Overview
In this series of monthly updates, we summarize decisions where the Federal Circuit reversed or vacated the Patent Trial and Appeal Board ("Board") or trial court rulings, which can provide guidance on how to succeed on appeal.
Quick takeaways:
- Genuine Enabling Tech. v. Nintendo Co.: it is error to construe a claim term by relying on expert testimony that has no support in the intrinsic record; to rely on prosecution history disclaimer, the disavowal of claim scope must be clear and unmistakable.
- Microsoft Corp. v. IPA Tech. Inc.: the Board erred in finding no motivation to combine when its reasoning was not supported by the record; the Board also erred in determining that it was insufficient for Microsoft to cross-reference another claim that was missing a claim limitation, while the preamble already discussed that claim limitation; it was also error to limit claim construction to a subset within a class when there was no sufficient basis to do so.
- Littelfuse, Inc. v. Mersen USA EP Corp.: It is error to construe independent claims to exclude a single-piece apparatus, when dependent claims recite a single-piece apparatus.
- Roche Diagnostics Corp. v. Meso Scale Diagnostics, LLC: "knew or should have known" is not the standard for the intent element of induced infringement; a finding of no willful infringement and declining to enhance damages can compel the conclusion of lacking intent; the acts that occurred before the damages period cannot support a jury’s induced-infringement verdict; compulsory-counterclaim rule bars future claims but does not authorize rendering adverse judgment on such claims in the same action.
- Surgalign Spine Tech. v. Lifenet Health: the Board erred in its application of the claim construction, when the term addressed the overall shape of a bone portion, but the Board considered only the vertical plane and effectively excluded consideration of the horizontal plane.
- Niazi Licensing Corp. v. St. Jude Medical S.C.: the terms "resilient" and "pliable" were not indefinite, because the intrinsic record and extrinsic evidence informed a skilled artisan, with reasonable certainty, of their meaning, including guidance and exemplary materials that can be used to make the claimed pliable inner catheter and resilient outer catheter.
- Everstar Merchandise Co. Ltd v. Willis Electric Co., Ltd.: the Board erred in in refusing to consider a motivation to combine theory, given that the theory can be inferred from the petition, that the institution decision provided relevant discussions, and that experts testified about the theory.
- Power Probe Group, Inc. v. Innova Electronics Corp.: it is error to construe that the claim limitation "continuity" cannot be measured, when the asserted patent’s specification defines "parameters measurable" as including "circuit continuity," one claim specifies that one parameter measurable is "circuit continuity," and another claim requires "continuity measurement."
- In Re Asset Guard Products, Inc.: it is error to find that a prior art reference discloses a claim limitation, by resting on "the broad teachings" of the prior art without finding express or inherent teaching of the limitation from the reference.
- Apple Inc. v. Zipit Wireless, Inc.: in assessing whether jurisdiction is reasonable, there is no bright-line rule that patent infringement notice letters and related communications can never form the basis for personal jurisdiction; instead, a variety of interests under Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985), must be considered.
- Rovi Guides, Inc. v. Vidal: it is error to find claims obvious, when the claims require certain action available to a specific user and one action must occur before the other, but the prior art discloses only the action with respect to a general user or that the other action occurs first.
- Sunoco Partners Marketing & Terminals L.P. v. U.S. Venture, Inc.: an agreement made to commercially exploit the invention is an offer for sale, rather than primarily for experimental purposes; before considering the exculpatory value of an opinion of counsel, its legal advice must be found to be competent based on the totality of the circumstances such that an accused infringer is reasonable in relying upon it.
- Polygroup Limited MCO v. Willis Electric Company, Ltd.: under the broadest reasonable interpretation claim construction standard, claims can be construed to permit mechanical and electrical connections be made independently, as taught by the prior art; Board erred by going beyond its mandate on remand when it found obviousness based on a lack of motivation to combine references, and not based on the single reference alone, as instructed.
- Nichia Corporation v. Document Security Systems, Inc.: the Board abused its discretion by finding that a claim was not unpatentable as obvious due to missing a claim limitation, when the petition demonstrated with particularity that the claim limitation was disclosed in the prior art.
- In re Apple Inc, Inc.: the district court abused its discretion in evaluating the transfer motion by finding the convenience of the witnesses factor only slightly favored transfer, despite evidence to the contrary, determining that compulsory process factor strongly weighed against transfer based on ability to compel the testimony of a third-party manufacturer not accused of infringement, and wrongly finding that the local interest factor and access to sources of proof factor did not weigh in favor of the transferee forum; a court cannot premise its denial of transfer on the court congestion factor when other relevant factors weigh in favor of transfer or are neutral.
- Andrea Electronics Corporation v. Apple Inc.: the Board erred by making broad, general statements relevant to, but not conclusive of, motivation to combine portions of cited references and failing to address the specific motivation issues contested by the patent owner.
- Ascion, LLC v. Ashley Furniture Industries, Inc.: regarding written description, in the "fairly predictable field" of mechanical inventions, where "a lower level of detail is required to satisfy the written description requirement than for unpredictable arts," a skilled artisan could understand the configuration of certain components by reviewing figures of related assemblies, even when the specification does not provide any information about the configuration.
Genuine Enabling Tech. v. Nintendo Co., Ltd., No. 20-2167, 29 F.4th 1365 (Fed. Cir. Apr. 1, 2022)
Genuine sued Nintendo, accusing it of infringing a patent that disclosed technology for combining data streams by utilizing the computer resources efficiently. After construing the term "input signal," the district court granted summary judgment of non-infringement. The Federal Circuit found the district court’s construction erroneous.
Relying on prosecution history disclaimer and expert testimony, the district court construed "input signal" to mean "signals above 500 Hz and excluding signals generated from positional change information, user selection information, physiological response information, and other slow-varying information." During prosecution, the inventor repeatedly distinguished his inventions from prior art on the grounds that prior art taught "slow-varying signals," while his inventions involved "audio or higher frequency" signals. The district court also credited Nintendo's expert testimony, who identified 500 Hz as the upper limit of slow-varying signals covered by the prior art.
The Federal Circuit disagreed with the district court's construction, concluding that the only clear and unmistakable disavowal was that of signals below the audio frequency spectrum. The Federal Circuit also faulted the district court for relying on expert testimony. While expert testimony may be useful in claim construction, it may not be used to diverge significantly from the intrinsic record. Here, the intrinsic record did not support the expert's conclusion of 500 Hz.
The Federal Circuit instead construed "input signal" to mean "a signal having an audio or higher frequency," reversed the district court's grant of summary judgment, and remanded for further proceedings.
Microsoft Corp. v. IPA Tech. Inc., No. 21-1412, 2022 WL 989403 (Fed. Cir. Apr. 1, 2022)
Microsoft petitioned for and the Board instituted eight inter partes review of patents owned by IPA, which address computing systems with distributed electronic agents. The Board held some challenged claims unpatentable and some not unpatentable. Microsoft and IPA both appealed. The Federal Circuit concluded that the Board erred for three reasons.
First, the Board found no motivation to combine prior art references to yield claimed agent registry data structures. The Board reasoned that Microsoft was proposing a different combination - registry and Agent Communication Language ("ACL"), not the combination of registry and registry. The Federal Circuit disagreed because the evidence accounted for not just combining with ACL, but also with other administrative functionalities and exemplary practices. And Microsoft specifically stated that the two systems disclosed analogous functionality, such as agent registry. Additionally, the Board did not identify any concrete unanswered questions about how to achieve the combination, and did not state whether the combination required more than one additional simple step. Accordingly, the Federal Circuit reversed the Board's finding of no motivation to combine.
Second, the Board also erred in determining that Microsoft's petition was insufficient for certain claims that included a claim limitation of "facilitator agent." The Board reasoned that Microsoft merely cross-referenced to the discussion of another claim that did not recite claim limitation "facilitator agent." The Federal Circuit found that the Board neglected the petition’s discussion of the independent claim's preamble, which explained how the combination of two prior art references disclosed a "facilitator agent."
The third error was the Board's implicit claim construction of "advisory suggestions," which the Board construed to mean guidance, exclusive of constraints. The Federal Circuit determined that the claim phrase "advisory suggestions" was evidently similar to the phrase "advice parameter." The specification stated that advice parameters could give constraints or guidance. According to the Federal Circuit, there was no sufficient basis for a different construction—specifically, to narrow to a "guidance" subset within the class of what the specification identified as "advice parameters." Moreover, the specification did not distinguish between "guidance" and "constraints," and the Board did not define that distinction. In these circumstances, the Federal Circuit concluded that the fairest meaning of "advisory suggestions" was "advice parameter," not a meaning that excludes "constraints."
Littelfuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376 (Fed. Cir. 2022)
Littelfuse alleged that Mersen infringed its patent directed to a “fuse end cap for providing an electrical connection between a fuse and an electrical conductor.” The district court construed the independent claims to cover only a multi-piece apparatus, excluding a single-piece apparatus (i.e., an end cap formed from a single piece of material).
The Federal Circuit found that claim construction to be error. Dependent claims required that the end cap be formed “from a single, contiguous piece of conductive material.” By definition, an independent claim is broader than a claim that depends from it. Accordingly, the recitation of a single-piece apparatus in dependent claims was persuasive evidence that independent claims also covered a single-piece apparatus. The record does not support the district court’s explanation that the examiner’s misunderstood the claims when re-joining the dependent claims. And although the specification referred to a multi-piece apparatus, ordinarily the claimed invention is not limited to preferred embodiments or specific examples in the specification.
The Federal Circuit concluded that independent claims covered both single-piece and multi-piece embodiments, vacated the district court’s judgment of non-infringement, and remanded.
Roche Diagnostics Corp. v. Meso Scale Diagnostics, LLC, No. 21-1609, 30 F.4th 1109 (Fed. Cir. Apr. 8, 2022)
Roche brought declaratory judgment action and Meso counterclaimed for patent infringement. The jury found that Roche directly infringed one claim, that Roche induced infringement of three claims, and that Roche’s infringement was willful. It also awarded Meso $137,250,000 in damages. The district court granted Roche’s motion for judgment as a matter of law (“JMOL”) on willfulness, denied Meso’s motions to enhance damages, and rendered a noninfringement judgment with respect to certain patents on the ground of waiver. On Roche’s appeal, the Federal Circuit affirmed on direct infringement, reversed on induced infringement, vacated the damages award, and remanded for a new trial on damages. On Meso’s cross-appeal, the Federal Circuit vacated the district court’s judgment of noninfringement with respect to three additional patents and remanded.
The Federal Circuit’s reversal of the induced infringement finding rested on two independent grounds: (A) absence of intent, and (B) absence of an inducing act that could support liability during the damages period. Regarding (A), the Federal Circuit held that because the intent element requires knowledge that the induced acts constitute patent infringement, the district court’s “knew or should have known” standard was incorrect. Additionally, the district court found no willful infringement and declined to enhance damages. These findings compelled the conclusion that Roche lacked the requisite intent for inducement under the proper standard. Thus, the Federal Circuit reversed the induced-infringement judgment. Regarding (B), the Federal Circuit held that, under Standard Oil, because Roche’s allegedly inducing acts (such as press release, customer letter) occurred before the damages period, the acts that occurred before the damages period cannot support the jury’s induced-infringement verdict. In sustaining the jury’s verdict, the court posited a “continuing-impact” principle. But even under this principle, the jury’s verdict could not stand, because Meso put forward no evidence that any customers purchasing Roche’s products during the damages period received the 2007 communication and, in reliance on it, used the products out-of-field.
Because the Federal Circuit reversed the induced-infringement judgment, it vacated the award and remanded for a new trial, The Federal Circuit cautioned that on remand, the parties and the district court should pay careful attention to the apportionment requirement, as it noted Roche’s argument that Meso did not demonstrate the requisite comparability between the 2003 license and the hypothetical negotiation.
Regarding Meso’s cross appeal, the district court rendered a judgment of noninfringement with respect to certain patents because, although they were listed in Roche’s declaratory-judgment complaint, Meso did not counterclaim for infringement of these patents. The Federal Circuit found that the district court misapplied the compulsory-counterclaim rule, which bars future claims but does not authorize rendering adverse judgment on such claims in the same action. It held that if Meso brings a future infringement action based on those patents, the district court in that action should decide in the first instance whether those claims are barred.
Accordingly, the Federal Circuit reversed the judgment of induced infringement, vacated the damages award and judgment of noninfringement of certain patents, and remanded for further proceedings.
Surgalign Spine Tech. v. Lifenet Health, No. 21-1117, 2022 WL 1073606 (Fed. Cir. Apr. 11, 2022)
LifeNet sued Surgalign for allegedly infringing patents directed to bone grafts for use in spinal fusion. Surgalign, in turn, petitioned for IPRs and the Board found some claims unpatentable and some claims not unpatentable. Surgalign appealed and LifeNet cross-appealed. The Federal Circuit found the Board incorrectly applied the claim construction of “plate-like” to certain claims, while affirming the Board’s remaining findings.
The Board construed “plate-like” to mean “generally flat.” While stating that it was applying the construction to the “overall shape,” the Board considered only the vertical plane of the prior art’s cortical bone portions, which had curved surfaces, and then concluded that the prior art failed to disclose “generally flat” bone portions, without considering the flatness of the bone portions as they extended in the horizontal direction.
The Federal Circuit determined that the Board erred in not considering the horizontal plane. Additionally, similar the prior art, the challenged patent included embodiments having curvature in the vertical plane. Because the prior art included bone portions that were generally flat, the prior art taught “plate-like” bone portions under the correct construction.
Therefore, the Federal Circuit reversed the Board’s obviousness determination with respect to these claims insofar as it was based on the prior art references failing to teach the “plate-like” claim limitation.
Niazi Licensing Corp. v. St. Jude Medical S.C., Inc., No. 21-1864, 30 F.4th 1339 (Fed. Cir. Apr. 11, 2022)
Niazi sued St. Jude for allegedly infringing a patent relating to a double catheter comprising an outer catheter and an inner catheter used to treat heart failure. The district court found claim terms “resilient” and “pliable” indefinite. On appeal, the Federal Circuit determined those terms to be definite.
While descriptive words (or terms of degree) in a claim may inherently result in broader claim scope than a claim defined with mathematical precision, a claim is not indefinite just because it is broad. Here, “resilient” and “pliable” were not uncertain. When read in light of the intrinsic evidence, a person of ordinary skill in the art would understand the scope of the claims with reasonable certainty. Specifically, the intrinsic record and extrinsic evidence informed a skilled artisan, with reasonable certainty, of the meaning of “resilient” and “pliable.” The claims and written description provided guidance and exemplary materials that can be used to make the claimed pliable inner catheter and resilient outer catheter. Extrinsic evidence, such as the dictionary definitions of both terms, also demonstrated that the claims were not indefinite.
For the above reasons, the Federal Circuit held that claim terms “resilient” and “pliable” were not indefinite.
Everstar Merchandise Co. Ltd v. Willis Electric Co., Ltd., No. 21-1882, 2022 WL 1089909 (Fed. Cir. Apr. 12, 2022)
Everstar petitioned for and the Board instituted inter partes review of patents owned by Willis. The Board found that Everstar did not meet its burden to show the challenged claims unpatentable as obvious because Everstar failed to establish a motivation to combine the asserted prior art. The Board declined to consider cost reduction as a motivation to combine, because it determined that Everstar failed to assert the theory in its petition. The Federal Circuit held that the Board abused its discretion.
In its petition, Everstar noted that prior art teaches the inverse relationship between cost and the amount of material used. Willis Electric acknowledged this relationship. In its institution decision, the Board reasoned that the prior art discussed the desire to reduce manufacturing costs for wiring having good mechanical strength and that is capable of maintaining an electrical connection. The parties also produced expert testimony on and briefed the merits of cost reduction as a potential motivation to combine. Given the developed record on the correlation between wire strength and material cost, the Federal Circuit found that Everstar’s cost reduction argument was a fair extension of its previously asserted arguments.
Additionally, a petitioner is entitled in its reply to “respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution. Everstar’s cost reduction argument on reply directly addressed issues raised in Willis Electric’s preliminary response and post-institution response, as well as in the Board’s institution decision.
Therefore, the Federal Circuit found that the Board abused its discretion in refusing to consider the cost reduction argument.
Power Probe Group, Inc. v. Innova Electronics Corp., No. 21-2354, 2022 WL 1089910 (Fed. Cir. Apr. 12, 2022)
Power Probe sued Innova for allegedly infringing its patent directed to an electrical test device having multi-meter functionality that measures a plurality of parameters, and moved for a preliminary injunction. After construing the claims, the district court denied the motion for failure to prove infringement. Specifically, the district court construed independent claim 1 to require measuring at least two parameters, but found that the accused products measured only one parameter, voltage. The district court also determined that the accused products did not measure continuity because claim limitation “continuity” cannot be measured but can be detected. The Federal Circuit found that the district court erred in its preliminary
claim construction, and vacated the decision denying a preliminary injunction and remanded for further proceedings.
As a matter of lexicography, the asserted patent’s specification defines “parameters measurable” as including “circuit continuity.” Furthermore, one claim specifies that one parameter measurable is “circuit continuity.” Lastly, another claim requires “continuity measurement.” These references show that the inventor used the term continuity as a measurable quantity. Although a claim recites “detecting continuity,” the district court wrongly assumed that detecting continuity and measuring continuity are mutually exclusive. Therefore, the district court erred in construing “continuity” as a parameter that is not measurable.
The Federal Circuit vacated and remanded for further proceedings.
In Re Asset Guard Products, Inc., No. 21-1902, 2022 WL 1097363 (Fed. Cir. Apr. 13, 2022)
In an ex parte reexamination proceeding, the examiner rejected claims for obviousness, and the Board affirmed. On appeal, the Federal Circuit concluded that the Board erred in finding a teaching in the prior art, vacated the Board’s decision, and remanded for further proceedings.
The claim limitation at issue was that “a first seam formed between the first and second encapsulated substrates to allow for moisture to pass between the first and second encapsulated substrates so that moisture is allowed to seep away from the bottom of the tank.” The Board rested its obviousness conclusion on its determination that “the broad teachings” of the prior art “would allow for seams formed between encapsulated sections of the pad to allow moisture to pass.” The prior art, however, did not expressly teach a seam to allow moisture to pass down and away from the tank. Nor did the Board find that the seam taught in the Noble reference inherently had the property of allowing moisture to pass down through the seam to seep away from the tank. The Board also made no finding that a relevant artisan would have been motivated to make a choice, within the range of seams permitted by Noble, to use sufficient spacing within the seam to meet the claim requirement regarding downward drainage.
Accordingly, the Federal Circuit vacated the Board’s obviousness determination, and remanded to the Board for such further proceedings.
Apple Inc. v. Zipit Wireless, Inc., 30 F.4th 1368 (Fed. Cir. 2022)
Zipit sued Apple in the Northern District of Georgia, accusing Apple of infringing its patents, but dismissed the case two weeks later. Days after that, Apple filed a complaint in the Northern District of California seeking a declaratory judgment of noninfringement of those patents. Zipit moved to dismiss Apple’s complaint for lack of personal jurisdiction, and the district court granted it. Apple appealed and the Federal Circuit agreed with Apple.
In ascertaining whether it is appropriate to exercise specific personal jurisdiction, courts first consider minimum contacts. Once minimum contacts are satisfied, defendant has the burden to present a “compelling case that the presence of some other considerations would render jurisdiction unreasonable.”
The Federal Circuit, as well as the district court, found that Zipit satisfied the minimum contacts requirement, because Zipit directed its activities to California, sent Apple multiple letters and infringement claim charts, and traveled to California to discuss these accusations.
In assessing whether jurisdiction was then reasonable, the district court improperly applied a bright-line rule that patent infringement notice letters and related communications could never form the basis for personal jurisdiction. Instead, as the Federal Circuit stated, a variety of interests must be considered, including [1] “the burden on the defendant,” [2] “the forum State’s interest in adjudicating the dispute,” [3] “the plaintiff’s interest in obtaining convenient and effective relief,” [4] “the interstate judicial system’s interest in obtaining the most efficient resolution of controversies,” and [5] the “shared interest of the several States in furthering fundamental substantive social policies.” For [1], the inconvenience to Zipit was not unreasonably burdensome. For [2] and [3], both California and Apple had an interest in adjudicating the case in California. For [5], there was no conflict between the interest of California and other states. For [4], while Zipit’s initial contact with Apple to settle the dispute weighed in Zipit’s favor, the communication went beyond license negotiations over the course of several years. Considering all the factors, the Federal Circuit concluded that Zipit had not made a compelling case that other considerations would render jurisdiction unreasonable.
According, the Federal Circuit reversed the district court’s judgment.
Rovi Guides, Inc. v. Vidal, No. 20-1994, 2022 WL 1152311 (Fed. Cir. Apr. 19, 2022)
Comcast petitioned for and the Board instituted inter partes review of a patent owned by Rovi, which recites an interactive television system that supports network-based or local personal video recorder functions. In its final written decision, the Board held all claims obvious. The Federal Circuit reversed that decision.
The representative claim includes the limitation of “based on determining that the archived copy is available to the user after the start time, cause an indication corresponding to the archived copy to be displayed.” The available-to-a-user limitation requires the claimed system be configured to check whether an archived program is available to a specific user. A broader construction, which would only require the system be configured to check whether an archived program exists, would render the “to the user” language meaningless. Additionally, the claim language required that the availability determination must occur before the indication is displayed.
The prior art system checks for availability to a specific user only after the club notification is displayed and therefore did not teach the available-to-a-user limitation. Therefore, the Federal Circuit reversed the Board’s obviousness determination.
Sunoco Partners Marketing & Terminals L.P. v. U.S. Venture, Inc., 32 F.4th 1161 (Fed. Cir. 2022)
Sunoco sued Venture alleging that it infringed several patents that recite a system and method for blending butane with the gasoline at a point close to the end of the distribution process. Venture counterclaimed, seeking a declaratory judgment of non-infringement and invalidity. The district court granted summary judgment of invalidity and non-infringement on certain claims and determined that other patent claims were valid and infringed. It denied Sunoco lost profit damages, but granted $2 million in reasonable royalties and $6 million in treble damages for willful infringement. On the appeal, the Federal Circuit, inter alia, vacated the district court’s finding regarding the experimental-use doctrine and treble damages, affirmed its reasonable royalty award, and remanded.
The on-sale bar prohibits patenting an invention if: (1) the invention is the subject of a commercial offer for sale and (2) is ready for patenting. A patent owner can negate an on-sale bar defense by demonstrating that under prong (1) that the sale occurred primarily for purposes of experimentation. The district court erred in its decision that the transaction occurred primarily for experimental, rather than commercial, purposes. The Federal Circuit concluded that Sunoco’s patented invention was the subject of a commercial offer for sale: the relevant agreement bore “all the hallmarks of a commercial contract for sale” and expressly contemplated transfer of title. The district court improperly discounted the contract’s butane-buying commitment because although butane was not the invention, the contract intertwined the sale of the equipment with the butane-supply commitment. The Federal Circuit remanded for the district court to assess whether invention was ready for patenting under the second prong of the on-sale-bar defense.
The Federal Circuit vacated the district court’s award of treble damages because the district court erroneously found that an attorney opinion provided to Venture did not show a good-faith belief it was not infringing. The noninfringement opinion relied on the fact that Venture’s system inserted an intermediate tank between the blending unit and the location where gas is dispensed to trucks. Although critical premises of the opinion were flawed, this was not because of the attorney’s lack of competence, but because he was confused by the function of an intermediate tank in the design of Venture’s system. The district court’s treatment of the attorney opinion also undermined other grounds the district court relied on for such as Venture’s culpability for copying.
On Sunoco’s cross-appeal, the Federal Circuit affirmed the decision to deny lost-profits damages and award a $2 million reasonable royalty because Sunoco failed to prove the amount of profit it would have made. The district court properly rejected Sunoco’s lost profits and reasonable-royalty analyses because it relied in large part on a comparison with Sunoco’s butane supply agreements, which covered services beyond the value of the patents. The district court’s finding that the royalty should be in line with the payment for a prior license Sunoco had granted to the patents was not clear error or abuse of discretion.
Polygroup petitioned for and the Board instituted inter partes review of certain claims of two patents owned by Willis. The patents are directed to lighted artificial trees having separable, modular tree portions mechanically and electrically connectable between trunk portions. The Board initially found that Polygroup had failed to prove that any of the challenged claims were unpatentable. On a first appeal, the Federal Circuit affirmed the Board’s decision with respect to one claim but vacated the Board’s patentability determinations on the remaining claims because it had applied erroneous claim constructions and had not considered Polygroup’s arguments that a single reference, Miller, renders many of the claims obvious. On remand it instructed the Board to consider Polygroup’s arguments based on Miller alone and whether those claims are unpatentable under a proper construction.
On remand, Willis contended, and the Board agreed, that Miller requires the separate steps of making an electrical connection and making a mechanical connection between the tree’s trunk members. The Board decided because the electrical connection in Miller is independent of the mechanical connection between tree portions, Polygroup had failed to establish the unpatentability of all claims. On a second appeal, the Federal Circuit applied the broadest reasonable interpretation (BRI) claim construction standard and found that Miller teaches every limitation of these claims.
Under the BRI, the claims in question permit the mechanical and electrical connections be made independently. Polygroup has therefore established the unpatentability of each independent claim challenged. With respect to claim 7 of the ’186 patent, the Board went beyond its mandate on remand when it rendered its obviousness determination based on a lack of motivation to combine Miller and Lessner, and not Miller alone. The Federal Circuit vacated and remanded the decision with regard to claim 7.
Nichia petitioned for and the Board instituted inter partes review of a patent owned by Document Security Systems. The Board determined that Nichia proved claims 1 and 6-8 unpatentable but did not prove claims 2-5 and 9-19 unpatentable. On appeal, the Federal Circuit disagreed with the Board’s decision on claims 15-19, but affirmed the Board’s findings as to the remaining claims because expert testimony and disclosures from the cited references provided substantial evidence supporting the Board’s decision.
The Board determined that independent claim 15 was patentable, finding that a prior art reference failed to disclose a required electrical connection. The Federal Circuit disagreed, because Nichia’s petition demonstrated with particularity that the prior art disclosed this claim limitation. The Federal Circuit thus reversed on claim 15 and remanded for further proceedings regarding dependent claims 16–19.
In re Apple Inc., No. 22-128, 2022 WL 1196768 (Fed. Cir. Apr. 22, 2022)
CPC Patent Technologies PTY Ltd. (CPC) sued Apple in the Western District of Texas, alleging that Apple infringed three of its patents relating to biometric security. Apple moved to transfer under 28 U.S.C. § 1404(a) to the Northern District of California, where it is headquartered, noting that employees responsible for the design, development, and engineering of the accused functionality reside here. The district court denied Apple’s motion, finding that although the factor concerning the convenience of willing witnesses slightly favored transfer, the factor accounting for the availability of compulsory process and court congestion weighed strongly against transfer. The Federal Circuit found that the district court clearly abused its discretion in evaluating the transfer motion and granted Apple’s petition for a writ of mandamus and directed transfer.
The district court’s conclusion regarding convenience of the witnesses factor, which is the most important factor in the transfer analysis, was erroneous. CPC does not have any meaningful connection to the Western District of Texas. Apple identified a significant number of witnesses residing in Northern California, including employees who worked on the research, design, development, marketing and promotion of the accused features, and employees knowledgeable about Apple’s licensing of intellectual property and financial information concerning the accused products. The district court erred when it found that this factor tilted only slightly in favor of transfer, citing two Apple employees in Austin that CPC indicated it may wish to call as potential witnesses, even though it was unclear if either one had relevant or material information. The district court also clearly erred in its determination that the compulsory process factor strongly weighed against transfer based on its ability to compel the testimony of a third-party manufacturer because in fact CPC had not accused the product in question of infringement. The access to sources of proof factor and the local interest factor should likewise have been weighed in favor of transfer, not neutral.
The district court could not premise its denial of transfer on the court congestion factor because when other relevant factors weigh in favor of transfer or are neutral, then the speed of the transferee district court should not alone outweigh all of those other factors.
Andrea Electronics Corp. v. Apple Inc., No. 21-1248, 2022 WL 1197341 (Fed. Cir. Apr. 22, 2022)
Apple petitioned for and the Board instituted inter partes review of a patent owned by Andrea. After a first written decision, Apple appealed and the Federal Circuit held the Board erred by not considering an argument made by Apple on reply that did not present a new legal ground, but rather responded to arguments raised by Andrea’s response. On remand, the Board found claims 6-9 of the patent unpatentable as obvious. On appeal, the Federal Circuit affirmed the Board’s finding that a prior art reference discloses the limitations of claim 9, but found that the Board failed to properly analyze the motivation to combine, and vacated and remanded.
With respect to the motivation to combine, the Board erred by making broad, general statements relevant to, but not conclusive of, motivation to combine the relevant portions of the cited references. The Board also failed to address any of the specific motivation issues contested by Andrea, including whether a prior art reference shows a need for improvement in nonstationary noise environments, whether the prior art reference obviates the need to address the speech pause detection problem, and whether the prior art reference disparages another reference.
The Federal Circuit vacated the Board’s final written decision and remanded for further findings on the motivation to combine.
Ascion sued Ashley alleging that it infringed a patent directed to a customizable mattress support system that includes a frame and modular legs. Venture counterclaimed, seeking a declaratory judgment of non-infringement and invalidity. Ascion subsequently conceded the only accused product at the time did not infringe, entered a covenant not to sue Ashley on that model and moved to dismiss Ashley’s declaratory judgment counterclaim. The district court denied that motion, finding that it still had jurisdiction over Ashley’s counterclaim because Ascion could still accuse (and had attempted to accuse) other Ashley bed models.
The district court granted Ashley’s summary judgment motion for invalidity, finding that the claim limitation requiring a leg member to have a “substantially horizontal bottom surface” lacked adequate written description support. On appeal, the Federal Circuit found that a genuine issue of material fact exists, and vacated and remanded for further proceedings.
The district court concluded that the specification does not provide any information about the configuration of the bottom of the leg assembly members. The Federal Circuit, however, held that in the “fairly predictable field” of mechanical inventions, where “a lower level of detail is required to satisfy the written description requirement than for unpredictable arts,” a reasonable factfinder could find that a skilled artisan would understand that the specification discloses leg members with substantially horizontal bottom surfaces. Here, the skilled artisan could have drawn these factual inferences by looking at the top surfaces of the leg assemblies and understanding that the structure of the joined bottom surfaces matched the top surfaces.
Therefore, the Federal Circuit found that a genuine issue of material fact—whether the specification discloses those bottom surfaces—remains and remanded.
