On March 6, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) reversed decisions from the United States District Court for the Western District of Texas in consolidated Case Nos. 6:21-cv-00347 and 6:21-cv-01007, Judge Alan D. Albright, finding the claims of the ’035 patent indefinite. Maxell, Ltd. v. Amperex Technology Ltd., __ F.3d __ (Fed. Cir. March 6, 2024). In its precedential decision reversing and remanding, the CAFC found that the district court erred in finding claim language contradictory and therefore indefinite.

On October 6, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the Western District of Texas’s holding of indefiniteness as to certain claims of U.S. Patent No. 8,751,585 (the “’585 Patent”).  WSOU Investments LLC (“WSOU”) accused Google LLC (“Google”) of infringing independent claim 9, and claims 10-16 dependent therefrom, of the ’585 Patent.  The ’585 Patent is directed to a management method for electronic messages in a user’s inbox in a communication system.  The district court construed the limitation, “a collaborative application management processor configured to manage collaborative application,” to be indefinite as a means-plus-function limitation without sufficient corresponding structure.

On September 20, 2023, the Court of Appeals for the Federal Circuit affirmed a decision of the United States District Court for the District of Delaware in Case No. 1:17-cv-00509-TBD, Judge Timothy B. Dyk, finding claims of asserted U.S. Patent No. 7,033,590 (“the ’590 patent”) invalid for lack of enablement.  Baxalta Inc. et al. v. Genentech Inc., __ F.3d __ (Fed. Cir. September 20, 2023).  In its precedential decision, the CAFC held that the asserted claims are indistinguishable from those recently found invalid by the Supreme Court in Amgen Inc. v. Sanofi, 598 U.S. 594, 610–12 (2023).

On July 24, 2023, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States District Court for the District of Delaware in Case No. 1:20-cv-00755-RGA-JLH, Judge Richard G. Andrews, finding claims of one asserted patent valid and infringed and claims of another asserted patent anticipated but otherwise infringed.  United Therapeutics Corp. v. Liquidia Techs., Inc., __ F.3d __ (Fed. Cir. July 24, 2023).  In its precedential decision, the CAFC held, inter alia, that the district court did not err in declining to import safety and efficacy limitations into method of treatment claims in the first patent, and also did not err in finding that a decision of unpatentability by the U.S. Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office, currently on appeal, did not bar liability for induced infringement.

On June 27, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision by the United States Patent and Trademark Office, Patent Trial and Appeal Board (“PTAB”), holding that proposed substitute claims were not patentable for lack of written description and lack of enablement under 35 U.S.C. § 112.  Medytox, Inc., v. Galderma S.A., No. 2022-1165 (Fed. Cir. June 27, 2023).  The CAFC panel (Dyk, Reyna, and Stark) reviewed the PTAB’s legal conclusions de novo and its factual findings for substantial evidence.  In affirming the PTAB, the CAFC concluded that the substitute claims were not enabled because a skilled artisan would not have been able “to make and use all of what is claimed.”

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).

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.

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.

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).
 

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.
 

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.

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.

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.

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.

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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.

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