Patent Case Summaries January 11, 2023

Patent Case Summaries | Week Ending January 6, 2023

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.

Dionex Softron GmbH v. Agilent Technologies, Inc., No. 2021-2372 (Fed. Cir. (PTAB) Jan. 6, 2023). Opinion by Stark, joined by Reyna and Chen.

In an attempt to provoke an interference, Dionex and Agilent copied one another’s patent claims directed to a method of operating a liquid chromatography system. The Patent Trial and Appeal Board identified Dionex as the senior party and Agilent as the junior party, thereby requiring that Agilent prove priority. After addressing issues of claim construction, written description, conception, and reduction to practice, the Board entered judgment on priority for Agilent. Dionex appealed.

The Federal Circuit affirmed. First, the court addressed the Board’s treatment of Agilent’s specification as the “originating specification” for purposes of claim construction and evaluating written description support for the claims. Because Dionex’s copying of Agilent’s claims provoked the interference, the Board properly treated the Agilent specification as the originating specification.

Next, the Federal Circuit affirmed the Board’s claim construction for the method claims at issue. Dionex argued that a “determining” step had to occur before a “forwarding” step, but the Board and the Federal Circuit disagreed. The Federal Circuit stated that “the language of a method claim does not generally require that its steps be undertaken in the listed order,” but noted that “sometimes either logic or grammar mandates a particular order of steps.” But here, “neither the logic nor grammar of the claim compel such a result.”

The Federal Circuit likewise affirmed the Board’s finding that Agilent’s specification provided adequate written description support. Dionex’s arguments depended on the court adopting Dionex’s claim construction, which did not happen.

Finally, the Federal Circuit affirmed the Board’s decision to award priority to Agilent. The Board had found that “Agilent’s actual reduction to practice was sufficiently corroborated and occurred prior to Dionex’s earliest conception date.” The Board applied the rule of reason in finding that “the testimony of Wolfgang Kretz, one of Agilent’s two co-inventors, was sufficiently corroborated by two of his co-workers.”

The Federal Circuit determined that substantial evidence supported the Board’s finding. The court rejected Dionex’s argument that the Board abused its discretion in declining to draw negative inferences against Agilent based on a lack of co-inventor testimony and a lack of certain documentary evidence. The Federal Circuit explained that “[t]here is no per se requirement to infer that the testimony of an inventor who fails to testify would be harmful to the position of his co-inventor.” Instead, the Board has discretion to determine whether to apply a negative inference. The Federal Circuit also explained that, similarly, there is “no mandate that the Board draw a negative inference whenever a party fails to present some types of documentary evidence an opposing party insists must exist.”

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Apple Inc. v. Zipit Wireless, Inc., Nos. IPR2021-01124, -01125, -01126, -01129 (Dec. 21, 2022) (designated precedential on Jan. 4, 2023). Opinion by Vidal.

Apple filed six IPR petitions challenging the patentability of certain Zipit patent claims. The Patent Trial and Appeal Board instituted review in all six cases. Zipit filed Patent Owner Responses in just two of the cases, and those cases proceeded to an oral hearing.

During the hearing, the Board asked Zipit’s counsel whether Zipit is contesting the other four IPRs. Zipit’s counsel responded, “Correct, Your Honor. If the Board determines that they have met their burden of proof with respect to those claims Zipit hasn’t filed any opposition.” Based on that statement, the Board determined that Zipit had abandoned those proceedings and entered adverse judgments.

Director Vidal initiated a sua sponte review of the Board’s adverse judgments. The Director stated that she “d[id] not understand counsel’s statements to have been an unequivocal abandonment of the contest of these proceedings.” “Instead Patent Owner’s non-opposition was contingent on the Board determining that Petitioner met its burden of proving by a preponderance of the evidence that the challenged claims are unpatentable.”

Accordingly, the Director vacated the adverse judgments and remanded for “the panel to either issue a show cause order clarifying whether Patent Owner is indeed abandoning the contest or to issue a final written decision addressing the patentability of the challenged claims.”

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