Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Healthier Choices Mgmt. Corp. v. Philip Morris Prods. S.A., No. 2023-1529 (Nov. 22, 2024), affirming the Patent Trial and Appeal Board’s denial of a motion to amend in an inter partes review (IPR) proceeding.
Philip Morris filed an IPR petition, challenging the claims of Healthier Choices’ U.S. Patent No. 10,561,170, which were directed to an improved electronic pipe. Healthier Choices filed a motion to amend the claims of the patent, seeking to add additional limitations. The Board denied the motion to amend for failing to comply with the written description requirement. Specifically, the Board found that the patent lacked written description support for the new “ambient air inlet” term, which was construed to exclude air passage through a first pipe section of the device. Healthier Choices appealed.
The Federal Circuit affirmed, noting that neither the original claim language nor the written description in the patent explicitly excluded the presence of an ambient air hole in the first pipe section. The Court held the exclusionary claim construction to be a “negative limitation,” which needed to be clearly supported by an express statement in the patent specification. The Court found that the specification of Healthier Choices’ patent did not exclude the existence of an ambient air hole in the first pipe section. The description of the figures in the patent indicated that an air inlet could be located in the external wall of the casing, allowing ambient air to enter the first chamber. The Court found that this description contradicted Healthier Choices’ argument that the patent excluded air passage through the first pipe section.
The Court also held that testimony from a skilled artisan regarding the probability of the exclusion of an element is insufficient if the specification itself is silent on the matter. Thus, the Court concluded that Healthier Choices had not established that skilled artisans would necessarily understand the exclusion of an air passage through the first pipe section because it was not mentioned in the patent. Based on these findings, the Court held that substantial evidence supported the Board's determination that there was no written description support for an inlet that directs ambient air while excluding air passage through the first pipe section. The Court affirmed the Board’s denial of the motion to amend.
