Patent Case Summaries February 15, 2024

Patent Case Summaries | Week Ending February 9, 2024

Google LLC, et al. v. EcoFactor, Inc., Nos. 2022-1750, -1767 (Fed. Cir. (PTAB) Feb. 7, 2024). Opinion by Reyna, joined by Taranto and Stark.

EcoFactor is the assignee of a patent directed to methods for reducing cycling times of HVAC systems. Google filed an IPR petition challenging the patentability of the claims as obvious over a combination of two prior art references.

During the IPR, the parties disputed whether the references disclose a claim limitation referred to as limitation “[1m],” which requires “determining a first time prior to said target time … based at least in part on” five inputs referred to as inputs [i] through [v]. Neither party explicitly argued for claim construction, and the Patent Trial and Appeal Board determined that claim construction was unnecessary. The Board, however, ultimately “concluded, based on the claim language, that the inputs [i]–[v] of the [1m] limitation were separate and distinct components that required distinctly different input data.” Because Google’s obviousness theory did “not use each of the five distinct inputs,” the Board found that Google failed to prove unpatentability. Google appealed.

The Federal Circuit reversed. First, the court ruled that the Board did in fact construe limitation [1m] when it ruled that inputs [i] through [v] are distinct inputs that must all be present. The Board’s statement that it was not engaging in claim construction was “not dispositive as to whether claim construction occurred.”

Analyzing the claim construction, the Federal Circuit first ruled that the construction did not violate the APA. The record established “that the parties disputed the meaning and scope of the [1m] limitation during the IPR proceeding.” Also, the Federal Circuit explained that “the Board may adopt a claim construction of a disputed term that neither party proposes without running afoul of the APA.” Google “had notice of the contested claim construction issues and an opportunity to be heard.”

On the merits, the Federal Circuit held that the Board erred in its claim construction because both the claim language and the specification supported a broader construction. While “there is a ‘presumption’ that separately listed claim limitations may indicate separate and distinct physical structure,” here “the claim language and specification rebut any presumption that the five inputs listed in the [1m] limitation are distinct components that must be used distinctly from other listed inputs.” Thus, the Federal Circuit reversed the claim construction, vacated the Board’s decision, and remanded.

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Weber, Inc. v. Provisur Technologies, Inc., Nos. 2022-1751, -1813 (Fed. Cir. (PTAB) Feb. 8, 2024). Opinion by Reyna, joined by Hughes and Stark.

Provisur owns two patents relating to high-speed mechanical slicers used in food-processing plants to slice and package meats and cheeses. The claimed slicers require, among other things, a “food article stop gate” and a feed apparatus “disposed over” a loading apparatus. Weber filed IPR petitions asserting obviousness based on Weber’s food slicer operating manuals in combination with two patent references.

The Patent Trial and Appeal Board concluded that the operating manuals do not qualify as “printed publications” under pre-AIA 35 U.S.C. § 102(b). According to the Board, the manuals were distributed to just “ten unique customers” and were subject to confidentiality restrictions. The Board explained that the confidentiality restrictions stemmed from the operating manuals’ copyright notice and an IP rights clause in Weber’s terms and conditions underlying the sales of its slicer products. The Board also determined that even if the operating manuals qualify as printed publications, the asserted prior art combinations do not disclose the “stop gate” and “disposed over” claim limitations. Weber appealed.

On appeal, Weber argued that the Board erred in determining that the operating manuals were not printed publications, erred in construing the “disposed over” claim term, and erred in finding that the operating manuals do not disclose the “stop gate” limitation. The Federal Circuit agreed with Weber on all three points and thus reversed.

First, the Federal Circuit held that the operating manuals are printed publications. The court explained that “the touchstone of whether a reference constitutes a printed publication is public accessibility,” and “the standard for public accessibility is whether interested members of the relevant public could locate the reference by reasonable diligence.” Here, the operating manuals “were created for dissemination to the public” and several Weber employees testified that the manuals could be obtained in multiple ways. The testimony was corroborated by “delivery notes, invoices, price lists, declarations, and email exchanges.” The Federal Circuit also disagreed with the Board’s finding that the manuals were subject to confidentiality restrictions.

Next, the Federal Circuit reversed the Board’s construction of the term “disposed over,” which the Board interpreted to require the feed apparatus to be “in vertical and lateral alignment with” the loading apparatus. The Federal Circuit held that “the plain language of the claims, read in view of the specification, requires only that the feed apparatus be generally positioned above the loading apparatus.”

Lastly, the Federal Circuit addressed the Board’s finding that the Weber operating manuals did not disclose the “stop gate” limitation. The court ruled that substantial evidence did not support the Board’s finding. In particular, “the Board failed to meaningfully consider Weber’s cited Figures 10 and 227 and accompanying expert testimony,” which together showed that the operating manuals disclose the “stop gate” limitation.

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RAI Strategic Holdings, Inc. v. Philip Morris Products S.A., No. 2022-1862 (Fed. Cir. (PTAB) Feb. 9, 2024). Opinion by Stoll, joined by Chen and Cunningham.

RAI owns a patent directed to electrically powered smoking articles that provide an inhalable substance by heating tobacco or other substances without significant combustion. Philip Morris filed a PGR petition challenging claims 1–30 as invalid for lack of written-description support and, alternatively, obvious over certain combinations of prior art. During the PGR, RAI disclaimed claims 13–17.

The Patent Trial and Appeal Board issued a final written decision finding claims 10 and 27 unpatentable for lack of written description and the remaining claims unpatentable as obvious. RAI appealed, challenging both rulings.

Pertinent to the written description issue, claims 10 and 27 both require a heating member that is “present on [a] heating projection along a segment having a length of about 75% to about 85% of a length of the disposable aerosol forming substance.” The patent specification, by comparison, discloses a broader range—a length of about 75% to about 125%, about 80% to about 120%, about 85% to about 115%, and about 90% to about 110%. The Federal Circuit thus addressed whether the disclosure in the specification “reasonably conveys to those skilled in the art that the inventor had possession” of the claimed length of “about 75% to about 85%.”

The Federal Circuit ruled that the specification does provide sufficient written description support. The court explained that “the specification need not expressly recite the claimed range to provide written description support.” Also, “given the predictability of electro-mechanical inventions such as the one at issue here, and the lack of complexity of the particular claim limitation at issue—i.e., reciting the length of a heating member—a lower level of detail is required to satisfy the written description requirement than for unpredictable arts.” The court also observed that “nothing in the specification indicates that changing the length of the heating member changes the invention, whether as to operability, effectiveness, or any other parameter.” Thus, the Federal Circuit vacated the Board’s ruling as to claims 10 and 27.

Turning to the remaining claims, the Federal Circuit upheld the Board’s finding of obviousness. RAI challenged the Board’s finding of a motivation to combine the prior art references, but the Federal Circuit held that substantial evidence, including expert testimony and the teachings of the references themselves, supported the Board’s finding of a motivation.

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University of South Florida Board of Trustees v. United States, No. 2022-2248 (Fed. Cir. (Fed. Cl.) Feb. 9, 2024). Opinion by Taranto, joined by Reyna and Stoll.

USF owns a patent directed to transgenic mice “with accelerated pathology for Alzheimer’s Disease.” USF sued the United States for infringement. As a defense, the government argued that the United States had a license under 35 U.S.C. § 202(c)(4), a provision of the Bayh-Dole Act. The U.S. Court of Federal Claims agreed with the government and entered final judgment of noninfringement. USF appealed.

On appeal, the parties did not dispute that the judgment must be affirmed if § 202(c)(4) applies. That determination turned on whether the invention was a “subject invention” within § 202(c)(4).

The Federal Circuit explained that in the Bayh-Dole Act, “Congress sought to reduce the disuniformity of government policies and also to strengthen the patent rights of government-fund recipients, under conditions that protected government interests, in order to incentivize commercial development of patentable inventions into useful products.” To achieve that aim, the Bayh-Dole Act “allocates rights in federally funded ‘subject inventions’ between the Federal Government and federal contractors.”

Whether the invention in USF’s patent qualified as a “subject invention” required analyzing certain work in April 1997—work that led to the first actual reduction to practice, for which USF received government funds. The subcontract for that work was not entered until months later, in November 1997. On this backdrop, the Federal Circuit analyzed whether the April 1997 work was “in the performance of work under a funding agreement,” even though the funding agreement came later. If the April 1997 work so qualified, then the government had a license under § 202(c)(4).

USF argued that the funding agreement must be in place at the time of the relevant work, meaning that the pertinent subcontract, which was not entered until November 1997, did not suffice. The Federal Circuit disagreed, ruling that USF’s “premise is legally incorrect in the circumstances presented here, so the November 1997 subcontract is adequate to give the government a § 202(c)(4) license.”

The Federal Circuit refused to read a temporal limitation into the definition of “funding agreement” because the relevant language includes “any … subcontract of any type,” which is broad enough to include later subcontracts for earlier work. Also, USF’s acceptance of payments, and evidence demonstrating similar practices in the industry, supported these circumstances as a “recognized contract practice.” Policy rationales also supported the court’s ruling. And the court explained that an alternative reading would encourage the government to postpone consortium research until after subcontracts are executed, contrary to the goals of the Bayh-Dole Act.

Because the November 1997 subcontract qualified as a “funding agreement sufficient to give rise to the license rights of the government under § 202(c)(4),” the Federal Circuit affirmed.

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