Recent Case Highlights

Below are short summaries of decisions from January 1 – June 30, 2019, which are referenced throughout Patent Defenses:

PRIOR ART MAY BE SECRET, EVEN FOR FITF PATENTS: Some forms of prior art may be secret. That remains true for on-sale prior art to first-inventor-to-file (FITF) patents.

  • AIA’s Catchall Phrase “Or Otherwise Available To The Public” Did Not Change The “On Sale” Bar (FITF): “The catchall phrase ‘or other­wise available to the public’ … [did not] alter[] the meaning of the ‘on sale’ bar.” Helsinn II (U.S. 01/22/2019).
  • On Sale Activity Need Not Publicly Disclose Claimed Invention (FITF also): “A commercial sale to a third party who is required to keep the invention confidential may place the invention ‘on sale’” under the AIA as under the pre-AIA statute. “[Our] cases focus on whether the invention had been sold, not whether the details of the invention had been made available to the public or whether the sale itself had been publicly dis­closed.” Helsinn II (U.S. 01/22/2019).
  • Confidential, Non-Enabling Disclosures To Applicants (“Derived Knowledge”) Are Prior Art Under Sec. 103: Sec. 102(f) “‘does not pertain only to public knowledge, but also applies to private communications between the inventor and another which may never become public.’” Endo Pharma. (Fed. Cir. 05/03/19) (2-1) (aff’g judgment of non-obviousness; confidential communication from FDA to employer of patent applicants, mandating that manufacturers reduce certain impurities below a certain level, without describing how to do this, constitutes prior art for obviousness analysis).

CONSIDER JEPSON CLAIMS: Often when a claim-drafting form, such as Jepson (“wherein the improvement comprises”) or “means for,” goes out of style, it is forgotten or ridiculed—even when changes in substantive patent law would merit wider use of that form. But the courts sometimes remind practitioners of the value of the old forms.

  • Jepson Claim Preamble Has Patentable Weight: “Where an applicant chose not to use the well-established Jepson transitional phrase, and the preamble is wholly conventional while only the body of the claim identifies an improvement, that choice is a powerful reason to deny the preamble the limiting effect it would have had if the ‘improvement’ transitional phrase had been used.” Arctic Cat (Fed. Cir. 03/26/19).
    • Practice Tip: Consider drafting preamble both in Jepson format (giving it patentable weight for Sec. 102, 103, and 101 purposes), and also as a claim environment, not a claim element, so that it need not be performed by the accused direct infringer. For example, a diagnostics claim might recite treatment steps in Jepson format and as a claim environment, allowing for Sec. 101 eligibility and direct infringement by a diagnostic entity, perhaps. For relevant case law digested in Patent Defenses, search Bing, Google or the search feature in Patent Defenses for “Claim Language May Limit Claimed Environment Not Claimed Subject Matter.”

SEC. 101 PENDULUM SWINGING BACK: As Congress considers radical reform to Sec. 101 (most recent IP Subcommittee hearing summarized here), several Federal Circuit judges are pushing the pendulum back in favor of patent owners, on both substantive and procedural grounds.

  • CellSpin (Fed. Cir. 06/26/19) (rev’g R. 12(b)(6) dismissal; complaint alleges that “it was unconventional to separate the steps of capturing and publishing data so that each step would be performed by a different device linked via a wireless, paired connection,” and unconventional to have a “two-step, two-device structure requiring a connection before data is transmitted,” and that this arrangement had benefits over and was inventive compared to prior art; hence “they recite a specific, plausibly inventive way of arranging devices and using protocols rather than the general idea of capturing, transferring, and publishing data.”);
  • Uniloc (Fed. Cir. 05/24/19) (non-precedential) (rev’g dismissal of complaint on step one and in alternative step two: “the positioning of these components on the application server together with the application launcher on the client computer allows customization by both the administrator and the user in such a way as the installation can proceed on-demand with both sets of preferences. There has been no showing or determination that such a network architecture was conventional.”);
  • Endo Pharma. (Fed. Cir. 03/28/19) (rev’g R. 12(b)(6) dismissal; “claims are directed to a patent-eligible method of using oxymorphone or a pharmaceutically acceptable salt thereof to treat pain in a renally impaired patient,” based in part on Spec. describing invention as method of treating pain.);
  • SRI Int’l (Fed. Cir. 03/20/19) (2-1) (aff’g Summ. J. of patent eligibility; “claims are directed to using a specific technique—using a plurality of network monitors that each analyze specific types of data on the network and integrating reports from the monitors—to solve a technological problem arising in computer networks: identifying hackers or potential intruders into the network.”);
  • Natural Alternatives (Fed. Cir. 03/15/19) (rev’g R. 12(c) judgment of invalidity; product claims are “directed to specific treatment formulations that incorporate natural products, but they have different characteristics and can be used in a manner that beta-alanine as it appears in nature cannot.” Also, absent clear statement in Spec., complaint or other material properly considered on motion on the pleadings, whether certain limitation is “well-understood, routine, and conventional” cannot be decided on a motion for judgment on the pleadings.)

SEC. 112(F): WHEN IS CORRESPONDING “STRUCTURE … OR ACTS” AN ALGORITHM?: In “software” claims the corresponding “structure … or acts” is an algorithm, while in “hardware” claims it may be a circuit. What if the specification discloses both software and hardware embodiments?

  • Sony (Fed. Cir. 05/22/19) (vacating PTAB obviousness decision and rev’g construction that omitted algorithm; “reproducing means for reproducing the audio data …” is construed as computer implemented despite a hardware (circuit) embodiment also being disclosed, because Spec. refers to “the processing” of the “controller” part of the reproduction device as shown in a flowchart, and does not “describe or refer to the circuitry of the controller that would be required for a hardware controller to perform the claimed function”).

LESSON FOR NEW CLAIM DRAFTERS: 179° IS NOT 180°: Does a structure that can rotate 179 degrees infringe a claim that was amended to recite that the structure can rotate 180 degrees? Of course not.

  • Cobalt Boats (Fed. Cir. 05/31/19) (non-precedential) (No literal infringement where the accused structure’s maximum rotation is between 172 and 179 degrees but claim recites rotation of at least “180 degrees.” Rev’g equivalents infringement; “when claims are amended to include a specific numeric boundary, we have held that the patentee cannot later recapture what is beyond that boundary through the doctrine of equivalents”).

SHOWING UNEXPECTED RESULTS MIGHT SHOW NON-ENABLED: What’s better than winning a patent lawsuit? Winning based on the other side’s persuasive arguments, of course.

  • Unexpected Results Supporting Non-Obviousness May Also Help Show Lack Of Written Description Support: “In light of the fact that the specification provides nothing more than the mere claim that uncoated PPI might work, even though persons of ordinary skill in the art would not have thought it would work, the specification is fatally flawed. It does not demonstrate that the inventor possessed more than a mere wish or hope that uncoated PPI would work, and thus it does not demonstrate that he actually invented what he claimed: an amount of uncoated PPI that is effective to raise the gastric pH to at least 3.5.” Nuvo Pharma. (Fed. Cir. 05/15/19) (rev’g trial court judgment of written description support; although experimental data generally not required, where claims require a level of therapeutic effectiveness and patent owner showed skilled artisan would not have expected claimed results from claimed subject matter, and Spec. lacked efficacy data or anything else teaching otherwise, the claims lack written description support).

“PLAIN MEANING” OVERUSED BY TRIAL COURTS: Many patent owners in litigation try to minimize construction of the claims they assert, by asking the Judge to instruct the jury that the term has its “plain meaning.” This option certainly is tempting to a district court. But, the Federal Circuit continues to reprimand district courts for being too ready to punt claim construction to the jury with a “plain meaning” instruction of disputed claim terms.

  • Trial Court Must Resolve Construction Dispute For The Jury: Omega Patents (Fed. Cir. 04/08/19) (granting new trial because jury verdict of infringement may have been based on incorrect understanding of claim; faulting trial court for refusing to construe claim term on basis that it was defined in specification, and telling jury to give non-construed terms their plain and ordinary meaning; “the court is not absolved of this duty to construe the actually disputed terms just because the specification of the patent defines the term.”); Cobalt Boats (Fed. Cir. 05/31/19) (non-precedential) (rev’g jury verdict of infringement; “Instead of resolving this dispute as to scope, as it was required to do under O2 Micro, the district court erroneously [instructed the jury to give the term plain meaning and] determined that whether the term ‘has to be interpreted strictly to be limited to exactly 180 degrees’ was an issue that would ‘have to be resolved by the finder of fact.’”)

BEFORE GIVING UP, CONSIDER ISSUE PRECLUSION: Sometimes there is not enough at stake in a proceeding to appeal a loss. But before giving up, consider issue preclusion to be sure you understand the risks posed for other proceedings.

  • Papst Licensing (Fed. Cir. 05/23/19) (applying issue preclusion in PTAB appeal based on PTAB final decision (whose appeal was voluntarily dismissed) of obviousness of patents with overlapping Spec., where patent owner made no showing of factors justifying exception to application of standard doctrine of applicability of issue preclusion, and same claim-construction and reference-teaching issues were resolved in and essential to earlier decision);
  • Power Integrations (Fed. Cir. 06/13/19) (rejecting, under the lack-of-incentive-to-litigate exception, argument that patent owner is precluded from arguing IPR was time barred for failure to appeal PTAB decision of no time bar in another IPR proceeding initiated by same petitioner on a different patent, primarily because large damages award exists on this patent but not on the other patent).

MUST READ FOR PATENT LITIGATORS: SUPREME COURT DECISIONS OUTSIDE PATENT LAW: One way for patent attorneys to think outside their normal patent rectangular cuboid, is to read Supreme Court decisions and consider how they might be extended to patent law. Here are three examples from this term.

  • The Void-For-Vagueness Doctrine: Lessons For Patent Claim Construction And Correction?: Courts may not rewrite patent claims for some of the same reasons they cannot rewrite statutes. The void-for-vagueness doctrine prohibits courts from rewriting the law, as that would violate separation of powers. Davis (U.S. 06/24/2019) (“In our constitutional order, a vague law is no law at all. Only the people’s elected representatives in Congress have the power to write new federal criminal laws. And when Congress exercises that power, it has to write statutes that give ordinary people fair warning about what the law demands of them. Vague laws transgress both of those constitutional requirements. They hand off the legisla­ture’s responsibility for defining criminal behavior to unelected prosecutors and judges, and they leave people with no sure way to know what consequences will attach to their conduct. When Congress passes a vague law, the role of courts under our Constitution is not to fashion a new, clearer law to take its place, but to treat the law as a nullity and invite Congress to try again.”)
  • Auer / Seminole Rock Analysis Of Ambiguous Federal Regulations: Lessons For Patent Claim Indefiniteness?: Nautilus can be understood to prohibit, among other things, claims that, when interpreted under governing claim-construction rules, are ambiguous to the skilled artisan. This has some parallels with, but likely is more stringent than, the first step of an Auer / Seminole Rock Kisor (U.S. 06/26/2019) (first step of Auer / Seminole Rock deference analysis requires that the regulation being interpreted by the agency be “genuinely ambiguous,” i.e., there is more than “one reasonable construction of a regulation” even after the court “exhaust[s] all the ‘traditional tools’ of construction,” because “hard interpre­tive conundrums, even relating to complex rules, can often be solved”).
  • No Right To Jury Trial On Whether Federal Regulation Preempted State Law: Lessons For Patent Claim Indefiniteness?: In arguing that there is no right to a jury trial on patent claim indefiniteness, one might cite Merck (U.S. 05/20/2019) (whether FDA disapproval of a warning of a different drug risk was clearly contrary to manufacturer seeking a warning for present drug risk, such as to preempt any state law cause of action for failure to so warn, is a question for a court not a jury, in part because “The question often involves the use of legal skills to determine whether agency disapproval fits facts that are not in dispute. Moreover, judges, rather than lay juries, are better equipped to evaluate the nature and scope of an agency’s determination. Judges are experienced in ‘[t]he construction of written instruments,’ such as those normally produced by a federal agency to memorialize its considered judgments. [Markman]. And judges are better suited than are juries to understand and to inter­pret agency decisions in light of the governing statutory and regulatory context. To understand the question as a legal question for judges makes sense given the fact that judges are normally familiar with principles of administrative law. Doing so should produce greater uniformity among courts; and greater uniformity is nor­mally a virtue when a question requires a determination concerning the scope and effect of federal agency action.” “Any ‘subsidiary factual disputes’ [] are part and parcel of the broader legal question.”)

Below are short summaries of decisions from June 1 – December 31, 2018, which are referenced throughout Patent Defenses:

  1. Patent Owner Hoisted on Own Claim-Construction Petard (No Full-Scope Enablement): The Federal Circuit has developed a robust requirement that the specification enable (and describe) the full scope of the claim. This defense often is won in Markman proceedings. In July, a panel overturned a $13 Million jury verdict because the specification did not enable one of six permutations within the scope of the construction successfully sought by the patent owner. Trustees of Boston Univ. (Fed. Cir. 07/25/18) (“Having obtained a claim construction that included a purely amorphous layer within the scope of the claim, BU then needed to successfully defend against an enablement challenge as to the claim’s full scope.”) See Patent Defenses, Enablement (Sec. 112(1/a)).
  2. Claim Reciting Location and Function but Not Structure of “Cheque Standby Unit” Triggers Sec. 112(6/f) Construction Under Williamson, and Is Indefinite: Applying Williamson (Fed. Cir. 06/16/15) (en banc), the Federal Circuit continues to invalidate patent claims for indefiniteness. Diebold Nixdorf (Fed. Cir. 08/15/18) (reversing ITC; “cheque standby unit” is a means-plus-function term lacking structural support in the Spec. and thus is indefinite. “[C]laims describe the term ‘cheque standby unit’ solely in relation to its function and location in the apparatus.” Spec. describes no specific structure; figure depicts unit as a vertical line; patent owner’s expert “offered purely functional definitions” and in effect testified it meant “any structure capable of performing the claimed function”; and there was no evidence that term “was reasonably well understood by persons of ordinary skill in the art to refer to a structure or class of structures.”) See Patent Defenses, Section 112(6/f) Claim Language.
  3. “Ordinary Meaning” of Claim Term Is Meaning on Effective Filing Date: Under Phillips (Fed. Cir. 07/12/05) (en banc), “the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Patent drafters need to remember this “static meaning” point when reciting in a claim an industry standard or protocol. Advanced Media (Fed. Cir. 09/17/18) (non-precedential) (affirming summary judgment of non-infringement based on affirmed construction limiting “‘ethernet packet switching protocol’ to mean ‘a packet switching protocol defined by the IEEE 802.3 and draft IEEE 802.11 standards as of the filing date of the Patent.’”). See Patent Defenses, How Construed?
  4. Claim Language with No “Manipulative Difference” in a Process Claim Has No Patentable Weight: Language outside claim preambles may also lack “patentable weight” such that it cannot be used to distinguish prior art. “Claim language without any bearing on the claimed methods should be deemed non-limiting when it does not result in ‘a manipulative difference in the steps of the claim.’” Teva Pharma. (Fed. Cir. 10/12/18) (affirming that emphasized claim language cannot distinguish over prior art: “‘[a] method . . . comprising administering to the human patient a therapeutically effective dosage regimen . . . , the regimen being sufficient to reduce the frequency of relapses in the patient.’”) See Patent Defenses, No Patentable Weight; Not A Claim Limitation.
  5. Part-Time Performance of Claimed Function (Capability) Sufficient to Anticipate Apparatus Claim Unless Claim Requires Different Physical Configuration (Structure): “A prior art reference may anticipate or render obvious an apparatus claim—depending on the claim language—if the reference discloses an apparatus that is reasonably capable of operating so as to meet the claim limitations, even if it does not meet the claim limitations in all modes of operation. … Our cases distinguish between claims with language that recites capability, and those that recite configuration.” ParkerVision (Fed. Cir. 09/13/18) (affirming PTAB obviousness decision as to apparatus claims but not method claims. Because prior art device “necessarily will” perform recited function “under some, albeit not all, conditions,” the petitioner “was neither required to identify the conditions under which” the prior art device would do so “nor obligated to explain why a person of skill in the art would have selected such operating conditions.” [But for method claims, petitioner needed but failed to show motivation to operate prior art device in manner that satisfied the corresponding method step.]) See Patent Defenses; Anticipation (Sec. 102).
  6. Deceptive Declaration That Failure to Pay Maintenance Fee Was Unintentional Meets “But For” Test: “Statements critical to the ‘survival of the patent’—even though they do not, strictly speaking, bear on patentability— also can be material within the meaning of Therasense.” In re Rembrandt Tech. (Fed. Cir. 08/15/18) (affirming inequitable conduct finding based on prior patent owner filing false declaration that failure to pay maintenance fees was unintentional. Material because “the PTO would not have revived the patents if it had known that Paradyne consciously allowed them to expire.”) See Patent Defenses, Therasense.
  7. Abstractness Exclusion Still Being Decided on the Pleadings: Notwithstanding Berkheimer (Fed. Cir. 02/08/18), the Federal Circuit continues to affirm invalidity of patent claims under Alice on the pleadings:

    “Abstract Idea” To Which Claims Directed


    Glasswall (Fed. Cir. 12/20/18) (non-precedential) (Linn, J.) “the filtering of electronic files and data by regenerating an electronic file without non-conforming data” aff’g R. 12(b)(6)

    18 claims

    Data Engine (Fed. Cir. 10/09/18) (Stoll, J.) “collecting spreadsheet data, recognizing changes to spreadsheet data, and storing information about the changes”

    “identifying and storing electronic spreadsheet pages”

    aff’g R. 12(c)

    8 claims

    [but rev’g on most claims]

    SAP Am. (Fed. Cir. 08/02/18) (Tarano, J.) “selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis” aff’g R. 12(c)

    31 claims

    Interval Licensing (Fed. Cir. 07/20/18) (Chen, J.) “the presentation of two sets of information, in a nonoverlapping way, on a display screen” aff’g R. 12(c)

    4 claims

    Burnett (Fed. Cir. 07/16/18) (per curiam) (non-precendential) “a mathematical methodology to convert geospatial coordinates into a single string of natural numbers” aff’g R. 12(b)(6)

    2 claims

    • Entire Market Value Rule Limited to Where Patented Feature Is Sole Driver of Demand or Accounts for Almost Entire Value of Patented and Accused Products: The “entire market value rule” is a narrow exception to the general rule that a “reasonable royalty” be based not on the entire accused product, but instead on the “smallest salable patent-practicing unit.” The Federal Circuit added another decision to a series of decisions applying this exception sparingly. Power Integrations (Fed. Cir. 09/20/18) (vacating reasonable royalty jury damages award of $139.8 Million because improperly based on “entire market value rule” where patent owner did not show absence of non-accused valuable features in its own (smallest salable unit) power controller products and infringing products. “If the product has other valuable features that also contribute to driving consumer demand—patented or unpatented—then the damages for patent infringement must be apportioned to reflect only the value of the patented feature.” “In some circumstances, for example, where the other features are simply generic and/or conventional and hence of little distinguishing character, such as the color of a particular product, it may be appropriate to use the entire value of the product because the patented feature accounts for almost all of the value of the product as a whole.”) See Patent Defenses, Reasonable Royalty.
    • Some Panels Allow Apportionment to Be Achieved Indirectly: Whether a reasonable royalty is based on the entire product or a smallest salable unit, the patent owner must apportion the damage or value between the patented and unpatented features. But, “the objective of apportionment can be achieved in different ways, one of which is through the determination of an appropriate royalty by application of the so-called Georgia-Pacific factors…. [Two other licenses and a prior jury verdict for same technology setting the same royalty rate] provide[] strong support for Sprint’s argument that the damages award in this case reflected the incremental value of the inventions and thus satisfied the requirement of apportionment.” Sprint (Fed. Cir. 11/30/18) (non-precedential) (2-1) (affirming jury verdict of $140 Million). See Patent Defenses, Limitations on Damages.

Below are short summaries of decisions from January 1 – September 30, 2018, which are referenced throughout Patent Defenses:

We summarize below substantive patent law developments in the past nine months—on the AIA’s “on sale” bar, damages, Sec. 112(f), the patentable weight doctrine, written description, issue preclusion, fee awards, and, of course, Sec. 101—all digested in our free, mobile-friendly legal research tool Patent Defenses which we update approximately weekly.

AIA’s “On Sale” Prior Art

The Supreme Court granted certiorari to interpret the AIA’s revised “on sale” prior art provision for first-to-file patents. Sec. 102(a) (“A person shall be entitled to a patent unless—(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” (emphasis added).) The U.S. Amicus Brief supports the petitioner, arguing that the AIA’s on sale bar is “limited to sales and offers that make an invention ‘available to the public.’” A ruling for Petitioner may mean that any invention that can be commercialized without disclosing the invention to the public, can be protected as a trade secret for decades or centuries (think Coca-Cola) and then patented.

  • Helsinn (Fed. Cir. 05/01/17) (holding that the “otherwise available to the public” phrase did not limit invalidating sales to those disclosing details of the invention to the public), cert. granted (U.S. 06/25/2018) (Question Presented: “Whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.”)


The Supreme Court approved recovering foreign lost profits from domestic infringements, where infringement is based on the export of component(s) under § 271(f)(2). Despite expressly not addressing when proximate cause prohibits such damages, the Court approved the jury’s damages award, which was based in part on the non-infringing actions of foreign customers of the defendant. On remand, the Federal Circuit now must decide whether it can, and should, apply proximate cause to bar damages in this or other actions posing similar facts.

  • WesternGeco III (U.S. 06/22/2018) (7-2) (the jury’s damages award did not violate the presumption against extraterritoriality because the “conduct relevant to the statutory focus in this case is domestic” – “the infringement” is the focus of Sec. 284, domestic export of components is the focus of Sec. 271(f)(2), damage is not a substantive element of the cause of action, and the “over­seas events were merely incidental to the infringement.” But, “in reaching this holding, we do not address the extent to which other doctrines, such as proximate cause, could limit or preclude damages in particular cases.”)

Claim Construction – Sec. 112(f)

Someday, the Supreme Court may rule that no presumptions apply when determining whether patent claim language triggers Sec. 112(f) construction. While Williamson (Fed. Cir. 06/16/15) (en banc) weakened those presumptions, it did not eliminate them. In June, the Federal Circuit issued its first post-Williamson decision reversing a trial’s court holding that non-“means” claim language triggered Sec. 112(f), and in August it reversed the ITC for failing to construe a non-“means” element as triggering Sec. 112(f).

  • Zeroclick (Fed. Cir. 06/01/18) (rev’g holding that this claim language triggers Sec. 112(6/f): “program that can operate the movement of the pointer” and “user interface code being configured to detect one or more locations touched by a movement of the user’s finger on the screen without requiring the exertion of pressure and determine therefrom a selected operation,” in part because the challenger provided no intrinsic or extrinsic evidence to overcome presumption arising from absence of “means.”)
  • Diebold Nixdorf (Fed. Cir. 08/15/18) (rev’g ITC; term “cheque standby unit” is a means-plus-function term and, lacking structural support, indefinite. “Claims describe the term ‘cheque standby unit’ solely in relation to its function and location in the apparatus;” Spec. describes no specific structure; figure depicts unit as a vertical line; patent owner’s expert “offered purely functional definitions” and in effect testified it meant “any structure capable of performing the claimed function;” and there was no evidence “in the form of dictionary definitions or otherwise—that ‘cheque standby unit’ was reasonably well understood by persons of ordinary skill in the art to refer to a structure or class of structures.”)

Claim Construction – No Patentable Weight

Several panels addressed the doctrine of “no patentable weight” (i.e., claim language that cannot be used to distinguish prior art), reminding litigants of the importance this doctrine for all portions of the claim (not just the preamble).

  • Non-Functional Information Content Has No Patentable Weight Because It Is Patent Ineligible: Claim limitations reciting “the content of information” “are not entitled to patentable weight unless the printed matter is functionally related to the substrate on which the printed matter is applied” “because such information is not patent eligible subject matter under 35 U.S.C. § 101.” Praxair (Fed. Cir. 05/16/18) (2-1) (limitation about providing information to doctor along with nitric oxide gas cylinders has no patentable weight, except where claim also recites discontinuing certain treatment “based on” the information).
  • In re Nordt (Fed. Cir. 02/08/18) (vacating PTAB construction of “injection molded” as process limitation with no patentable weight: “words of limitation that can connote with equal force a structural characteristic of the product or a process of manufacture are commonly and by default interpreted in their structural sense, unless the patentee has demonstrated otherwise”).
  • In re Theresa (Fed. Cir. 01/17/18) (non-precedential) (aff’g PTAB obviousness rejection; where claim recites symbols printed on labels affixed to memory devices, the symbols have “no patentable weight” because they “bear no functional or structural relationship to the labels on which they are printed and thus cannot form a patentable distinction with the prior art references”).

Section 112(a) Written Description

Patent claims often are not entitled to be backdated to their asserted priority application for lack of written-description support, rendering them invalid over intervening prior art. A panel invalidated claims on solar-panel mounting assemblies on this basis. (Disclosure: Klarquist represented the defendant).

  • D Three (Fed. Cir. 05/21/18) (aff’g Summ. J. that two sets of genus claims were unsupported: (1) where priority app.’s only disclosure of a washerless assembly “consistently has one type of attachment bracket,” and did not disclose that bracket as an “optional feature,” and “in no way contemplates the use of other types of attachment brackets in a washerless assembly,” that disclosure did not support claims more broadly encompassing washerless assembly with a “genus of attachment brackets” not limited to the disclosed bracket; (2) where priority app.’s only washer embodiments placed washer only above the flashing, claims reciting washer but not requiring that location were not supported.)

Section 112(a) Full-Scope Enablement

Another patent owner was hoist upon its own claim-construction petard because the patent’s disclosure did not enable the full-scope of the claims construed per the patent owner’s claim-construction position:

  • Trustees of Boston Univ. (Fed. Cir. 07/25/18) (rev’g denial of JMOL after jury verdict rejecting enablement defense; no enablement as a matter of law; claim construction sought by patent owner created six permutations of the relationship between two layers in a semiconductor, but Spec. did not enable one permutation that experts agreed was physically impossible using type of methods disclosed in Spec. (“a monocrystalline growth layer formed directly on an amorphous buffer layer”). “Having obtained a claim construction that included a purely amorphous layer within the scope of the claim, BU then needed to successfully defend against an enablement challenge as to the claim’s full scope.”)

PTAB Decisions Creating Issue Preclusion

Panels applied issue preclusion based on PTAB unpatentability determinations affirmed by the Federal Circuit. This issue will have even greater importance now that the PTAB will apply (effective with petitions filed November 13) the Phillips district-court claim-construction standard, making many if not most PTAB claim constructions binding in trial courts under either issue preclusion or judicial estoppel.

  • Fed. Cir. Affirming PTAB Unpatentability Decision Precludes District Court Action Also On Appeal: XY (Fed. Cir. 05/23/18) (2-1) (sua sponte applying issue preclusion on appeal of district court “not invalid” judgment based on affirmance of PTAB unpatentability decision); and
  • Affirmed PTAB Unpatentability Decision Has Issue Preclusion Effect In Other PTAB Proceedings: A PTAB final written decision in first IPR finding claims unpatentable, affirmed by the Fed. Cir. while second IPR was on appeal, has issue preclusive effect in second PTAB IPR, even if different prior art is asserted. Maxlinear (Fed. Cir. 01/25/18) (vacating PTAB patentability determination and remanding for determination whether dependent claims not already adjudicated unpatentable are patentably distinct from the claims already adjudicated unpatentable).

Attorney Fees Award and Rule 11 Sanctions

Defendants often send an early “Octane Fitness” letter putting the patent owner on notice of why its action is baseless and should be dismissed. A panel decision has reinforced the wisdom of such letters in such actions.

  • One Factor In Granting Fees Is Whether Winning Party Promptly Put Losing Party On Notice Of Substantive Weakness Of Its Case: “A ‘party cannot simply hide under a rock, quietly documenting all the ways it’s been wronged, so that it can march out its ‘parade of horribles’ after all is said and done.’” Stone Basket (Fed. Cir. 06/11/18) (aff’g denial of fees where winning defendant did not move under Rule 11 or for summary judgment, did not in its invalidity contentions focus on particular cited reference that supposedly made case exceptional, and did not tell patent owner case was exceptional or ask that it be dropped until a year after its invalidity contentions).

Deceptive Revival of Expired Patent

  • Deceptive Declaration That Failure To Pay Maintenace Fee Was Unintentional Meets But For Test: “Statements critical to the ‘survival of the patent’—even though they do not, strictly speaking, bear on patentability— also can be material within the meaning of Therasense.” In re Rembrandt Tech. (Fed. Cir. 08/15/18) (aff’g exceptional case finding, in part due to prior patent owner’s inequitable conduct in filing false declaration that failure to pay maintenance fees was unintentional). Allegation that delay in payment was unintentional was material because “the PTO would not have revived the patents if it had known that Paradyne consciously allowed them to expire.” Id. (aff’g intent to deceive finding in part based on other misdeeds by same actors).

Section 101 – Abstract Ideas and Natural Laws:

Several Sec. 101 decisions favored patent owners, in three respects.

First, they identified more examples of patent-eligible claims under Step One.

  • a method of treatment requiring “a treating doctor to administer iloperidone in the amount of either (1) 12 mg/day or less or (2) between 12 mg/day to 24 mg/day, depending on the result of a genotyping assay” is patent eligible as “‘a new way of using an existing drug’ that is safer for patients.” Vanda Pharm. (Fed. Cir. 04/13/18) (2-1);
  • “an improved user interface for computing devices.” Core Wireless (Fed. Cir. 01/25/18); and
  • “a method of providing computer security by scanning a downloadable and attaching the results of that scan to the downloadable itself in the form of a ‘security profile,’” which security profile has “information about potentially hostile operations produced by a ‘behavior-based’ virus scan,” unlike (and with advantages over) traditional “code-matching” virus scans, and thus “employs a new kind of file that enables a computer security system to do things it could not do before.” Finjan (Fed. Cir. 01/10/18).

Second, they identified alleged factual disputes barring early judgment on Step Two.

  • Exergen (Fed. Cir. 03/08/18) (Moore, J.) (2-1) (non-precedential) (aff’g denial of judgment of patent ineligibility: “The district court’s conclusion that these claim elements were not well-understood, routine, and conventional is a question of fact to which we must give clear error deference.”);
  • Aatrix Software (Fed. Cir. 02/14/18) (Moore, J.) (2-1) (vacating R. 12(b)(6) invalidity decision on account of fact issues regarding whether “the claimed combination contains inventive components and improves the workings of the computer,” and “factual disputes” such as “whether the claim term ‘data file’ constitutes an inventive concept”; and reversing district court denial of post-judgment motion of patent owner to file second amended complaint alleging these facts which “if accepted as true, contradict the district court’s conclusion that the claimed combination was conventional or routine.”); and
  • Berkheimer (Fed. Cir. 02/08/18) (Moore, J.) (vacating Summ. J. of Sec. 101 invalidity on four claims: “The patent eligibility inquiry may contain underlying issues of fact.”)

Third, they suggested that “inventive” in Step Two means not conventional (a lower hurdle for patent owners), without addressing Supreme Court precedents (see Comments on Berkheimer Memo. (04/27/18)) showing that “inventive” in Step Two is meant literally, i.e., meaning novel and non-obvious (a higher hurdle).

  • “Whether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.” Berkheimer (Fed. Cir. 02/08/18); and
  • Exergen (Fed. Cir. 03/08/18) (“something is not well-understood, routine, and conventional merely because it is disclosed in a prior art reference. There are many obscure references that nonetheless qualify as prior art.”)

But, other panels continued to apply the abstractness exclusion in line with the majority of post-Alice Fed. Cir. decisions. For example:

  • BSG Tech. (Fed. Cir. 08/15/18) (aff’g Summ. J. claims ineligible; “Whether a combination of claim limitations supplies an inventive concept that renders a claim ‘significantly more’ than an abstract idea to which it is directed is a question of law. Underlying factual determinations may inform this legal determination…. But the relevant inquiry is not whether the claimed invention as a whole is unconventional or non-routine…. A claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept…. As a matter of law, narrowing or reformulating an abstract idea does not add ‘significantly more’ to it.”)

Strategy for Patent Challengers to Win a Rule 12 or 56 Alice Motion Post Aatrix, Berkheimer and Exergen (Apr. 6, 2018).

  • TIPS: