Posts Tagged: "CAFC"

Understanding the Importance of Words in Design Patents

Is the scope of a design patent determined by the figures alone? Two recent Federal Circuit decisions highlight that the words describing the article of manufacture in the title and claims can indeed limit the scope and enforceability of a design patent. In particular, the title and claims of the design patent contain important information that provide a more accurate and predictable notice of what is and is not protected by the design patent. Thus, the title and the claims of a design patent are particularly relevant to the scope of the patent—both for procurement and enforcement.

Federal Circuit Vacates PTAB Ruling After Failure to Address Cost Reduction as Factor in Obviousness Finding

Earlier this week, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and remanded a decision by the Patent Trial and Appeal Board (PTAB) in a post grant review where the PTAB concluded that Everstar did not meet its burden to demonstrate the challenged claims were unpatentable as obvious because it failed to show a motivation to combine the asserted prior art. The CAFC found that the PTAB abused its discretion when it refused to consider whether cost reduction would have driven one skilled in the art to combine the asserted prior art.

CAFC Schools District Court on Claim Construction Again

On Tuesday, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and remanded a decision of the U.S. District Court for the District of Nevada denying Power Probe’s request for a preliminary injunction to bar future sales of Innova Electronics Corporation’s Powercheck #5420 device. The CAFC held that the district court erred in its preliminary claim construction, particularly in determining that “detecting continuity and measuring continuity are mutually exclusive.”

CAFC Vacates Section 112 Indefiniteness Ruling, Sending St. Jude Medical Back to Court

On April 11, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Niazi Licensing Corp. v. St. Jude Medical S.C., Inc. in which the court affirmed most of a ruling from the District of Minnesota, including sanctions against Niazi for improper use of expert testimony, as well as a finding of no induced infringement by St. Jude on one of Niazi’s asserted patent claims. However, the Federal Circuit’s decision reversed the Minnesota district court’s ruling invalidating most patent claims asserted by Niazi for indefiniteness under Section 112. The CAFC found that Niazi’s asserted claims were not invalid simply for including descriptive words or terms of degree, as long as the intrinsic record and extrinsic evidence enable a skilled artisan to identify the boundaries of a claim’s scope.

CAFC Orders New Damages Trial for Roche, Clarifies Standard for Patent Damages Limitations Period

On April 8, in a mixed and split precedential decision, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed, reversed, vacated, and remanded a decision by the U.S. District Court for the district of Delaware in a patent infringement suit brought by Meso Scale Diagnostics (Meso) against Roche Diagnostic Corporation and BioVeris Corporation (collectively Roche). Judge Pauline Newman dissented. Meso brought suit claiming that Roche violated exclusive license rights belonging to Meso by both direct and induced infringement of their patents. The CAFC affirmed the district court’s findings on the direct infringement claim, reversed the induced infringement finding, vacated the awarded damages, and remanded for a new trial on damages.

Arthrex II: The USPTO Has a Director Again, But Questions About Validity of USPTO Operations Under Hirshfeld Persist

In late March, the U.S. Court of Appeals for the Federal Circuit heard oral arguments in Arthrex, Inc. v. Smith & Nephew, Inc. (Arthrex II) to determine whether the U.S. Patent and Trademark Office (USPTO) had effectively addressed the constitutional violation under the Appointments Clause that was identified in previous rulings from the Federal Circuit and the U.S. Supreme Court (Arthrex I). While the impact of the Federal Circuit’s ruling will likely be cabined by the recent Senate confirmation of Kathi Vidal to serve as USPTO Director, the decision could call into question the validity of at least the USPTO’s Patent Trial and Appeal Board (PTAB) operations during the tenure of Drew Hirshfeld as performing the duties and functions of the USPTO Director up to Vidal’s confirmation.

CAFC Says District Court’s Claim Construction Rendered Dependent Claims ‘Meaningless’

On April 4, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Littelfuse, Inc. v. Mersen USA EP Corp. clarifying how U.S. district courts handling claim construction are to construe a patent’s independent claims in light of limitations included in dependent claims. While the Federal Circuit found that the District of Massachusetts was correct to give meaning to the term “fastening stem” by looking to uses of “fastening” and “stem” within the patent, the appellate court vacated and remanded a stipulated judgment of non-infringement, as the district court’s construction of certain independent claim terms would render superfluous other claim terms from dependent claims.

CAFC Overturns Win for Nintendo Based on District Court’s Incorrect Claim Construction Analysis

On April 1, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed and remanded a summary judgment decision by the U.S. District Court for the Western District of Washington in an infringement suit brought by Genuine Enabling Technology (Genuine) against Nintendo Company and Nintendo of America (collectively “Nintendo”) for allegedly infringing certain claims of Genuine’s U.S. Patent No. 6,219,730 (‘730 patent). The CAFC reversed the district court’s summary judgment decision because the district court erred in its construction of “input signal” and should have construed the term to mean “a signal having an audio or higher frequency.”

Judge Michel Implores Full CAFC to Fix ‘Fuzzy’ Rebuttable Presumption of Nexus Jurisprudence

On March 20, Zaxcom, Inc., the owner of U.S. Patent No. 9,336,307 for Engineering Emmy® and technical OSCAR award-winning wireless microphone technology, petitioned the U.S. Court of Appeals for the Federal Circuit (CAFC) for rehearing en banc after the court found its original patent claims unpatentable as obvious. Zaxcom argued that the CAFC’s precedent in Fox Factory, Inc. v. SRAM LLC, 944 F.3d 1366 (Fed. Cir. 2019), “confused the law” regarding a rebuttable presumption of nexus. Now, former CAFC Chief Judge, Paul Michel, has filed an amicus brief supporting Zaxcom and asking the full CAFC to resolve “unintentional confusion and conflict” in the court’s obviousness jurisprudence.

CAFC Says Dyfan Claim Limitations are Not Invalid Due to Means-Plus-Function Format

Last week, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed and remanded a decision by the U.S. District Court for the Western District of Texas that Dyfan, LLC’s claims were invalid as indefinite. The CAFC concluded that the disputed claim limitations were not drafted in means-plus-function format, and therefore 35 U.S.C. § 112 ¶ 6 did not apply. Patent owner Dyfan sued Target Corp. for infringement of various claims of U.S. Patent Nos. 9,973,899 and 10,194,292. Following a claim construction hearing, the district court found that the disputed (1) “code”/“application” limitations and (2) “system” limitations of the patents-in-suit were invalid as indefinite. Specifically, the district court found that: (1) these claim limitations of the patents-in-suit are in means-plus-function format under Section 112 ¶ 6 and (2) the specification does not disclose sufficient structure corresponding to the recited functions. Dyfan subsequently appealed.

Lessons from Junker v. Medical Components, Inc. on Commercial Offers for Sale Invalidating a Patent

Recently, the U.S. Court of Appeals for the Federal Circuit (CAFC) further explained the “on-sale” bar in Junker v. Medical Components, Inc., Case No. 2021-1649 (Feb. 10, 2022). As previously reported here, the case hinged on whether a letter between Larry Junker’s business partner and Boston Scientific Corporation (BSC) was a “commercial offer for sale” before the one-year grace period took effect. The CAFC held that all necessary terms for a commercial offer were present in the letter, and therefore, the letter qualified as a commercial offer for sale invalidating Junker’s patent.

CAFC Upholds PTAB Precedential Opinion Panel Decision Despite ‘Problematic’ Reasoning

On March 24, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a Patent Trial and Appeal Board (PTAB) Precedential Opinion Panel’s (POP’s) decision allowing patent owner DynaEnergetics Europe GmH to amend its claims, and also affirmed the PTAB’s decision that the original claims of the patent were unpatentable. Hunting Titan, Inc. petitioned for inter partes review of claims 1–15 of the U.S. Patent No. 9,581,422, asserting grounds of unpatentability based on anticipation and obviousness, including allegations that the claims were anticipated by U.S. Patent No. 9,689,223 (Schacherer). The Board instituted trial on all grounds and found all of the original claims unpatentable.

CAFC Denies VoIP-Pal Petition for Mandamus Relief in Suit with Twitter

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied VoIP-Pal.com, Inc.’s petition for a writ of mandamus asking it to direct a California district court to vacate its decision in favor of Twitter, Inc. The U.S. District Court for the Northern District of California issued an order on November 2, 2021, refusing to grant VoIP-Pal’s motion to dismiss Twitter’s request for a declaratory judgment that its products do not infringe VoIP-Pal’s U.S. Patent No. 9,935,872. VoIP-Pal’s patents relate generally to a system for routing communications over Internet Protocol networks, and the company has been engaged in litigation with Twitter, Apple, Amazon and others for several years now.

Ameranth Attempts to Bump Eligibility Issue Back to Top of SCOTUS’ Inbox

Earlier this month, Ameranth Inc. filed a Petition for a Writ of Certiorari to the U.S. Supreme Court requesting review of the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) decision affirming a district court ruling that Ameranth’s patent was ineligible under 35 U.S.C. § 101. Ameranth claims that “federal courts have declared thousands of new and useful inventions abstract and patent ineligible” based on SCOTUS’s decision in Alice Corp Pty. v. CLS Bank Int’l (U.S. Supreme Court, 2014). The culmination of the post-Alice upheaval is the CAFC’s paralytic gridlock of denying rehearing en banc in American Axle & Mfg. v. Neapco Holding LLC (CAFC, 2020) according to the petition. Ameranth pled that the court should provide guidance on the standard for patent eligibility, as federal circuits continue to apply the law in a non-uniform and unarticulated manner.

Zaxcom Asks Full Federal Circuit to Clarify Court-Created Confusion on Presumption of Nexus

In February, the U.S. Court of Appeals for the Federal Circuit (CAFC) agreed with the Patent Trial and Appeal Board’s (PTAB’s) decision that the original claims of Zaxcom’s U.S. Patent No. 9,336,307 for Engineering Emmy® and technical OSCAR award-winning wireless microphone technology were unpatentable as obvious, but upheld the substitute claims Zaxcom had proposed. Now, Zaxcom has petitioned the court for rehearing en banc, arguing that the CAFC’s precedent in Fox Factory, Inc. v. SRAM LLC, 944 F.3d 1366 (Fed. Cir. 2019), “confused the law” regarding a rebuttable presumption of nexus.