Patent Case Summaries May 13, 2020

Patent Case Summaries | Week Ending May 8, 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.


Uber Technologies, Inc. v. X One, Inc., No. 2019-1164 (Fed. Cir. (PTAB) May 5, 2020). Opinion by Prost, joined by Dyk and Wallach.

X One owns a patent directed to exchanging location information between mobile devices. Uber filed an IPR petition with the Patent Trial and Appeal Board, asserting that certain claims were obvious in view of “Okubo” in combination with “Konishi.”

The parties’ dispute centered on a claim limitation that “requires a server to first plot certain known locations on a map, and then, only after plotting, to ‘transmit the map with plotted locations’ to a user’s mobile device.” It was undisputed that Konishi disclosed such “server-side” plotting. The Board found that, in contrast, Okubo discloses “terminal-side” plotting, where “the user’s mobile device first receives a map and only then, on the mobile device, are the locations of other users plotted on the map.” The Board concluded that Uber had not met its burden of demonstrating that the claims were unpatentable as obvious because the combination of Okubo and Konishi “represents impermissible hindsight” or would be a “wholesale modification to Okubo.”

On appeal, the Federal Circuit reversed, ruling that “the Board’s decision incorrectly applied the relevant legal principles.” The Federal Circuit explained that “the record reflects only two possible methods” of achieving the required plotting: server-side plotting and terminal-side plotting. The court stated that both “were undisputedly known in the prior art” and “were the only two identified, predictable solutions for transmitting a map and plotting locations.” Thus, the Federal Circuit ruled that it would have been obvious to substitute server-side plotting for terminal-side plotting. This involved a “predictable variation” of Okubo’s system using a known technique, and it “amounts to a design choice.”

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Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC, No. 2019-1924 (Fed. Cir. (D. Del.) May 8, 2020). Opinion by Reyna, joined by O’Malley and Chen.

The Federal Circuit affirmed the district court’s judgment of noninfringement because the dedication-disclosure doctrine barred infringement under the doctrine of equivalents.

Eagle filed suit accusing Slayback of infringing four patents under the doctrine of equivalents. The asserted claims require a pharmaceutically acceptable fluid that includes propylene glycol (PG). Because Slayback’s accused product uses ethanol rather than PG, Eagle asserted that ethanol is insubstantially different from PG. The district court found, however, that the patents “unambiguously and repeatedly” identify ethanol as an alternative to PG. Thus, because the patents disclose, but do not claim, ethanol as an alternative to PG, the court concluded that the dedication-disclosure doctrine barred infringement under the doctrine of equivalents. Eagle appealed.

The Federal Circuit explained that, under the disclosure-dedication doctrine, “when a patent drafter discloses but declines to claim subject matter, … this action dedicates the unclaimed subject matter to the public.” The doctrine “bars application of the doctrine of equivalents,” and it applies when “the specification discloses unclaimed subject matter with such specificity that one of ordinary skill in the art could identify the subject matter that had been disclosed and not claimed.” Applying that standard, the Federal Circuit agreed with the district court that Eagle’s patents disclose, but do not claim, ethanol as an alternative to PG. “The specification repeatedly identifies—without qualification—ethanol as an alternative pharmaceutically acceptable fluid.” Thus, the Federal Circuit affirmed the district court’s ruling that the disclosure-dedication doctrine barred Eagle’s assertion of infringement under the doctrine of equivalents.

The Federal Circuit also rejected Eagle’s procedural challenge. Eagle asserted that factual disputes existed, thus foreclosing resolution at the pleadings stage. The Federal Circuit found no error in the district court’s decision to discount Eagle’s expert declaration and to focus instead on the patents themselves, which provide sufficient context to decide the issue.

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Apple Inc. v. Fintiv, Inc., No. IPR2020-00019 (Mar. 20, 2020) (designated precedential on May 5, 2020). Order by Fink, joined by Horner and Pettigrew.

In an IPR proceeding, the Patent Trial and Appeal Board ordered the parties to submit supplemental briefing addressing whether the Board should deny institution under 35 U.S.C. § 314(a) because of an earlier trial date in a parallel district court litigation. As guidance, the Board outlined the factors that are relevant to that discretionary determination.

The Board explained that when a patent owner argues that institution should be denied due to an earlier trial date, “the Board’s decisions have balanced the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.”

The Board’s Order described each of the factors, summarizing that “an early trial date should be weighed as part of a balanced assessment of all relevant circumstances of the case, including the merits.” In evaluating the factors, the Board “takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.”

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