Federal Circuit Affirms PTAB Decision Allowing IPR Claim Amendments That Go Beyond Addressing Instituted Grounds
On November 14, 2022, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the Patent Trial and Appeal Board (PTAB) allowing claim amendments during inter partes review (IPR) proceedings that addressed issues additional to those raised by the grounds relied upon for institution of the IPR. Am. Nat’l Mfg. Inc. v. Sleep No. Corp., Nos. 2021-1321, 1323, 1379, 1382, (Fed. Cir. Nov. 14, 2022). The Court found that the PTAB had not erred when it permitted Sleep Number, the patent owner, to submit claim amendments in IPR that addressed Section 112 issues (which were additional to amendments addressing the instituted grounds).
District Of Delaware Determines “Translator Device” Limitations Are Subject To Means-Plus-Function Strictures And Invalidates Claims As Indefinite
On September 10, 2021, Judge Richard G. Andrews of the U.S. District Court for the District of Delaware issued a Memorandum Opinion on claim construction. Peloton Interactive, Inc. v. ICON Health & Fitness, Inc., No. 20-662-RGA, slip. op. (D. Del. Sept. 10, 2021). Judge Andrews held that certain claims of the asserted patent containing “translator device…” limitations were invalid as indefinite under 35 U.S.C. § 112 ¶ 6 because they failed to disclose corresponding structure for the claimed function.
Federal Circuit Finds Accused Infringer’s Reference To Covid-19 Fight Insufficient To Undo Invalidity Verdict
On May 11, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a judgement of the United States District Court for the District of Delaware finding all asserted claims of appellant’s patents on DNA-sequencing technology invalid and denying appellant’s motion for a new trial. Pac. Biosciences of Cal., Inc. v. Oxford Nanopore Techs., Inc., __ F.3d __ (Fed. Cir. May 11, 2021). In its decision, the CAFC upheld a jury verdict finding the asserted claims invalid under 35 U.S.C. § 112 for lack of enablement, and affirmed the district court’s decision that appellee’s opening statement respecting the impact of the trial on the fight against Covid-19 did not warrant a new trial.
Federal Circuit Holds “User Identification Module” Is A Means-Plus-Function Term And Invalid As Indefinite For Failing To Disclose Corresponding Structure
On March 2, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing the district court’s conclusion that a claim was not invalid as indefinite. Rain Computing, Inc. v. Samsung Elecs., Am., Inc., __ F.3d __ (Fed. Cir. Mar. 2, 2021). The CAFC held that the claim term, “user identification module,” was a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, and invalid as indefinite for failure to disclose corresponding structure (here, an algorithm).
Federal Circuit Finds Claim Terms “Computer” And “Passive Link” Indefinite
On February 10, 2021, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a decision by the United States District Court for the District of Delaware, invalidating all asserted claims of appellant’s four related patents under 35 U.S.C. § 112. Infinity Computer Products v. Oki Data Americas Inc., __ F.3d __ (Fed. Cir. Feb. 10, 2021). In its decision, the CAFC ruled that the asserted claims were rendered indefinite by conflicting statements made by appellant during prosecution of the asserted patents.
Federal Circuit Reverses Grant Of Summary Judgment Of Invalidity For Lack Of Written Description
On February 14, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing and remanding a decision by the United States District Court for the District of Delaware granting summary judgment of invalidity for lack of written description. CenTrak, Inc. v. Sonitor Techs., Inc., —F.3d—, (Fed. Cir. Feb. 14, 2019). The CAFC ruled that there were genuine issues of material fact as to whether it was necessary to disclose in the patent specification particular implementation details to satisfy the written description requirement.
Federal Circuit Affirms Judgment Of Patent Claim Indefiniteness
On September 4, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a judgment of the United States District Court for the District of Delaware finding a patent claim invalid for indefiniteness. Intellectual Ventures I LLC v. T-Mobile USA, Inc. et al., —F.3d—(Fed. Cir. September 4, 2018). The CAFC ruled that the claim was invalid because it included a limitation that was entirely subjective and user-defined.
Federal Circuit Reverses PTAB Rejection Of Design Patent Application
On August 20, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a decision of the Patent Trial and Appeal Board (PTAB) in which the PTAB had rejected a design patent application for indefiniteness. In re Ron Maatita, —F.3d—, (Fed. Cir. Aug. 20, 2018). The CAFC ruled that the PTAB had wrongly applied the indefiniteness standard in the context of a design patent claiming the design of the sole of an athletic shoe.
Federal Circuit Finds Sufficient Written Description In Species/Genus Disclosure Case
On March 14, 2018, the United States Court of Appeals for the Federal Circuit (“CAFC”) ruled that a patent that discloses a technological species (“a fibre optics bundle”) provides written-description support for claims directed to a technological genus (“a light guide”). Hologic, Inc. v. Smith & Nephew, Inc.
, appeal no. 2017-1389. The opinion presents the inverse of the situation in the Knowles
case summarized in last week’s Litigation Weekly.
Federal Circuit Finds No Written Description In Genus/Species Disclosure Case
On March 1, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) ruled that a patent that disclosed a technological genus (solder pads) did not provide written-description support for claims to one species within that genus (solder pads configured for connection via a solder reflow process), even though the record showed that the species was known to those of skill in the art at the time of the invention. Knowles Electronics LLC v. Cirrus Logic, Inc.
, appeal no. 2016-2010.