Patent Case Summaries May 6, 2020

Patent Case Summaries | Week Ending May 1, 2020

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.


Uniloc USA, Inc., et al. v. LG Electronics USA, Inc., et al., No. 2019-1835 (Fed. Cir. (N.D. Cal.) Apr. 30, 2020). Opinion by Moore, joined by Reyna and Taranto.

Uniloc filed a complaint against LG for infringement of a patent directed to an improved communication system between a primary station (such as a base station) and at least one secondary station (such as a computer mouse or keyboard). The improved system includes a data field for polling as part of an inquiry message, allowing primary stations to send inquiry messages and conduct polling simultaneously.

LG moved to dismiss the complaint under Federal Rule of Civil Procedure 12(b)(6), arguing that the asserted claims are ineligible under 35 U.S.C. § 101. The district court granted LG’s motion, determining that the claims are directed to the abstract idea of “additional polling in a wireless communication system” and failed to recite an inventive concept sufficient to save the claims.

The Federal Circuit reversed, applying the Supreme Court’s two-step Alice framework for determining patent eligibility under § 101. At Alice step one, the Federal Circuit determined that the claims are not directed to a patent-ineligible concept, such as an abstract idea. The court explained that, in cases involving software innovations, “this inquiry often turns on whether the claims focus on specific asserted improvements in computer capabilities or instead on a process or system that qualifies [as] an abstract idea for which computers are invoked merely as a tool.” The Federal Circuit ruled that here “the claims at issue are directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experienced by parked secondary stations in communication systems.”

Because the claims were patent-eligible under Alice step one, the Federal Circuit did not reach step two.

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Grit Energy Solutions, LLC v. Oren Technologies, LLC, No. 2019-1063 (Fed. Cir. (PTAB) Apr. 30, 2020). Opinion by Prost, joined by Wallach. Opinion concurring-in-part and dissenting-in-part by Newman.

Grit Energy initiated an IPR proceeding, and the Patent Trial and Appeal Board found that the challenged claims were not proved unpatentable. Grit Energy appealed, and the Federal Circuit vacated and remanded.

The challenged patent is directed to a system for storing and discharging proppant, which is a material that prevents ground fractures from closing during hydraulic fracturing. Illustrative claim 1 requires (i) a container that has a “gate having a pin fixedly affixed thereto,” and (ii) a support structure that has an actuator with a receptacle. Grit Energy asserted that the claims would have been obvious over the “Eng Soon” and “Constantin” references, but the Board disagreed, reasoning that neither reference disclosed the claimed configuration.

On appeal, the Federal Circuit first confirmed that Grit Energy had Article III standing to pursue the appeal. The court explained that “it is generally sufficient for the appellant to show that it has engaged in, is engaging in, or will likely engage in activity that would give rise to a possible infringement suit.” Here, the patent owner had previously sued Grit Energy for infringement of the patent, and the lawsuit was dismissed without prejudice, meaning the patent owner “is free to reassert those infringement claims.” Thus, Grit Energy had standing, since it “has engaged in acts that not only could give rise to a possible infringement suit, but did give rise to an infringement suit.”

Turning to the merits, the Federal Circuit ruled that substantial evidence did not support the Board’s contention that Constantin did not disclose the claimed configuration. The court explained that claim 5 of Constantin “plainly teaches” that the components could be configured to match the claimed configuration, despite Constantin’s depiction of a non-matching embodiment in its specification. The Federal Circuit therefore vacated and remanded for the Board to reconsider Grit Energy’s arguments.

Concurring in part and dissenting in part, Judge Newman agreed that Grit Energy had standing to pursue the appeal but disagreed with the court’s treatment of the Constantin reference. In Judge Newman’s view, the Board correctly viewed the reference. She explained that it was “improper” for the majority “to change the text of [the] reference to enlarge its disclosure by removing explicit limitations, and then apply the new enlarged content as prior art.”

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