Overview
Obtaining a reversal or remand from the Federal Circuit can be a daunting task, because more often than not, the Federal Circuit has agreed with PTAB's and district courts' decisions. Here we review parts of the decisions from last month where the Federal Circuit either reversed or vacated PTAB's or district courts' decisions, which can provide some guidance on how to win on appeal.
Facebook v. Windy City, Case No. 18-1400 (Sep. 4, 2020, Fed. Cir.)
The Federal Circuit modified and reissued its March 18 opinion, where it ruled that the PTAB erred both in allowing Facebook to join an IPR in which it was already a party, and in allowing Facebook to add new claims to the IPR through that joinder. This reissue is due to the Supreme Court's intervening Thryv v. Click-to-call decision and is to address questions raised in Facebook's en banc petition, including whether the Federal Circuit has jurisdiction to review PTAB’s joinder decision. It does.
In Thryv, the Supreme Court held that the PTO's application of time bar is closely related to its institution decision and is therefore nonappealable. The Federal Circuit found that Thryv does not bar it from reviewing joinder decisions. In reaching this conclusion, the Federal Circuit explained that, unlike the challenges raised in Thryv, which sought review of institution decisions, the joinder decision is a separate and subsequent decision to the institution decision.
Network Technologies v. Hewlett-Packard Company, Case No. 18-2338 (Sep. 24, 2020, Fed. Cir.)
In this case, the Federal Circuit disagreed with the District Court on two issues, finding that its claim construction of "main power source" as "a DC power source" too narrow and that it erred in applying estoppel to HP for joining an IPR.
The Federal Circuit's claim construction decision relied on the term's plain and ordinary meaning that "power source" includes both AC and DC power sources. Neither the claims nor the specification requires a departure from the ordinary meaning. The District Court's construction was based on expert testimony that the receipt of AC power would render the device inoperable. That is erroneous for two reasons. First, AC power can be converted to DC power as needed. Second, it is improper to add limitations to constructions to carve out or exclude only certain inoperable embodiments.
The estoppel issue was caused by HP’s joining an Avaya IPR. HP filed two joinder motions. In the first, it included grounds different from those that had already been instituted in the Avaya IPR. The Board denied it. In the second, HP sought to join only the grounds already instituted, and the Board granted the request. The District Court erred in determining that HP was estopped from raising certain validity challenges based on the joinder. As a joining party, HP could not have raised with its joinder any additional invalidity challenges, and therefore was not estopped.
Biogen Ma v. EMD Serono, 19-1133 (Sep. 28, 2020, Fed. Cir.)
In this case, the District Court rejected the jury's verdict that asserted claims were anticipated by two prior art references, and instead granted a JMOL of no anticipation. The Federal Circuit reversed that decision for two reasons.
The first reason relates to whether the asserted claim is a product-by-process claim. The claim at issue is a method claim, requiring use of a recombinant polypeptide produced by a particular process. Even though the product-by-process limitation is nested within a method of treatment claim, the Federal Circuit determined it to be a product-by-process claim. For such claim, an old product is not patentable even if it is made by a new process. Under this rule, a proper anticipation analysis turns not on the source of the claimed polypeptide, but on a comparison of the claimed recombinant polypeptide and the prior art native polypeptide. Thus, the District Court erred in concluding that the mere absence of the polypeptide being recombinantly produced was sufficient to find no anticipation.
The Federal Circuit also found that the District Court erred by requiring the same three-dimensional structure between the native polypeptide and the recombinant polypeptide. That requirement is contrary to the patent's definition of "polypeptide," which is without regard to its three-dimensional structure. Additionally, the claims do not recite any specific three-dimensional structure that gives rise to the claimed antiviral activity, and the parties did not ask for a jury instruction that required comparing the structures to find anticipation.
Wing Enterprises v. Tricam Industries, Case No. 19-2279 (Sep. 25, 2020, Fed. Cir.)
The Federal Circuit found that the District Court abused its discretion in excluding expert testimony about a survey. The claim was false-advertising of conformance to a particular industry standard. To prevail on a false-advertising claim, the deception must be material, in that it is likely to influence the purchasing decision. The Plaintiff's expert conducted an Importance Survey to prove materiality. The survey asked respondents to rank the factors they consider important when making a purchase, with one factor being compliance with industry safety standard. The survey did not ask about the specific standard advertised, and because of that, the District Court found the survey to be irrelevant and excluded it.
The Federal Circuit disagreed. While it is true that the survey asked about industry safety standards in general, such testimony would have at least some tendency to make a fact of consequence – namely, the importance of specific standard compliance to purchasers – more probable than it would be without the evidence, and such testimony is not so unsupported that it would offer no help to the jury. Because of that, the District Court also improperly granted summary judgment on materiality, which was based on the premise that testimony about the Importance Survey was not relevant.
Apple v. Voip-Pal.com, 18-1456 (Sep. 25, 2020, Fed. Cir.)
The Federal Circuit vacated part of PTAB's final written decisions as to the overlapping claims that had been found patent ineligible in another case, thus rendered moot, and directed the PTAB to dismiss the petitions as to those claims.
Snyders Heart Valve v. St. Jude Medical, 19-2111 (Sep. 9, 2020, Fed. Cir.)
Because appellant argued in its opening brief that PTAB's final written decision violated the Constitution's Appointment Clause, the Federal Circuit vacated PTAB's final written decision and remanded for proceedings consistent with the Court's decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019).
