Posts Tagged: "Judge Todd Hughes"

The United States Court of Appeals for the Federal Circuit recently issued a ruling on discussing the equitable doctrine of implied waiver; a decision that will be particularly important for those participating in the standard setting process and engaging with standard setting organizations, or SSOs as they are sometimes called. According to the Federal Circuit, failure to disclose patents and applications relevant to a standard may render a patent unenforceable based on an implied waiver.  See Core Wireless Licensing S.A.R.L. v. Apple Inc., No. 17-2102, 2018 (Fed Cir. Aug. 16, 2018) (Before Reyna, Bryson, and Hughes, Circuit Judges) (Opinion for the court, Bryson, Circuit Judge).

The Federal Circuit continues to focus on the distinction between an improvement in computer capabilities and an abstract idea for which computers are invoked merely as a tool.  Here, in the context of a database, the Court distinguished between “an improvement to the information stored by a database” and “an improvement in the database’s function”—the former being what the patent covered and also patent-ineligible subject matter.  The Court also rejected multiple arguments related to the breadth of the patents, finding that a narrowed application or scope was not sufficient to meet either step of Alice. 

In Click-To-Call Technologies v. Ingenio, Inc., Yellowpages.com, LLC, the Federal Circuit, sitting en banc, held §315(b) precludes IPR institution when the IPR petitioner was served with a complaint for patent infringement more than one year before filing its petition, even if the district court action in which the petitioner was so served was voluntarily dismissed without prejudice.  

The Federal Circuit, however, found the district court’s enforceability finding to be unsupported by evidence. The rejection of Nokia’s proposal did not obviate Nokia’s requirement to disclose inventions that might be essential to the standard. Dr. Walker’s uncontroverted testimony explained that patent applications are to be disclosed at the time proposals are presented. “[A]n ETSI member’s duty to disclose a patent application on particular technology attaches at the time of the proposal and is not contingent on ETSI ultimately deciding to include that technology in an ETSI standard,” Bryson explained. Notwithstanding, the Federal Circuit elected to vacate this ruling rather than electing to reverse the district court because the existence of an implied waiver is an equitable defense.

On Wednesday, August 15th, the Court of Appeals for the Federal Circuit issued a precedential decision in BSG Tech LLC v. BuySeasons, Inc. which upheld a decision by the district court to invalidate patent claims owned by BSG Tech as patent-ineligible under 35 U.S.C. § 101. The Federal Circuit panel of Circuit Judges Jimmie Reyna, Evan Wallach and Todd Hughes found that the district court correctly determined that patent claim asserted by BSG Tech were invalid as abstract ideas lacking any inventive step under the Alice/Mayo framework… The only allegedly unconventional feature of BSG Tech’s claims was the requirement that users are guided by summary comparison usage information, which was simply a restatement of the abstract idea identified under the first step of Alice/Mayo

NantKwest filed suit in district court under 35 U.S.C. § 145 to contest the PTO’s rejection of its patent application. The USPTO prevailed and filed a motion for reimbursement of all of its litigation expenses, including attorney’s fees. 35 U.S.C. § 145 requires that “all expenses of the proceeding be paid by the applicant,” which the USPTO claimed included their fees and costs… While Congress can create fee-shifting statutes, 35 U.S.C. § 145 did not reflect explicit congressional authorization for fee-shifting that would displace the American Rule.

On Friday, July 27th, the Court of Appeals for the Federal Circuit issued a precedential opinion in GoPro, Inc. v. Contour IP Holdings, vacating a final written decision coming from the Patent Trial and Appeal Board (PTAB) that had upheld patent claims in the face of a validity challenge petitioned by action camera company GoPro. The Federal Circuit panel of Circuit Judges Jimmie Reyna (author of the opinion), Evan Wallach and Todd Hughes found that the PTAB had erred in finding that a 2009 GoPro catalog did not qualify as a prior art printed publication for rendering the challenged claims invalid for obviousness.

Obviously, Judges cannot be experts on all things, but this apparent lack of understanding of something so fundamental to the case was a bit alarming for the patent owner. Surely, Judge Reyna would clear up his understanding of the difference between a web page and a web server after oral argument and realize that the arguments being made by the defendant were unnecessarily confusing, but also contradicted arguments previously made. Unfortunately, we will never know whether Judge Reyna continues to believe that a web page and a web server are the same thing, or whether the other Judges on the panel were equally confused, because the Federal Circuit issued a Rule 36 affirmance of the trial court’s decision

When relying on scientific guidelines to support an obviousness rationale, practitioners should offer evidence for why contradictory guidelines should be discounted. A claimed constituent is not “necessarily present” if the prior art reference lists several alternative constituents and a skilled artisan could not reasonably deduce that the authors of the prior art reference used the claimed constituent.

TF3’s patent-in-suit is for a “hair styling device” that automated the curling of hair. TF3 appealed the decision of the Board in an IPR requested by Tre Milano. Based upon its broad construction of certain claim terms, the Board held that two prior art references made the challenged patent claims invalid for anticipation. TF3 appealed. The Federal Circuit reversed the Board’s decision because it imposed a claim construction that was broader than the description in the patent specification. This enlarged the claims beyond their correct scope, even under a “broadest reasonable interpretation” standard. The Federal Circuit noted that “[a]bove all, the broadest reasonable interpretation must be reasonable in light of the claims and specification.”

The Federal Circuit found that the PTAB didn’t meaningfully examine Salesforce’s relationship with RPX and the nature of RPX as an entity that helps its clients extricate themselves from patent litigation. Both of those factors are ones which are contemplated by the PTAB’s Trial Practice Guide.

On Wednesday, July 11th, the Court of Appeals for the Federal Circuit issued a decision in Apple v. ContentGuard Holdings vacating a decision by the Patent Trial and Appeal Board (PTAB) to institute a covered business method (CBM) validity proceeding… Amazingly, the Federal Circuit’s vacature of the PTAB’s determination of unpatentable subject matter came after appeals from petitioners Google and Apple sent the case to the Federal Circuit. Although the panel of administrative patent judges (APJs) determined the challenged claims to be unpatentable, they also granted a motion from ContentGuard to amend claims which substituted the unpatentable claims. This appeal gave ContentGuard the ability to cross appeal the PTAB’s determination that the ‘280 patent was subject to CBM review.

On Friday, June 15th, the Court of Appeals for the Federal Circuit denied a petition for panel rehearing and rehearing en banc in Xitronix Corporation v. KLA-Tencor Corporation. The petition for rehearing was filed by KLA-Tencor after the Federal Circuit first decided Xitronix back in February of this year, where the appellate court held that it didn’t have jurisdiction to hear an appeal in a patent case which only involved claims of monopolization under U.S. Supreme Court standards set in 1965’s Walker Process Equipment v. Food Machinery & Chemical Corp.

In Zeroclick, LLC v. Apple Inc., before Judge Jimmie Reyna, Judge Richard Taranto, and Judge Todd Hughes, Zeroclick appealed a district court’s interpretation of the claims as containing “means plus function” limitations under 35 U.S.C. § 112 ¶ 6, arguing that the district court erred by imposing a means plus function analysis. The Court agreed with Zeroclick finding that the district court failed to give appropriate weight to the rebuttable presumption created by the absence of the word “means” within the claims, vacating and remanding the case to the district court.

On appeal to the Federal Circuit, Zeroclick argued that the district court erred in construing those two terms as means-plus-function limitations, an argument with which the Federal Circuit panel agreed. “Neither of the limitations at issue uses the word ‘means,’” Circuit Judge Hughes writes in his majority opinion. “Presumptively, therefore, [Section 112(f)] does not apply to the limitations.” Although Apple argued in the district court that the claims must be construed under Section 112(f), it provided no evidentiary support for its position. Although the court compared Apple’s arguments to Zeroclick’s objections, Judge Tigar did not point to any record evidence supporting the ultimate conclusion on Section 112(f) grounds.