Precedential and Key Federal Circuit Opinions
1. HD SILICON SOLUTIONS LLC v. MICROCHIP TECHNOLOGY INC. [OPINION] (2023-1397, 2/6/2025) (Lourie, Stoll, Cunningham)
Lourie, J. The Board affirmed the Final Written Decision of the Patent Trial and Appeal Board (“Board”) finding the challenged claims unpatentable as obvious. The patent claims at issue were generally directed to “a local interconnect layer in an integrated circuit.” The Court first concluded that the Board erroneously construed the claim limitation “comprising tungsten” to mean any form of tungsten, including both elemental tungsten and tungsten compounds, because “tungsten” on its own referred only to elemental tungsten. The Court concluded that the claim language and specification used explicit language to refer to a compound (e.g., titanium nitride) when a compound was intended, and when no such language was included, the patent referred to the elemental form. Nevertheless, the Court determined that the Board’s claim construction error was harmless because the main prior art reference disclosed both elemental tungsten and tungsten compounds, rendering the “comprising tungsten” limitation obvious.
2. TRUDELL MEDICAL INTERNATIONAL INC. v. D R BURTON HEALTHCARE, LLC [OPINION] (2023-1777, 2023-1779, 2/7/2025) (Moore, Chen, Stoll)
Moore, C.J. The Court reversed the district court’s denial of Trudell’s motion for a new trial on infringement and remanded for the case to be reassigned to a different district court judge. Trudell’s asserted claims were generally directed to portable devices for performing oscillatory positive expiratory pressure therapy to improve respiration. The jury returned a verdict that the asserted claims were valid but not infringed, and the district court denied Trudell’s renewed motion for JMOL of infringement, or in the alternative, a new trial.
The Court held the district court abused its discretion by allowing D R Burton’s expert’s noninfringement testimony. The Court explained that D R Burton had not disclosed its expert’s noninfringement opinion in a timely expert report as required by Federal Rule of Civil Procedure 26, and the district court’s admission of the untimely testimony was not substantially justified nor harmless. However, the Court affirmed the district court’s denial of Trudell’s motion for JMOL of infringement, based on its conclusion that the jury was free to discredit the testimony of Trudell’s expert and find that Trudell failed to meet its affirmative burden to prove infringement. The Court therefore vacated the jury’s finding of noninfringement and remanded for a new trial on infringement.
Finally, the Court ordered reassignment to a different judge on remand because the trial judge made statements undermining the appearance of justice and fairness.
3. WUHAN HEALTHGEN BIOTECHNOLOGY CORP. v. INTERNATIONAL TRADE COMMISSION [OPINION] (2023-1389, 2/7/2025) (Moore, Chen, Murphy)
Moore, C.J. The Court affirmed the International Trade Commission’s findings that (1) Healthgen’s clinical grade albumin products infringed the patent-at-issue and (2) patentee Ventria satisfied the domestic industry requirement under Section 337. First, the Court concluded that substantial evidence supported the Commission’s finding that Healthgen’s clinical grade products infringe because they meet the “less than 2% aggregated albumin” limitation based on chromatography data. Second, the Court held that substantial evidence supported the Commission’s finding that Vestria’s investments in the U.S. were substantial enough to satisfy the economic prong of the domestic industry requirement.
4. KROY IP HOLDINGS, LLC v. GROUPON, INC. [OPINION] (2023-1359, 2/10/2025) (Prost, Reyna, Taranto)
Reyna, J. The Court reversed the district court’s dismissal of Kroy’s complaint for patent infringement based on an assertion of collateral estoppel arising from inter partes review (IPR) rulings on different claims from the same patent-at-issue and remanded for further proceedings.
Groupon had filed IPR petitions on an initial set of claims asserted by Kroy in district court, and the Board found those claims unpatentable in final written decisions, which the Court affirmed. Kroy later amended its complaint to assert a different set of claims from the same patent against Groupon. Groupon moved to dismiss, arguing that the Board’s prior unpatentability rulings estopped Kroy from asserting a new set of claims from the same patent that were “immaterially different” from the invalidated claims, and the district court granted the motion. On appeal, the Court reversed, holding that collateral estoppel should not apply because before the Board, Groupon proved unpatentability of the initial set of claims by a preponderance of the evidence, while its burden to prove that the newly asserted claims are invalid in the district court is clear and convincing evidence. The Court held that due to the different burdens of proof, a prior final written decision of the Board of unpatentability cannot collaterally estop a patentee from asserting other claims from the same patent, even where the newly asserted claims are immaterially different from the unpatentable claims for purposes of invalidity.
5. US SYNTHETIC CORP. v. INTERNATIONAL TRADE COMMISSION [OPINION] (2023-1217, 2/13/2025) (Dyk, Chen, Stoll)
Chen, J. The Court reversed the International Trade Commission’s conclusion that the asserted composition of matter claims were patent ineligible under 35 U.S.C. § 101, affirmed the Commission’s conclusion that the claims were not invalid for lack of enablement, and remanded. The asserted claims related generally to a composition of matter known as a polycrystalline diamond compact (PDC). The § 101 dispute centered around the claimed magnetic properties (coercivity, specific magnetic saturation, and specific permeability) and their relationship to the structure of the claimed PDC composition. In the Commission’s view, the claims were directed to the abstract idea of PDCs that achieved the claimed magnetic properties. On appeal, the Court concluded the claims were not directed to a patent ineligible abstract idea, but rather to “a physical composition of matter defined by its constituent elements, dimensional information, and inherent material properties” (including magnetic properties). Finally, the Court found no error in the Commission’s rejection of Intervenors’ argument that the asserted claims were not enabled.
