Fresh From the Bench: Latest Federal Circuit Court Cases

by Schwabe, Williamson & Wyatt PC

Schwabe, Williamson & Wyatt PC


SimpleAir, Inc. v. Google LLC, Appeal No. 2016-2738 (Fed. Cir. 2018)

In SimpleAir, Inc. v Google LLC, the Federal Circuit vacated a district court’s motion to dismiss pursuant to Rule 12(b)(6).  The District Court had held that claim preclusion and the Kessler doctrine barred SimpleAir’s complaint concerning a continuation patent based on a judgement of noninfringement in Google’s favor for a previously adjudicated parent patent.

During prosecution of the continuation, SimpleAir filed a terminal disclaimer in response to an office action asserting that the continuation and the parent patent were not patentably distinct, and therefore the continuation was subject to a double patenting rejection.  After submitting the terminal disclaimer, the continuation issued and SimpleAir asserted it in a new lawsuit against Google.  Google filed a motion to dismiss based on issue preclusion and the Kessler doctrine, arguing that the previous lawsuit over the parent patent barred assertion of the continuation. 

The district court held that the inventions were essentially the same based on a common title and specification, and the filing of a terminal disclaimer, without any direct analysis of the claims, and dismissed the case.

The Federal Circuit reversed, holding that “where different patents are asserted in a first and second suit, a judgement in the first suit will trigger claim preclusion only if the scope of the asserted patents in the two suits is essentially the same.”  Google argued that filing the terminal disclaimer was an admission that the two patents were “essentially the same.”  The Federal Circuit panel disagreed, and held that the district court should have performed an analysis regarding whether the claims were “essentially the same” or not, and could not rely solely on the fact that a terminal disclaimer was filed as an admission of similarity. 

Citing Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1375 (Fed. Cir. 2007), the Court held that it was impermissible to allow an “inference that filing a terminal disclaimer functions as an admission regarding the patentability of the resulting claims.”  In remanding to the district court, the Federal Circuit left to the district court’s discretion whether formal claim construction would be necessary to resolve whether the claims are essentially the same.

Google had also invoked the Kessler doctrine, named after Kessler v. Eldred, 206 U.S. 285 (1907), which protects “an adjudged non-infringer” from “repeated harassment for continuing its business as usual post-final judgement.”  Historically, that doctrine had barred relitigation of the same patent over certain post-judgment activities.  The Federal Circuit declined to extend the Kessler doctrine to “bar a broader set of rights than would be barred by claim preclusion” or “activity predating the earlier judgment, as Google advocate[d].”

Case can be found here


Steuben Foods, Inc. v. Nestle USA. Inc., Appeal No. 17-1290 (Fed. Cir. 2018)

In an appeal from an inter partes review, the Court addressed whether the PTAB had erred in its claim construction and its finding that the patent at issue was obvious.  The Court affirmed the PTAB’s decision, holding that its construction of “sterilant concentrations levels” was not overly broad.  A narrower construction, it held, would have restricted the claim term to a specific embodiment disclosed in the specification.  The Court also affirmed the PTAB’s finding that claims were unpatentable as obvious, in part based on that construction. 

Opinion can be found here

Nestle USA Inc. v. Steuben Foods, Inc., Appeal No. 17-1193 (Fed. Cir. 2018)

In an appeal from a separate inter partes review, the Court addressed the effect of collateral estoppel when the disputed term has already been construed in an appeal involving a related patent.  The Court held that, because the two patents at issue provided identical lexicography for the disputed term, collateral estoppel applied to the construction of the disputed claim term.

Opinion can be found here

Hologic, Inc. v. Smith & Nephew, Inc., Covidien LP, Appeal No. 17-1389 (Fed. Cir. 2018)

In an appeal from the United States Patent and Trademark Office, the Court addressed whether the Patent Trial and Appeal Board (PTAB) erred in its finding that an earlier-filed PCT application had sufficient written description to make it a priority document instead of an invalidating obviousness reference.  The Court affirmed that the patent at issue was entitled to claim priority to the earlier filed PCT application, and as such, the PCT application is not prior art under pre-AIA Section 102(b). The Court also affirmed the PTAB’s reversal of a corresponding obviousness rejection.

Opinion can be found here

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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