Posts Tagged: "Chief Judge Sharon Prost"

The Federal Circuit recently weighed in on an interference proceeding between the University of California (“UC”) and the Broad Institute over the use of CRISPR-Cas9 technology. The Court affirmed a Patent Trial and Appeal Board (“Board”) decision finding there was no interference-in-fact between UC’s patent application and the claims of twelve patents and one application owned by Institute… Considering the evidence of simultaneous invention, along with evidence regarding the state of the art, inventor statements, and application of similar technologies, the Court concluded the Board’s finding was supported by substantial evidence.

In claim construction analyses, the plain and ordinary meaning of a claim term will not be narrowed by statements in the prosecution history, unless those statements clearly and explicitly evidence the patentee’s intent to depart from the full scope of the claim. If a dependent claim includes the purportedly disclaimed subject matter and was added at the time of the purportedly disavowing statements, a finding of disavowal is unlikely. Furthermore, a means-plus-function term should clearly and objectively define the function of the limitation; if the function is a subjective term of degree, a finding that the term is indefinite is likely.

On Tuesday, September 4th, the Court of Appeals for the Federal Circuit issued a precedential decision in Intellectual Ventures I LLC v. T-Mobile USA, Inc., et. al., vacating and remanding a grant of summary judgment entered by the district court finding the defendants in the case didn’t infringe a patent asserted by Intellectual Ventures. The Federal Circuit panel of Chief Judge Sharon Prost and Circuit Judges Kimberly Moore and Jimmie Reyna found that the district court had erred in its claim construction leading up to the grant of summary judgment in the case.

One might naturally expect that, if a rejection under § 101 appealed from the PTAB failed to address all the claim limitations and had zero supporting evidence to determine whether something was abstract or well-understood, routine and conventional, the case would be a slam-dunk at the Federal Circuit.  After all, according to Supreme Court and Federal Circuit precedent, the Federal Circuit would be “powerless to affirm the administrative action by substituting what it considers to be a more adequate or proper basis.” Unfortunately though, nothing could be farther from the truth as is demonstrated by the Federal Circuit’s recent decision of In re Villena, Appeal No. 2017-2069 (August 29, 2018) where, as is proved by the joint appendix, the examiner failed to address each and every claim limitation separately, to address the claim limitations as a whole, ordered combination, and to provide any evidence whatsoever to support his factual assertions.

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.  

On Friday, August 3rd, the Court of Appeals for the Federal Circuit issued a precedential decision in JTEKT Corporation v. GKN Automotive, which dismissed an appeal stemming from a trial conducted at the Patent Trial and Appeal Board (PTAB) where two of seven challenged claims were upheld as not unpatentable. The Federal Circuit panel of Chief Judge Sharon Prost and Circuit Judges Timothy Dyk and Kathleen O’Malley found that appellant JTEKT lacked the standing required to appeal the case because it couldn’t prove an injury-in-fact required for standing.

Trustees of Boston University (“BU”) sued Everlight Electronics Co., Ltd., and others (collectively, “Everlight”) for infringement of U.S. Patent No. 5,686,738 (the “738 Patent”). The Federal Circuit reversed the district court ruling that Everlight infringed the ‘738 Patent and failed to prove the patent was invalid, finding that the ‘738 Patent was invalid for lack of enablement… BU argued that the ‘738 Patent did not have to enable growing a monocrystalline layer directly on an amorphous layer so long as the patent enabled the five other permutations in the specification. The Court disagreed, noting that “the specification must enable the full scope of the claimed invention.” While the specification does not have to “expressly spell out every possible iteration of every claim,” it must provide at least a “basic enabling disclosure” for the claimed invention.

In Zup v. Nash Manufacturing, ZUP filed suit, alleging contributory infringement and induced infringement of the patent-at-issue, trade secret misappropriation under Virginia law, and breach of contract.  Nash counterclaimed, seeking declaratory judgment as to non-infringement and invalidity… Prior art references aiming to overcome problems similar to those addressed by a patent can support a motivation to combine invalidating references, and for evidence of a long-felt but unresolved need to be considered, the need must be solved by an invention that is more than minimally different from the prior art… Judge Newman dissented, finding that the majority applied an incorrect analysis of the obviousness factors. In her view, the prior art provides no suggestion to make the specific modifications made by the patent-at-issue, and the only source of those modifications is judicial hindsight.

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.

“In sum, Defendants showed that epitaxially growing a monocrystalline layer directly on an amorphous layer would have required undue experimentation—indeed, that it is impossible,” the Federal Circuit found. The appellate court also found that Boston University created its own enablement problem by seeking a construction for “a non-single crystalline buffer layer” which included a purely amorphous layer. Along with reversing the district court’s denial of JMOL, the Federal Circuit dismissed-as-moot Boston University’s cross-appeal of the district court’s denial of attorney’s fees and enhanced damages.

On Monday, July 16th, the Court of Appeals for the Federal Circuit issued a precedential decision in Blackbird Tech v. ELB Electronics, which vacated an earlier judgment of non-infringement of a patent asserted by Blackbird in the District of Delaware. The Federal Circuit majority panel of Chief Judge Sharon Prost and Circuit Judge Kimberly Moore determined that the district court had erred at construing the claim term “attachment surface” in finding non-infringement of the asserted claims. Circuit Judge Jimmie Reyna dissented in this case.

The Federal Circuit found that substantial evidence supports the Board’s conclusion that a person of ordinary skill in the art would have been motivated to combine the references… Regarding Sirona’s contingent motion to amend, the Board’s final written opinion, which issued prior to the Court’s en banc Aqua Products decision, improperly placed the burden on Sirona to demonstrate that the proposed substitute claims were patentable. Accordingly, the Federal Circuti vacated the Board’s denial of the motion and remanded for reconsideration in light of Aqua Products.

Ericsson petitioned for inter partes review of the ’408 patent, and the PTAB upheld its validity. Without separately analyzing the challenged dependent claims, the PTAB held that claim 1 was not anticipated or obvious. On appeal, the Federal Circuit reversed with respect to claim 1 and vacated and remanded as to the remaining claims. Judge Wallach dissented, saying he thought the majority improperly substituted its own factual findings for those of the PTAB.

In Vanda, Chief Judge Prost, one of the judges on the CellzDirect panel, dissented from the majority’s decision that found claims patent eligible for not being directed to a judicial exception in step one of the Mayo/Alice test. What differences between the claims in Vanda and those in CellzDirect led Judge Prost to dissent? Can these differences shed further light on the characteristics necessary for a claim to be found not directed to a patent-ineligible concept in step one?

In Praxair Distribution v. Mallinckrodt Hospital Products, Praxair petitioned for inter partes review of claims 1-19 of the ’112 patent, which the Board instituted. The Board held that claims 1-8 and 10-19 would have been obvious over four prior art references. However, claim 9 survived. Praxair appealed from the Board’s decision regarding claim 9, and Mallinckrodt cross-appealed regarding claims 1-8 and 10-11. The Federal Circuit affirmed the Board’s decision holding claims 1-8 and 10 unpatentable as obvious. Judge Newman concurred in judgment of unpatentability of claims 1-11, but disagreed with the Court’s view of the “printed matter doctrine” and its application to “information” and “mental steps.”