Overview
In this series of monthly updates, we summarize decisions where the Federal Circuit reversed or vacated PTAB or trial court rulings, which can provide guidance on how to succeed on appeal.
Quick takeaways:
- University of Strathclyde v. Clear-Vu Lighting, LLC: When a claim requires the occurrence of an activity without a specific element, but in prior art references, the activity occurs with the element present, there is no reason why a skilled artisan would opt to entirely omit that element when combining the references to arrive at the claimed invention.
- Caris MPI, Inc. v. Foundation Medicine, Inc.: The construction of a claim term is too narrow if the term encompasses more than the scenarios in the generally accepted meaning of the construction.
- In re Apple Inc.: A district court's focus on a defendant's unrelated presence in the state to the exclusion of evidence clearly demonstrating the convenience of a different venue warranted a writ of mandamus ordering transfer to the more convenient venue.
- Mentone Solutions LLC v. Digi International Inc.: A claim is directed to a patent-eligible improvement to computer functionality when the claim uses an operation that allows a mobile station to utilize a desirable and previously restricted multislot configurations.
- Uniloc 2017 LLC v. Facebook, Inc.: When the Board misunderstands a petitioner's submission about prior art's disclosure and it is not clear whether the petitioner is entitled to a determination of unpatentability once its contention is property appreciated, the Board’s decision is vacated.
Strathclyde owned a patent relating to disinfecting air, surfaces, and materials. Clear-Vu challenged certain claims as obvious in inter partes review proceedings, and the Board found the challenged claims unpatentable as obvious. The Federal Circuit reversed, finding no substantial evidence to support the conclusion that the prior art disclosed all claim limitations, nor that a skilled artisan would have had a reasonable expectation of success.
The challenged claims required inactivating certain bacteria without using a photosensitizer, which is a substance that increases another substance's sensitivity to light. The Board found that limitation met in the prior art because a first prior art reference prepared a sample without a photosensitizer, and a second reference achieved inactivation of bacteria in both samples that used a particular photosensitizer and samples that did not.
The Federal Circuit reversed, because there was no evidence that the first reference successfully achieved inactivation without a photosensitizer and the second reference included a different photosensitizer, even where the particular one studied was not used. Therefore, neither reference taught or suggested inactivation of any bacteria without using a photosensitizer.
Regarding reasonable expectation of success, the Board found that a skilled artisan would have expected that a claimed bacterium, MRSA, could be inactivated by light without using a photosensitizer due to the presence of a naturally produced substance, porphyrin, because porphyrin was shown to cause inactivation for another bacterium in the same category as MRSA. Therefore, the Board found that the skilled artisan would have expected to succeed in achieving the claimed invention without a photosensitizer.
The Federal Circuit disagreed, because the evidence indicated that the natural levels of porphyrins in the prior art were insufficient to inactivate MRSA using the claimed light wavelengths without also using a photosensitizer. Such failures, the Federal Circuit found, undermined a finding of a reasonable expectation of success. The Federal Circuit also rejected Clear-Vu's attempt to find an expectation of success in the specification of the challenged patent as impermissible hindsight.
Finding no substantial evidence for the lack of a photosensitizer and no expectation of success in accomplishing the invention without one, the Federal Circuit found that the Board’s finding was not supported by substantial evidence and reversed its obviousness determination.
Caris MPI, Inc. v. Foundation Medicine, Inc., No. 20-1886, 2021 WL 5192359 (Fed. Cir. Nov. 9, 2021)
In multiple inter partes review decisions, the Board found all but one of the challenged claims of a set of patents relating to molecular profiling for individualized medical treatment unpatentable as obvious. The parties appealed and cross-appealed. The Federal Circuit vacated the decision regarding the surviving claim and affirmed as to the rest.
The surviving claim required listing therapeutic agents including those with a "likely lack of benefit." The Board construed that term in the patent owner's favor to mean "contraindication." The Federal Circuit held that construction to be too narrow. The generally accepted meaning of a "contraindicated" drug was that the drug would be expected to have harmful effects on a patient, while the claimed "likely lack of benefit" encompassed broader scenarios. The intrinsic evidence did not demonstrate the applicant’s intent to narrow the understanding of the term "likely lack of benefit." Nor did the intrinsic evidence suggest that "contraindication" had a broader meaning than the generally accepted one.
Therefore, the Federal Circuit vacated the Board's decision as to the surviving claim.
In re Apple Inc., No. 2021-181, 2021 WL 5291804 (Fed. Cir. Nov. 15, 2021)
Neonode owns two patents relating to user interfaces on mobile devices. Neonode sued Apple in the Waco Division of the Western District of Texas, contending that Apple's iPhone and iPad infringed. The case was assigned to Judge Alan Albright. Apple moved to transfer the case to the Northern District of California, citing the convenience of that forum. Jude Albright denied the motion. Apple sought a writ of mandamus at the Federal Circuit.
The Federal Circuit found the district court erred in evaluating six of the Fifth Circuit's traditional public- and private-interest factors considered on a transfer motion.
Apple presented unrebutted evidence at the district court that the relevant documents and source code all resided in the Northern District of California. But the district court discounted this evidence, stressing that the physical location of electronic materials was an out-of-touch consideration. This was error: even if Apple employees in Texas could have accessed the same information, the relevant consideration is the relative ease of access as between the two districts.
Neither side identified any third-party witnesses that resided in the Western District of Texas, but Neonode’s complaint had identified relevant third-parties that were based in the Northern District of California. The district court discounted those third parties, because Apple had not identified specific employees of those companies who might need to be subpoenaed. The Federal Circuit has previously rejected that same argument in In re HP Inc., 826 F. App'x 899 (Fed. Cir. 2020), and rejected it again here.
The Federal Circuit also found fault with the district court’s assignment of minimal weight to the convenience of witnesses, the district court’s finding of efficiency in handling other unrelated cases involving Neonode, the district court’s reliance on the prospective "time-to-trial" rather than actual court congestion, and the focus on local interests based on Apple’s unrelated presence in the district, rather than on the relevant facts.
Ultimately, the "center of gravity" of this action clearly resided in the Northern District of California, and the Federal Circuit concluded that the district court abused its discretion in finding otherwise. (Indeed, in November, the Federal Circuit granted mandamus petitions on two other decisions from the same district court as well.)
Mentone owned a patent related to dynamic resource allocation in general packet radio systems, where a number of mobile stations communicate with a single network through Packet Data Channels (PDCHs). The purported invention allowed a mobile station to access previously restricted multislot configurations.
The district court held the asserted claims patent ineligible under Section 101, finding the claims directed to the abstract idea of receiving an uplink status flag (USF) and transmitting data during the appropriate timeslots.
The Federal Circuit disagreed. The district court articulated the abstract idea of how USFs operated in mobile stations using extended bandwidth allocation generally. But the district court’s formulation missed several key aspects of the claimed invention. The claimed invention used a shifted USF (a term coined by the inventor), which required steps that were distinct from the routine and conventional approach to that idea.
The additional steps were not generic computing tasks or data manipulation on a generic computer. Rather, the Federal Circuit found that the shifted USF approach constituted a patent-eligible improvement to computer functionality that broke the fixed relationship in the timing of downlink allocation signaling (i.e., receipt of a USF on a timeslot) and subsequent uplink transmission. This improvement, according to the specification, allowed a mobile station to utilize an otherwise impermissible configuration.
Accordingly, the Federal Circuit reversed the district court's judgment and its dismissal of the infringement claims.
Uniloc 2017 LLC v. Facebook, Inc., No. 19-2162, 2021 WL 5370480 (Fed. Cir. Nov. 18, 2021)
Uniloc owned a patent relating to instant voice messaging using voice-over-internet-protocol (VoIP) communications. Facebook challenged various claims of Uniloc's patent in multiple inter partes reviews. The Board held all but two challenged claims unpatentable for obviousness. On appeal, the Federal Circuit vacated the Board's decision as to the two surviving claims and otherwise affirmed.
The two claims that survived the IPR proceedings required that the instant voice message include an action field. The Board rejected Facebook's theory, finding that Facebook's proposed combination of two references would have resulted in distinct "instant voice message" and "action field" components, though the challenged claim required the action field to be included in the instant voice message.
The Federal Circuit held that the Board misunderstood Facebook's position. Facebook’s theory pertained to a different component of one of its references as the "instant voice message," which did include the claimed action field; the Board had overlooked that aspect of Facebook's arguments.
Therefore, because the Board based its findings on its mistaken understanding of Facebook's argument, the Federal Circuit vacated the Board's determination regarding the surviving claims.