Precedential Federal Circuit Opinions   

1.  DIONEX SOFTRON GMBH v. AGILENT TECHNOLOGIES, INC. [OPINION] (2021-2372, 1/6/23) (Reyna, Chen, and Stark)

Stark, J. Affirming judgment in an interference proceeding before the Patent Trial and Appeal Board awarding priority to Agilent Technologies. The Court affirmed the Board treating Agilent’s specification as the “originating” specification for purposes of claim construction and written description support because Dionex copied Agilent’s claims to provoke the interference, regardless of a prior failed attempt to provoke an interference when Agilent copied Dionex’s claims. In addition, the Court affirmed the Board awarding priority to Agilent at least in part because the Board did not err by failing to draw negative inferences against Agilent. There 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 based on what is reasonable under the totality of evidence in the case. Similarly, there is no mandate that the Board draw a negative inference whenever a party fails to present types of documentary evidence an opposing party insists must exist. 

2.  IN RE GOOGLE LLC [OPINION] (2022-1012, 1/9/23) (Moore, Lourie, and Prost)

Moore, J. Vacating Patent Trial and Appeal Board’s decision affirming an examiner’s final rejection of certain claims under 35 U.S.C. § 103. The Court rejected one of the PTO’s arguments because, meritorious or not, the PTO’s arguments do not reflect the reasoning or findings the Board actually invoked below. In addition, an assertion that a feature was “very well known in the art,” because of common knowledge, must be supported by evidence and a reasoned explanation. An examiner’s assertion that a particular fact or principle is well-known is not evidentiary support.  

3.  GRACE INSTRUMENT INDUSTRIES, LLC v. CHANDLER INSTRUMENTS COMPANY, LLC [OPINION] (2021-2370, 1/12/23) (Chen, Cunningham, and Stark)

Chen, J. Vacating district court’s determination that “enlarged chamber” is indefinite and remanding for further proceedings. The district court concluded that the specification failed to disclose objective boundaries for a skilled artisan to know what the claimed “enlarged chamber” must be larger than. The Court found this was error because the intrinsic record informs a skilled artisan that an “enlarged chamber” is one large enough to perform a particular function described in the specification. Thus, in the context of this patent, “enlarged” does not mean larger than some baseline object, but large enough to accomplish a particular function. The district court erred by relying on extrinsic evidence, namely dictionary definitions, over the intrinsic record.