Patent Case Summaries December 18, 2019

Patent Case Summaries | Week Ending December 13, 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.

Techtronic Industries Co., et al. v. ITC, et al., No. 2018-2191 (Fed. Cir. (ITC) Dec. 12, 2019). Opinion by Lourie, joined by Dyk and Wallach.

The Federal Circuit reversed a final determination by the International Trade Commission finding a violation under Section 337 of the Tariff Act because the Commission erred in construing the claim term “wall console.”

The Chamberlain Group Inc. owns a patent disclosing improved “moveable barrier operators,” such as garage door openers. During an ITC investigation against Techtronic and others, the Administrative Law Judge (ALJ) construed the claim term “wall console” to mean a “wall-mounted control unit including a passive infrared detector.” In so ruling, the ALJ determined that Chamberlain had disavowed wall consoles lacking a passive infrared detector. The Commission reversed that construction and, on remand, the ALJ found infringement of the patent. The Commission adopted the ALJ’s determination, prompting Techtronic to appeal. 

On appeal, the Federal Circuit disagreed with the Commission because, as the ALJ originally concluded, Chamberlain had “disavowed coverage of wall consoles without a passive infrared detector.” The Federal Circuit explained that “a disavowal must be clear, but it need not be explicit.” Here, “the specification, in each of its sections, discloses as the invention a garage door opener improved by moving the passive infrared detector from the head unit to the wall console.” Therefore, the court ruled, “by consistently representing the invention as the placement of the detector in the wall console, [the patent] has thus effected a disavowal of alternative locations.” Also, “the prosecution history lacks any indication that Chamberlain defined ‘wall console’ differently there than in the specification.”

Under the revised claim construction, the parties agreed there is no infringement. Consequently, the Federal Circuit reversed the Commission’s claim construction, the final determination of infringement, and the associated remedial orders.

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Ex Parte Linden, et al., Appeal No. 2018-003323 (Apr. 1, 2019) (designated informative on Dec. 11, 2019). Opinion by McKeown, joined by Kumar and Shiang.

Applying the USPTO’s January 7, 2019 revised guidance on the application of 35 U.S.C. § 101, the Patent Trial and Appeal Board reversed an Examiner’s final rejection of certain claims under § 101. The Board also reversed the Examiner’s rejection of the same claims as obvious over a combination of prior art.

The disclosed and claimed invention relates to systems and methods for improving the transcription of speech into text. The Examiner rejected the claims as directed to patent ineligible subject matter under § 101 and as obvious under § 103. Regarding eligibility, the Examiner determined that the claims are directed to an abstract idea of either a method of organizing human activity or a mental process. The Examiner also determined that the claims do not amount to significantly more than the abstract idea.

Applying the USPTO’s guidance, the Board reversed. The Board explained: “While transcription generally can be performed by a human, the claims here are directed to a specific implementation” involving computer-implemented measurements and calculations that “are not steps that can practically be performed mentally.” “Nor do we see how the claimed invention recites organizing human activity.” The Board further determined that while the specification discloses an algorithm to obtain the predicted character probabilities, the mathematical formula or algorithm is not recited in the claims. Accordingly, under the USPTO’s guidance, the claims did not recite a mathematical concept.

Regarding the second step of the USPTO’s guidance, the Board found that the Examiner failed to provide sufficient factual support for the finding that the claims did not add significantly more to the alleged judicial exception.

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Hulu, LLC v. Sound View Innovations, LLC, No. IPR2018-00582 (Aug. 5, 2019) (designated informative on Dec. 11, 2019). Opinion by Hudalla, joined by Stephens and Galligan.

In an IPR final written decision, the Patent Trial and Appeal Board determined that the petitioner had not demonstrated that the challenged claims were unpatentable.

The patent at issue relates to “processing real-time events in applications such as telecommunications and computer networks.” The petitioner asserted that certain claims were unpatentable as obvious based on two separate combinations of references.

Addressing the first combination, the Board found that the petitioner failed to show why a person of ordinary skill would have been motivated to modify one of the references. The Board explained that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” The Board noted that just because “the combination might have been successful does not mean that an ordinarily skilled artisan would have been motivated to make the combination.”

The second combination fared no better. The petitioner did not adequately explain why or how the teachings of one of the references were applicable to the challenged claims.

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Johns Manville Corp., et al. v. Knauf Insulation, Inc., et al., No. IPR2018-00827 (Oct. 16, 2018) (designated informative on Dec. 11, 2019). Opinion by Kalan, joined by Moore and Roesel.

The Patent Trial and Appeal Board denied institution of an IPR, ruling that just because the cited references are analogous art does not mean there was a sufficient reason to combine them for purposes of obviousness.

The challenged patent relates to binders to produce or promote cohesion in non-assembled or loosely assembled matter. The petitioner challenged certain claims as obvious based on four grounds, arguing for each ground that the cited references are analogous art and gave skilled artisans sufficient reason to combine them.

The Board found the petitioner’s argument deficient, explaining that “analogous art is merely a threshold inquiry as to whether a reference can be considered in an obviousness analysis.” Therefore, “demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.” Moreover, the petitioner’s showing was deficient based on the extent of the modifications to the prior art, the reasons for the modifications, and whether there would have been a reasonable expectation of success. “Petitioner merely makes the assertion that it would have been so.” The Board therefore denied institution of the IPR.

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