Patent Case Summaries May 29, 2019

Patent Case Summaries | Week Ending May 24, 2019

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

Quest Integrity USA, LLC v. Cokebusters USA Inc., No. 2017-2423 (Fed. Cir. (D. Del.) May 21, 2019). Opinion by Dyk, joined by Taranto and Hughes.

The Federal Circuit affirmed-in-part, reversed-in-part, and remanded the district court’s summary judgment ruling invalidating patent claims under the on-sale bar of 35 U.S.C. § 102(b). The Federal Circuit ruled that the district court properly construed the claims and correctly invalidated certain claims in view of that construction. As to other claims, though, the Federal Circuit reversed and remanded because the district court had improperly relied on the sham affidavit doctrine in disregarding declarations of the inventors that impact the question of validity.

Regarding the first set of claims, the Federal Circuit agreed with the district court’s claim construction, concluding that a key example had not been disclaimed during prosecution. The Federal Circuit ruled that “the asserted claims were not narrowed to exclude Example 1 because there was neither ‘clear and unmistakable disclaimer’ of the claim scope … nor any other indication that the claims should be read to exclude Example 1.” Based on that construction, the Federal Circuit affirmed the district court's ruling that the invention was the subject of a commercial offer for sale before the critical date, rendering certain claims invalid.

Regarding the remaining claims, the Federal Circuit reversed and remanded because the district court improperly rejected declarations by the inventors as sham affidavits. The district court had rejected the declarations because they contravened prior deposition testimony by one of the inventors. The Federal Circuit disagreed with that approach, ruling that the declarations “did not simply contradict [the] earlier testimony”; instead, the “detailed” declarations explained why the earlier deposition testimony was incorrect. The corrections in the declarations were also corroborated by Quest’s experts and the pertinent source code. The Federal Circuit thus ruled that these circumstances “took the declarations out of the sham affidavit doctrine.” The court explained that whether the deposition testimony should be credited over the declaration testimony is properly “a question for the jury, not for the court on summary judgment.”

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Sony Corp. v. Iancu, No. 2018-1172 (Fed. Cir. (PTAB) May 22, 2019). Opinion by Dyk, joined by Prost. Dissenting opinion by Newman.

During an IPR, the Patent Trial and Appeal Board determined that a “reproducing means” claim limitation was in means-plus-function format and was implemented in hardware, and therefore did not require disclosure of an algorithm in the specification. Under that construction, the Board found the challenged patent claims invalid as obvious over the prior art.

On appeal, the Federal Circuit vacated and remanded. The court noted that “the parties appear to agree on appeal that the specification contemplates a hardware-implementation of the reproducing means.” The Federal Circuit, however, explained that it is “not bound by the parties’ arguments as to claim construction.” The court determined that “on its face” the patent “refers to a computer-implementation of the reproducing means,” and, “despite testimony of petitioners’ expert … we think that the reproducing means is necessarily construed as computer-implemented based on the specification.” Accordingly, “the corresponding structure must include an algorithm.” In that regard, the Federal Circuit determined that the “specification clearly links the function of the ‘reproducing means’ to the algorithm flowchart of Figure 16.” The Federal Circuit thus remanded for the Board to consider whether the prior art disclosed the required algorithm or an equivalent.

In a dissenting opinion, Judge Newman explained that the appeal should be dismissed for lack of an Article III case or controversy. The patent at issue had expired, the petitioner had withdrawn from the appeal, and the parties had settled the corresponding district court lawsuit. She explained that “[t]here is no interest, neither private interest nor public interest, in the fate of this patent,” and “[t]here appears to be no consequence of either our appellate decision today or the potential PTAB decision on the remand now ordered by the court.”

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Papst Licensing GmbH & Co. v. Samsung Electronics America, Inc., No. 2018-1777 (Fed. Cir. (PTAB) May 23, 2019). Opinion by Taranto, joined by Dyk and Chen.

The Federal Circuit affirmed the Patent Trial and Appeal Board’s determination that certain claims were unpatentable as obvious over a combination of prior art. The Federal Circuit affirmed for two independent reasons: the arguments raised on appeal “are barred by issue preclusion, and they fail on their merits.”

During the IPR proceedings, the Board issued final written decisions in three IPRs involving three related patents owned by Papst. Papst appealed all three decisions, but voluntarily dismissed two of the appeals shortly before oral argument, making the Board’s decisions in those two IPRs final. Addressing the remaining appeal, the Federal Circuit ruled that the two now-final judgments “resolved against Papst the claim-construction and [prior art] issues now before us, and those resolutions were essential to the Board’s decision.” Accordingly, the arguments raised in the remaining appeal were barred by issue preclusion.

The Federal Circuit next determined that “Papst’s challenges fail on the merits, even apart from issue preclusion.” Papst challenged the Board’s construction of claim limitations requiring a process to occur “without requiring any end user to load any software onto the computer at any time” and another process to occur “without requiring any user-loaded file transfer enabling software to be loaded on or installed in the computer at any time.” Papst argued that these limitations prohibit an end user from installing or loading other drivers. 

The Board disagreed, and the Federal Circuit affirmed, explaining: “To state that a process can take place ‘without requiring’ a particular action or component is, by the words’ ordinary meaning … , to state simply that the process can occur even though the action or component is not present; it is not to forbid the presence of the particular action or component.” After confirming the Board’s claim construction, the Federal Circuit affirmed the determination of obviousness because it was supported by substantial evidence.

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