Patent Case Summaries November 26, 2019

Patent Case Summaries | Week Ending November 22, 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.

Game & Technology Co. v. Wargaming Group Ltd., et al., No. 2019-1171 (Fed. Cir. (PTAB) Nov. 19, 2019). Opinion by Stoll, joined by Dyk and Plager.

The Federal Circuit affirmed the Patent Trial and Appeal Board’s decision that an IPR was not time-barred under 35 U.S.C. § 315(b) because the petitioner had not been properly “served with a complaint alleging infringement” more than one year before filing the IPR petition.

On July 9, 2015, Game & Technology Co. (GAT) filed a complaint accusing Wargaming Group and its affiliate of infringing a patent. GAT then attempted service in two ways. First, a process server served the complaint and summons, but the summons was not signed by the clerk of court and did not bear the court’s seal. Second, GAT’s attorney mailed a copy of the complaint and summons to Wargaming at its office.

On March 13, 2017, Wargaming filed a petition for IPR. GAT asserted that the petition was time-barred, but the Board deferred ruling on the issue to allow development of the record on the competing factual issues regarding service. In its final written decision, the Board concluded that neither form of service triggered § 315(b)’s time bar. The Board found that the lack of signature and seal rendered the first attempted service non-compliant with Rule 4(a) of the Federal Rules of Civil Procedure. And the Board found that the attempted service by mail also failed to comply with Rule 4, which requires that the clerk send the summons and that the form of mail include a signed receipt. On the merits of the IPR, the Board found that that the challenged claims would have been obvious in view of two prior art references. GAT appealed.

Addressing the issues relating to service, the Federal Circuit agreed with GAT that the Board erred by holding that it (i) lacked authority to overlook defects in service of a complaint and (ii) cannot find proper service if “no district court has deemed service to have occurred.” The Federal Circuit ruled that “the Board must necessarily determine whether service of a complaint alleging infringement was properly effectuated. The Board cannot strictly rely on a district court’s determination of proper service because district courts rarely make such determinations.”

The Federal Circuit thus agreed with GAT “that the Board’s conclusion that it lacked authority to consider the propriety of service under Rule 4 and common law interpreting Rule 4 was incorrect.” However, “aside from the Board’s general statement,” the Federal Circuit saw “no error in the Board’s analysis, particularly given GAT’s failure to raise certain arguments on appeal.” The Federal Circuit explained: “The Board rejected GAT’s service arguments based on the plain language in Rule 4, and GAT fails to address, let alone show, any specific errors in the Board’s findings.” The Federal Circuit therefore could not conclude that the Board erred in its determination that the IPR petition was not barred by § 315(b). Turning to the merits, the Federal Circuit ruled that substantial evidence supported the findings of unpatentability. The court thus affirmed the Board’s decision.

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TQ Delta, LLC v. Cisco Systems, Inc., et al., Nos. 2018-1766, -1767 (Fed. Cir. (PTAB) Nov. 22, 2019). Opinion by Stoll, joined by Reyna. Dissent without opinion by Hughes.

In a consolidated appeal from final written decisions in a pair of IPRs, the Federal Circuit reversed the Patent Trial and Appeal Board’s finding of obviousness because the finding as to a motivation to combine was not supported by substantial evidence.

At the outset, the Federal Circuit stated that “conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.” Obviousness determinations should not be “based on conclusory and unsupported expert testimony” because “such testimony risks allowing the challenger to use the challenged patent as a roadmap to reconstruct the claimed invention using disparate elements from the prior art.”

The challenged patents are directed to reducing peak-to-average power ratio (PAR) by scrambling the phases of parallel carriers. The IPR petitioner’s expert had opined that “[c]ombining [a first prior art reference’s] phase scrambler into [a second prior art reference’s multicarrier] transmitter would have been a relatively simple and obvious solution to reduce [the second prior art reference’s] PAR.” In support, the expert cited two sentences related to phase scrambling in the first prior art reference. But those two sentences provided “no express discussion of, nor any connection to, the PAR of a multicarrier transmitter,” and the expert “fail[ed] to identify any other evidence that provides this necessary link.” Consequently, the Federal Circuit held that substantial evidence did not support the expert’s opinion. The court therefore reversed the Board’s finding of obviousness.

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Pharma Tech Solutions, Inc., et al. v. LifeScan, Inc., et al., No. 2019-1163 (Fed. Cir. (D. Nev.) Nov. 22, 2019). Opinion by Stoll, joined by Moore and Reyna.

The Federal Circuit affirmed the district court’s summary judgment of noninfringement because prosecution history estoppel barred infringement under the doctrine of equivalents.

Pharma Tech sued LifeScan for infringement of two patents that concern blood glucose monitoring systems for home use by individuals with diabetes. In the district court, Pharma Tech agreed that LifeScan’s product did not literally infringe, and therefore Pharma Tech pursued infringement under the doctrine of equivalents. LifeScan filed a motion for summary judgment arguing that prosecution history estoppel precluded any infringement under the doctrine of equivalents. The district court granted the motion, and Pharma Tech appealed.

During prosecution, the examiner had rejected the pending claims in view of certain prior art. In response, the applicants narrowed the claims to cover only bioelectrical blood glucose monitoring systems that “convert a plurality of current readings to analyte concentration measurements and compare said analyte concentration measurements.” Relying on this amendment and the accompanying arguments, the Federal Circuit ruled that the applicants “presumptively surrendered any bioelectrical blood glucose monitoring systems that do not convert a plurality of current readings into analyte concentration measurements and compare the resulting analyte concentration measurements.”

Pharma Tech asserted that the rationale for its amendment “bore no more than a tangential relation to the equivalent in question,” but the Federal Circuit disagreed: “The objectively apparent reason for the … amendment was to distinguish the invention over prior art systems that measured and displayed a diffusion limiting current reading.” Consequently, the Federal Circuit ruled that “the amendment was made to achieve patentability—and for reasons more than tangentially related to the equivalent at issue.” The Federal Circuit explained that the applicants’ “clear statements not only establish argument-based estoppel, but also negate Pharma Tech’s reliance on the tangential relation exception.” Because “Pharma Tech’s asserted equivalent [fell] squarely within the territory between the original claim and the amended claim,” the Federal Circuit affirmed the district court’s summary judgment of noninfringement under the doctrine of equivalents.

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In re: IPR Licensing, Inc., No. 2018-1805 (Fed. Cir. (PTAB) Nov. 22, 2019). Opinion by O’Malley, joined by Newman and Taranto.

The Federal Circuit reversed the Patent Trial and Appeal Board’s final judgment of unpatentability as to one asserted ground and held that all other challenges were waived. Consequently, the Federal Circuit vacated the Board’s judgment.

ZTE Corp. filed a petition for IPR challenging certain claims of a patent assigned to IPR Licensing, Inc. (IPRL). The Board instituted on only the first of three grounds for unpatentability. The instituted ground relied on three prior art references, and the Board ultimately found that all challenged claims were unpatentable.

In a prior appeal stemming from this IPR, the Federal Circuit had “vacated the Board’s findings as to claim 8 and remanded for the Board to assess whether there was substantial evidence to support” motivation to combine the references in ground one. On remand, the Board again found claim 8 unpatentable. The Board’s new finding of motivation to combine, however, relied on a fourth prior art reference that was not part of ground one and not part of the record.

In the present appeal, the Federal Circuit addressed the Board’s new finding and held that “the Board improperly relied on prior art … that was not asserted in support of ground one—the only instituted ground.” “To hold otherwise,” the Federal Circuit continued, “would allow the Board’s final written decision to rest on arguments that a patent owner has no ability to rebut or anticipate.” Thus, the Federal Circuit reversed the Board’s remand decision. The Federal Circuit also held that ZTE had waived any ability to request institution of IPR on the non-instituted grounds because ZTE had withdrawn from the appeal.

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