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 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).
Northern District Of Illinois Uses Collateral Estoppel To Find Patents Invalid Based On PTAB’s Unpatentability Rulings On Similar Patents
On October 8, 2020, Judge Andrea R. Wood of the United States District Court for the Northern District of Illinois denied plaintiff Think Product, Inc.’s motion to reconsider a finding of patent invalidity. Think Products, Inc. v. Acco Brands Corp. and Acco Brands, USA LLC, No. 18-cv-07506 (N.D. Ill. Oct. 8, 2020). The Court had previously granted defendants Acco Brands Corporation’s and Acco Brands, USA LLC’s motion for summary judgment invalidating two patents based on collateral estoppel arising from rulings by the Patent Trial and Appeal Board (“PTAB”) invalidating for obviousness two similar patents.
Federal Circuit Reverses District Court’s Claim Construction Due To Improper Reading Of Intrinsic Evidence
On August 27, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing the decision of the United States District Court for the District of Delaware dismissing plaintiff Baxalta Inc.’s (“Baxalta”) infringement suit against Genetech, Inc. (“Genentech”). Baxalta Inc. v. Genentech, Inc., __ F.3d __ (Fed. Cir. Aug. 27, 2020).
Federal Circuit Vacates And Remands District Court’s Decision For Failing To Construe Claims Before Ruling On Patent Eligibility
On August 16, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating and remanding the United States District Court for the Northern District of California’s decision granting a Rule 12(c) motion for judgment on the pleadings. MyMail, Ltd. V. ooVoo, LLC, __ F.3d __ (Fed. Cir. Aug. 16, 2019). The CAFC held that the district court erred by declining to resolve a claim construction dispute prior to its ruling that the patents asserted by plaintiff MyMail are directed to unpatentable subject matter.
Federal Circuit Vacates And Remands PTAB’s Obviousness Finding Predicated On Incorrect Claim Construction
On August 12, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding the obviousness finding of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”). MTD Products Inc. v. Iancu, __ F.3d __ (Fed. Cir. Aug. 12, 2019). The CAFC ruled that the PTAB’s claim construction on which its obviousness finding was premised was incorrect because the construction conflated corresponding structure in the patent’s specification with a structural definition for the term, instead of construing the term as a means-plus-function term under 35 U.S.C. § 112, ¶ 6.