United States: Federal Circuit Patent Update - September 28, 2018

Precedential Opinions

  1. PARKERVISION, INC. v. QUALCOMM INCORPORATED [OPINION] (2017-2012, 2017-2013, 2017-2014, 2017-2074, 9/13/18) (O'Malley, Reyna, Taranto)

    O'Malley, J. Affirming Board decision in IPRs that apparatus claims had been proven to be unpatentable and that method claims had not. The prior art was capable of being operated in accordance with the claims but was also capable of operating in other ways. The Court found that sufficient to invalidate the apparatus, but not the method, claims. "The method claims present a different story, however. While [petitioner] was only required to identify a prior art reference that discloses an apparatus 'capable of' performing the recited functions to prove that the apparatus claims would have been obvious, more was required with respect to the method claims. Specifically, [petitioner] needed to present evidence and argument that a person of ordinary skill would have been motivated to operate [the prior art] in a manner that satisfied the [claim] limitation." The Court also addressed the difference between "configured" and "capable" claim limitations. "In other words, we found that, where an apparatus needed to be altered in order to be 'configured' as claimed and there was no evidence of such alteration, it does not infringe those claims... In contrast, where claim language recites 'capability, as opposed to actual operation,' an apparatus that is 'reasonably capable' of performing the claimed functions 'without significant alterations' can infringe those claims."
  2. NOBEL BIOCARE SERVICES AG v. INSTRADENT USA, INC. [OPINION] (2017-2256, 9/13/18) (Prost, Lourie, Chen)

    Lourie, J. Affirming Board decision in IPR that claims related to dental implants are invalid. After the IPR petition was filed, the International Trade Commission decided that a product catalog had not been proven to qualify as prior art, and the Court subsequently affirmed. In the IPR, petitioner presented additional evidence, not used in the International Trade Commission, showing that the catalog had been publicly disseminated and did qualify as prior art. In the IPR, the Board found that the catalog did qualify as prior art and that it invalidated the claims, and the Court affirmed. "We thus conclude that our prior affirmance of the ITC's judgment on a different factual record with a different burden of proof does not dictate the outcome of this appeal."
  3. E.I. DUPONT DE NEMOURS v. SYNVINA C.V. [OPINION] (2017-1977, 9/17/18) (Lourie, O'Malley, Chen)

    Lourie, J. Reversing Board decision in IPR of nonobviousness of claims related to process for producing a compound using specific conditions for a chemical reaction. In a case of first impression, the Court held that the same burden-shifting framework used in district court and PTO examinations for "overlapping range" cases applies to IPRs. "Thus, 'where there is a range disclosed in the prior art, and the claimed invention falls within that range, the burden of production falls upon the patentee to come forward with evidence' of teaching away, unexpected results or criticality, or other pertinent objective indicia indicating that the overlapping range would not have been obvious in light of that prior art." Petitioner established that "ranges disclosed in the prior art overlapped with those of [the claims]." That showing "shifted the burden of production to the patent owner to demonstrate teaching away, unexpected results, or some other evidence of nonobviousness." Because the patent owner failed to present such evidence, the Court found the claims obvious. Patent owner also unsuccessfully argued that the petitioner lacked standing to appeal because no infringement action had been filed.
  4. POWER INTEGRATIONS, INC. v. FAIRCHILD SEMICONDUCTOR [OPINION] (2016-2691, 2017-1875, 9/20/18) (Dyk, Clevenger, Chen)

    Dyk, J. In a modified opinion following petition for reheating, the Court vacated damages award and remanded because the evidence presented by plaintiff was insufficient to invoke the entire market value rule: "[W]hen the product contains multiple valuable features, it is not enough to merely show that the patented feature is viewed as essential, that a product would not be commercially viable without the patented feature, or that consumers would not purchase the product without the patented feature." Also affirming judgement of infringement of patents related to power supplies. The Court affirmed that the claim's requirement of a "fixed frequency" allowed for some variation: "A reasonable jury could have found that the accused products have a 'fixed' or 'non-varying' frequency despite slight variance due to operating conditions." Also, defendant waived a claim construction argument by not raising the issue before submission to the jury.
  5. HYATT v. PATO [OPINION] (2017-1722, 9/24/18) (Reyna, Wallach, Hughes)

    Hughes, J. Reversing dismissal for lack of subject matter description stating, "the exclusive jurisdiction of this court and the Eastern Virginia district court to review final PTAB decisions under § 141 and § 145 does not displace the district court's jurisdiction over APA challenges to the PTO's denial of a petition for rulemaking." Also affirming summary judgment on alternate grounds. Some of the plaintiff's challenges to PTO rulemaking were time-barred. The Court also upheld an examiner's ability to reopen prosecution after an appeal brief has been filed. "[T]he prospect that prosecution reopenings after the filing of an appeal brief might be used abusively cannot override the plain meaning of § 6(b)(1)."

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