United States: Federal Circuit Patent Update - August 28, 2018

Last Updated: August 29 2018
Article by Arthur W. Coviello, Richard Goldenberg and William G. McElwain

Precedential Federal Circuit Opinions


Reyna, J. Vacating and remanding the PTAB's IPR decision because the PTAB erred in not considering portions of the petitioner's reply brief. Specifically, the PTAB erred in determining that certain reply arguments were improper new arguments under 37 C.F.R. § 42.23(b). The Court held that the petitioner's reply arguments should have been considered because they cited "no new evidence and merely expand[ed] on a previously argued rationale as to why the prior art disclosures are insubstantially distinct from the challenged claims."

2. IN RE: MAATITA [OPINION] (2017-2037, 08/20/2018) (DYK, REYNA and STOLL)

Dyk, J. Reversing the PTAB's rejection of a design patent directed to an athletic shoe bottom. The Court found that the PTAB misapplied the enablement and definiteness requirements of 35 U.S.C. § 112 in the design patent context. The Court explained that "a design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure." The Court also noted that "there is often little difference in the design patent context between the concepts of definiteness (whether the scope of the claim is clear with reasonable certainty) and enablement (whether the specification sufficiently describes the design to enable an average designer to make the design)." Under these standards, the Court reversed the PTAB's findings of indefiniteness and non-enablement because "a designer of ordinary skill in the art, judging [the disclosed shoe bottom] design as would an ordinary observer, could make comparisons for infringement purposes based on the provided, two-dimensional depiction."


Bryson, J. Reversing, on two separate grounds, a jury's finding that the defendant infringed a patent directed to wireless communications. In addition, the Court vacated and remanded the district court's finding of no unenforceability regarding another wireless communications patent. The defendant argued that the patent was unenforceable because the prior owner of the patent had failed to disclose the priority application for the patent to the European Telecommunications Standards Institute ("ETSI") during the creation of the General Packet Radio Service ("GPRS") standard. In vacating the district court's finding of no unenforceability, the Federal Circuit held that "[t]he district court's finding that [the prior owner] did not have a duty to disclose its patent application [to ETSI] because its [GPRS] proposal [to ETSI] was rejected is unsupported by the evidence." The Court remanded for the district court to determine whether the original patentee (or its successor-in-interest Core Wireless) inequitably benefited from the untimely disclosure or whether the failure to disclose was sufficiently egregious to justify finding implied waiver without regard to any benefit.

*WilmerHale represented the defendant-appellant in this appeal.


O'Malley, J. Reversing the PTAB's decision that an IPR petition was not time barred and vacating the PTAB's final written decision. The en banc Court held that "35 U.S.C. § 315(b)'s time bar applies to bar institution when an IPR petitioner was served with a complaint for patent infringement more than one year before filing its petition, but the district court action in which the petitioner was so served was voluntarily dismissed without prejudice." Judge Taranto concurred. Judge Dyk and Judge Lourie dissented.

5. LUMINARA WORLDWIDE, LLC v. IANCU [OPINION] (2017-1629, 2017-1631, 2017-1633, 08/16/2018) (LOURIE, DYK and TARANTO)

Dyk, J. Under the Court's en banc decision in Click-To-Call Technologies, LP, v. Ingenio, Inc., No. 15-1242 (Fed. Cir. Aug. 16, 2018), the Court vacated the PTAB's final written decision in one of the three IPR proceedings on appeal. The Court explained that the PTAB erred in instituting the IPR because the time-bar of 35 U.S.C. § 315(b) still "applies when the underlying complaint alleging infringement has been voluntarily dismissed without prejudice." The Court affirmed the other two IPR decisions on appeal, holding that substantial evidence supported the PTAB's obviousness determinations.

6. IN RE: POWER INTEGRATIONS, INC. [MOTION PANEL OPINION] (2018-144, 2018-145, 2018-146, 2018-147, 08/16/2018) (O'MALLEY, BRYSON and CHEN)

Bryson, J. Denying petitions for a writ of mandamus challenging the PTAB's denial of institution of four IPRs on the ground that the petitioner had not shown that the cited prior art was publicly accessible before the patents' priority date. The Court explained that the PTAB's decisions regarding whether to institute IPRs are not appealable under 35 U.S.C. § 314(d), and a writ of mandamus is not a valid alternative means of challenging the denial of an IPR.


O'Malley, J. Affirming the district court's determination that the defendants were entitled to attorney fees due to the plaintiff's litigation misconduct, but vacating and remanding the district court's award of more than $51 million in attorney fees in total among all the defendants. The Court instructed the district court to determine on remand the amount of fees that were incurred because of the plaintiff's misconduct.

8. BSG TECH LLC v. BUYSEASONS, INC. [OPINION] (2017-1980, 08/15/2018) (REYNA, WALLACH and HUGHES)

Hughes, J. Affirming the district court's summary judgment that patents directed to indexing information stored in wide access databases were not patent-eligible under 35 U.S.C. § 101. The Court explained that the asserted patent claims (1) were directed to the "abstract idea of considering historical usage information while inputting data" and (2) lack an inventive concept because they are merely directed to using the abstract idea in conjunction with a well-known database structure.

9. DIEBOLD NIXDORF, INC. v. ITC [OPINION] (2017-2553, 08/15/2018) (PROST, BRYSON and O'MALLEY)

O'Malley, J. Reversing the ITC's determination that the respondent violated Section 337 of the Tariff Act of 1930 by importing components of automated teller machines (ATMs) that infringed the complainant's patent. The Court held that the term "cheque standby unit" in the asserted patent claims is a means-plus-function term subject to 35 U.S.C. § 112, ¶ 6. In addition, the Court held that the asserted patent claims were invalid because the patent specification failed to disclose the required corresponding structure for performing the function of the claimed "cheque standby unit."

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