Patent Case Summaries September 2, 2020

Patent Case Summaries | Week Ending August 28, 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.


Christy, Inc. v. United States, No. 2019-1738 (Fed. Cir. (Fed. Cl.) Aug. 24, 2020). Opinion by Hughes, joined by Lourie and Reyna.

Christy owns a patent and, at the appropriate times, paid the patent’s issuance fee and maintenance fees. Later, certain claims were held unpatentable in an IPR and were cancelled. Aggrieved by the cancellation, Christy filed a class-action suit in the Court of Federal Claims raising six claims for compensation from the government, including a Fifth Amendment takings claim and an illegal exaction claim. The court dismissed the allegations on the basis that the cancellation of patent claims does not amount to a compensable taking of a property interest. Christy appealed.

Relying on a recent decision, Golden v. United States, 955 F.3d 981 (Fed. Cir. 2020), the Federal Circuit confirmed that the Court of Federal Claims had jurisdiction over Christy’s taking claim and that Christy failed to state a plausible claim for a taking.

The Federal Circuit then addressed whether the Court of Federal Claims erred in finding that Christy failed to state a plausible claim of an illegal exaction. The Federal Circuit noted that “Christy asserts no constitutional provision, statute, or regulation that the PTO violated by failing to refund Christy’s issuance and maintenance fee payments.” Instead, Christy’s position was that the cancellation of its patent claims in an IPR amounts to an admission that the PTO erred in allowing the issuance of the claims, and therefore the fees should be refunded. The Federal Circuit disagreed with Christy, explaining that “Christy’s argument fails because the law requires payment of these issuance and maintenance fees without regard to any later result of post-issuance proceedings.” “Without showing how the PTO’s actions contravened the Constitution, a statute, or a regulation, Christy cannot state a claim for an illegal exaction.” The Federal Circuit thus affirmed.

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Neville, et al. v. Foundation Constructors, Inc., et al., No. 2020-1132 (Fed. Cir. (C.D. Cal.) Aug. 27, 2020). Opinion by Chen, joined by Lourie and O’Malley.

In the district court, the patentee (Substructure) asserted infringement of two patents related to foundation piles, which are tubular structures placed into the ground to provide stability for the foundations built over them. The tip of the foundation pile contains an “end plate”—a “bottom surface that caps off the end of the conical body of the pile tip, closing it off from the soil in which it is to be placed.” The parties disputed the construction of two claim limitations relating to the “end plate.” The district court rejected Substructure’s proposed constructions and granted summary judgment of noninfringement.

The Federal Circuit affirmed. Addressing the first disputed term, the Federal Circuit agreed with the district court “that, read in light of the specification, the phrase ‘substantially flat surface disposed perpendicular to the centerline of the tubular pile’ does not refer to any interior-facing surface.” The court ruled that the specification “is silent as to any interior surface of the end plate,” instead describing the end plate “in the context of the exterior surface of the pile tip structure as a whole.”

Addressing the second disputed term, the Federal Circuit agreed with the district court that “the plain meaning of the claim, which requires that the ‘protrusion’ is ‘extending outwardly’ from the ‘end plate,’ does not extend to a structure in which the alleged ‘end plate’ is an indistinguishable part of the alleged ‘protrusion’; an object cannot protrude from itself.” The court explained that “nothing in the specification remotely suggests that, contrary to the plain meaning of a ‘protrusion’ and ‘extending outwardly,’ the protrusion could be an indistinguishable part of the end plate from which it protrudes.” The Federal Circuit therefore affirmed the district court’s claim constructions and associated determination of noninfringement.

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Baxalta Inc., et al. v. Genentech, Inc., et al., No. 2019-1527 (Fed. Cir. (D. Del.) Aug. 27, 2020). Opinion by Moore, joined by Plager and Wallach.

Baxalta sued Genentech for infringement of a patent directed to an antibody or antibody fragment used to treat the blood clotting disorder hemophilia. The district court construed the claim terms “antibody” and “antibody fragment,” and based on those constructions the parties stipulated to noninfringement. Baxalta appealed.

Addressing “antibody,” the Federal Circuit ruled that Genentech’s narrow construction, adopted by the district court, was incorrect because it excluded “disclosed and claimed embodiments” and was “inconsistent with the written description and the plain language of the claims,” including certain dependent claims. The Federal Circuit held: “To adopt Genentech’s construction, we would need to invalidate several dependent claims, which according to Genentech, the examiner overlooked in allowing, and to conclude that preparation techniques for the claimed antibodies included in the written description were disclosed in error.”

Addressing “antibody fragment,” the Federal Circuit ruled that the district court likewise erred in construing the term narrowly. The district court relied on an excerpt in the written description, but the Federal Circuit ruled that “the written description’s use of ‘may also include,’ ‘e.g.,’ ‘such as,’ and ‘etc.’ makes clear the patentee did not intend this excerpt of the written description to define ‘antibody fragment.’” The Federal Circuit explained that “the standard for lexicography is exacting, requiring the patentee to clearly express an intent to redefine a term.” Therefore, the court construed “fragment” according to its plain and ordinary meaning in light of the written description as a whole.

Because the district erred in its claim constructions, the Federal Circuit vacated the judgment of noninfringement and remanded.

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Egenera, Inc. v. Cisco Systems, Inc., Nos. 2019-2015, -2387 (Fed. Cir. (D. Mass.) Aug. 28, 2020). Opinion by Prost, joined by Reyna and Stoll.

Egenera sued Cisco for patent infringement and separately petitioned the PTO to remove one of the listed inventors (Schulter). Cisco filed an answer in the district court asserting invalidity based on 35 U.S.C. § 102(f), contending that Schulter had invented a claimed “tripartite structure,” and therefore the patent was invalid for failure to list all inventors. The district court conducted a bench trial on inventorship, finding that Schulter had indeed conceived the tripartite structure and ruling that Egenera was judicially estopped from invoking § 256 to restore Schulter as an inventor, thus holding the patent invalid. Egenera appealed.

The Federal Circuit first affirmed the district court’s claim construction. The district court construed a “logic to modify” limitation as a means-plus-function element. The Federal Circuit agreed even though the limitation does not use the word “means,” and assuming, without deciding, that the limitation “connotes some possible structure in the general sense of software, firmware, or circuitry.” The Federal Circuit explained that, “The question is not whether a claim term recites any structure but whether it recites sufficient structure” for performing the function. Here, the claimed “logic” was “no more than a black box recitation of structure that is simply a generic substitute for ‘means.’” The Federal Circuit also affirmed the district court’s ruling that the corresponding structure was the “tripartite structure” invented by Schulter.

Turning to judicial estoppel, the Federal Circuit held that the district court abused its discretion. Under § 256, inventorship can be corrected for certain reasons, including because “through error an inventor is not named.” The Federal Circuit held that “error” in this context is “simply the incorrect listing of inventors” and “does not exclude ‘considered acts’ or even ‘deceptive intention.’” Applying this standard in the context of judicial estoppel, the Federal Circuit determined that Egenera had not advanced a “clearly inconsistent” position. Among other reasons, “the district court’s intervening claim-construction and inventorship determinations … justif[ied] any seeming inconsistency.” The Federal Circuit thus vacated the district court’s invalidity judgment and remanded.

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