Third Quarter 2024 Federal Circuit Law Update

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Baker Botts

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Since serving as a Federal Circuit clerk, Michael Hawes has monitored that court's precedential opinions and prepares a deeply outlined index by subject matter (invalidity, infringement, claim construction, etc.) of relevant legal points - in order to assist clients seeking to identify recent law relevant to a particular problem.
United States Intellectual Property

I.Patentability Requirement

A. Prior Art Invalidity

1. Anticipation (§ 102)

a. Exception for AIA Patents

35 U.S.C. 102(b)(2)(B) provides that "prior patent filings by another . . . "shall not be prior art" if "the subject matter disclosed had . . . been publicly disclosed by the inventor."" However, "the exception applies only to "disclosures" that result in the subject matter of the invention being "publicly disclosed."" Sanho Corp. v. Kaijet Tech. Int'l Ltd., 2023 1336, 7/31/24.

"Section 102(b)(2)(B) thus works to protect inventors who share their inventions with the public from later disclosures made by others. Animating this exception appears to be the idea that priority should be given to the patentees who make their invention available to the public before a patent application filing by another." Sanho Corp. v. Kaijet Tech. Int'l Ltd., 2023-1336, 7/31/24.

"Although there was no confidentiality or nondisclosure agreement, there was no teaching of the features of the invention to others beyond Sanho." "On these facts, we do not think it is a close question that the relevant subject matter of the invention, that is, the claimed circuitry allegedly described in Kuo, was "publicly disclosed" by the sale. The testimony establishes only that there was a private sale between two individuals arranged via private messages." Sanho Corp. v. Kaijet Tech. Int'l Ltd., 2023-1336, 7/31/24.

b. On Sale Bar

i. AIA Changes in Language

"[W]e hold that the enactment of the AIA did not constitute a foundational change in the theory of the statutory on-sale bar provision, 35 U.S.C. § 102(a)(1), in particular, to require that sales of products made using a secret process cannot trigger the on-sale bar." Celanese Int'l Corp. v. Int'l Trade Comm'n, 2022-1827, 8/12/24.

2. Obviousness (§ 103)

a. Differences Between the Prior Art and the Claims at Issue

i. Whether All Limitations Disclosed

"It is not sufficient to merely allege that the individual elements of the claimed invention were each known in the prior art." Natera, Inc. v. NeoGenomics Labs., Inc., 2024-1324, 7/12/24.

b. Motivation/Apparent Reason to Combine/Modify

i. Unclaimed Requirements

"Unclaimed factors relevant to the feasibility of creating a useful claimed invention can impact the motivation to combine analysis if a skilled artisan would reasonably consider them." Natera, Inc. v. NeoGenomics Labs., Inc., 2024-1324, 7/12/24.

B. Section 282

"[T]he presumption of validity afforded to patents under § 282 applies equally to all grounds of validity, including the eligibility of the claimed subject-matter. Accordingly, to the extent the district court believed that validity under § 101 is treated any differently than validity under §§ 102, 103, and 112 for purposes of the party presentation principle, that was error." Astellas Pharma Inc. v. Sandoz Inc., 2023-2032, 9/18/24.

c. Invalidity Based on § 112

1. Written Description (¶ 1)

a. Aspirational Claims

"Whether a claimed invention would "work," or whether it is operable, goes more directly to the utility requirement or the enablement requirement, not the written description requirement." Allergan USA, Inc. v. MSN Lab'ys Priv. Ltd., 2024-1061, 8/13/24.

b. Critical Aspect of Invention

Particular inert ingredient, a glidant, was not a critical aspect where the specification included "embodiments [that] plainly require only eluxadoline and some other ingredient. They do not require, however, any one of the inert ingredients, so long as at least one of those inert ingredients is present." "Accordingly, those embodiments contemplate a formulation that both includes and does not include a glidant. Stated otherwise, they contemplate a formulation in which a glidant is optional." Allergan USA, Inc. v. MSN Lab'ys Priv. Ltd., 2024-1061, 8/13/24.

c. Original Claims

"Originally filed claims have long been held to be part of the specification to be considered in any § 112 analysis." "It therefore cannot be, as the district court found, that the inventors did not have possession of a formulation in which a glidant was not required. They did have such possession as they disclosed it in an original claim, whether that claim remained or not." Allergan USA, Inc. v. MSN Lab'ys Priv. Ltd., 2024-1061, 8/13/24.

2. Indefiniteness (¶ 2)

a. Valid

i. Intrinsic evidence definition

Term added during prosecution can be definite based context of the amendment providing sufficient clarity to construe it. Neonode Smartphone LLC v. Samsung Elecs. Co., 2023 2304, 8/20/24 (nonprecedential) (citing Univ. of Mass. v. L'Oréal S.A., 36 F.4th 1374, 1382–83 (Fed. Cir. 2022)).

D. Double Patenting

1. Obviousness-Type

"[T]he only question before us is one of law. Namely, can a first-filed, first-issued, later expiring claim be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date? We hold that it cannot." Allergan USA, Inc. v. MSN Lab'ys Priv. Ltd., 2024-1061, 8/13/24.

E. Section 101

1. Each Claim Considered as a Whole v. Representative Claims

Once "[t]he patent challenger who identifies a claim as representative of a group of claims bears the initial burden to make a prima facie showing that the group of claims are "substantially similar and linked to the same" ineligible concept [], the burden shifts to the patent owner to present non-frivolous arguments as to why the eligibility of the identified representative claim cannot fairly be treated as decisive of the eligibility of all claims in the group." Mobile Acuity Ltd. v. Blippar Ltd., 2022-2216, 8/6/24.

"Because the eligibility findings with respect to representative claims only extend to claims for which they are representative, and correspondingly do not extend to claims they do not represent, it is important for courts to resolve any disputes over representativeness and clearly state which claims are, and are not, adequately represented by others." Mobile Acuity Ltd. v. Blippar Ltd., 2022-2216, 8/6/24 (emphasis added).

2. Abstract Idea Exclusion

a. Claimed Subject Matter

"Importantly, the district court construed "generate" in representative claim 11 to require recording multiple video streams "in parallel." Thus, the claims do not cover other ways that a camera processor might generate multiple video streams of varying quality for wireless transmission, such as streams created "in sequence."" Contour IP Holding LLC v. GoPro, Inc., 2022-1654, 9/9/24.

b. "Directed to": Advance over the Prior Art

"The specification further confirms our understanding of what the claims are directed to. According to the '026 patent, an increase in content offerings created the need to "enable home TV viewers to find something of interest for viewing among the vast numbers of new programs."" Broadband iTV v. Amazon.com, Inc., 2023-1107, 9/3/24.

c. Improving Computer Functionality

"The written description discloses improving POV camera technology through specific means of generating high- and low-quality video streams in parallel and transferring a low quality video stream to a remote device, and the claims reflect this improvement. The claims, therefore, recite patent eligible subject matter at Alice step one." Contour IP Holding LLC v. GoPro, Inc., 2022-1654, 9/9/24.

"[T]he fact that the claims involve a user interface does not automatically put the claims in the same category as Core Wireless and Data Engine." "Reordering content within a user guide is not a sufficient technological solution to a technological problem, but rather a results-oriented abstract idea." Broadband iTV v. Amazon.com, Inc., 2023-1107, 9/3/24.

d. Information Processing

"[R]eceiving metadata and organizing the display of video content based on that metadata is abstract." Broadband iTV v. Amazon.com, Inc., 2023-1107, 9/3/24.

Affirming invalidity of claims "directed to the abstract idea of receiving information, associating information with images, comparing the images, and presenting information based on that comparison." Mobile Acuity Ltd. v. Blippar Ltd., 2022-2216, 8/6/24.

e. Inventive Concept/Transformation Exception

"Yet we must take care to avoid allowing a conventionality analysis at step one to render step two superfluous (except where the claimed innovation at step two is nothing more than practice of the abstract idea of step one)." Broadband iTV v. Amazon.com, Inc., 2023 1107, 9/3/24.

"Automation of an abstract idea does not constitute an inventive concept." Broadband iTV v. Amazon.com, Inc., 2023-1107, 9/3/24.

Complaint allegations that "are nothing more than the implementation of an abstract idea with conventional computer operations . . . [do not] survive step two of the Alice test." Mobile Acuity Ltd. v. Blippar Ltd., 2022-2216, 8/6/24.

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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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