United States: Federal Circuit Patent Watch: Cancellation Of Claim In Reexamination Eliminates Patent Owner Standing In Appeal From IPR; Accused Device Must Be Able To Perform Claimed Functions When Activated And In Operation To Have "capability" Of Performing The Claimed Functions

Precedential Federal Circuit Opinions

1. BEST MEDICAL INTERNATIONAL, INC. v. ELEKTA INC. [OPINION] (2021-2099, 2021-2100, 8/29/22) (Hughes, Linn, and Stoll)

Stoll, J. Dismissing-in-part the appeal from Best Medical International Inc. (BMI) for lack of jurisdiction because there is no longer a case or controversy regarding the patentability of claim 1. BMI, in an ex parte reexamination running in parallel to inter partes reviews (IPRs), canceled claim 1 "without prejudice or disclaimer" after IPR institution but before a final written decision (FWD) in the IPR. Because claim 1 had not been finally cancelled at this point, the Court found that the Board did not err in addressing the patentability of claim 1 in its FWD. After the FWD, BMI filed a notice of appeal from the reexamination without challenging the rejection of claim 1, thereby finally cancelling claim 1. The Court rejected BMI's argument that the potential for collateral consequences from the FWD's unpatentability determination for claim 1 conferred standing upon BMI for the appeal.

2. INVT SPE LLC v. ITC [OPINION] (2020-1903, 8/31/22) (Newman, Taranto, and Chen)

Chen, J. Affirming noninfringement of computer-implemented claims drawn to a functional capability because of lack of evidence that the accused devices, when put into operation, will ever perform the particular claimed functions. Even though the claims recited computer functionality in "that performs"-type claim language, rather than "for performing"-type claim language, the Court found "very little significance" in the difference between these, and agreed with INVT that the computer-implemented claims are directed to capability. The Court further found that "[t]o determine whether an accused device is a device with the 'capability' of performing the recited functions, it must be able to perform those functions when it is activated and put into operation," and that the Court has "never suggested that reasonable capability can be established without any evidence or undisputed knowledge of an instance that the accused product performs the claimed function when placed in operation." Because the claims have specific requirements for the data signal received by the accused devices, and because INVT failed to provide any evidence regarding whether such a data signal is sent to the accused devices, the Court found INVT failed to establish infringement.

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