By Sue Gerber, Adriane Elinski, and Matt Johnson –
When issued patent drawings are not explicitly made to scale, the Federal Circuit recently confirmed that arguments relying solely or predominately on the features of those drawings, such as line thickness, are “unavailing.” The Regents of the University of California v. Satco Products, Inc., Appeal No. 2023-1356 (Fed. Cir. Dec. 4, 2024). In Regents, the court vacated-in-part a PTAB Final Written Decision invalidating a claim based on the thickness of a line in the prior-art patent figures and remanded for the PTAB to assess the art without reliance on the relative thickness of the bolded lines in the figure. Slip op. at 12.
In this case, Satco Products, Inc. (“Petitioner”) sought inter partes review of U.S. Patent No. 10,644,213 (“the ’213 patent”) owned by the Regents of the University of California (“Patent Owner”), asserting claims 1 and 2 were invalid as obvious. The ’213 patent, titled “Filament LED Light Bulb,” is directed to a transparent light emitting diode (“LED”) that includes a plurality of III-nitride layers designed to enhance light extraction. Id. at 2-3. Claim 1 is directed to an LED including a limitation where the cathode and anode provide structural support (“the cathode/anode limitation”). Id.
The Petitioner argued that the cathode/anode limitation was obvious in light of a Japanese prior-art patent publication (“Yamazaki”), which contained a cross-sectional drawing of a semiconductor light-emitting device where “[t]he chip substrate 11 is structured as a flat chip substrate … and an electrically conductive pattern 11a is provided on the surface thereof” as pictured below:
Id. at 4-5.
Petitioner argued that the bolded lines depicting element 11a represented a j-lead supporting the substrate, whereas, Patent Owner countered that the “electrically conductive pattern” of 11a would have been understood by a person of ordinary skill in the art to have been depositing or etching. Id. The PTAB agreed with Petitioner, finding that the bolded lines were “the only bolded feature shown in any of the four figures of Yamazaki—in such a way as to appear to emphasize the wrap-around nature of the pattern.” Id. at 5. Despite acknowledging that “Yamazaki’s figures do not define the precise proportions of the elements,” the PTAB found that the bold line emphasized the element’s thickness relative to other portions of the figure. Id. Thus, the PTAB determined that a person of ordinary skill in the art would have understood the reference to teach the use of relatively thick j-lead metal leads to provide structural support. Id. Based in part on this teaching, the PTAB found the cathode/anode limitation obvious. Id. at 6.
The Federal Circuit, however, disagreed and vacated the PTAB’s decision with respect to the cathode/anode limitation. It explained that although patent drawings may be used to shed light on the general shape and relative size of elements of the claimed invention, see, e.g., Synopsys, Inc. v. ATopTech, Inc., 685 F. App’x 951, 954 (Fed. Cir. 2017), “figures in a patent are not drawn to scale unless otherwise indicated,” Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000), and thus, “arguments based on drawings not explicitly made to scale in issued patents” are “unavailing.” Nystrom v. TREX Co., 424 F.3d 1136, 1149 (Fed. Cir. 2005). Slip op. at 8.
Because nothing in Yamazaki indicated that the figures had been drawn to scale, the Federal Circuit found that even though the boldness of certain lines could be read as disclosing a relative thickness, they could also be read to demonstrate only the existence of a separate structure. Id. Though there was some additional evidence in the record to indicate the bolded lines were indeed j-leads and not depositing/etching, the Court could not distinguish the PTAB’s significant, improper reliance on the line boldness from the other evidence of record. Id. at 9-10. Because of this error, the Court remanded for the PTAB to re-assess the validity of Claim 1 in light of Yamazaki without reliance on the relative thickness of the bolded lines in the patent drawings. Id. at 12.
Takeaway: The PTAB is unlikely to give weight to arguments regarding the features of an invention based solely on patent drawings that are not explicitly made to scale. Practitioners are advised to rely on patent drawings with care and introduce as much additional evidence as possible to support such arguments when patent drawing are implicated.
Matthew Johnson
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