Posts Tagged: "claim construction"

CAFC Affirms District Court Ruling for Amazon on Claim Construction

Last week, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the United States District Court for the Northern District of California’s final judgment of noninfringement of SpeedTrack’s (Plaintiff-Appellant) patent U.S. Patent No. 5,544,360 (the ‘360 patent). SpeedTrack sued online retailers AMAZON.COM, BESTBUY.COM, LLC, OFFICEMAX, INC., MACY’S, INC., MACYS.COM, LLC and many others for infringement of its category-based filing system. The ultimate decision weighed on the district court’s construction of claims and whether or not the ‘360 patent had a hierarchical structure. The district court construed the claims to not have a hierarchical structure and determined that defendants-cross-appellants did not infringe. The CAFC, with Judge Prost writing for the court, agreed.

CAFC Affirms PTAB Finding that Certain Uniloc Claims are Invalid, But Says Apple Failed to Prove Other Claims Unpatentable

On May 12, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Patent Trial and Appeal Board (PTAB/ Board) in an inter partes review (IPR), holding the PTAB properly construed the claim language.

In April 2018, Apple Inc. filed a petition for IPR, alleging that all 25 claims of U.S. Patent No.  8,539,552 (“the ‘552 patent”) owned by Uniloc 2017 LLC were unpatentable. Apple Inc. v. Uniloc 2017 LLC, No. IPR2018-00884, Petition at 1 (P.T.A.B.). During the IPR, the PTAB held claims 1-17 and 23-25 of the ‘552 invalid for obviousness in view of U.S. Patent No. 6,324,279 (“Kalmanek”). Uniloc then appealed the decision. On appeal, Uniloc argued that the Board’s decision to invalidate the claims of the ‘552 patent resulted from an erroneous construction of a claim term. In its cross-appeal, Apple argued that the PTAB erred in holding that Apple failed to show the remaining claims of the ‘552 patent, claims 18-22, would have been obvious in view of Kalmanek. The CAFC upheld the PTAB on all issues.

CAFC Corrects District Court Claim Construction, Doctrine of Equivalents Analysis in Diaper Genie Infringement Case

On March 9, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and reversed the U.S. District Court for the Central District of California’s decision to grant summary judgment in favor of defendant Munchkin, Inc. (Munchkin) for noninfringement of U.S. Patent Nos. 8,899,420 (the ‘420 patent) and 6,974,029 (the ‘029 patent), held by plaintiffs Edgewell Personal Care Brands, LLC and International Refills Company, Ltd. (collectively Edgewell). Edgewell manufactures and sells the Diaper Genie, a diaper pail system with two main components: 1) a pail for collection of soiled diapers; and 2) a replaceable cassette within the pail that forms a wrapper around the soiled diapers. The ‘420 and ‘029 patents relate to improvements in the cassette design. Edgewell filed suit against Munchkin for infringement of these patents for selling refill cassettes marketed as being compatible with Edgewell’s Diaper Genie. Edgewell appealed the district court’s decision to grant summary judgment to Munchkin for noninfringement of both patents.

CAFC Partially Vacates PTAB for Legal Error in ‘Reasonable Expectation of Success’ Analysis

On January 27, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed in-part and vacated in-part a decision of the Patent Trial and Appeal Board (PTAB) in its inter partes review of claims 1—20 of U.S. Patent No. 8,370,106 (the ‘106 patent) assigned to KEYnetik, Inc. (KEYnetik). Judge O’Malley concurred in part and dissented in part. In particular, the CAFC concluded that the PTAB did not err in its claim construction regarding an orientation detection limitation and a sequence limitation. Further, the CAFC affirmed the PTAB’s decision that the Petitioner’s references could be combined. However, the CAFC also found that the PTAB failed to properly assess the appellant’s argument regarding a reasonable expectation of success when combining references and therefore vacated the decision and remanded the case so that the Board could make such a determination.

PTAB Will Use Nautilus Approach to Indefiniteness for Post-Grant Proceedings

Last week, the United States Patent and Trademark Office (USPTO) issued binding indefiniteness guidance in a memorandum from Director Andrei Iancu that addresses confusion about which indefiniteness standard applies in post-grant proceedings: the standard set forth in In re Packard, 751 F.3d 1307 (Fed. Cir. 2014) or in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). Specifically, the memorandum confirms that the standard in Nautilus is the correct approach for analyzing indefiniteness in America Invents Act (AIA) post-grant proceedings.

Federal Circuit Reverses Holding of Infringement Based on Faulty Claim Construction

On January 5, the United States Court of Appeals for the Federal Circuit (CAFC) reversed a decision of the U.S. District Court for the Southern District of New York rejecting the district court’s claim construction and holding that Hong Kong uCloudlink Network (uCloudlink) was entitled to summary judgment of non-infringement (SIMO Holdings Inc. v. Hong Kong uCloudlink Network). In particular, the CAFC concluded that the district court erred in not requiring the disputed claim to require two or more non-local calls databases and held that SIMO did not identify a triable issue on the question of whether the accused products lack a non-local calls database.

Federal Circuit Affirms PTAB Interference Decision Based on Claim Construction; Newman Dissents

On November 4, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), concluding that the PTAB did not err in its construction of a disputed claim limitation and affirming the PTAB’s judgment in favor of the University of Wyoming Research Corporation (Wyoming). Chevron U.S.A, Inc. v. University of Wyoming Research. Circuit Judge Newman wrote a separate dissenting opinion, arguing that the PTAB “erred at the threshold,” and there was no interference in fact.

Federal Circuit Affirms PTAB Finding that Immunex Antibody Patent is Obvious

The United States Court of Appeals for the Federal Circuit (CAFC) on Tuesday affirmed an invalidity decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) in Immunex Corporation v. Sanofi-Aventis U.S. LLC. Considering the intrinsic and extrinsic evidence, the CAFC agreed with the PTAB’s construction of the disputed claim term, “human antibodies,” and affirmed the holding that the patent in suit was invalid as obvious.

CAFC: Parties Joined in IPRs are Not Estopped from Raising New Invalidity Grounds in District Court

On September 24, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed-in-part and reversed-in-part the U.S. District Court for the Eastern District of Texas’s claim construction and remanded to the district court in Network-1 Technologies, Inc. v. Hewlett-Packard Company. In particular, the CAFC concluded that the district court erred in construing the claim term “main power source” and held that a party joined to an inter partes review (IPR) proceeding is not estopped from raising new invalidity grounds in district court, since the joinder provision does not allow parties to raise grounds not already instituted. The CAFC ultimately affirmed-in-part, reversed-in-part, vacated and remanded the district court’s judgment for a new trial on infringement.

Acer v. Intellisoft Petition Rebukes CAFC for Disrespecting SCOTUS Precedent, Ignoring District Court

Greenberg Traurig and The Rader Group – which is headed by retired Chief Judge of the U.S. Court of Appeals for the Federal Circuit, Randall Rader – have submitted a petition for certiorari to the U.S. Supreme Court on behalf of Acer America Corp. asking the Court to review the CAFC’s precedential opinion in Intellisoft v. Acer. On April 3, the CAFC held that the United States District Court for the Northern District of California (the district court) erred in refusing to remand a case to California state court where removal to a district court was improper under 28 U.S.C. § 1441 and §1454. Despite Acer’s contentions, the CAFC found that Intellisoft’s trade secret misappropriation claim did not “necessarily” raise patent law issues that would result in district court original jurisdiction.

Federal Circuit Vacates District Court Invalidity Judgment Based on Judicial Estoppel

On August 28, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the U.S. District Court for the District of Massachusetts’ claim construction in Egenera, Inc. v. Cisco Systems, Inc., but vacated the court’s invalidity judgment based on judicial estoppel and remanded for further proceedings. Egenera, Inc. (Egenera) owned U.S. Patent No. 7,231,430 (the ’430 patent), which was based on a provisional patent application filed in 2001 and was directed to a platform for automatically deploying a scalable and reconfigurable virtual network. In 2016, Egenera filed suit against Cisco in the district court for infringement of the ’430 patent. Cisco then filed an inter partes review (IPR) Petition with the United States Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB) challenging the validity of the asserted claims.

Federal Circuit Affirms District Court Claim Construction in Foundation Pile Patent Infringement Dispute

The United States Court of Appeal for the Federal Circuit recently upheld the Central District of California’s ruling of summary judgment that certain accused products of Foundation Constructors, Inc. and Foundation Pile, Inc. (Foundation) do not infringe certain claims of U.S. Patent Nos. 7,914,236 (the ’236 patent) and 9,284,708 (the ’708 patent) (collectively, the patents-in-suit) after plaintiffs-appellants Steve Neville, Substructure Support, Inc., and TDP Support, Inc. (collectively, Substructure) appealed the district court’s ruling, as based on an improper claim construction. See Neville v. Found. Constructors, Inc., No. 2020-1132, 2020 U.S. App. LEXIS 27321 (Fed. Cir. Aug. 27, 2020) (Before Lourie, O’Malley, and Chen, Circuit Judges) (Opinion for the Court, Chen, Circuit Judge).

Federal Circuit Remands District Court Decision for Erroneous Claim Construction

On August 27, the United States Court of Appeals for the Federal Circuit (CAFC) reversed and remanded a decision of the U.S. District Court for the District of Delaware in Baxalta Inc. v. Genentech, Inc. The CAFC reversed the district court’s claim construction of the terms “antibody” and “antibody fragment” in Baxalta’s patent claims and remanded for proceedings consistent with the correct constructions.

VoIP-Pal Implores Full CAFC to Review Whether a Rule 12 Motion Based on Section 101 Can Be Decided Before Claim Construction

Last week, VoIP-Pal.com, Inc. filed a combined petition for panel rehearing and rehearing en banc with the U.S. Court of Appeals for the Federal Circuit (CAFC) asking for review of a Rule 36 judgment in VoIP-Pal.Com, Inc. v. Twitter, Inc. That judgment affirmed a decision of the U.S. District Court for the Northern District of California that resolved a claim construction dispute in the context of a motion to dismiss under Section 101 as per Rule 12(b)(6) of the Federal Rules of Civil Procedure prior to claim construction. In the petition, VoIP-Pal asserted that the Rule 36 judgment conflicted with CAFC precedent and “the time has come for this court to reconsider whether a Rule 12 motion based on §101 should be decided before claim construction.”

CAFC Partially Reverses PTAB on Claim Construction Analysis, Says Prosecution History Matters

The Federal Circuit on Friday reversed the Patent Trial and Appeal Board’s decision holding certain claims of Personalized Media Communications, LLC’s (PMC’s) U.S. Patent No. 8,191,091 (the ’091 Patent) unpatentable on anticipation and obviousness grounds but affirmed the decision as to the remaining claims. The Court found that the Board erred in its claim construction of one of the claim terms at issue due to its dismissal of the prosecution history. The Board rejected PMC’s reliance on the prosecution history, stating “the prosecution history presents a murky picture as opposed to a clear waiver.” The Federal Circuit disagreed with this approach and found that the prosecution history statements supported PMC’s interpretation and construction of the phrase “encrypted digital information transmission.”