Patent News:

S.Ct. upholds status quo on enablement (posted 05/25/23)

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)

“Put less abstractly, researchers have little interest in the particular DNA sequence that gives rise to a particular antibody; they are instead interested in what the antibody does and how it does it. So, although function can make an antibody representative of a class, by establishing a group of molecules according to what they bind to and how, this class might have no “common structural features.” This representative-structure standard is, if not scientifically impossible, textually impractical. Demanding it is roughly equivalent to demanding that a sofware patent identify individual strings of computer code that every implementation must have in common, even if slight variations do the exact same thing.”

USPTO Proposes new rules for discretionary denials (posted 05/01/23)

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.

Divided Fed. Cir. panel upholds PTAB's obviousness without de novo review (posted 04/14/23)

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.

Fed. Cir.: Upholds web document as "publicly available"; vacates anticipation PTAB findings (posted 04/09/23)

Online reference was "publicly available"

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:

“The pertinent references in this case, Park and Zhou, were presented at JCT-VC development meetings. The Board found that these meetings were attended by between 200 and 300 interested persons and that the conferees had discussed Park and Zhou at the meetings. The Board also noted that JCT-VC meeting reports summarized the Park and Zhou discussions. Those discussions, the Board found, were conducted without any expectation of confidentiality. . . .”

“The law regarding public accessibility is not as restrictive as M&K suggests–a website's landing page is not required to have search functionality. Instead, given the prominence of JCT-VC, the dispositive question is whether interested users of the JCT-VC website could have located Park and Zhou through reasonable diligence. The Board found that they could have, and that conclusion is supported by substantial evidence.”

“Samsung was not required to show that interested artisans actually accessed Park and Zhou. . . .”

“Samsung was also not required to prove that the oral presentations . . . disclosed the exact material relating to Samsung's obviousness theories in the circumstances of this case.”

Anticipation not inherent in Obviousness

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:

“We agree with M&K that the Board deviated impermissibly from the invalidity theory set forth in Samsung's petition when it held that claim 3 was anticipated by WD4-v3. Although M&K was aware of the prior art used to invalidate claim 3 given the obviousness combination asserted against that claim, M&K was not put on notice that the Board might find that WD4-v3 disclosed all of the limitations in claim 3 and might invalidate claim 3 based on anticipation.

Fed. Cir. finds Fintiv instructions "reviewable" due to non-compliance with APA (posted 03/23/23)

Administrative Procedures Act

5 U.S.C. § 701 - Applicaiton; definitions

(a) This chapter applies, according to the provisions thereof, except to the extent that—

(1) statutes preclude judicial review; or

(2) agency action is committed to agency discretion by law.

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.

Fed. Cir. finds foreign defendants cannot avoid personal jurisdiction in one venue by consenting to personal jurisdiction in another (posted 01/16/23)

FCRP 4(k)(2): Federal Claim Outside State-Court Jurisdiction. For a claim that arises under federal law, serving a summons or filing a waiver of service establishes personal jurisdiction over a defendant if:

(A) the defendant is not subject to jurisdiction in any state’s courts of general jurisdiction; and

(B) exercising jurisdiction is consistent with the United States Constitution and laws.

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:

Stingray’s petition focuses on the so-called “negation requirement” of Rule 4(k)(2)(A)—that “the defendant is not subject to jurisdiction in any state’s courts of general jurisdiction.” More specifically, Stingray’s petition presents the question of whether a defendant’s post-suit, unilateral consent to suit in another state prevents this condition from being satisfied. In addressing this issue, we do not write on a clean slate.

[. . .]

Therefore, we now confirm that “the defendant’s burden under the negation requirement entails identifying a forum where the plaintiff could have brought suit—a forum where jurisdiction would have been proper at the time of filing, regardless of consent.” A defendant (such as TP-Link) cannot simply use a “unilateral statement of consent” to preclude application of Rule 4(k)(2) and “achieve transfer into a forum it considers more convenient (or less convenient for its opponent).”

Citations omitted.

Terms defined in family patents incorporated by reference cannot modify claim scope (posted 11/07/22)

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.”

Unified Patent Court releases implementation roadmap (posted 10/17/22)

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.

"Inventor" limited to natural persons (posted 10/02/22)

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.

Fed. Cir. OK's constitutionality of USPTO practice of excluding PTAB institution decisions from director review (posted 08/22/22)

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.

USPTO sharply curtails Fintiv (posted 06/22/22)

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:

”[T]o benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability. This memorandum also confirms that the precedential import of Fintiv is limited to facts of that case.”

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.

Fed. Cir.: "Code"/"application" are not "nonce" terms (posted 05/18/22)

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:

“To overcome this presumption, Target had to show, by a preponderance of the evidence, that persons of ordinary skill in the art would not have understood the “code”/“application” limitations to connote structure in light of the claim as a whole. [. . .] But the district court erred by ignoring key evidence–unrebutted deposition testimony from Target's own expert, Dr. Goldberg–regarding how a person of ordinary skill in the art would have understood the “code”/“application” limitations. [. . .]

“Dr. Goldberg testified that here, 'application' is 'a term of art' that a person of ordinary skill in the art would have understood as a particular structure [and] would have been commonly understood to mean a 'computer program intended to provide some service to a user,” and that developers could have, at the relevant time, selected existing 'off-the-shelf software' to perform specific services and functions.

“Additionally, Dr. Goldberg testified that persons of ordinary skill would have understood that the word 'code,' when coupled with language describing its operation, here connotes structure. Dr. Goldberg explained that a person of ordinary skill would understand that 'code' is 'a bunch of software instructions' [and] that a person of ordinary skill would have known that the claimed function of displaying information could be implemented using 'off-the-shelf' code or applications.”

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.”

En Banc Review

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:

Prior to Williamson, software patentees frequently claimed to own the function of their program, not merely the particular way they achieved that goal. Both because of the nature of computer programming and because they avoided using the term “means” in favor of equally empty nonce words like “module” or “mechanism,” those patentees wrote those broad functional claims without being subject to the limitations of section 112(f). As a result, they effectively captured ownership of anything that achieves the goal the patent identifies. They claimed to own the function itself. And quite often they did so without ever having disclosed any way of achieving that goal, much less every way. That “resulted in a proliferation of functional claiming untethered to section 112, para. 6 and free of the strictures set forth in the statute.” Williamson, 792 F.3d at 1349.

Williamson put an end to that practice – until now. [. . .]

The panel opinion credited testimony that off-the-shelf software could perform the functions in question.2 But even assuming that is true, it has no bearing at all on whether the words “code” and “application” invoke section 112(f) in the first place. At most it goes to the question of whether the patent is indefinite, or whether the patentee can show that the patent sufficiently discloses structure in the form of an algorithm by pointing to that off-the-shelf software. But it does not mean that the terms “code” and “application” by themselves provide that structure. They don’t. They are merely generic references to the idea of using software to achieve a goal.

If software patentees can avoid Williamson and write purely functional claims merely by using the word “code” in place of actual structure, this Court will have rendered Williamson a dead letter.

The petition was denied without comment.

No bright-line rule for minimum contacts giving rise to personal jurisdiction (posted 04/19/22)

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):

“Zipit argues that minimum contacts are not satisfied here, relying principally on this court’s decision in Autogenomics. In Autogenomics, the defendant-patentee sent a notice letter to the declaratory-judgment plaintiff, the plaintiff “expressed interest in taking a license,” and two of the patentee’s representatives flew to California (the forum state) to meet with the plaintiff’s representatives. Based on the facts of the case and the nature of the specific communications at hand, we determined that the plaintiff “failed to allege sufficient activities ‘relat[ing] to the validity and enforceability of the patent’ in addition to the cease-and-desist communications” to demonstrate minimum contacts.

Zipit argues (and Apple suggested) that Autogenomics created a “bright-line rule . . . that cease-and-desist letters and related in-person discussions cannot support [minimum contracts for] personal jurisdiction.” Appellee’s As an initial matter, we note that there are material factual distinctions between Autogenomics and this case.3 More importantly though, our precedent as a whole—including decisions both before and after Autogenomics—supports our determination that minimum contacts are satisfied here.

Proving subjective intent for willful/induced infringement (posted 04/18/22)

“A defendant is liable for 'induced infringement under § 271(b)' if the defendant took certain affirmative acts to bring about the commission by others of acts of infringement and had 'knowledge that the induced acts constitute patent infringement.'” 8)

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:

”. . . the intent stndard for inducement is akin to the one for willfulness, as both rest on the subjective intent of the accused infringer. Here, the jury's verdict of inducement couldn't have survived JMOL under the proper intent standard because it contradicts the court's express findings regarding Roche's subjective belief that it wasn't infringing or inducing infringement [because it had a reasonable basis to believe that it owned the patents]. Taken togehter, these findings mean that Roche couldn't have acted with knowledge that the acts it brought about 'constitute[d] patent infringement' and couldn't have taken 'deliberate actions to avoid confirming a high probability of wrongdoing' as required for willful blindness.”

"Resilient" and "pliable" are broad, not indefinite (posted 04/12/22)

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:

”[D]escriptive words (or terms of degree) in a claim may inherently result in broader claim scope. . . . But a claim is not indefinite just because it is broad. For purposes of the definiteness inqury, the problem patentees face by using descriptive words in their claims is not the potential breadth of those claims. It is whether the use of descriptive phrasing in the claim results in a claim that 'fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.'

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.”

Expert's opinion on proc. history estoppel improperly extended "clear disavowal" (posted 04/04/22)

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.”

Fed. Cir. on 112(f): "processor," "storage" are structure (posted 03/28/22)

Claim 1. An apparatus comprising:

a storage adapted to:

store one or more image frames; and

a processor adapted to:

obtain a first image. . . ;

expand the first image. . . .

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:

“Although the court acknowledged that the presumption against § 112(f) applied, it then immediately concluded, without evidence, that Visio overcame the presumption. That was erroneous. To overcome this presumption, Visio was required to provide at least some evidence that a person of ordinary skill would not have understood the limitations to 'recite sufficiently definite structure[s].' The court pointed to no such evidence from Visio, instead summarily concluding that the limitations are subject to 112(f).”

Moreover, the district court overlooked intrinsic evidence showing that the terms 'processor' and 'storage' do connote structure to a skilled artisan. For example, the specifications explain that 'processors' and 'storage' are 'well-known.' In other words, contrary to the court's determination, a skilled artisan would not understand 'processors' and 'storage' to merely be 'black box[es] for performance of a function.'”

Fed. Cir.: autopilot program for safe parachute deployment is obvious (posted 03/11/22)

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.

Damages expert falsely identifies asserted patents as key; new trial ordered. (posted 03/08/22)

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.”

Fed. Cir. reverses lower court's importation into claims of structure described in spec. (posted 03/07/22)

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.”

Method of screening luggage ineligible (posted 02/15/22)


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:

This contention raises at least two substantial questions bearing on eligibility under § 101: Does the claim, properly construed, require a dual-access lock in which the key for the master-key lock portion is the same for different combination-lock mechanisms? And if so, could the claim pass muster under § 101 in the absence of anything in the specification, or even in the summary judgment record, that provides details regarding the physical makeup, mechanism, or operation of such a lock indicating a concrete technical advance over earlier dual-access locks? But we do not address those questions, because Mr. Tropp has not preserved this argument for eligibility.

Fed Cir. reverses /Shaw Industries Group/; IPR estoppel broadened (posted 02/14/22)

35 U.S.C. § 315(e)(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a) , or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

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.)

Revised opinion

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.

Supreme Court denies Cert

UPDATE: On June 26, the Supreme Court denied cert. Full coverage at SCOTUSblog.


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.

Other issues addressed:

  • '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.”


Admitted prior art unavailable in IPR (posted 02/10/22)

Section 311(b) of the Patent Act:

Scope. – A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.

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.

Fed. Cir. reverses §112 indefiniteness rejection on basis of intrinsic record (posted 02/01/22)

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:

The majority relies on the prosecution history as somehow providing clarity to the meaning of the claim language. The majority states that the prosecution history is “significant,” Maj. Op. 15, and implies that the district court erred when it “gave no weight to the prosecution history showing the resolution of indefiniteness by adding the designated technologic limitations to the claims,” Maj. Op. 17. But the majority does not identify anything in the prosecution history, whether statements by the applicant or by the examiner, that would illuminate the meaning of “modified Watson method” or the language “removing duplicate intersection points, identifying positions of end intersection points, and splitting portion of each triangle including an upper portion, a lower portion, and a middle portion.”

(Internal citations omitted).

"Invention" in spec misconstrued by District Court (posted 01/18/22)

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.”

Upcoming S.Ct. patent cases of interest (posted 01/04/22)

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.
    • Update: Petition denied 6/30/22
  • Kessler Doctrine/patent exceptionalism: PersonalWeb v. Patereon.
    • Update: Petition denied 05/16/22
  • Fintiv Rule: Apple v. Hirschfeld; Apple v. Optis; Mylan v. Janssen; Intel v. VLSI.
  • Inducement/“skinny labels”: GlaxoSmithKline v. Teva. The Fed. Cir. is pondering an en-banc petition.

More . . .

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

481 F. 3d 1371 - Court of Appeals, Federal Circuit 2007
132 Yale L. J. 994, 1035 (2023)
Id at 999
4) , 5)
985 F.3d 1376) (Fed. Cir. Feb. 1, 2021)
Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to§ II.A)
471 U.S. 462, 475-77 (1985)
TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1286 (Fed. Cir. 2020) (quoting Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 765–66 (2011) ).
817 F.3d 1293, 1300 (Fed. Cir. 2016)
138 S. Ct. 1348 (2018)

User Tools