Patent Case Summaries November 13, 2019

Patent Case Summaries | Week Ending November 8, 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.

In re Fought, et al., No. 2019-1127 (Fed. Cir. (PTAB) Nov. 4, 2019). Opinion by Moore, joined by Newman and Chen.

The Federal Circuit reversed a ruling by the Patent Trial and Appeal Board that the claims of a patent application were anticipated.

The application at issue relates to the construction of a “travel trailer.” The examiner rejected the applicants’ patent claims as anticipated by prior art describing a truck trailer and a bulkhead for shipping compartments. The applicants responded to the rejection by providing extrinsic evidence showing that a “travel trailer” is a type of recreational vehicle. The examiner nonetheless maintained the rejection. The Board affirmed, concluding that the term “travel trailer” in the preamble of the claims is a mere statement of intended use that does not limit the claim.

On appeal, the Federal Circuit noted that the body of claim 1 contains a limitation reciting “the travel trailer,” which relies on the preamble’s recitation of “a travel trailer” for its antecedent basis. The court therefore ruled that “travel trailer” is a substantive limitation, explaining: “We have repeatedly held a preamble limiting when it serves as antecedent basis for a term appearing in the body of a claim.”

The Federal Circuit also concluded that the Board’s fact findings regarding the applicants’ extrinsic evidence were not supported by substantial evidence. Properly viewed, the evidence showed that “a ‘travel trailer’ is a specific type of recreational vehicle.” Thus, under a correct analysis, the term is a structural limitation of the claims, and there was no dispute that if “travel trailer” is a limitation, then the claims are not anticipated by the cited prior art. The Federal Circuit therefore reversed and remanded.

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Telefonaktiebolaget LM Ericsson v. TCL Corp., et al., Nos. 2017-2381, -2385 (Fed. Cir. (PTAB) Nov. 7, 2019). Opinion by Newman, joined by Lourie and Clevenger.

TCL filed two petitions for IPR challenging certain claims of Ericsson’s patent relating to a “direct conversion receiver” for wireless communication systems. The Patent Trial and Appeal Board found the challenged claims unpatentable as obvious. The Board’s ruling rested on a determination that a German prior art reference (“Jentschel”) qualified as prior art.

During the IPRs, Ericsson argued that Jentschel was not publicly available more than one year before Ericsson’s earliest asserted filing date. In response, TCL submitted supplemental information in the form of a declaration by a university librarian, who stated that Jentschel was publicly available in the library prior to the critical date. The Board accepted the supplemental information and, relying on Jentschel in combination with other references, found the claims to be unpatentable. Ericsson appealed.

The Federal Circuit first ruled that the Board did not abuse its discretion in admitting the librarian declaration. The court explained that “when the challenged evidence is reasonably viewed as material, and the opponent has adequate opportunity to respond and to produce contrary evidence, the interest of justice weighs on the side of admitting the evidence.”

The Federal Circuit then addressed the Board’s decision to receive Jentschel as a reference and the Board’s finding that Jentschel was accessible to the public by May/June 1996, prior to the critical date. Analyzing the Board’s findings in detail, the Federal Circuit concluded that “substantial evidence supports the Board’s ruling that Jentschel was accessible to the public in the May/June 1996 period,” and that “the Board did not abuse its discretion in receiving the Jentschel article as a reference.” The Federal Circuit also affirmed the Board’s obviousness determination based on the combination of Jentschel and other references.

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Airbus S.A.S. v. Firepass Corp., No. 2019-1803 (Fed. Cir. (PTAB) Nov. 8, 2019). Opinion by Stoll, joined by Lourie and Moore.

The Federal Circuit vacated the Patent Trial and Appeal Board’s decision finding, during inter partes reexamination of a patent owned by Firepass, that certain prior art was not analogous art to the invention claimed.

Firepass’s patent discloses a fire prevention and suppression system that prevents and extinguishes fires using breathable air instead of water, foam, or toxic chemicals. During reexamination, Firepass presented new claims that the examiner rejected as obvious over “Kotliar” in view of other prior art. In an appeal to the Board, Firepass argued that Kotliar is not analogous art. The Board agreed and reversed the examiner’s rejections. As part of its decision, the Board declined to consider Airbus’s argument and presentation of four references demonstrating that certain claimed features were well known in the art. The Board refused to consider those references because they were not used by the examiner to support the rejections. Airbus appealed.

The Federal Circuit explained that “two separate tests define the scope of analogous art: ‘(1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.’” The Board determined that Kotliar does not qualify as prior art under either test.

The Federal Circuit agreed as to the first test, ruling that the Board’s finding under the “field of endeavor” test was supported by substantial evidence. The court, however, disagreed with the Board’s analysis under the “reasonably pertinent” test, holding that the Board erred by refusing to consider the four references relied on by Airbus.

The court explained that, in order to determine whether a reference is “reasonably pertinent” and thus qualifies as analogous art, “a reasonable factfinder should consider record evidence cited by the parties to demonstrate the knowledge and perspective of a person of ordinary skill in the art at the time of the invention.” The Board erred by not considering Airbus’s cited references. Therefore, the Federal Circuit vacated and remanded. 

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