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.
Axonics, Inc. v. Medtronic, Inc., Nos. 2022-1451, -1452 (Fed. Cir. (PTAB) July 10, 2023). Opinion by Taranto, joined by Lourie and Dyk.
Axonics filed IPR petitions challenging claims in two Medtronic patents directed to a neurostimulation lead and a method for implanting and anchoring the lead. In the petitions, Axonics argued that the challenged claims were unpatentable for obviousness based on a combination of “Young” and “Gerber,” among other references. In two final written decisions, the Patent Trial and Appeal Board found that the combination disclosed all of the claim elements, but found that Axonics failed to prove unpatentability because a skilled artisan would not have been motivated to combine the teachings of Young and Gerber.
In support of its ruling, the Board defined the relevant art as “medical leads specifically for sacral neuromodulation.” The Board then found that Young and Gerber addressed the placement of leads in different locations: Young placed the leads in the sacral nerve area (pelvis), and Gerber placed the leads in the trigeminal nerve area (head). Because the relevant art, according to the Board, was sacral neuromodulation, the Board held that a skilled artisan would not have looked to Gerber. Axonics appealed.
The Federal Circuit vacated and remanded, holding that the Board’s rationale was “doubly infected by error.”
First, the Board “committed a fundamental legal error in confining the motivation inquiry to whether a motivation would exist to make the proposed combination for use in the Young-specific trigeminal-nerve context—to which the Medtronic patents are not limited.” The Federal Circuit explained that the motivation-to-combine inquiry should focus on a motivation “to achieve the claimed invention.” “The inquiry is not whether a relevant artisan would combine a first reference’s feature with a second reference’s feature to meet requirements of the first reference that are not requirements of the claims at issue.” Thus, the Board adopted a legally incorrect framing of the motivation-to-combine question by limiting the inquiry to “the Young-specific trigeminal-nerve context.”
Second, the Board was incorrect in its view that the relevant art is medical leads specifically for sacral neuromodulation. The Federal Circuit concluded that the Board erred in defining the relevant art as limited to that field. “The Medtronic patent claims make no reference to sacral anatomy or sacral neuromodulation, and they cannot be properly construed as so limited.”
In re Float‘N’Grill LLC, No. 2022-1438 (Fed. Cir. (PTAB) July 12, 2023). Opinion by Linn, joined by Prost and Cunningham.
Float‘N’Grill owns a patent directed to a float designed to support a grill to facilitate a user grilling food while remaining in a body of water. The specification and claims require a plurality of magnets for the grill supports, and “no other structure besides the plurality of magnets is disclosed, suggested, or implied for removably securing the grill to the supports.”
After the patent issued, Float‘N’Grill filed a reissue application with broadened claims that did not contain the “plurality of magnets” limitation. The Examiner rejected the reissue claims because, among other things, they do not cover “the invention disclosed in the original patent” as required by 35 U.S.C. § 251. The Board upheld the Examiner’s rejections, and Float‘N’Grill appealed.
The Federal Circuit affirmed. The court held that “reissue claims broadening a limitation to cover undisclosed alternatives to a particular feature appearing from the face of the original specification to be a necessary, critical, or essential part of the invention, do not meet the original patent requirement of § 251.” Here, the specification described a single embodiment that used a plurality of magnets. According to the Federal Circuit, the specification did not describe the magnets “as optional, representative of removable fasteners generally, or exemplary of a broader invention.” Rather, it was an essential part of the invention. Thus, the Board did not err in affirming the Examiner’s rejection of the reissue claims.
SNIPR Technologies Ltd. v. Rockefeller University, No. 2022-1260 (Fed. Cir. (PTAB) July 14, 2023). Opinion by Chen, joined by Wallach and Hughes.
SNIPR owns five patents that were examined and issued under the America Invents Act’s first-inventor-to-file patentability requirements and thus are “pure” AIA patents governed exclusively by AIA law. By comparison, a patent application directed to the same subject matter but assigned to a different entity, Rockefeller, was a “pure” pre-AIA application.
The Patent Trial and Appeal Board declared an interference between the SNIPR patents and the Rockefeller application in order to determine which entity was entitled to patent protection. SNIPR moved to terminate the interference as contrary to the AIA, arguing that interferences are unavailable to assess patents governed by the AIA. The Board denied the motion, reasoning that pre-AIA patent claims (such as Rockefeller’s) must “comply with pre-AIA 35 U.S.C. § 102(g),” which requires an interference under pre-AIA § 135 between the claims of the Rockefeller application and the SNIPR patents. On the merits, the Board entered judgment against SNIPR and cancelled all claims of the SNIPR patents. SNIPR appealed.
The Federal Circuit reversed, agreeing with SNIPR that “pure AIA patents may not be part of an interference.” “SNIPR’s pure AIA patents were examined and issued under the AIA’s first-inventor-to-file patentability requirements; they cannot then be cancelled under the different, pre-AIA invention priority requirements. As such, the Director erred by declaring an interference involving the SNIPR patents.”
Trinity Info Media, LLC v. Covalent, Inc., No. 2022-1308 (Fed. Cir. (C.D. Cal.) July 14, 2023). Opinion by Cunningham, joined by Stoll and Bryson.
Trinity sued Covalent for infringement of two patents relating to methods and systems for connecting users based on their answers to polling questions. Covalent moved to dismiss on the ground that the asserted patents do not claim patentable subject matter under 35 U.S.C. § 101. The district court granted the motion, finding that the claims were directed to the abstract idea of “matching users who gave corresponding answers to a question” and did not contain an inventive concept. Trinity appealed.
The Federal Circuit affirmed. As an initial matter, the court rejected Trinity’s argument that the district court needed to conduct claim construction and fact discovery before analyzing the claims under § 101. The Federal Circuit explained that it has “repeatedly affirmed § 101 rejections at the motion to dismiss stage, before claim construction or significant discovery has commenced.” A patentee “must propose a specific claim construction or identify specific facts that need development and explain why those circumstances must be resolved before the scope of the claims can be understood for § 101 purposes,” but here Trinity did neither.
Next, applying the two-step framework of Mayo and Alice, the Federal Circuit agreed with the district court’s determinations. At step one, the Federal Circuit determined that the claims “are directed to the abstract idea of matching based on questioning.” That conclusion applied equally to dependent claims reciting additional features, such as performing the steps on a “hand-held device” or using “processors configured to perform operations with web servers, a database, and a match aggregator.”
At step two, the Federal Circuit concluded that Trinity’s complaint failed to adequately allege that the claims contain inventive concepts such that they survive a § 101 motion. “Whether viewing the claim limitations individually or as an ordered combination, the asserted claims do not add an inventive concept that would be sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Trinity’s arguments as to inventiveness were unpersuasive, as they “merely reflect the improved speed inherent with applying the abstract idea using a computer.”