Patent News:

May 18, 2023: In Amgen Inc. v. Sanofi, the Supreme Court unanimously held that Sanofi's “genus” patents – patents directed to broad patents cholesterol-lowering monoclonal antibodies but directed to a specific antibodies – were invalid for lacking an enabling disclosure. Stated the court: “If a patent claims an entire class of processes, machines, manufactures, or compositions of matter . . . the patent's specification must enable a person skilled in the art to make and use the entire class.” Because the class being claimed covers potentially millions of antibodies and the specification only describes 26 specific antibodies, the specification fails this test. The court further explained that it is not required for a patent to explain how to make and use every single embodiment within a claimed class, but should give examples along with identifying specific characteristics that would allow someone else to make and use everything that the patent claims.

This ruling is consistent with prior Federal Circuit holdings that the entire scope of a claimed invention must be enabled. See, e.g., Liebel-Flarsheim v. Medrad ¹⁾ discussed here. However, in their Yale Law Journal article, "The Antibody Patent Paradox"²⁾ the authors Lemley and Sherkow argue that the written description requirement is inconsistent with the science of antibody research. As we can now learn more about the molecular structure through DNA sequencing, the requirements for satisfying the written description requirement has grown more stringent and is incompatible with how scientists understand antigen science.³⁾

• full coverage
• Review and opinion
• opinion by Chris Holman

A set of proposed rules for IPR discretionary denials was published by the USPTO to “build on and codify existing precedent and guidance on Director’s discretion to determine whether to institute [IPRs].” In summary the rules would:

• Adopt a broader “substantial relationship test” to identify real parties in interest that must be disclosed.
• Mandate disclosure of information on corporate control and funding, similar to Judge Connolly's new standing rules in the District of Delaware. This disclosure may be a precondition for requesting discretionary denial.
• Codify the compelling merits exception to discretionary denial, which would apply when “the evidence of record . . . is highly likely to lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.”
• Permit discretionary denials for
  • petitioner misconduct or gamesmanship.
  • For-profit entities that have not been sued and are non-competitive in the technical space of the patent.
  • patents with claims that substantially overlap claims to another patent that has previously reached final adjudication as to validity by a district court or PTAB.
• Provide exemption from AIA reviews for small businesses.
• Revise the PTAB's approach to serial or parallel petitions. The proposal will deny any IPR or PGR petition with at least one challenged claim that is the same as a challenged claim in a previously filed IPR, PGR, CBM filed by the same petitioner, a real party in interest or privy to that petitioner, a party with a significant relationship to the petitioner, or a party that previously joined an instituted IPR or PGR filed by the petitioner. Exceptions in the case where the earlier filed petition was discretionarily denied or not resolved on the merits and in extraordinary circumstances. Parallel petitions will be denied except for good cause. In cases where word/page limits restrict what can be argued in a single petition, higher fees will be available for expanded word limits.

• In depth analysis (paywall)
• Summary and high level comments from Director Vidal

In Roku, Inc. v. Universal Elec’s, Inc., Case No. 2022-1058 (Fed. Cir. Mar. 31, 2023) (Reyna, Stoll, JJ.) (Newman, J., dissenting), the Federal Circuit reviewed a PTAB decision finding a patent for a universal remote control was patentable over prior art by looking only at the underlying factual issues leading to the obviousness decision, with those underlying factual issues being reviewed for substantial evidence, which is a determination as to whether a reasonable factfinder could have arrived at the same conclusion as to the facts.

Judge Newman dissented, arguing that de novo review of the obviousness–a legal question–was required and had the majority undertaken that required review, it would have resulted in a reversal of the PTAB's decision.

• Review

February 1, 2021: In M & K Holdings, Inc., v. Samsung Elecs. Co., ⁴⁾ the Fed. Cir. upheld a PTAB ruling that a S&K's video compression patent was invalid because prior art documents were available on JTC-VC's public website before the priority date of the patent. The court rejected M&K's argument that a person or ordinary skill in the art could not have located the prior art documents with reasonable diligence because the documents were not prominent and because the structure of JCT-VC's website, which lacked an adequate search function would have made finding the documents prohibitively difficult. Stated the court:

• Finnegan - Summary
• Summary of case and holdings
• Summary, discussion

In /M & K Holdings, Inc., v. Samsung Elecs. Co., ⁵⁾ the Fed. Cir. vacated the PTAB's finding that claim 3 of M&K's patent was invalid because its rationale for doing so, was based on anticipation despite the fact that Samsung did not put forth an anticipation argument with respect to claim 3. Stated the court:

• Finnegan - Summary
• Summary of case and holdings
• Summary, discussion

March 13, 2023: In Apple Inc. v. Vidal, the Federal Circuit reversed in part the district court's dismissal. Specifically, the Federal Circuit held that the Director's Fintiv instructions, as well as subsequent instructions rolling back the Fintiv instructions, to PTAB are (1) non-reviewable because institution decisions are non-reviewable by statute, (2) are not arbitrary and capricious. However, the Federal Circuit also found that the instructions fail to adhere to the APA's notice-and-comment rulemaking procedures, and these procedural requirements are indeed reviewable and enforceable by the courts apart from the reviewability of the underlying action. With respect to standing, the court concluded that, “at least Apple has standing to press the challenge to the Director's instructions as invalid for want of notice-and-comment rulemaking.

Stated the court:

• If the Director personally made an institution decision accompanied by an explanation containing the same reasoning as appears in the instructions here at issue, then the decision would be nonreviewable for being contrary to statute or arbitrary and capricious. For the IPR system to function with the delegations that are inevitable and congressionally expected, the same conclusion must follow for the instructions given by the Director to the Board as delegatee.
• The Supreme Court has held that clear and convincing evidence establishes a congressional protection from judicial review of the substance of the Director's institution discretion. That holding does not cover . . . the Director's choice of whether to use notice-and-comment rulemaking to announce instructions for the institution decision. [. . .] In these circumstances, we have been shown no sufficient justification for a conclusion that the high standard of § 701(a)(1) for inferring a preclusion of review is met for this distinct issue.

• Background, Summary, and Analysis
• News story (paywall)
• Background, Summary, and takeaways
• Summary

In a narrow precedential ruling, the Federal Circuit, in In re: Stingray IP Solutions, granted Singray IP's petition for a writ of mandamus seeking to reverse the district in the eastern district of Texas to central California. Stated the court:

Citations omitted.

• Summary and analysis
• Summary and analysis (paywall)
• News article summary (paywall

In Finjan LLC v. ESET, LLC, the Federal Circuit reversed a lower court holding that interpreted the term, “Downloadables” as requiring that the “downloadable” portion of a program be “small” because nonasserted patents that were incorporated by reference into asserted patents mention “small” in their definition of “downloadable.” Without any explanation of what the limits of “small” is, the lower court granted a summary judgment invalidity motion requesting the court declare the claim to be indefinite.

The Fed. Cir. reversed, stating that when a first patent is incorporated by reference into a second (“host”) patent, the invention claimed in the first patent does not become part of or otherwise change the invention claimed in the second. Rather, the first patent's disclosure serves to inform the construction of claim terms that are also found in the host patent. Stated the court, it is “erroneous to assume that the scope of the invention is the same such that disclaimers of scope necessarily apply across patents.”

• Summary, opinion, and discussion
• Analysis, comments
• Summary and analysis (paywall)

A recently published UPC implementation roadmap Indicates the UPC will start receiving cases on April 1, 2023. A three-month “sunrise” period, currently scheduled to begin on January 1, 2023, will allow users to access the Case Management System which will allow users to register as representatives and opt-out their patents.

On Aug. 5, 2022, the Fed. Cir., in Thaler v. Vidal, affirmed the PTO's holding that the Patent Act defines “inventor” as human beings. Because the Patent Act expressly provides that inventors are “individuals,” that term, as a noun, ordinarily means human being, then inventors must be human beings.

• Summary
• Summary
• Opinion, discussion

While the USPTO, in Dec. 2021, updated director review guidance to clarify that it would not accept requests for director review of institution decisions, but that was further clarified in May, where the agency explained that, while parties may only request director review for final written decisions and not institution decisions, the director “has always retained and continues to retain the authority to review such decisions sua sponte.” The Federal Circuit distinguished Arthrex because here, “there is no structural impediment barring the USPTO director from reviewing institution decisions. [ . . . ] Since the institution statute unambiguously identifies the director as the politically accountable executive officer responsible for institution decisions, . . . the court found that there was no Appointments Clause Issue.

• News article (paywall)

On June 21, 2022, Director Kathi Vidal issued an official memo that sharply curtails the impact of Fintiv on IPR proceedings where there is a parallel proceeding in court. The memo states:

The memo also states that ”[t]he plain language of the Fintiv factors . . . does not apply to parallel U.S. International Trade Commission (ITC) proceedings“ and ”[c]onsistent with Sotera Wireless, Inc. ⁶⁾, the PTAB will not discretionarily deny institution in view of a parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have been reasonably been raised before the PTAB.“

In addition, the memo clarifies thath “when considering the proximity of the district court's trial date to the date when the PTAB final written decision will be due, the PTAB will consider the median time from filing to disposition of the civil trial for the district in which the parallel litigation resides.”

Concurrently with the memo, the PTO release results of a study of PTAB parallel litigation.

U.S. sanctions and a Russian decree put a cloud of uncertainty around any efforts to protect intellectual property.

In April, President Biden issued an Executive Order prohibiting U.S. entities from making payments, directly or indirectly, to identified Russian banks, including the Central Bank of Russia, which is the only bank processing payments for Rospatent, the Russian patent office. The Department of the Treasury issued General License 13 which allows payments to continue until June 23. Then, on May 5, the Treasury Department issued General License 31 that specifically authorizes U.S. entities to continue seeking, obtaining, maintaining, prosecuting and defending Russian patents. This provision has no expiration date. Despite this relief, it may still be difficult to complete payments to sanctioned Russian banks.

Furthermore, it is uncertain whether IP owned by U.S. entities is or will be enforceable in Russia. Specifically, Russia's Decree 299 provides that patent holders associated with foreign states who “commit unfriendly actions” are entitled to “0 percent” of the actual proceeds of the person who used the invention without consent of the patent holder.

• Summary

March 24, 20202: In Dyfan, LLC v. Target Corp., the Federal circuit reversed a Markman holding by W.D.Texas (J. Albright) that certain claim terms formulated as “said code, when executed, further configured to . . .” are subject to § 112 ¶ 6 interpretation, leaving the claims indefinite for lack of corresponding structure in the written description.

The Federal Circuit (Judges Laurie, Dyk, and Stoll) agreed with the District court's finding that, because the word “means” does not appear in the claim, there is a presumption against applying § 112 ¶ 6. However, the Fed. Cir. reversed the lower court's ruling that 112(6) applied. The Fed. Cir. based its reversal on expert testimony presented at trial that “code” and “application” convey structure and are not simply nonce terms. Stated the court:

On the basis of this unrebutted testimony, the Federal Circuit panel concluded that “the claim limitations do not recite 'purely functional language' [but] instead . . . the 'code'/'application' limitations here connote a class of structures to a person of ordinary skill.”

UPDATE: An amicus brief, submitted by Mark Lemley of Stanford Law and authored by over 20 IP law professors urged the court to grant rehearing en banc as requested by Target. The petition argued that the “panel opinion is inconsistent with this Court's en banc decision in Williamson v. Citrix. Stated the brief:

The petition was denied without comment.

• News article (paywall)

In Apple Inc. v. Zipit Wireless, Inc., the Federal Circuit reversed a N.D. California court judge who held that it did not have personal jurisdiction over Zipit despite “minimum contacts” including “multiple letters and claim charts accusing Apple of patent infringement” and the fact that agents for Zipit traveled to Apple's offices in California to discuss these accusations. The district court held that, despite these minimum contacts, it was bound by precedent Burger King Corp. v. Rudzewics ⁷⁾ which held that “the exercise of personal jurisdiction . . . would be unconstitutional when all of the contacts were for the purpose of warning against infringement or negotiating license agreements, and the defendant lacked a binding obligation in the forum” (internal quotations, citations omitted).

On review, the Federal Circuit reversed, stating (citations omitted, some alteration):

• News article (paywall)

In Roche Diagnostics Corp. v. Meso Scale Diagnostics LLC, the court split on whether Roche, accused of infringing several patents to electrochemiluminescence (ECL) technology, in fact owns the patents which it is accused of infringing and whether MSD owns exclusive license to the patents. The court split with J. Newman dissenting from Judges Prost and Taranto.

The majority reversed the district court's ruling that Roche induced infringement both for lacking specific intent and for lacking an inducing act that could support liability during the relevant damages period. The court agreed with Roche that the district judge (J. Stark) misstated the governing intent standard. Under the proper standard, the jury's inducement conclusion is unsupportable. Stated the court:

• News analysis (paywall)

In Niazi Licensing Corp. v. St. Jude Medical S.C., Inc., the Federal Circuit, in a precedential ruling, found that claims directed to a two-part extensible catheter having “an outer, resilient catheter” and “an inner, pliable catheter” were not indefinite. Stated the court:

The court explored its history in this space, addressing:

• Sonix Technologies: “visually negligible” provided an objective baseline through which to interpret the claims – whether it could be seen by the normal human eye. In other words, it was not a “purely subjective” phrase.
• Enzo Biochem, Inc. v. Applera Corp.: “not interfacing substantially” was not indefinite because the linkage group in a chemical compound was “not interfering substantially” with the ability of the compound to hybridize with nucleic acid. The intrinsic evidence provided guideposts for a skilled artisan to determine the scope of the claims, including dependent claims with exemplary linkage groups.
• Datamize, LLC v. Plumtree Software, Inc.: “aesthetically pleasing” was indefinite because the scope of the claim changed depending on a person's subjective determination as to whether the interface screen was “aesthetically pleasing.” “While beauty is in the eye of the beholder, a claim term, to be definite, requires an objective anchor.”
• Intellectual Ventures I, LLC v. T-Mobile USA, Inc.: “QoS requirements” was held to be “purely subjective” because (1) the patent described “QoS requirements” as “defined by what network performance characteristic is most important to the particular user” and (2) the patent further characterized it as “a relative term, finding different meanings for different users.”

The court concluded that “the intrinsic record is sufficient to dispose of the indefiniteness issues as to the terms 'resilient' and 'plaible.' [. . .] We also note that extrinsic evidence further supports our conclusion. Niazi introduced dictionary definitions of both terms to demonstrate that the claims are not indefinite.”

• News article (paywall)

In Genuine Enabling Technology LLC v. Nintendo, the Federal Circuit reversed a district court's ruling on Summary Judgment for Nintendo, holding that prosecution history estoppel should be limited to “clear disavowal” and that expert opinion thereof should not “diverge significantly from the intrinsic record.”

• News article (paywall)

In VDPP LLC v. Vizio, Inc., the Federal Circuit reversed a lower-court decision that claims including the terms, “processor” and “storage” were not means-plus-function terms and therefore not indefinite for failing to recite adequate structure in the written description. The court held: “We agree with VDPP that the district court erred in holding that the limitations “processor” and “storage” are subject to 112(f).” The court further stated:

• News article (paywall)

In Hoyt Augustus Fleming v. Cirrus Design Corp., the Federal Circuit affirmed PTAB's finding that claims to an “intelligent ballistic parachute system” which engages certain autopilot functions before and after deploying a ballistic (rocket-assisted) parachute. The Board held that the claim was obvious over a combination of a pilot operation handbook that describes maneuvers needed for safe parachute deployment and a patent related to autopilot functions. Cirrus argued that neither the handbook nor the patent disclosed an autopilot for performing flight maneuvers and deploying a parachute upon the aircraft's receit of a parachute deployment request. However, the Board explained that the patent discloses that in response to a request to deploy a parachute, an aircraft may automatically initiate shut down procedures, including deploying a parachute and taking certain actions in an emergency situation, including “shutting off all engines, terminating all flight functions, [and] deploying an emergency recovery parachute.” Furthermore, the Board found that James describes that these actions may include, for example, “slow[ing] the aircraft to landing speed and maintain[ing] a slow steady landing descent.” The Board further found that one of ordinary skill would have been motivated to program James's autopilot system to perform claimed flight maneuvers upon receipt of a parachute deployment request because they are suggested by the pilot operation manual in order to achieve safe and beneficial deployment of a ballistic parachute. The court found that the Board's finding is supported by substantial evidence and resulted from faithful application of law on obviousness.

• News article (paywall)

In Apple v. Wi-LAN, the Federal Circuit held that the lower court abused its discretion by denying Apple's motion for a new trial because plaintiff's damages expert testimony by Mr. Kennedy, was flawed. The expert stated that the '145 and '757 patents asserted in this trial were “key patents” because (1) they were specifically listed in the comparable licenses, (2) they were discussed in negotiations, and (3) Apple continued to use the technology after the patents were asserted against them rather than switch to a non-infringing alternative. However, the court disagreed, stating that “Mr. Kennedy’s opinion that the asserted patents were key patents is untethered to the facts of this case” and cited evidence of the untruths stated by Mr. Kennedy. The court concluded, “Mr. Kennedy’s methodological and factual errors in analyzing the comparable license agreements render his opinion untethered to the facts of this case. Thus, Mr. Kennedy’s damages testimony should have been excluded. We conclude that the district court abused its discretion in denying Apple's motion for a new trial on damages.”

• News article (paywall)

In Clifford A. Lowe et al. v. Shieldmark, Inc., et al., the Federal Circuit reversed a lower court summary judgment of non-infringement, concluding that the lower court erred in its claim construction.

The district court construed the term “lateral edge portion” to mean “the portion of the floor marking tape from the shoulder to the edge of the tape when viewed in cross section.” (emphasis added). The court acknowledged that “the term ‘shoulder’ is not present in the ’664 [p]atent[] claims,” but explained that it “appears repeatedly in the patent [s]pecification[].”

In addition, the district court construed the limitation “the lower surface of each lateral edge portion being a flat coplanar extension of the lower surface of the body” to mean “a planar relationship exists between two or more things [that] does not allow the entire lower surface of the tape body to be one flat or planar surface.” (emphasis added) (internal quotation marks omitted). Again, in support of its construction, the court pointed out that the tape cannot have a flat lower surface because the specification repeatedly describes “a [l]ower surface 24 [that] defines a recess 30 bounded by a pair of shoulders 32.”

The Federal Circuit agreed with Lowe that the court erroneously imported the term “shoulder” from the specification into the claim language, that the shoulders are merely one embodiment. Stated the court:

“[The specification] states that tape with shoulders and a recess is just 'one embodiment' of the claimed invention. It further explains that '[o]ther structures combined with body 20 may also be used in place of . . . shoulders 32.' The specification goes on to describe additional 'embodiments' or 'configurations' of tape, several without shoulders.”

• News article (paywall)

In Travel Sentry, Inc. v. David A. Tropp the Fed. Cir. upheld an Eastern District of New York opinion that a pair of patents owned by David Tropp are ineligible for patenting under Alice. The court rejected Tropp's argument that claim 1 is directed to “novel physical locks with uniform master key (that works with a variety of locks that have different locking mechanisms).” Stated the court:

• News article (paywall)
• Blog summary, opinion

In (Currently Amended): California Institute of Technology v. Broadcom Ltd. et al. (revised 2/22/22) a Federal Circuit panel affirmed a lower court ruling of “no invalidity based on IPR estoppel.” In this case, Caltech sued Broadcom, Avago, and Apple of infringing a few of its patents in the Central District of California. Before trial, Apple filed multiple IPR petitions challenging the validity of the claims at issue, but the PTAB concluded that Apple failed to show the challenged claims were unpatentable as obvious. Before the district court, Apple and Broadcom argued that the claims would have been obvious over new combinations of prior art not asserted in the IPR proceedings. The district court held that these challenges were barred by estoppel because Apple and Broadcom were aware of the prior art references at the time they filed their IPR petitions and reasonably could have raised them in those petitions even if they could not have been raised in the proceedings post-institution.

The circuit court noted that in Shaw Industries Group, Inc.⁹⁾, “this court held that IPR 'does not begin until it is instituted.'” Therefore grounds raised in a petition (or that reasonably could have been raised in a petition) were necessarily not raised “during the IPR.” “Only the grounds actually at issue in the IPR were raised, or reasonably could have been raised in the IPR. Thus estoppel did not bar the petitioner in Shaw from presenting a petitioned-for, non-instituted ground in future proceedings because the petitioner could not reasonably have raised the ground during the IPR. In SAS Institute, Inc. v. Iancu ¹⁰⁾, the Supreme Court made clear there is no partial institution authority and that it is the petition, not the institution decision, that defines the scope of the IPR. Given the statutory interpretation in SAS, any ground that could have been raised in a petition is a ground that could have been reasonably raised “during inter partes review.” The court concludes, “Accordingly, we take this opportunity to overrule Shaw and clarify that estoppel applies not just to claims and grounds asserted in the petition and instituted for consideration by the Board, but to all claims and grounds not in the IPR but which reasonably could have been included in the petition.” (See section on revised opinion below.)

UPDATE: On Tuesday, February 22, the Court released a revised decision deleting language that suggested that the AIA estoppel provision applies more broadly than the law states. (See original decision.) Specifically, the appeals court initially wrote that estoppel applies “to all claims and grounds not in the IPR but which reasonably could have been included in the petition.” It has now revised that line to read that estoppel applies to “all grounds not stated in the petition but which reasonably could have been asserted against the claims included.”

The revised wording is aligned with the statute which states that the estoppel applies to “the claim” challenged in the IPR. Accordingly, the estoppel does not apply to non-challenged claims which can therefore be challenged in District Court under the same evidence presented in the IPR or evidence that was not presented but could have been.

• News article (paywall)

It should be noted that the scope of estoppel language relating to PGRs in 35 U.S.C. § 282(b)(2) is identical to the IPR language quoted in the box above, and presumably the same reasoning applies.

• '710 and '032 patents
  • The Fed. Cir. upheld the lower court's construction of “repeat” to “simply require bits to be repeated, without limiting how specifically the duplicate bits are created or stored in memory.”
  • The Fed. Cir. uphold the lower court's denial of a JMOL based on substantial evidence supporting the jury's finding of infringement, based largely on opinion testimony of Caltech's expert, Dr. Shoemake.
• '781 patent:
  • The Fed. Cir. quickly dispensed with appellants' arguments of ineligibility under §101, citing Diamond v. Diehr.
  • The majority held that the district court erred in refusing to instruct the jury that the patent's “variable number of subsets” limitation requires irregular repetition, and remanded for further consideration.

Dissent: Judge Dyk parts ways with the majority on the question of the JMOL, stating, “I . . . would reverse the district court's denial of JMOL of no literal infringement [for the '710 and '032 patents]. I would similarly reverse the denial of JMOL rather than remand for a new trial with respect to the infringement of the '781 patent.”

• News article (paywall)

In Qualcomm Inc. v. Apple, Inc., the Federal Circuit agreed with Qualcomm that patent owner admissions cannot be used to challenge validity of a patent in an inter partes review and reversed the PTAB on this point. The court rejected Apple's argument that §311(b) permits “the use of any 'prior art'–including AAPA–that is contained in any patent or printed publication, regardless of whether the document itself is prior art, can be used as a basis for a challenge in inter partes review.” The court agreed with both Qualcomm and the PTO that “patents or printed publications” that form the “basis” of a ground for inter partes review must themselves be prior art to the challenged patent, and relied on Supreme Court precedent/dicta to support this conclusion.

• News article (paywall)

In Nature Simulation Systems, Inc. v. Autodesk, Inc.,* a majority of a panel decision authored by Judge Newman holds that the district's “standard of unanswered questions” raised by the claim limitations, which required “that the questions are answered in the claim language, standing alone” is “not the correct standard of law, and is contrary to uniform precedent. Patent claims are viewed and understood in light of the specification, the prosecution history, and other relevant evidence, as 'would have allowed a skilled artisan to know the scope of the claimed invention with reasonable certainty'” (internal citations omitted).

*This opinion was modified and reissued on 10/17/22 following a petition for rehearing filed by Appellee. This blurb was updated to reflect the updated opinion.

Dissent: Judge Dyk dissented. Dyk argues that:

Judge Dyk dissented, stated that the 'claim language, standing alone' language was “quoted from Autodesk's expert declaration, appears nowhere in the district court's opinion, and forms no part of its decision,” and further, that “the expert himself did not apply an incorrect standard. In searching for a meaning for the term “modified Watson method,” the expert looked not just to the claim language itself, but also to the specification, including the very figures that the majority cites.”

Judge Dyk further explains:

(Internal citations omitted).

• IP Update>Summary

In Evolution Concepts v. HOC Events, Inc. (Fed. Cir. 01/14/22), the Federal Circuit reversed a Central District court for misconstruing “magazine catch bar,” which is a component for retaining a magazine in a magazine receiver in gun. The patent at issue is directed to an assembly for converting a gun having a removal magazine with one having a fixed magazine to reduce the rate of fire and regulatory burdens. The district court interpreted “magazine catch bar” as excluding an OEM magazine catch bar based on two separate pieces of evidence. First, an unasserted claim 15 requires removing “a magazine catch bar” and then installing “a magazine catch bar” suggesting that the one that is installed must be different from the one removed. Secondly, the specification states, “The invention is a permanent fixture added to a semi-automatic firearm by removing the standard OEM magazine catch assembly and installing the invention.”

The Federal Circuit disagreed stating that neither of the bases relied upon by the district court require that “magazine catch bar” be one other than an OEM magazine catch bar. With respect to claim 15, the court held that the “invention . . . involves removing and installing assemblies of parts–not only magazine catch bars” (emphasis in original). The court concludes: “The ordinary meaning of the claim language allows the factory-installed magazine catch bar to be removed as part of the initial assembly removal and reused as part of the assembly installed in a later step.” Finally, with respect to double-recitation of ”a magazine catch bar“ the court held that: “The inventors . . . did not choose to claim a device with a 'new' or 'different' magazine catch bar, but instead a device with ”a magazine catch bar” which, by its ordinary meaning, could be either the removed catch bar or a new or different catch bar.“

With respect to the language in the specification, the statement relied upon by the district court “has the same character as what is found in claim 15. . . . [T]he specification sentence does not preclude the installation of a factory-installed magazine catch bar.”

• News article (Paywall)

Law360 published an article identifying cases that might be taken up by the Supreme Court in 2022:

• Eligibility: American Axle v. Neapco. In response to an en banc petition, the Fed. Cir. issued 100+ pages of rulings, leaving panel decision in place. On appeal to the S.Ct., the Justices, in May, asked for the solictor general to file a brief which is yet to be submitted.
  • Track
  • Update: Petition denied 6/30/22
• Kessler Doctrine/patent exceptionalism: PersonalWeb v. Patereon.
  • Track
  • Update: Petition denied 05/16/22
• Fintiv Rule: Apple v. Hirschfeld; Apple v. Optis; Mylan v. Janssen; Intel v. VLSI.
  • Track Apple v. Optis
  • Update: Petition denied 01/18/22
• Inducement/“skinny labels”: GlaxoSmithKline v. Teva. The Fed. Cir. is pondering an en-banc petition.
  • Track
  • En banc petition
  • Detailed analysis
  • Update: Petition for en banc review denied 08/05/21.

Additional blurbs are accessible in categorized lists by accessing the Index link on the left.