Patent Case Summaries October 25, 2023

Patent Case Summaries | Week Ending October 20, 2023

Cyntec Co. v. Chilisin Electronics Corp., et al., No. 2022-1873 (Fed. Cir. (N.D. Cal.) Oct. 16, 2023). Opinion by Stoll, joined by Moore and Cunningham.

Cyntec sued Chilisin for infringement of two patents directed to molded chokes and a method of manufacturing molded chokes. At trial, before closing arguments, the district court granted judgment as a matter of law (JMOL) that the asserted claims were not invalid as obvious. Afterward, the jury found that Chilisin willfully infringed the asserted claims and awarded damages to Cyntec. Chilisin appealed, challenging the district court’s grant of JMOL of nonobviousness, the denial of Chilisin’s post-trial motion for JMOL regarding noninfringement and damages, and the denial of Chilisin’s pretrial Daubert motion to exclude Cyntec’s damages expert testimony as speculative.

The Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded. First, the Federal Circuit held that the district court erred in granting JMOL of nonobviousness because of factual disputes that should have been given to the jury. The Federal Circuit ruled that the reasons the district court provided for granting JMOL were either insufficient or unsupported by the record. The court explained: “Chilisin presented the jury with evidence that would have allowed it to reasonably find the asserted claims obvious in view of [the prior art].” Thus, the Federal Circuit reversed and remanded this issue.

Next, the Federal Circuit affirmed the denial of Chilisin’s motion for JMOL regarding noninfringement. Chilisin argued that the jury verdict rested on an erroneous construction of a “by means of” limitation and that, even under the construction, substantial evidence did not support the jury’s finding of infringement. The Federal Circuit disagreed. The court affirmed the claim construction based on the claim language and the specification, and the court ruled that substantial evidence supported the jury’s infringement finding, including expert testimony, experimental data, and testimony by Cyntec’s vice-president.

Lastly, the Federal Circuit ruled that the district court abused its discretion in denying Chilisin’s Daubert motion. The expert had estimated the amount of Chilisin’s sales of accused products using SEC filings or annual reports of customers who bought or acquired any of the infringing products, as well as certain third-party data. The Federal Circuit ruled that the expert’s calculations were “both unreliable and speculative.” And because the expert’s damages opinions stemmed from those calculations, the Federal Circuit vacated the damages award and remanded.

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Corephotonics, Ltd. v. Apple Inc., Nos. 2022-1340, -1341, -1455, -1456 (Fed. Cir. (PTAB) Oct. 16, 2023). Opinion by Stark, joined by Stoll and Linn.

After Corephotonics sued Apple for infringement of four patents relating to dual-aperture camera systems, Apple filed IPR petitions challenging the claims as obvious. The Patent Trial and Appeal Board found all challenged claims unpatentable as obvious over Apple’s combinations of prior art. As part of its analysis, the Board found that both the “Golan” and “Martin” references are analogous prior art. The Board also ruled that while Apple’s treatment of the analogous art issue in its petitions had been deficient, Apple appropriately rectified the issue in its IPR replies. The Board viewed Apple’s reply arguments as being within the scope of a proper reply.

Corephotonics appealed, challenging the Board’s analogous art findings on grounds that the Board made both procedural and substantive errors.

Turning first to the procedural issues, the Federal Circuit rejected Corephotonics’ argument that the Board abused its discretion by permitting Apple to fix, via its reply briefs, the deficient analogous art discussion in the petitions. “Corephotonics had sufficient notice of Apple’s position … and adequate opportunity to respond,” and Apple’s reply arguments were “properly responsive to Corephotonics’ patent owner response.”

The Federal Circuit also addressed the Board’s ability to make fact findings as to analogous art, stating that “the Board may make its own finding as to the field of endeavor or problem confronted by the inventors—when those issues are in dispute—even if its finding differs from the positions argued for by the parties.” The court ruled that the Board “did nothing more than resolve the factual disputes underlying obviousness that were presented to it by the parties.” “That its findings differed slightly from what was proposed by [Apple], and its articulation of the field of endeavor and pertinent problem were not identical to Apple’s advocacy, do not constitute error.”

Turning to the substantive issues, the Federal Circuit first ruled that substantial evidence supported the Board’s finding that Golan is analogous art. Apple had argued in its replies that Golan is analogous art because it is in the same field of endeavor as the challenged patents and because it is pertinent to the problem faced by the inventors. The Board agreed based on the first reason and thus did not reach the second. The Federal Circuit upheld the Board’s conclusion.

The Federal Circuit then addressed the Board’s finding that Martin is analogous art. The court explained that the Board’s analysis conflated two concepts, “fields of view” and “points of view.” Indeed, the parties agreed that certain key sentences in the Board’s decision were incorrect as written, but they disagreed as to the effect of the error. The Federal Circuit elected to remand the issue because the court was “unable to discern if the Board’s error was, in fact, merely typographical and harmless or, instead, a potentially impactful error of substance.”

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ABS Global, Inc., et al. v. Cytonome/ST, LLC, No. 2022-1761 (Fed. Cir. (PTAB) Oct. 19, 2023). Opinion by Taranto, joined by Reyna and Stark.

ABS filed an IPR petition challenging claims 1, 2, 6, 8, and 9 in a patent directed to a microfluidic device for use in processing particles in a sample fluid. The parties disputed certain terms in claims 1 and 2. Claim 1 requires the microfluidic device to have an inlet for receiving “a sample stream” as well as a region configured to “focus the sample stream.” Dependent claim 2 adds a requirement of introducing a focusing fluid “symmetrically with respect to a centerline of the sample stream.”

The Patent Trial and Appeal Board construed the term “a sample stream” to have “a singular-only meaning not allowing a plurality of streams or a split stream.” The cited prior art, by comparison, disclosed “a split sample stream with a gap in the middle,” which the Board held was not the single stream required under its claim construction. That rationale precluded anticipation. As for obviousness, the Board found that ABS had not provided adequate reasoning why a skilled artisan would have sought to modify the prior art to eliminate the gap in the split sample stream. The Board thus determined that ABS had not shown any of the challenged claims to be unpatentable. ABS appealed.

The Federal Circuit reversed the Board’s claim construction of “a sample stream.” The general rule is that “use of ‘a’ or ‘an’ before a noun naming an object requires that the phrase be construed to mean ‘one or more’ unless the context sufficiently indicates otherwise.” This rule supported construing the term “a sample stream” to mean one or more sample streams. Also, the specification itself said that “the term ‘a’ or ‘an’ entity refers to one or more of that entity,” which reinforced application of the general rule.

The Board had expressed concern with the requirement in claim 2 that a focusing fluid is introduced “symmetrically with respect to a centerline of the sample stream,” taking the view that only a single stream can have “a centerline.” The Federal Circuit did not share that concern, explaining that the requirement of “a centerline” “presumptively covers one or more centerlines of one or more sample streams.”

Next, the Federal Circuit addressed the effect of the reversed claim construction on the challenged claims. The court noted that, “in many cases involving reversal of a Board claim construction, the appropriate course of action is to vacate the Board’s decision and remand the matter.” But in some cases, “where only one answer is supported by substantial evidence and there is no apparent reason to grant a second record-making opportunity, reversal is warranted.” Applying those guidelines, the Federal Circuit concluded that the evidence required finding that claims 1 and 8 are anticipated. As to the other challenged claims, the Federal Circuit vacated the Board’s decision and remanded.

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