The following is a summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit for the week ending February 6, 2015. Rishi Suthar and Ross Barton prepared this edition.
Claim Interpretation: Ordinary Meaning
Claim Interpretation: Intrinsic Evidence: Preferred Embodiments
Litigation Practice and Procedure: Courts: Standard of Review
Papst Licensing GmbH & Co. v. Fujifilm Corp., et al., No. 14-1110 (Fed. Cir. (D.C.) Feb. 2, 2015). Opinion by Taranto, joined by Schall and Chen.
Vacating the U.S. District Court for the District of Columbia’s grant of summary judgment of noninfringement, the Federal Circuit ruled that the district court’s constructions of five claim terms improperly limited the scope of the claims.
Papst Licensing GmbH & Co. (“Papst”) sued Fujifilm Corp., Fujifilm North America Corp., Fujifilm USA, Inc., Hewlett-Packard Co., JVC Company of America, Nikon Corp., Nikon, Inc., Olympus Corp., Olympus Imaging America Inc., Panasonic Corp., Matsushita Electrical Industrial Co., Panasonic Corporation of North America, Samsung Opto-Electronics America, Inc., Samsung Techwin Co., and Victor Company of Japan, Ltd. (collectively “defendants” ) for patent infringement, alleging that the defendants’ digital cameras, when interfacing with a host computer, infringed U.S. Patent Nos. 6,470,399 and 6,895,449. Following the issuance of its claim construction order, the district court granted summary judgment of noninfringement to the defendants.
Papst appealed to the Federal Circuit, arguing that the district court’s grant of summary judgment of noninfringement should be reversed due to incorrect claim constructions. In reviewing the district court’s claim constructions, the Federal Circuit held that a de novo standard of review was appropriate in this case because the district court relied only on intrinsic, not extrinsic, evidence to reach its constructions. The Federal Circuit then determined that the district court’s claim constructions improperly limited the scope of the claims. In particular, the court ruled that neither the claim language nor the remainder of the intrinsic record supported departing from the plain and ordinary meaning of the terms. The Federal Circuit additionally noted that it generally does not construe claims that would exclude a preferred embodiment of the invention. As a result of the Federal Circuit’s rejection of the district court’s five claim constructions, the Federal Circuit vacated the district court’s grant of summary judgment of noninfringement and remanded for further proceedings.
Patentable Invention: Obviousness: Teaching, Suggestion, or Motivation in Prior Art
Patent Office Procedures: Generally
Claim Interpretation: Ordinary Meaning
Litigation Practice and Procedure: Procedure: Appellate Jurisdiction and Procedure
In re Cuozzo Speed Technologies, LLC, No. 14-1301 (Fed. Cir. (P.T.A.B.) Feb. 4, 2015). Opinion by Dyk, joined by Clevenger. Dissenting opinion by Newman.
In affirming the ruling of the Patent Trial and Appeal Board (“Board”), the Federal Circuit determined that it lacks jurisdiction to review the Board’s decision to institute an inter partes review (“IPR”). The Federal Circuit further concluded that the Board properly applied the broadest reasonable interpretation (“BRI”) standard in construing the claims. In addition, the Federal Circuit ruled that substantial evidence supported the Board’s determination of obviousness. Finally, the Federal Circuit held that the Board properly rejected the patent owner’s motion to amend the claims where the proposed amendment would impermissibly broaden the scope of the claims.
The Board instituted an IPR of U.S. Patent No. 6,778,074 (“the ’074 patent”), owned by Cuozzo Speed Technologies, LLC (“Cuozzo”). The ’074 patent relates to a system for indicating whether a vehicle’s speed is above or below the posted speed limit. After construing the claims, the Board found the claims obvious over the prior art. The Board further rejected Cuozzo’s motion to amend the claims as improper because the proposed amendment would impermissibly broaden the claims.
On appeal, Cuozzo argued that the Board’s decision to institute an IPR is reviewable by the Federal Circuit. The Federal Circuit disagreed, however, holding that 35 U.S.C. § 314 broadly excludes all review of such determinations. In addition, the Federal Circuit rejected Cuozzo’s appeal to set aside the Board’s final decision simply because that decision was based on grounds not alleged in the challenger’s petition.
Cuozzo next argued that the Board improperly applied the BRI standard in construing the claims. The Federal Circuit noted that BRI has been used for over 100 years in various other proceedings before the U.S. Patent and Trademark Office (“USPTO”), and there was no indication that the America Invents Act intended to eliminate the use of the BRI standard, despite Congress’s awareness of its widespread use. The Federal Circuit further noted that under the USPTO’s rulemaking authority, the USPTO is permitted to establish regulations regarding the standards for instituting and regulating IPR proceedings, including the application of the BRI standard during such proceedings.
Turning to the claim constructions at issue, the Federal Circuit that the limitation “integrally attached” means “discrete parts physically joined together as a unit without each part losing its own separate identity.” The Federal Circuit rejected Cuozzo’s broader construction because the specification did not support a broader meaning, and the “attached” term suggested that two separate components would need to be present under the claim.
Cuozzo next argued that the Board’s determination of obviousness was incorrect because the combination of references failed to disclose every element of the claims. The Federal Circuit disagreed, ruling that substantial evidence supported the Board’s determination. The Federal Circuit also rejected Cuozzo’s argument that there was no motivation to combine the references relied upon by the Board because applying modern technology to older devices was a commonplace practice in the art.
Finally, Cuozzo appealed the Board’s rejection of Cuozzo’s motion to amend the claims. In affirming the Board’s determination, the Federal Circuit determined that Cuozzo’s proposed amendment was appropriately rejected because it would impermissibly broaden the scope of the claims.
In a dissenting opinion, Judge Newman explained that because an IPR proceeding was designed to act as a surrogate to a district court proceeding, the Board should have been required to apply the same legal standards that would be applied in a district court. With respect to whether the Board’s decision to institute an IPR was appealable, Judge Newman stated that 35 U.S.C. § 314 was not designed to preclude all appellate review of decisions to institute an IPR, but rather only to preclude interlocutory appeals of such determinations.
Alston & Bird's Federal Circuit Patent Case Summaries are intended to be informational and do not constitute legal advice or opinions regarding any specific situation. The material may also be considered advertising under certain rules of professional conduct or other law. This publication may be reprinted without the express permission of Alston & Bird as long as it is reprinted in its entirety including the copyright notice, ©2015.