Federal Circuit Affirms Different Invalidity Results at PTAB and District Court

In Novartis AG v. Noven Pharmaceuticals Inc., Appeal Nos. 2016-1678, 2016-1679, the Federal Circuit held that prior judicial opinions concerning the validity of patent claims do not bind the PTAB in subsequent proceedings.

Appellants appealed the PTAB’s final written decisions in IPR proceedings, finding Appellants’ claims obvious over the prior art.  Appellants contended that the PTAB’s findings unlawfully reached different conclusions than in prior federal district court litigation, which addressed the “same” arguments and the “same” evidence, and yet ultimately found the same claims to be nonobvious.

The Federal Circuit rejected Appellant’s arguments on factual and legal grounds.  The prior proceedings did not share the “same” record as PTAB, because additional prior art and declarations were submitted to the PTAB that were not considered in the prior litigation.  In addition to relying on the dissimilar records, the Federal Circuit also rejected Appellant’s arguments as a matter of law.  In an inter partes review, the petitioner must prove unpatentability by a preponderance of the evidence, whereas in district-court litigation the challenger must prove unpatentability by clear and convincing evidence.  Thus, the Federal Circuit reasoned, “the PTAB properly may reach a different conclusion based on the same evidence” due to the different burdens of proof.

The Federal Circuit also reviewed the PTAB’s findings of obviousness and affirmed the PTAB’s conclusions.

Federal Circuit Affirms Noninfringement of Patents Covering Cellular Network Channel Selection

In Core Wireless Licensing S.a.r.l. v. Apple Inc., Appeal No. 2015-2037, the Federal Circuit affirmed a claim construction supported by the claim language and specification.

Core Wireless sued Apple for patent infringement and a jury found no infringement.  Core Wireless moved for JMOL regarding a single claim directed to a means for a mobile station to select the channel for uploading packet data to a network.  Core Wireless argued that the court’s construction of the “means for comparing” limitation did not require that the mobile station be capable of making uplink channel decisions. The district court disagreed, and held “means for comparing” does require that the mobile station be capable of performing “channel selection.”  

The Federal Circuit affirmed the district court’s construction.  The Court noted that the entire point of the claimed invention was to enable the mobile station to make the channel selection decision. The Court found that the specification of the patent, including the Abstract, Summary of the Invention, and each embodiment, describes a structure in which the channel selection decision is made at the mobile station. The Court also found the function of the “means for comparing” limitation is to compare the values for the purpose of channel selection, thus the corresponding structure must be capable of channel selection.

Federal Circuit Affirms Patent Ineligibility of Method for Encoding and Reproducing Facial Features

In RecogniCorp, LLC v. Nintendo Co., Ltd., Appeal No. 2016-1499, the Federal Circuit affirmed that patent claims for encoding/decoding image data using a mathematical formula are patent-ineligible because they are directed to an abstract idea with no inventive concept.  

The patent at issue was directed to a method for encoding and decoding image data using a mathematical formula for more efficient transmission.  The Federal Circuit affirmed the district court’s finding that the claims were directed to patent-ineligible subject matter under 35 U.S.C. 101.  Analyzing the first step of Alice, the court determined that the claims were directed to an abstract idea.  The claims combined two abstract ideas: math and standard encoding/decoding of image data.  The court explained that adding one abstract idea to another abstract idea does not create patent eligible subject matter. 

Analyzing the second step of Alice, the court determined that the claims lacked an inventive concept that transforms the claims from an abstract idea to a patent-eligible application.  The court reasoned that the claims merely used math to transform one form of data into another form of data.  Moreover, the patentee failed to allege a particularized application of the image encoding/decoding claims; the claims did not even require a computer and could be practiced verbally or with a telephone.