Patent Case Summaries March 17, 2021

Patent Case Summaries | Week Ending March 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.

Uniloc 2017 LLC v. Facebook Inc., et al., No. 2019-1688 (Fed. Cir. (PTAB) Mar. 9, 2021). Opinion by Chen, joined by Lourie and Wallach.

This appeal stems from a series of IPRs filed initially by Facebook and (separately) by Apple, with later petitions filed by LG Electronics. Each IPR challenged claims in a Uniloc patent directed to a system and method for enabling local and global instant Voice over Internet Protocol messaging. The Patent Trial and Appeal Board ruled that LG was not estopped from challenging claims 1-8 and that Facebook was not estopped from challenging claim 7. The Board then found these claims and others to be unpatentable as obvious. Uniloc appealed.

The Federal Circuit first analyzed “whether 35 U.S.C. § 314(d)’s ‘No Appeal’ provision bars this court’s review of the Board’s conclusion that under § 315(e)(1) a petitioner is not estopped from maintaining the IPR proceeding before it.” The Federal Circuit held that “§ 314(d) does not preclude this court from reviewing the Board’s § 315(e)(1) estoppel decision.” The court explained that, “considering the strong presumption of reviewability of agency action, we see no indication that § 314(d) precludes judicial review of the Board’s application of § 315(e)(1)’s estoppel provision in this case, where the alleged estoppel-triggering event occurred after institution.” The Board’s estoppel determination “was a separate and later determination not closely tied to institution and therefore not barred by § 314(d).”

Applying that holding, the Federal Circuit concluded that the Board did not err in finding that LG is not estopped from challenging claims 1-8 and that Facebook is not estopped from challenging claim 7. Uniloc contended that LG is estopped because LG is an alleged “real party in interest or privy of the petitioner.” Analyzing this issue, the Federal Circuit reiterated that the determination “has no bright-line test” and is “a highly fact-based inquiry” that “is grounded in due process concerns for both the petitioner (here, LG) and the opposing party (here, Uniloc).” Ultimately the court concluded that “LG acted of its own accord” and was not estopped. The Federal Circuit likewise saw no error in the Board’s determination that Facebook was not estopped.

The Federal Circuit then turned to Uniloc’s challenges to the Board’s obviousness determinations. In a thorough analysis of the prior art, the challenged claims, and the Board’s findings, the Federal Circuit ruled that substantial evidence supported the Board’s obviousness determinations.

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Edgewell Personal Care Brands, LLC, et al. v. Munchkin, Inc., No. 2020-1203 (Fed. Cir. (C.D. Cal.) Mar. 9, 2021). Opinion by Moore, joined by Newman and Hughes.

Edgewell sued Munchkin for infringement of two patents relating to improvements in the design of a “cassette” for use in diaper pail systems. The district court issued claim constructions and, based on those constructions, awarded Munchkin summary judgment of noninfringement of both patents. Edgewell appealed.

The claims of the first patent cover a cassette having a “clearance” located in a bottom portion of the cassette. The clearance prevents users from installing the cassette upside down in the pail. The district court construed the term “clearance” to require a space between the cassette and the pail once the cassette is installed in the pail. The Federal Circuit, however, reversed the construction, explaining that “an apparatus claim is generally construed according to what the apparatus is, not what the apparatus does.” Thus, “the clearance limitation is satisfied when the cassette itself is constructed with a clearance.” The Federal Circuit therefore vacated the district court’s grant of summary judgment of noninfringement and remanded.

The second patent is directed to the components of the cassette, including an “annular cover” with a “tear-off” section. The Federal Circuit upheld the district court’s construction of “annular cover” and “tear-off section” as part of a single structure, stating that the constructions were supported by the claim language and written description. The Federal Circuit also upheld the construction of the term “engage” to mean “attach” in the sense of requiring “at least meaningful contact or connection.”

The Federal Circuit agreed with Edgewell, however, that the district court erred in granting summary judgment of noninfringement under the doctrine of equivalents. The district court had held that Edgewell’s doctrine of equivalents theory of infringement vitiated or rendered meaningless the “annular cover” limitation. The Federal Circuit ruled that the district court erroneously evaluated the limitation “as a binary choice between a single-component structure [per the construction] and a multi-component structure [per the accused cassettes], rather than evaluating the evidence to determine whether a reasonable juror could find that the accused products perform substantially the same function, in substantially the same way, achieving substantially the same result as the claims.” Edgewell’s evidence of equivalency created a genuine issue of material fact for the jury to resolve. Thus, the Federal Circuit reversed the grant of summary judgment and remanded.

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In Re: Board of Trustees of the Leland Stanford Junior University, No. 2020-1012 (Fed. Cir. (PTAB) Mar. 11, 2020). Opinion by Reyna, joined by Prost and Lourie.

An examiner rejected the claims in a patent application filed by Stanford because the claims involve ineligible subject matter under 35 U.S.C. § 101. The patent application is directed to methods and computing systems for determining haplotype phasing, which is a process for determining the parent from whom alleles—i.e., versions of a gene—are inherited. The claimed methods involve using genotype data and pedigree data to determine alleles’ inheritance state using a method published in the prior art.

On review of the examiner’s rejection, the Patent Trial and Appeal Board affirmed, finding that the claims are directed to abstract mathematical calculations and statistical modeling with no further inventive step. Applying the Supreme Court’s two-step Alice framework, the Board first determined that the claimed steps are directed to either the “mental steps of receiving, storing, or providing information” or “mathematical concepts.” The Board also concluded that the recited mathematical process is not integrated into a practical application. Further, the claims did not include additional limitations that, when taken individually or as a whole, provide an inventive concept that transforms the abstract idea into patent-eligible subject matter. Stanford appealed.

The Federal Circuit affirmed. Under Alice step one, the court noted that “courts have long held that mathematical algorithms for performing calculations, without more, are patent ineligible under § 101.” Here, the claims are “directed to the abstract idea of mathematically calculating alleles’ haplotype phase.”

Under Alice step two, the Federal Circuit concluded that the claims were not transformed into patent-eligible subject matter. The claims recite “no steps that practically apply the claimed mathematical algorithm”; instead, the claims end at storing the haplotype phase and “providing” it “in response to a request.” Further, the claims neither require nor result in a specialized computer or a computer with a specialized memory or processor. “Indeed,” the court ruled, “it is hard to imagine a patent claim that recites hardware limitations in more generic terms than the terms employed by claim 1.” The claims thus “do nothing more than recite the haplotype phase algorithm and instruct, ‘apply it,’” which the Supreme Court has prohibited under § 101.

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