Federal Circuit Patent Updates - August 2018

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Ericsson Inc. v. Intellectual Ventures I LLC (No. 2017-1521, 8/27/18) (Reyna, Taranto, Chen)

Reyna, J. Vacating and remanding the PTAB’s IPR decision because the PTAB erred in not considering portions of the petitioner’s reply brief. Specifically, the PTAB erred in determining that certain reply arguments were improper new arguments under 37 C.F.R. § 42.23(b). The Court held that the petitioner’s reply arguments should have been considered because they cited “no new evidence and merely expand[ed] on a previously argued rationale as to why the prior art disclosures are insubstantially distinct from the challenged claims.”  

A full version of the text is available in PDF form.

In Re: Maatita (No. 2017-2037, 8/20/18) (Dyk, Reyna, Stoll)

Dyk, J. Reversing the PTAB’s rejection of a design patent directed to an athletic shoe bottom. The Court found that the PTAB misapplied the enablement and definiteness requirements of 35 U.S.C. § 112 in the design patent context. The Court explained that “a design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.” The Court also noted that “there is often little difference in the design patent context between the concepts of definiteness (whether the scope of the claim is clear with reasonable certainty) and enablement (whether the specification sufficiently describes the design to enable an average designer to make the design).” Under these standards, the Court reversed the PTAB’s findings of indefiniteness and non-enablement because “a designer of ordinary skill in the art, judging [the disclosed shoe bottom] design as would an ordinary observer, could make comparisons for infringement purposes based on the provided, two-dimensional depiction.” 

A full version of the text is available in PDF form.

Core Wireless Licensing v. Apple Inc. (No. 2017-2102, 8/16/18) (Reyna, Bryson, Hughes)*

Bryson, J. Reversing, on two separate grounds, a jury’s finding that the defendant infringed a patent directed to wireless communications. In addition, the Court vacated and remanded the district court’s finding of no unenforceability regarding another wireless communications patent. The defendant argued that the patent was unenforceable because the prior owner of the patent had failed to disclose the priority application for the patent to the European Telecommunications Standards Institute (“ETSI”) during the creation of the General Packet Radio Service (“GPRS”) standard. In vacating the district court’s finding of no unenforceability, the Federal Circuit held that “[t]he district court’s finding that [the prior owner] did not have a duty to disclose its patent application [to ETSI] because its [GPRS] proposal [to ETSI] was rejected is unsupported by the evidence.” The Court remanded for the district court to determine whether the original patentee (or its successor-in-interest Core Wireless) inequitably benefited from the untimely disclosure or whether the failure to disclose was sufficiently egregious to justify finding implied waiver without regard to any benefit.

*WilmerHale represented the defendant-appellant in this appeal. 

A full version of the text is available in PDF form.

Click-to-Call Technologies, LP v. Ingenio, Inc. [panel opinion with en banc footnote 3] (No. 2015-1242, 8/16/18) (en banc)

O’Malley, J. Reversing the PTAB’s decision that an IPR petition was not time barred and vacating the PTAB’s final written decision. The en banc Court held that “35 U.S.C. § 315(b)’s time bar applies to bar institution when an IPR petitioner was served with a complaint for patent infringement more than one year before filing its petition, but the district court action in which the petitioner was so served was voluntarily dismissed without prejudice.” Judge Taranto concurred. Judge Dyk and Judge Lourie dissented. 

A full version of the text is available in PDF form.

Luminara Worldwide, LLC v. IANCU (No. 2017-1629, -1631, -1633, 8/16/18) (Lourie, Dyk, Taranto)

Dyk, J. Under the Court’s en banc decision in Click-To-Call Technologies, LP, v. Ingenio, Inc., No. 15-1242 (Fed. Cir. Aug. 16, 2018), the Court vacated the PTAB’s final written decision in one of the three IPR proceedings on appeal. The Court explained that the PTAB erred in instituting the IPR because the time-bar of 35 U.S.C. § 315(b) still “applies when the underlying complaint alleging infringement has been voluntarily dismissed without prejudice.” The Court affirmed the other two IPR decisions on appeal, holding that substantial evidence supported the PTAB’s obviousness determinations. 

A full version of the text is available in PDF form.

In Re: Power Integrations, Inc. [motion panel opinion] (No. 2018-144, -145, -146, -147, 8/16/18) (O'Malley, Bryson, Chen)

Bryson, J. Denying petitions for a writ of mandamus challenging the PTAB’s denial of institution of four IPRs on the ground that the petitioner had not shown that the cited prior art was publicly accessible before the patents’ priority date. The Court explained that the PTAB’s decisions regarding whether to institute IPRs are not appealable under 35 U.S.C. § 314(d), and a writ of mandamus is not a valid alternative means of challenging the denial of an IPR. 

A full version of the text is available in PDF form.

In Re: Rembrandt Techs., LP Patent Litig. (No. 2017-1784, 8/15/18) (O'Malley, Mayer, Reyna)

O’Malley, J. Affirming the district court’s determination that the defendants were entitled to attorney fees due to the plaintiff’s litigation misconduct, but vacating and remanding the district court’s award of more than $51 million in attorney fees in total among all the defendants. The Court instructed the district court to determine on remand the amount of fees that were incurred because of the plaintiff’s misconduct. 

A full version of the text is available in PDF form.

BSG Tech LLC v. BuySeasons, Inc. (No. 2017-1980, 8/15/18) (Reyna, Wallach, Hughes)

Hughes, J. Affirming the district court’s summary judgment that patents directed to indexing information stored in wide access databases were not patent-eligible under 35 U.S.C. § 101. The Court explained that the asserted patent claims (1) were directed to the “abstract idea of considering historical usage information while inputting data” and (2) lack an inventive concept because they are merely directed to using the abstract idea in conjunction with a well-known database structure.  

A full version of the text is available in PDF form.

Diebold Nixdorf, Inc. v. ITC (No. 2017-2553, 8/15/18) (Prost, Bryson, O'Malley)

O’Malley, J. Reversing the ITC’s determination that the respondent violated Section 337 of the Tariff Act of 1930 by importing components of automated teller machines (ATMs) that infringed the complainant’s patent. The Court held that the term “cheque standby unit” in the asserted patent claims is a means-plus-function term subject to 35 U.S.C. § 112, ¶ 6. In addition, the Court held that the asserted patent claims were invalid because the patent specification failed to disclose the required corresponding structure for performing the function of the claimed “cheque standby unit.” 

A full version of the text is available in PDF form.

JTEKT Corporation v. GKN Automotive Ltd. (No. 2017-1828, 8/3/18) (Prost, Dyk, O'Malley)

Dyk, J. Dismissing appeal due to lack of standing. Appellant initiated an IPR and the Board found that some of the challenged claims were not invalid. Appellant’s attempt to appeal the Board’s decision failed because it could not establish an injury sufficient to confer standing. “While [appellant] has submitted two declarations in support of its standing, [appellant’s] problem is that these declarations do not establish that its planned product would create a substantial risk of infringing [the claims] or likely lead to charges of infringement.” 

A full version of the text is available in PDF form.

SAP America, Inc. v. Investpic LLC (No. 2017-2081, 8/2/18) (Lourie, O'Malley, Taranto)

Taranto, J. Affirming judgment on the pleadings that patent is invalid under § 101. “The claims here are ineligible because their innovation is an innovation in ineligible subject matter. Their subject is nothing but a series of mathematical calculations based on selected information and the presentation of the results of those calculations (in the plot of a probability distribution function). No matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the nonabstract application realm. An advance of that nature is ineligible for patenting…. Some of the claims require various databases and processors, which are in the physical realm of things. But it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources [patentee] claims to have invented, just already available computers, with their already available basic functions, to use as tools in executing the claimed process.”

A full version of the text is available in PDF form.

Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co. (No. 2017-1314, 8/1/18) (Newman, Clevenger, Chen)

Newman, J. Reversing judgment on the pleadings, and remanding, because prosecution history estoppel did not bar assertion of design patent against the accused product. “Regardless of whether [patent owner] surrendered claim scope during prosecution, the accused product falls outside the scope of the purported surrender, contrary to the district court’s conclusion. [Patent owner] elected to patent the ornamental design for a kennel with a particular skeletal structure. A competitor who sells a kennel embodying [patent owner’s] patented structural design infringes the [patent], regardless of extra features, such as a cover, that the competitor might add to its kennel.”

A full version of the text is available in PDF form.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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