Federal Circuit No. 2014-1673, September 3, 2015

In Dome Patent L.P. v. Lee, the Federal Circuit affirmed that the preponderance of the evidence standard, not the clear and convincing evidence standard, is the appropriate standard for assessing invalidity during a district court review of a reexamination proceeding.  Per the Court, in a Section 145 action challenging a Patent Office reexamination decision, the district court was reviewing the USPTO's decision on whether Dome is entitled to a patent, not whether an issued and asserted patent could be held invalid.  Thus, only if the court found in favor of Dome would the patent be issued and entitled to a presumption of validity that could then only be overcome by a sufficient showing under the clear and convincing evidence standard.

The Federal Circuit also affirmed the district court’s conclusion of obviousness of claim 1, directed to a method of making an oxygen permeable material for the manufacture of contact lens, based on a combination of three prior art references: Gaylord (US 4,120,570), Ellis (4,152,508) and Tanaka (4,235,985).  Gaylord and Ellis disclosed a polymer for making contact lenses comprising Tris and a hydrophilic crosslinking agent, while Tanaka disclosed a polymer for the same purpose comprising a siloxane-based monomer (not Tris) and a hydrophobic, siloxane-based crosslinking agent.

The Federal Circuit affirmed the district court’s finding that  evidence of a motivation to combine prior art references may flow from “the nature of the problem to be solved,” and the motivation here came from the prior art evidence indicating a search for high oxygen permeability in contact-lens materials.  The Federal Circuit determined that while Tanaka may have disclosed disadvantages of using Tris-type materials, Gaylord and Ellis disclosed “roadmaps on how to offset the disadvantages associated with using Tris-type monomers to obtain a material suitable for contact lenses.”  Because Gaylord and Ellis taught that “Tris could be used effectively to make contact lenses,” a person of ordinary skill would not have been dissuaded from combining the prior art.  That is, evidence of teaching away is insufficient to overcome motivation to combine references.