Patent Case Summaries March 16, 2022

Patent Case Summaries | Week Ending March 11, 2022

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.

Broadcom Corp. v. ITC, Nos. 2020-2008, 2021-1260, -1362, -1511 (Fed. Cir. (ITC and PTAB) Mar. 8, 2022). Opinion by Lourie, joined by Hughes and Stoll.

Broadcom filed a complaint at the ITC alleging that Renesas Electronics violated 19 U.S.C. § 1337 by infringing two patents owned by Broadcom. As to the first patent, the ALJ held that Broadcom failed to satisfy the technical prong of the domestic industry requirement and failed to prove infringement. As to the second patent, the ALJ held that the asserted claim would have been unpatentable as obvious over certain prior art. The Commission affirmed, and Broadcom appealed.

Separately, Renesas petitioned for IPR of both patents. The Patent Trial and Appeal Board held that some but not all of the challenged claims would have been obvious over the prior art. Renesas and Broadcom appealed and cross-appealed those determinations.

After consolidating all three appeals, the Federal Circuit affirmed the Commission’s ruling that Broadcom failed to show the existence of a domestic industry, and affirmed the Board’s decisions in their entirety. Before the Commission, Broadcom had identified only its system-on-a-chip (“SoC”) as a domestic industry article, but the SoC did not contain the “clock tree driver” required by the asserted claim. While Broadcom attempted to rely on its collaboration with customers to integrate its SoC with external memory to enable retrieval and execution of the clock tree driver firmware, the Federal Circuit agreed with the ALJ and Commission that Broadcom did not satisfy the domestic industry requirement. Broadcom failed to identify any specific integration of the domestic industry SoC and the driver firmware, or a specific location where the firmware was stored. In light of this affirmance, the Federal Circuit did not address the Commission’s decision on infringement.

With regard to the Board’s decisions in the IPRs, the Federal Circuit affirmed because substantial evidence supported the obviousness findings.

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Apple Inc. v. MPH Technologies Oy, Nos. 2021-1532, -1533, -1534 (Fed. Cir. (PTAB) Mar. 9, 2022). Opinion by Moore, joined by Prost and Taranto.

Apple appealed three IPR final written decisions that collectively held Apple failed to show the challenged claims obvious in view of a combination of prior art. The patents at issue purport to improve secure messaging between arbitrary hosts utilizing Internet Protocol (IP) security protocols. In particular, they disclose a method for secure forwarding of a message from a first computer to a second computer via an intermediate computer in a telecommunication network that avoids the problems in the prior art related to capacity and security for packet transmission.

The Federal Circuit affirmed. It first upheld the Patent Trial and Appeal Board’s construction of “intermediate computer configured to receive from a mobile computer a secure message sent to the first network address,” stating that the plain meaning requires the mobile computer to directly send the message to the first network address. The court rejected Apple’s argument that the limitation is satisfied so long as the message is sent there eventually. Apple did not challenge the Board’s finding that the prior art reference did not disclose the limitation under that construction.

The Federal Circuit also upheld the Board’s interpretation of “information fields” as requiring “two or more fields” because the term is plural and neither the surrounding claim language nor written description suggests otherwise. The prior art reference disclosed only a single field, and substantial evidence supported the Board’s finding that Apple failed to show a motivation to modify the combination of prior art to use multiple fields.

The Federal Circuit rejected Apple’s remaining arguments. The Board’s uncontested claim construction of “substitute” as “changing or modifying, not merely adding to” disposed of Apple’s challenge on the basis that a prior art reference disclosed “adding” a new header. Also, substantial evidence supported the Board’s finding that Apple failed to modify the combination to include substitution. Additionally, the Federal Circuit agreed with the Board that the claim phrase “modify[ing] the translation table entry address fields” does not merely claim a result; it recites an operation of the intermediate computer that requires an existing address field. Next, the Federal Circuit agreed with the Board’s approach regarding a claim requiring “updates” to existing address fields. Finally, the Federal Circuit ruled that substantial evidence supported the Board’s finding that Apple failed to show that the intermediate computer knows that the address is changed, as required by certain claim language.

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Fleming v. Cirrus Design Corp., No. 2021-1561 (Fed. Cir. (PTAB) Mar. 10, 2022). Opinion by Stoll, joined by Lourie and Hughes.

Hoyt Augustus Fleming appealed the Patent Trial and Appeal Board’s final written decision in an IPR determining that the challenged claims of his patent directed to an intelligent parachute system for an aircraft were unpatentable as obvious over the prior art. The Board also denied Mr. Fleming’s motion to amend certain claims because they lacked written description and were indefinite.

The Federal Circuit affirmed. As to Mr. Fleming’s argument that the proposed combination did not teach the claimed autopilot operations, the court noted that it was well known that aircraft autopilots are programmable and can perform flight maneuvers and deploy a parachute. While the Board had acknowledged that the prior art did not teach “commanding an autopilot to perform the claimed flight maneuvers of increasing pitch, reducing roll, or changing attitude upon receipt of a parachute deployment request,” the Board found that skilled artisans would have been motivated to program the autopilot system to perform the required flight maneuvers upon receipt of a parachute deployment.

On appeal, Mr. Fleming argued that skilled artisans would have been dissuaded from making the proposed combination because the prior art autopilot would be unsafe in many emergency situations. The Federal Circuit, however, agreed with the Board’s explanation that the obviousness inquiry does not require the prior art combination to be the “preferred, or most desirable configuration.”

Mr. Fleming also argued that the Board did not properly consider objective indicia of non-obviousness, namely copying. The Federal Circuit disagreed, stating that while evidence of copying must be considered if presented, not every product that arguably falls within the scope of a patent is evidence of copying. The Board properly considered the evidence, including a declaration by Mr. Fleming stating that he had provided copies of his patent application and had alleged that the accused infringer incorporated disclosed materials into its products and its own patent applications. But the Federal Circuit determined that the declaration did not provide any meaningful infringement analysis beyond Mr. Fleming’s own subjective belief. Also, the accused infringer presented a contrary declaration stating that the product was independently developed.

Finally, the Federal Circuit determined that substantial evidence supported the Board’s finding that the proposed amended claims are unsupported by the patent’s written description. The claims required that the aircraft itself be capable of automatically performing certain functions, but the cited portions of the patent specification did not support that requirement. Because the court upheld the finding on written description, the court did not address Mr. Fleming’s arguments regarding indefiniteness.

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