Patent Case Summaries February 17, 2021

Patent Case Summaries | Week Ending February 12, 2021

 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.

Chudik v. Hirshfeld, No. 2020-1833 (Fed. Cir. (E.D. Va.) Feb. 8, 2021). Opinion by Taranto, joined by Bryson and Hughes. 

The Federal Circuit affirmed a determination by the USPTO, and subsequently a district court, that Chudik was not entitled to a patent term adjustment covering time spent during prosecution pursuing a reversal of an adverse decision on patentability. Each time that Chudik had pursued such a reversal, the examiner had instead reopened prosecution.

During prosecution of a patent application, Chudik received a final rejection from the examiner, prompting Chudik to file a notice of appeal. Rather than filing an answer, however, the examiner elected to reopen prosecution and issue a new ground of rejection. This series of events occurred multiple times, with the examiner each time electing to reopen prosecution rather than file an answer. On the fourth instance, while Chudik’s notice of appeal was pending, the examiner withdrew certain rejections and, after some claim alterations, issued a notice of allowance.

Chudik then sought a patent term adjustment under 35 U.S.C. § 154(b)(1)(C)(iii), which provides for so-called “C-delay” where the delay is due to “appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability.” The PTO concluded that the provision does not apply, and the district court affirmed. 

The Federal Circuit affirmed. The appellate court held that the statutory language “is reasonably interpreted—indeed, is best interpreted—to require a reversal decision made by the Board or a reviewing court, thus excluding time spent on a path pursuing such a decision when, because of an examiner reopening of prosecution, no such decision is ever issued.” The court explained that the language “speaks of ‘appellate review by’ the Board or a court,” which did not occur here. Thus, “the statute’s words, in their most natural meaning when applied to an examiner’s unpatentability ruling, require that the patent issue under a Board decision that reversed the examiner’s unpatentability ruling or under a court decision that reversed a Board unpatentability ruling in the matter.”

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cxLoyalty, Inc. v. Maritz Holdings Inc., Nos. 2020-1307, -1309 (Fed. Cir. (PTAB) Feb. 8, 2021). Opinion by Prost, joined by Lourie and Hughes. 

cxLoyalty petitioned for covered business method (CBM) review of claims in a patent owned by Maritz. The claims relate to a system and method for permitting a customer of a loyalty program to redeem loyalty points for rewards offered by vendors without the need for human intervention. During the CBM review, Maritz submitted substitute claims incorporating requirements that a graphical user interface communicate with multiple application programming interfaces having corresponding vendor systems.

The Patent Trial and Appeal Board instituted review and held that original claims 1–15 are patent ineligible under 35 U.S.C. § 101 but that proposed substitute claims 16–23 are patent eligible because, while abstract, they are directed to an inventive concept. cxLoyalty appealed, and Maritz cross-appealed.

The Federal Circuit ruled that all of the claims are ineligible under § 101. Under step one of the two-part Alice framework, the court held that all of the claims are directed to an abstract idea involving transfers of information relating to a longstanding commercial practice. Under step two of Alice, the Federal Circuit ruled that “the claims amount to nothing more than applying the … abstract idea using techniques that are, whether considered individually or as an ordered combination, well-understood, routine, and conventional.” The claims, including the substitute claims, are not directed to a technological solution to a technological problem. The court explained that Maritz’s contrary expert testimony “merely labels, in conclusory fashion, the invention as a technological solution to a technological problem,” and the court “do[es] not accord weight to conclusory expert testimony.” 

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Infinity Computer Products, Inc. v. Oki Data Americas, Inc., No. 2020-1189 (Fed. Cir. (D. Del.) Feb. 10, 2021). Opinion by Prost, joined by Clevenger and Taranto. 

Infinity sued Oki Data for infringing four related patents directed to using a fax machine as a printer or scanner for a personal computer. During prosecution, Infinity had distinguished an anticipating prior art reference by amending the claims to require a “passive link” between the fax machine and the computer, thus not requiring any intervening apparatus as in the prior art. 

The district court ruled that the claim terms “passive link” and “computer” are indefinite. Infinity had taken materially inconsistent positions regarding the extent of the passive link. Also, because there was not reasonable certainty about where the passive link ends, there likewise was not reasonable certainty about where the claimed “computer” begins.

The Federal Circuit affirmed. The court noted that “indefiniteness may result from inconsistent prosecution history statements where the claim language and specification on their own leave uncertainty that, if unresolved, would produce indefiniteness.” Here, the claim language and specification did not provide “reasonable certainty about a crucial aspect of ‘passive link,’ namely, where it ends.” The Federal Circuit explained that “the public-notice function of a patent and its prosecution history requires that we hold patentees to what they declare during prosecution.” The intrinsic record in this case “leaves an ordinarily skilled artisan without reasonable certainty as to where the passive link ends and where the computer begins,” rendering the claims invalid for indefiniteness.

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Amgen, Inc., et al. v. Sanofi, et al., No. 2020-1074 (Fed. Cir. (D. Del.) Feb. 11, 2021). Opinion by Lourie, joined by Prost and Hughes. 

The district court granted Sanofi judgment as a matter of law, finding that Amgen’s “broad” composition claims for antibodies, which were “defined, not by structure, but by meeting functional limitations,” were not enabled.

The Federal Circuit affirmed. Analyzing the factors set out in In re Wands, which the Federal Circuit said “has become the ‘go to’ precedent for guidance on enablement,” the court agreed with the district court’s finding that “the specification here did not enable preparation of the full scope of these double-function claims without undue experimentation.”

The Federal Circuit stated that “while functional claim limitations are not necessarily precluded in claims that meet the enablement requirement, such limitations pose high hurdles in fulfilling the enablement requirement for claims with broad functional language.” Here, the claims were “far broader in functional diversity than the disclosed examples,” and the invention was in “an unpredictable field of science.” In the end, the court ruled that “the functional limitations here are broad, the disclosed examples and guidance are narrow, and no reasonable jury could conclude under these facts that anything but ‘substantial time and effort’ would be required to reach the full scope of [the] claimed embodiments.”

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Synchronoss Technologies, Inc. v. Dropbox, Inc., et al., Nos. 2019-2196, -2199 (Fed. Cir. (N.D. Cal.) Feb. 12, 2021). Opinion by Reyna, joined by Prost and Taranto. 

Synchronoss sued Dropbox for infringing three patents that relate to synchronizing data or devices connected via the Internet. The district court held that the asserted claims were either invalid as indefinite or not infringed. The Federal Circuit affirmed.

First, the district court ruled that the asserted claims in one patent were indefinite under 35 U.S.C. § 112, paragraph 2, because they recite claim limitations, including a “user module,” in means-plus-function format that lack adequate corresponding structure in the specification. The Federal Circuit affirmed, rejecting Synchronoss’s argument that skilled artisans would have understood a “user module” as structure.

Second, the district court ruled that the asserted claims in a second patent were indefinite on the ground that they contain an impossibility—“generating a [single] digital media file” that “compris[es] a directory of digital media files.” Synchronoss’s expert conceded that the claim limitation was erroneous but testified that a person of ordinary skill in the art would have understood that the claims require a “digital media file” that was part of “a directory of digital media files.” The district court rejected that reinterpretation, and the Federal Circuit agreed.

Finally, the district court held that two of the patents were not infringed because they require hardware, while Synchronoss’s theory of infringement was limited to Dropbox’s software. The Federal Circuit affirmed, stating that the recitation of “residing on … hardware” limits the scope of the claims. The Federal Circuit also explained that the conclusion that the “hardware” term limits the claim scope is “consistent with both Synchronoss’s own assertions and the record evidence.” “The evidence shows that Dropbox provides its customers with software for download but no corresponding hardware.” Thus, the Federal Circuit affirmed the district court’s judgment of noninfringement.

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