Background
Elaine and Reinhold Vieth own U.S. Patent No. 9,066,958, which claims methods of delivering vitamin D by placing a drop containing vitamin D and medium-chain triglycerides on an object for a person to suck or lick. Claim 3 specifies delivery to an infant from a woman’s nipple or pacifier, while claims 4 and 5 narrow the vitamin D concentration and triglyceride chain length.
Mom Enterprises, LLC petitioned for inter partes review, relying on prior-art references concerning vitamin D administration, medium-chain triglycerides, and delivery of substances to infants by spoon or pacifier. The Patent Trial and Appeal Board found claims 1 and 3–5 obvious. It concluded, among other things, that Harder taught administering vitamin D oil from a spoon, other references supplied the claimed concentration and triglyceride characteristics, and Blass supported using a pacifier. The Vieths appealed.
The Court’s Holding
The Federal Circuit affirmed the Board’s determination that claims 1 and 3–5 were unpatentable as obvious. Substantial evidence supported the Board’s finding that Harder inherently disclosed, or alternatively suggested, the requirement that the drop adhere without preventing efficient removal. The Board addressed both parts of the agreed claim construction and reasonably found that a drop reaching the bowl of a spoon could still be efficiently licked or sucked away.
The court also upheld the Board’s treatment of several arguments as forfeited because the Vieths raised them too late or failed to develop them adequately. Substantial evidence supported the motivation to substitute a pacifier for Harder’s spoon because a pacifier would more readily trigger an infant’s sucking reflex. Finally, the products offered as evidence of commercial success and praise were not coextensive with the claims because their labels also instructed users to mix the drops into food or liquids, and the remaining evidence of nexus, long-felt need, and copying did not overcome the obviousness showing.
Key Takeaways
- A patent owner may forfeit an argument by introducing a materially new theory in a sur-reply rather than properly developing it in the patent-owner response.
- Substantial evidence supported treating vitamin D in medium-chain triglycerides as satisfying the claimed adherence requirement when the drop remained efficiently removable from a spoon.
- Objective indicia carried limited weight because the commercial products included unclaimed prior-art uses and the patent owners did not otherwise establish a sufficient nexus to the claimed method.
Why It Matters
The nonprecedential decision illustrates the importance of presenting complete claim-construction, prior-art, and analogous-art arguments at the proper stage of an inter partes review. A party generally cannot use a sur-reply or Board oral argument to redirect its theory.
It also shows that commercial success, praise, and alleged copying will not establish nonobviousness without evidence connecting those considerations to the claimed features. Products marketed for both claimed and unclaimed methods may not receive a presumption of nexus.