Luedeka Neely attorneys provide analysis of recent precedential intellectual property law cases for the period of August – September 2022.
- In re Killian (Fed. Cir. August 23, 2022) – Court of Appeals for the Federal Circuit (CAFC)
- Appeal from Patent Trial and Appeal Board (PTAB) regarding patent-eligible subject matter; CAFC affirmed PTAB rejection.
- Killian filed an application in 2014 seeking to patent a computerized algorithm identifying overlooked eligibility for social security disability insurance and other adult-child benefits (essentially seeking to link obsolete state database schemas with obsolete federal database schemas to identify overlooked individuals), which the USPTO rejected as directed to an abstract idea (patent ineligible subject matter).
- Killian made some ridiculous arguments re eligibility that CAFC seemed to want to never see again, hence why they made it precedential.
- Best Medical International, Inc. v. Elekta Inc. (Fed. Cir. August 25, 2022) – CAFC
- Appeal by patentee/plaintiff BMI challenging PTAB’s determination that BMI’s patent was obvious after IPR; CAFC affirmed PTAB rejection.
- The patent covered a method of optimizing a radiation beam for use in radiation treatment of cancer AND covered a substantial amount of computer programming to implement particular algorithms designed to limit irradiation of non-cancerous areas of the body around a targeted tumor. In the IPR, BMI’s expert had substantial expertise with radiation therapy design and optimization but was not a programmer with formal programming education. Elekta’s expert was a programmer with experience writing computer programs for treatment-planning software. The PTAB decided to qualify BMI’s expert as to a portion of the patent, and then highly discounted his testimony regarding the obviousness of the programming aspects of the invention. CAFC gave deference to the PTAB’s conclusion that a person of ordinary skill in the art (PHOSITA) would have had formal computer programming experience.
- Small, but important and weird mootness point: While the IPR challenging claims 1 and 18 was underway, a petitioner instituted a parallel ex parte reexamination proceeding including a review of claims 1 and 18. Before the PTAB made their decision in the IPR, the examiner handling the reexam found claim 1 was unpatentable. Rather than challenging the merits of the examiner’s rejection, BMI canceled claim 1 “without prejudice or disclaimer.” Later, the PTAB issued their decision in which they noted that BMI canceled claim 1 during reexam, but concluded that because BMI did so without prejudice or disclaimer, that it wasn’t a final cancelation, meaning they were required to review the patentability of claim 1 under SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) (holding that the PTAB must address every claim the petitioner has challenged), which they proceeded to find obvious. BMI then appealed the PTAB’s determination. The CAFC held that it didn’t have jurisdiction over BMI’s appeal of PTAB’s ruling on claim 1 because the claim was canceled, and thus the point was moot. Essentially, claim 1 was unappealable. BMI tried to argue for “Munsingwear vacatur” which is an equitable doctrine in which an appeals court vacates a district court determination on the merits of an issue with a ruling adverse to the appellant that became moot after a district court’s determination but before there was a chance for appellate review. CAFC said there is no Munsingwear vacatur because the claim 1 issue became moot when BMI cancelled the claim, not after notice of appeal to the CAFC had been filed. So BMI was basically stuck with an unreviewable obviousness determination that had the potential to create collateral estoppel-like effects in further examination of claims similar to claim 1. CAFC said this wasn’t a real enough threat to create standing, and thus the point was moot.
- INVT SPE LLC v. International Trade Commission (Fed. Cir. August 31, 2022)
- International Trade Commission (ITC) judge held that an accused infringer’s device must perform the claims of one of INVT’s patents in order to infringe the patent. CAFC reversed the holding that the accused device must perform, instead holding that the accused device must simply be capable of performance in order to infringe, but affirmed ITC judge’s finding of noninfringement.
- Technology concerned wireless communication technology, specifically transmission of data signals from a base station to a user device that are modulated and encoded. INVT argued its patents were standard essential patents for LTE standards, and thus the accused devices infringed because they were all LTE-compliant devices. CAFC disagreed.
- Essential to the CAFC’s holding was the fact that INVT failed to introduce any evidence that the accused devices, when put into operation, would ever be reasonably capable of performing the particular functions recited in the claims without significant alteration.
- Arendi SARL v. LG Electronics Inc. (Fed. Cir. September 7, 2022)
- District court dismissed a second suit filed by Arendi as improperly duplicative; CAFC affirmed, holding that the district court applied the correct law to the facts.
- The CAFC applied the 3rd circuit standard of review (abuse of discretion) out of concern for consistency of future trial management with respect to a trial judge’s general power to dismiss a case as duplicative, but applied Federal Circuit case law to determine whether patent-infringement complaints involve the same subject matter (citing Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344 (Fed. Cir. 2014)). Senju says to consider the transactional facts from which a cause of action arises and the extent of the factual overlap between the causes of action. The two primary overlaps are: (1) overlap between products in an instant action vs prior action, and (2) overlap of the patents in an instant action vs a prior action. Arendi asserted the same patents in both suits, and thus had to argue different products (for which they had no good argument), which they lost on.
- Hyatt v. PTO (Fed. Cir. September 8, 2022)
- Gilbert Hyatt received the first ever patent on the microprocessor back in 1970, only to have it invalidated by Texas Instruments because of his failure to implement the invention / impossibility of implementing the invention given the available technology at the time of application. Hyatt has been battling the USPTO for decades now, and this is another case in the saga. Hyatt still has about 400 applications pending, some of which the USPTO has not touched since at least 2003 because of a mountain of litigation associated with them.
- Hyatt filed a patent application shortly before the URAA took effect (the law that amended the term of US patent protections from 17 years from grant date to 20 years from filing date) in a time period called the GATT bubble (so-named because the USPTO reportedly received and processed over 50,000 applications–one quarter of 1995’s number of projected filings — in 9 days) in order to take advantage of rules for “transitional applications.” One such advantageous rule was that restriction requirements could not be imposed on transitional applications unless an exception applied. When examination of one of Hyatt’s transitional applications (containing approximately 200 claims) filed in 1995 finally began in 2013, the examiner required Hyatt to choose a number of claims for examination, of which Hyatt chose 8. After the examiner issued a nonfinal rejection of those claims in 2015, Hyatt responded by significantly amending the claims, rewriting some of the claims to such an extent that the only words in common between the original and amended claims were “A” and “comprising.” The Examiner issued a restriction requirement between the original claims and the amended claims, forcing Hyatt to choose one group for prosecution. The CAFC affirmed the district court’s holding that the amendments were so significant that Hyatt either failed to disclose the claims or committed an act of withholding an entirely new species and was therefore not entitled to the benefits of the transitional application rule because he fell within an exception.
- Sawstop Holding LLC v. Vidal (Fed. Cir. Sept. 14, 2022)
- Sawstop, which makes saw blades that stop when they sense contact with a body part, applied for several patents on their technology (The ‘476 patent and ‘769 patent are at issue here). Procedural history is is important in this case. Sawstop appealed both summary judgment decisions to the CAFC, which affirmed both.
- Regarding the 476 patent, the examiner finally rejected claim 11 in the application as obvious. Sawstop appealed to the PTAB, who held that the examiner’s rejection was improper. In the same decision, after holding the Examiner’s obviousness rejection was improper, the PTAB imposed its own obviousness rejection of claim 11. On remand from the PTAB, Sawstop amended and filed a Request for Continued Examination (RCE), and claim 11 eventually issued as claim 1 of the 476 patent. Sawstop challenged the PTO’s decision to not adjust the term of the patent for the time spent on appeal to the PTAB in court, and the district court granted summary judgment for the PTO.
- Regarding the 796 patent, the examiner finally rejected claim 1 on two independent bases (anticipation and double patenting) and dependent claim 2 for anticipation. Sawstop appealed to the PTAB, which affirmed both rejections of claim 1, but reversed the claim 2 rejection, holding claim 2 was patentable. Sawstop challenged the PTAB’s decision regarding claim 1 in court, but only challenged the anticipation rejection, not the double patenting rejection. The district court reversed the PTAB’s anticipation holding but said nothing about the double patenting (because Sawstop didn’t challenge it). On remand from the district court, the PTAB said they would allow claim 2 if Sawstop rewrote it as an independent claim, which Sawstop did. After allowance, Sawstop filed an RCE and continued prosecution through several amendments of claims, drawings, and specifications, the result being issuance of the 796 patent. Just like it did for the 476 patent, Sawstop challenged the PTO’s decision to not adjust the term of the patent for the time spent on appeal that resulted in claim 1 of the 796 patent, and the district court granted summary judgment for the PTO.
- The portion of 35 USC 154(b)(1)(C) that Sawstop asserted is this: “If the issue of an original patent is delayed due to . . . appellate review by the Board of Patent Appeals and Interferences or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability, the term of the patent shall be extended 1 day for each day of the pendency of the proceeding, order, or review, as the case may be.“
- On appeal to the CAFC, regarding the 476 patent, Sawstop argued that any examiner rejection overturned on appeal qualifies as “a reversal of a determination of patentability,” regardless of whether the PTAB imposed its own rejection, because the statute doesn’t say anything about additionally imposed PTAB rejections. The CAFC rejected Sawstop’s argument, saying to focus on the patentability part, not the adverse determination part. The CAFC asserted it’s wrong to read the statute to “reversal of rejection” = “reversing an adverse determination of patentability.” Claim 11 was unpatentable when it went up on appeal and unpatentable when it came back down, and the statute only applies when there is a substantive change in patentability, which means the claim has to come back down from appeal allowable, not just free of a particular rejection it went up with.
- The CAFC also added that the patent didn’t “issue under a decision in the review” because (1) Sawstop continued to prosecute and amend the claim to address the new rejection, and the original claim 11 was different than the claim that ultimately issued, and (2) the claim that ultimately issued after further prosecution wasn’t analyzed by the PTAB or court.
- Regarding the 796 patent, Sawstop argued again that any rejection overturned on appeal counted for the purposes of the statute, and further, that the statute says nothing about having all of the rejections overturned (recall claim 1 of the 796 had two independent rejection). CAFC repeated its 476 response to that argument.
- Sawstop got “creative” with their other arguments (all of which the CAFC rejected), including that:
- It was against the policy of the statute for the PTO to deny the PTA; and
- The double patenting rejection didn’t affect patentability because it was non-statutory and provisional (based on an application, cited In re Mott). The CAFC said if it was illusory, then why did you respond to it?
- Sawstop, which makes saw blades that stop when they sense contact with a body part, applied for several patents on their technology (The ‘476 patent and ‘769 patent are at issue here). Procedural history is is important in this case. Sawstop appealed both summary judgment decisions to the CAFC, which affirmed both.
- Provisur Techs., Inc. v. Weber, Inc. (Fed. Cir. Sept. 27, 2022)
- Provisur’s patent covers a system for determining the fat content of sliced meat based on photos of the slices, and classifying them accordingly. Weber had argued that some earlier patents, when combined, would have led skilled artisans to come up with a component of Provisur’s patent that can determine the surface area of a meat slice based on a digital image.
- On appeal of an IPR decision to the CAFC, Provisur argued (1) that the PTAB abused its discretion in allowing certain evidence and (2) that the board violated the APA when it failed to consider all of Provisur’s arguments regarding the patentability of some of its claims.
- Regarding (1), Provisur argued (a) the board allowed in evidence that gap-filled Weber’s petition, which Provisur argued was inadequate, (b) the board allowed in the evidence too late in the proceedings, and (c) that the same late evidence was unduly prejudicial to Provisur. The court replied that (a) the petition was proper when Weber filed it initially, (b) the evidence was properly allowed in later because even though Weber could’ve added it earlier, they weren’t obligated to, and (c) Provisur had plenty of opportunities to respond to the later evidence. Result was affirmance of this ground.
- Regarding (2), Provisur argued that the Board failed to properly address all of Provisur’s arguments, and thus violated the APA. The court agreed with Provisur here. The CAFC began by reiterating the standard a PTAB decision must meet in order to create a proper ground for appellate review, which the Board here failed to meet. In Provisur’s response to Weber’s petition, Provisur pointed out that the petition failed to show how Weber’s references would teach several of the claims of Provisur’s patent. The Board mischaracterized the argument, saying Provisur failed to dispute any part of Weber’s argument except for one part of claim 1. The resulting board decision focused almost entirely on that one part of claim 1. The CAFC said that was error, vacated the board’s judgment, and remanded for consideration of the other claims.
- Weber also cross-appealed, challenging the board’s decision to uphold two claims of Provisur’s patent. The CAFC held that the board misinterpreted one of Weber’s arguments as well as several of the prior art references, vacated the board’s ruling, and remanded.