Fresh From the Bench: Latest Federal Circuit Court Cases

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Berkheimer v. HP Inc., Appeal No. 2017-1437 (Fed. Cir. Feb. 8, 2018)

In Berkheimer v. HP Inc., the Federal Circuit reviewed the District Court’s summary judgment finding that certain claims of a patent were invalid as ineligible under 35 U.S.C. §101 and that other claims were invalid for indefiniteness.

On the issue of indefiniteness, the issue was whether the term “minimal redundancy” was reasonably clear. The District Court found that the intrinsic evidence “leaves a person skilled in the art with a highly subjective meaning of ‘minimal redundancy.’” The District Court, relying upon expert evidence, also found “that an ordinary skilled artisan would not have known what the term 'minimal redundancy' meant” in the claims.

The Federal Circuit affirmed the District Court’s indefiniteness findings, distinguishing many cases were terms of degree were held sufficiently definite. It noted that, in this case, the terminology was used inconsistently in the specification, and that it did not provide an objective boundary for the term “minimal.” The Federal Circuit also reviewed the prosecution history and concluded that it did not add clarity. Accordingly, it was proper for the District Court to consider and rely upon expert testimony. However, the Court was very clear that indefiniteness determinations are highly fact dependent, and that its finding was limited to the facts of this case.

On the issue of patent eligibility, the Court found certain claims ineligible, but reversed the district court and remanded for further fact finding with respect to other claims. The claims in this case relate to digitally processing and archiving files, and purport to reduce redundancy in the storing of data. Relying on its decisions in previous Section 101 cases, the Court held that the challenged claims were all directed to abstract ideas, such as parsing and comparing data, storing data, and editing data. Applying the Supreme Court’s two-step framework in Alice Corp. Pty. Ltd. v. CLS Bank Intern. 134 S. Ct. 2347 (2014), the Court proceeded to the second step of analyzing whether the claim limitations “involve more than performance of ‘well understood, routine, [and] conventional activities previously known to the industry.’”

The patent owner argued that the claims were not ineligible because they relate to improvements to computer technology, including increasing efficiency and computer functionality. The Court held that certain claims that covered only the abstract ideas of parsing and comparing data failed this test and were invalid.

However, with respect to other claims, the Court took the unusual step of remanding for further fact finding. The Federal Circuit acknowledged that “[w]hen there is no genuine issue of material fact regarding whether the claim element or claimed combination is well-understood, routine, conventional to a skilled artisan in the relevant field, this issue can be decided on summary judgment as a matter of law.” The Court noted that Section 101 analysis, which is an issue of law, is often appropriate for early disposition, including at the motion to dismiss or summary judgment stages of a case. However, the Court noted that abstractness is based on certain underlying facts. And the Court held that there was a genuine dispute of material fact as to the claims having the added steps of storing and editing data, “perform well-understood, routine, and conventional activities to a skilled artisan,” or instead transform the abstract idea into a patent-eligible invention by providing benefits that improve computer functionality. With respect to these claims, the case was remanded for further fact finding.

As far as we are aware, this is the first case since Alice to be remanded for trial on the issue of patent eligibility.

Read the full decision.


Medicines Co. v. Hospira, Inc., Appeal No. 2014-1469 (Fed. Cir. Feb. 6, 2018)

In an appeal from a district court decision, the Court affirmed summary judgment of noninfringement and continued to address whether the asserted claims were also invalid. In doing so, it addressed the on sale bar, and specifically its application to a distribution agreement. The Court found that the distribution agreement was a commercial offer for sale and remanded for the court to determine whether it covered the patented invention. The Court also affirmed that the invention was ready for patenting before the critical date.
Read the full decision.

Abbvie Inc. v. MedImmune Ltd., Appeal No. 2017-1689 (Fed. Cir. Feb. 5, 2018)

In an appeal from a district court decision, the Federal Circuit addressed the extent to which a district court has jurisdiction to hear a declaratory judgment action concerning patent validity relating to a contract dispute. The contract was in force until the patents “expire.” There was a dispute about whether a finding of invalidity triggered that clause. The Court found that there was no declaratory judgment jurisdiction, because only the validity of the patents was challenged, and not the underlying dispute concerning contract interpretation or liability.
Read the full decision.

Actelion Pharm. Ltd. v. Matal, Appeal No. 2017-1238 (Fed. Cir.Feb. 6, 2018)

In an appeal from a district court decision, the Federal Circuit affirmed summary judgment ‎in favor of the Patent Office ‎regarding the length of patent term adjustment under 35 U.S.C. §154(b)(1)(A). The ‎Court found that the PTA calculations beginning with a national-stage application were ‎not triggered by the patentee’s statement that it “earnestly solicits early examination and ‎allowance of these claims.” The casual “solicits early examination” language coupled with ‎failure to mention the national stage filing and check the box on the submitted form ‎requesting early examination was at best “an inconsistent or ambivalent request.”
Read the full decision.

Elbit Systems of America, LLC. v. Thales Visionix, Inc., Appeal No. 2017-1355 (Fed. Cir. Feb. 6, 2018)

In an appeal from an inter partes review, the Court addressed the sufficiency of the evidence supporting the PTAB’s nonobviousness determination. The prior art did not explicitly disclose the asserted claims, so the Court’s analysis turned on the appellant’s expert obviousness opinion. Because the PTAB attributed “little weight” to the credibility of the expert’s testimony, the Court concluded that substantial evidence supports nonobviousness and affirmed the PTAB’s decision.
Read the full decision.

Macom Tech. Solutions v. Infineon Tech. Am., Appeal No. 2017-1448 (Jan. 29, 2018)

In an appeal from a preliminary injunction, the Court addressed whether a declaratory judgment plaintiff was likely to succeed on its "wrongful termination of license" claim, insofar as it allegedly did not breach the license agreement. The Court found that where the patent licensee was limited to practice in a certain "Field of Use only," the licensee was not contractually obligated to limit its practice to the “Field of Use” and likely had not breached the license agreement by practicing beyond the licensed “Field of Use.” The Court also vacated a sentence prohibiting defendant licensor from practicing patent rights exclusively licensed to plaintiff licensee. The Court relied on precedent finding that under Fed. R. Civ. P. 65(d), an injunction against patent infringement must specify products, and held that a more generalized prohibition through a license contract did not satisfy the Rule.
Read the full decision.

In Re: Nordt Dev. Co., LLC, Appeal No. 2017-1445 (Fed. Cir. Feb. 8, 2018)

In an appeal from a Board decision following an examiner rejection of application claims, the Federal Circuit addressed when manufacturing processes in an apparatus claim have patentable weight. The claim for a knee brace included “injection molded” parts. The Federal Circuit reversed the board, finding that “injection molded” described a structure and therefore had patentable weight.
Read the full decision.

Merck Sharp & Dohme Corp. v. Amneal Pharm. LLC, Appeal No. 2017-1560 (Fed. Cir. Feb. 9, 2018)

In an appeal from a district court decision in a Hatch-Waxman case, the Federal Circuit affirmed a finding of non-infringement. The Court held that the district court did not abuse its discretion in holding a trial, though a discovery violation was identified six weeks before trial. Although the defendant failed to produce later samples of its accused product, there was “little more than theoretical evidence” to show that the samples would have been different.
Read the full decision.

Polaris Indus., Inc. v. Arctic Cat, Inc., Appeal No. 2016-1807 (Fed. Cir. Feb. 9, 2018)

In an appeal from an inter partes review of patents concerning all-terrain vehicles, the Federal Circuit addressed the PTAB’s obviousness analysis, including whether substantial evidence supported a motivation to combine the prior art. For one claim, the Federal Circuit concluded that, although the PTAB’s analysis “could have been more thorough,” it was sufficient. However, for three additional claims, the PTAB used an improper obviousness standard and failed to properly consider prior art teaching away and its relationship to any motivation to combine the art. The PTAB also failed to properly consider objective indicia of nonobviousness, including commercial success.
Read the full decision.

Xitronix Corp. v. KLA-Tencor Corp., Appeal No. 2016-2746 (Fed. Cir. Feb. 9, 2018)

In an appeal from a district court decision, the Court reviewed its jurisdiction over a Walker Process monopolization claim—the assertion of antitrust violations based on fraudulent prosecution of a patent. The Court held that Walker Process claims concern fraud and misrepresentation, and implicate no substantial question of federal patent law. Though both parties consented to the jurisdiction of the Federal Circuit, the Court transferred the case to the United States Court of Appeals for the Fifth Circuit.
Read the full decision.

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