The United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) recently put the United States Patent Trial and Appeal Board (“the Board”) on notice that the broadest reasonable interpretation of claims (“BRI”) is not without limits. U.S. Patent No. 6,249,876 (“the ‘876 patent”), owned by the Power Integrations, Inc. (“Power Integrations”), had its claims 1, 17, 18 and 19 rejected in an ex parte reexamination that was appealed to the Board. The Board, relying on an interpretation allowing additional elements to be disposed between “coupled” elements, supported the examiner’s rejection of the claims as anticipated under pre-AIA 35 U.S.C. §102(b). The Federal Circuit reversed the Board’s decision, labeling the claim construction as “unreasonably broad.” IN RE: POWER INTEGATIONS, INC. (Appellant), 2017-1304 (March 19, 2018). Claim 1 is set forth below to show its use of “coupled”: A digital frequency jittering circuit for varying the switching frequency of a power supply, comprising: an oscillator for generating a signal having a switching frequency, the oscillator having a control input for varying the switching frequency; a digital to analog converter coupled to the control input for varying the switching frequency; and a counter coupled to the output of the oscillator,… Read More »Broadest Reasonable Interpretation Has Limits
Here is a sign that the Federal Circuit’s recent decision in Aatrix Software, Inc. v. Green Shades Software, Inc. (Feb. 14, 2018), may affect district court procedures in deciding motions (especially at the pleadings stage under FRCP 12) alleging patent-ineligibility under the Alice patent-eligibility test, and 35 U.S.C. § 101. In IDB Ventures, LLC v. DSW Inc., No. 2-17-cv-00523 (E.D. Tex. March 19, 2018), Chief Judge Gilstrap sua sponte ordered supplemental briefing concerning Aatrix Software and the defendant’s Motion to Dismiss for Failure to State a Claim. If you look at the patent-in-suit, U.S. Patent No. 7,970,674, you won’t be surprised that the defendant was prompted to move for a dismissal on the pleadings based on patent-eligibility. True, independent claim 1 is pretty long and perhaps narrowly drawn, but consider the ’674 patent’s title, which seems to sum up the claim: “Automatically determining a current value for a real estate property, such as a home, that is tailored to input from a human user, such as its owner.” Judge Gilstrap gave no explanation as to the possible relevance of Aatrix Software to the pending motion, but surely none was needed. In the Aatrix case, you will recall, Judge Moore’s majority… Read More »How Does Aatrix Software Change Patent-Eligibility Analysis?
The ex parte Appellant successfully argued that, since the primary reference already taught fastening an element with screws, the Examiner failed to adequately show that one would have also fastened the element with a spring element because the spring element would be merely duplicative of the screws in Ex parte Pinon (Appeal 2017/005566, decided March 9, 2018). While this is just one of the successful arguments in this Appeal, it provides some interesting discussion. The Examiner had found that the primary reference taught all of the elements of the claim except “the clamp comprises a spring element,” as claimed in claim 1. The primary reference, shown immediately below, discloses a battery module having a clamp 40a that is fastened to the plate 30 with screws. Since the screws of the primary reference are not a “spring element,” as claimed in the claim, the Examiner found a secondary reference disclosing a power supply unit that includes an elastic clamp, and asserted that it would have been obvious to include this elastic clamp in the primary reference in addition to the screw-fastened clamp 40a. In the Examiner’s Answer, the Examiner noted that this redundancy is akin to wearing a belt and suspenders.… Read More »Examiner’s Redundancy Rationale was Insufficient to Support Obviousness Rejection
The Federal Circuit has been widely criticized for the practice, under its Rule 36, of affirming lower court and USPTO PTAB decisions without any opinion. This post highlights two recent Rule 36 affirmances of holdings of patent-ineligibility under 35 U.S.C. § 101. I should stress that I don’t disagree that the court generally owes its litigants an explanation of its decisions, and may even be bound to do so by statute. But I want to suggest that the two cases discussed below demonstrate that there are areas of patent law, even relating to applying the Mayo/Alice patent-eligibility test, whose contours are well-enough defined and do not need elucidation. The Federal Circuit’s Rule 36 provides as follows: Rule 36. Entry of Judgment – Judgment of Affirmance Without Opinion The court may enter a judgment of affirmance without opinion, citing this rule, when it determines that any of the following conditions exist and an opinion would have no precedential value: (a) the judgment, decision, or order of the trial court appealed from is based on findings that are not clearly erroneous; (b) the evidence supporting the jury’s verdict is sufficient; (c) the record supports summary judgment, directed verdict, or judgment on the… Read More »Are the Fed. Circuit’s Rule 36 Judgments Always a Bad Thing?
A District Court committed error, says a Federal Circuit panel, “by presuming that terminally disclaimed continuation patents are patentably indistinct variations of their parent patents without analyzing the scope of the patent claims.” SimpleAir, Inc. v. Google LLC, No. 2016-2738 (March 12, 2018) (precedential) (opinion by Judge Lourie, joined by Judges Reyna and Chen). The question here was whether SimpleAir could allege infringement of a terminally-disclaimed patent in a chain of continuations when prior litigation with Google had resulted in judgments of non-infringement of three other patents, including the parent, in the chain. The district court had granted Google’s Rule 12(b)(6) motion to dismiss on grounds that the Kessler Doctrine and claim preclusion barred SimpleAir from its claim that Google infringes other, never-litigated, patents in the family. The Federal Circuit vacated that decision. The court agreed with Google that just because the prior litigation had not included the presently-asserted patents did not mean that claim preclusion was foreclosed. However, even though “there is a substantial overlap between” the present and the previously-asserted patents, including “a common specification and terminal disclaimer to a common parent,” there was nonetheless an insufficient record to support a holding of claim preclusion. Claim preclusion requires… Read More »Terminal Disclaimer to “Expedite” Patent Prosecution?
A district court faced with a defendant’s motion to dismiss has ordered supplemental briefing because “Berkheimer v. HP, Inc. (Fed. Cir. Feb. 8, 2018)] may impact the analysis to be applied at the motion to dismiss stage under the second step of the standard set forth in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014).” Pace Anti-Piracy, Inc. v. Inside Secure, No.17-cv-05860-HSG (N.D. Cal. March 16, 2018). Of course, simply ordering supplemental briefing does not mean that a court will find that fact questions preclude deciding the patent-eligibility question at the pleadings stage. But the fact that this court and others are heeding Berkheimer as a potentially significant turn in the law – and one that would impede a court’s ability to hold patents invalid under 35 U.S.C. § 101 – is a trend worth noting, and watching.
In affirming a district court’s grant of summary judgment of patent-ineligibility under 35 U.S.C. § 101, a Federal Circuit panel provided some reassurance to those who were unsettled by the court’s recent dicta in Berkheimer v. HP, Inc., No. 2017-1437 (Fed. Cir. Feb. 8, 2018) (precedential) (opinion by Judge O’Malley, joined by Judges Wallach and Stoll), concerning factual determinations in applying the Alice test. In Intellectual Ventures I, LLC v. Symantec Corp., Nos. 2017-1814, 2017-1858 (Fed. Cir. March 18, 2018), the court affirmed several holdings by the district court, including its finding that certain claims of U.S. Patent No. 5,537,533 are patent-ineligible. As discussed in this post, the district court held claims of the ’533 patent, which recite “[a] method for remote mirroring of digital data,” directed to the “abstract idea of backing up data.” The Federal Circuit agreed with scant comment concerning the lower court’s analysis. But the court here did address (in a footnote) Intellectual Ventures’ argument that Berkheimer compelled reversing and remanding back to the district court based on an alleged “genuine issue of material fact” concerning whether the patent claims in dispute “improve remote data mirroring in ‘an inventive manner’ or perform ‘well-understood, routine, and conventional activities… Read More »Fact Disputes Don’t Prevent Patent-Ineligibility Finding
Claims from two out of three patents for providing haptic feedback to computer users survived a motion to dismiss based on a patent eligibility challenge under the Mayo/Alice test and 35 U.S.C. § 101. Considering their character as a whole, the court found that the claims were not directed to abstract ideas. Immersion Corp. v. Fitbit, Inc., No. 17-CV-03886-LHK, (N.D. Ca., March 5, 2018). The court held claims of a third patent to be patent-ineligible. Plaintiff, Immersion Corporation filed suit against Defendant Fitbit, Inc. alleging infringement of claims of U.S. Patent No. 8,059,105, U.S. Patent No. 8,351,299, and U.S. Patent No. 8,638,301. Fitbit moved to dismiss, contending that the asserted claims failed to recite patent-eligible subject matter under 35 U.S.C. § 101. The court denied Fitbit’s motion as to the claims of the ‘105 and ‘299 patents and granted Fitbit’s motion to dismiss as to the ‘301 patent claims. The ‘105 Patent The ‘105 patent is directed to a haptic feedback device such as a touchpad that provides haptic feedback to computer users based on a position of a cursor on a display, e.g., a haptic signal when the cursor is moved over an icon. The haptic feedback “can assist… Read More »Providing Haptic Feedback Patent-eligible or Abstract Idea?
A district court recently held the scope of estoppel from covered-business-method (CBM) review encompasses the references used in the CBM as well as almost-identical references. (Solutran, Inc. v. U.S. Bancorp et al. (D. Minn. 2018).) This dispute started with Solutran suing U.S. Bank for infringement of U.S. Patent No. 8,311,945. The ’945 patent covers a method of processing checks. U.S. Bank retaliated by petitioning for CBM review, claiming that the ’945 patent was obvious over admitted prior art in the patent and U.S. Patent App. No. 2005/0071283 to Randle. The Patent Trial and Appeal Board instituted review but eventually sided with Solutran. Solutran now argues that at trial, U.S. Bank cannot argue obviousness and cannot rely on a reference related to the Randle ’283 application. The estoppel provision for CBM reviews states that the “[p]etitioner … may not assert … in a civil action … that the claim was invalid on any ground that the petitioner raised during” the CBM review. (Pub. L. 112-27, § 18(a)(1)(D), 125 Stat. 330 (2011).) The scope is ostensibly narrower than estoppel from inter partes review or post-grant review, which cover “any ground that the petitioner raised or reasonably could have raised during” the review.… Read More »CBM Estoppel Limited to Substantially Identical References
The Federal Circuit in Steuben Foods, Inc. v. Nestle, Inc. (Appeal No. 2017-1290, Fed. Cir., decided March 13, 2018) rejected the patent owner’s claim construction as impermissibly restricting the claim term to a specific embodiment disclosed in the specification. Based on this claim construction, the Court affirmed the final decision of the Patent Trial & Appeal Board in the appealed inter partes review finding the claims to be unpatentable as obvious. The claim term at issue is “sterilant concentration levels” in US6,475,435. An annotated copy of a figure used by the Court is reproduced below. This figure shows a sterilization tunnel used for packaging food. The sterilization tunnel is pressurized to create a flow of sterile air out of the tunnel to prevent contaminants from flowing into the tunnel. The tunnel is divided into the color-coded zones shown below and each zone has a different purpose (the fourth zone provides bottles, the first zone provides drying, etc.). The claims are directed toward maintaining “different sterilant concentration levels in the plurality of zones.” In the IPR, the Board construed “sterilant concentration levels” to be levels measured “at any point within the sterilization tunnel – including ‘residual’ concentration on bottle surfaces.” On… Read More »CAFC Finds Proposed Claim Construction Unsupported by Disclosure