questions, and of the four categories, only precedential opinions are considered binding authority in subsequent matters involving similar facts or issues.[3] Some commentators have suggested that the PTAB designated Schulhauser precedential in October 2016 because the Board applied the broadest reasonable interpretation (“BRI”) claim construction standard in its April 2016 decision, and the Supreme Court subsequently approved use of the BRI standard.[4] If this is true, the Board’s designation confirms that application of the BRI standard or the PHOSITA should yield an identical result in this scenario.

Takeaway

  • Separate steps having mutually exclusive conditions precedent are anticipated by a reference disclosing only one of the steps regardless of whether the BRI standard or the PHOSITA standard is used.
  • Avoid drafting a method claim having separate steps that recite mutually exclusive conditions precedent.
  • Add an analogous system claim that recites structure for performing separate steps that recite mutually exclusive conditions precedent.
  • Claim a first independent method claim with the first condition precedent, and a second independent method claim with the second condition precedent.

[1] Ex Parte Schulhauser, Appeal No. 2013-007847 (P.T.A.B. Apr. 28, 2016) (citing Bristol-Myers Squibb Co. v. Ben Venue Labs, Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001))

[2] Schulhauser at 14.

[3] Patent Trial and Appeal Board Standard Operating Procedure 2 (Revision 9), p. 3, available at https://www.uspto.gov/sites/default/files/documents/sop2-revision-9-dated-9-22-2014.pdf

[4] See, e.g., PTAB’s Precedential Decision Related to Broadest Reasonable Claim Construction, King L. Wong, available at http://www.seyfarth.com/uploads/siteFiles/publications/PTAB101816.pdf.

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