Patent Case Summaries November 22, 2022

Patent Case Summaries | Week Ending November 18, 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.

American National Manufacturing Inc. v. Sleep Number Corp., et al., Nos. 2021-1321, -1323, -1379, -1382 (Fed. Cir. (PTAB) Nov. 14, 2022). Opinion by Stoll, joined by Schall and Cunningham.

Sleep Number owns two patents directed to systems and methods for adjusting the pressure in an air mattress. American National filed IPR petitions challenging multiple claims of the patents, and the Patent Trial and Appeal Board issued final written decisions finding some, but not all, of the challenged claims unpatentable. During the IPRs, the Board permitted Sleep Number to present proposed amended claims.

On appeal, American National challenged various aspects of the Board’s determinations. First, American National argued that the Board erred in permitting Sleep Number to present proposed amended claims that both responded to a ground of unpatentability and made other changes not responsive to an unpatentability ground. The Federal Circuit explained that “nothing in the America Invents Act (AIA) or the Board’s regulations precludes a patent owner from amending a claim to both overcome an instituted ground and correct other perceived issues in the claim.” The court continued that, “so long as a proposed claim amendment does not enlarge the scope of the claims, does not add new matter, and responds to a ground of unpatentability in the proceeding, the patent owner may also make additional amendments to a claim without running afoul of the relevant statutes and regulation.” Here, because Sleep Number’s proposed substitute claims included a responsive narrowing limitation, “Sleep Number was free to include other amendments, including any addressing perceived §§ 101 and 112 issues.”

Second, American National argued that an admitted error in the priority application’s specification necessarily meant that the proposed amended claims were not enabled. The Federal Circuit disagreed. The specification itself made clear that the error was “obvious.” Also, Sleep Number’s expert opined that a skilled artisan, reading the specification in its entirety, would view the error as an obvious typographical error.

Third, American National argued that the proposed amended claims added a term that injected an inventorship issue into the patents. The Federal Circuit again disagreed. The term in question concerned structures that “were well known in the art and incorporated into the patent specification.” The court thus ruled that “Sleep Number’s choice to recite these well-known structures in its amended claims does not make [the inventor of those structures] an inventor of the [Sleep Number] patents.”

Finally, the Federal Circuit addressed American National’s argument that the Board violated due process and the APA when analyzing evidence of alleged commercial success. American National argued that the Board’s discussion of nexus “inappropriately resolved infringement,” but the Federal Circuit disagreed, noting that “the Board itself made clear that it was not resolving infringement issues.”

The parties’ remaining arguments on appeal were supported by substantial evidence or failed to demonstrate an abuse of discretion by the Board. Thus, the Federal Circuit affirmed the Board’s final written decisions.

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VLSI Technology LLC v. Intel Corp., Nos. 2021-1826, -1827, -1828 (Fed. Cir. (PTAB) Nov. 15, 2022). Opinion by Bryson, joined by Chen and Hughes. 

VLSI owns a patent directed to “a technique for alleviating the problems of defects caused by stress applied to bond pads of an integrated circuit.” According to the specification, bond pads are used to attach the chip to another electronic component, which puts forces on the bond pad. 

VLSI sued Intel for infringement, and the district court construed the term “force region.” Meanwhile, Intel filed IPR petitions challenging four of the patent’s claims, and Intel offered the same definition of “force region.” In the Patent Trial and Appeal Board’s final written decision, however, the Board construed “force region” differently, without specifically referencing the district court’s construction. The Board also construed a second term that requires certain “metal-containing interconnect layers” to be “used for electrical interconnection not directly connected to the bond pad.”

The Board sided with Intel for both constructions, and the Board found each of the challenged claims unpatentable. VLSI appealed, raising two principal issues. First, VLSI argued that the Board erred in its treatment of the term “force region.” Second, VLSI argued that the Board erred in construing the phrase “used for electronic interconnection.” The Federal Circuit affirmed with respect to the first issue, but reversed and remanded with respect to the second. 

Regarding “force region,” VLSI argued that the Board erred by not adopting the construction proposed by Intel and adopted by the district court. But as the Federal Circuit explained, the district court’s construction did not resolve the parties’ dispute. Also, the Board “did not reject the district court’s construction,” but instead “addressed an argument not made to the district court, and it reached a conclusion not at odds with the conclusion reached by the district court.” Still further, the Federal Circuit confirmed that “the Board is not limited to the claim constructions proffered by the parties, but may adopt its own claim construction of a disputed claim term.” The Federal Circuit ultimately determined that the correct construction of “force region” was the definition provided in the patent, and the Federal Circuit ruled that the Board’s treatment of the claim term “is not inconsistent with our construction.” Thus, the Board properly found that the cited prior art rendered three of the challenged claims unpatentable.

The patentability of the fourth challenged claim turned on the second claim-construction issue. The Federal Circuit agreed with VLSI that the Board’s construction of the claim phrase “used for electrical interconnection not directly connected to the bond pad” was too broad. The court relied on the surrounding claim language and the file history in concluding that VLSI’s proposed construction was correct. Accordingly, the Federal Circuit reversed and remanded this issue. 

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CUPP Computing AS v. Trend Micro Inc., et al., Nos. 2020-2262, -2263, -2264 (Fed. Cir. (PTAB) Nov. 16, 2022). Opinion by Dyk, joined by Taranto and Stark. 

CUPP owns three patents directed to security solutions that address the problem of malicious attacks aimed at mobile devices. Trend Micro filed IPR petitions challenging several claims of the patents. The Patent Trial and Appeal Board agreed with Trend Micro, finding all the challenged claims obvious over the prior art. In so ruling, the Board construed a claim term requiring “a mobile device processor different than the mobile security system processor.” The Board determined that while these two processors must be “different,” they need not be “remote” from one another. CUPP appealed.

The Federal Circuit affirmed. Addressing the “security system processor” limitation, the Federal Circuit ruled that the Board properly construed the term consistent with the specification. In particular, the fact that the security system processor and the mobile device processor are different “does not suggest that the two processors are remote from one another.” The Federal Circuit thus concluded: “Here, the specification strongly suggests that ‘different’ does not mean ‘remote,’ and nothing in the claims requires otherwise.”

CUPP also relied on the prosecution history, arguing that the Board’s construction was improper because CUPP had disclaimed a non-remote security system processor during the initial examination of one of the patents. The Federal Circuit disagreed, stating that the Board properly rejected the argument. A disavowal during prosecution must be “both clear and unmistakable.” Here, “CUPP’s purported disclaimer did not unmistakably renounce security system processors embedded in a mobile device.”

Lastly, CUPP argued that the Board erred by rejecting CUPP’s disclaimer in the IPRs themselves, disavowing a security system processor embedded in a mobile device. The Board concluded that it could ignore that disavowal in construing the claims. The Federal Circuit agreed, stating: “We now make precedential the straightforward conclusion we drew in an earlier nonprecedential opinion: ‘The Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of those arguments.’” The court expressly limited this holding to the IPR proceeding in which the disclaimer is made. Thus, “a disclaimer is not binding on the PTO in the very IPR proceeding in which it is made,” but “a disclaimer in an IPR proceeding is binding in later proceedings, whether before the PTO or in court.”

Applying the affirmed claim construction, the Federal Circuit determined that the Board’s obviousness conclusions were supported by substantial evidence. Thus, the Federal Circuit affirmed. 

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