Precedential Federal Circuit Opinions

1. CANFIELD SCIENTIFIC, INC. v. MELANOSCAN, LLC [OPINION]  (2019-1927, 2/18/2021) (Newman, Dyk, Reyna)
   Newman, J. Reversing in part and vacating in part PTAB decision finding that all challenged claims were patentable. The challenged patent claimed the arrangement of multiple cameras and lights “vertically spaced” and “laterally spaced” on “opposite sides of the centerline” and adjustable to obtain the desired images of “the person or portion thereof” placed within the enclosure. The challenged independent claims were obvious because the prior art references described various placements of the subject being imaged, e.g. against a wall and centrally placed, and also described cameras laterally and vertically spaced to each other about a centerline. Under KSR, the combination of familiar elements according to known methods rendered the challenged independent claims obvious.
2. JOHN BEAN TECHNOLOGIES CORPORATION v. MORRIS & ASSOCIATES, INC. [OPINION]  (2020-1090, 2020-1148, 2/19/2021) (Lourie, Reyna, Wallach) 
   Reyna, J. Affirming the district court’s decision to grant Defendant’s motion for summary judgment of equitable intervening rights. Plaintiff-patent owner argued that monetary recoupment of investments made prior to the grant of a reissue are sufficient to protect investments and defeat the grant of the equitable remedy of intervening rights. But recoupment is not the sole objective of Section 252’s protection of “investments made or business commenced” before the claim’s alteration. There is no indication in the statute that monetary investments made and recouped before reissue are the only investments that a court may deem sufficient to protect as an equitable remedy. Recoupment is a factor that a court may consider, as it did in this case, in weighing the equities before making a determination on entitlement to equitable intervening rights. But it is not the sole factor a district court must consider, nor is it a factor that must be weighed more heavily when balancing the equities.
3. SYNQOR, INC. v. VICOR CORPORATION [OPINION]  (2019-1704, 2/22/2021) (Dyk, Clevenger, Hughes)
   Hughes, J. Vacating PTAB inter partes reexamination decision finding certain challenged claims obvious. The Board found that two prior art references were not incompatible and that most of the challenged claims were unpatentable over those references. However, in prior reexaminations involving two patents in the same family as the patent-at-issue, the Board found that those same two prior art references were incompatible. The statutory scheme governing inter partes reexamination shows no evident intent to foreclose common law estoppel. Given the statutory estoppel scheme for inter partes reexaminations, the informal procedural safeguards, the nature of the tribunal, and the overall magnitude and complexity of the proceedings, inter partes reexamination procedures are not so fundamentally poor, cursory, or unfair, that the resolution of a factual dispute in a first inter partes reexamination should not collaterally estop the contrary resolution of that dispute in a second reexamination. In this case, the Board was precluded from finding that an artisan would combine the two relevant prior art references. With respect to the remaining five challenged claims, those claims were added during reexamination and would not go into effect unless and until the Director issued a reexamination certificate incorporating them after the Patent and Trademark Office found them patentable. Because the patent-at-issue expired before the appeals of the patentability of those claims terminated, those claims will never issue and, accordingly, the Board’s decisions with respect to those five claims were moot and appropriately vacated.
4. LAKSHMI ARUNACHALAM v. INTERNATIONAL BUSINESS MACHINES CORPORATION, SAP AMERICA, INC., JPMORGAN CHASE & CO. [OPINION]  (2020-1493, 3/1/2021) (Lourie, Wallach, Chen)
   Per curiam. Affirming award of attorney fees. The record amply demonstrates Plaintiff’s vexatious and wanton litigation conduct. For example, Counts II–IV of the Amended Complaint accuse Defendants of three RICO violations. Those allegations embroiled Defendants in baseless litigation for over four and a half years. During litigation, Plaintiff forced Defendants and the district court to expend resources responding to repetitive, frivolous, and often bizarre oppositions and motions. Plaintiff also willfully failed to comply with the district court’s specific instructions regarding the filing of a second amended complaint. Accordingly, the district court did not abuse its discretion in imposing sanctions for Plaintiff’s vexatious litigation conduct.
5. BAYER HEALTHCARE LLC v. BAXALTA INC., BAXALTA US INC., NEKTAR THERAPEUTICS [OPINION]  (2019-2418, 2020-1017, 3/1/2021) (Newman, Linn, Stoll) 
   Stoll, J. Affirming the district court’s judgments of infringement, enablement, damages, pre-verdict supplemental damages, and no willfulness. With respect to claim construction, Plaintiff’s construction was supported by the specification, which nowhere disparaged or criticized non-random, site-directed amine/lysine PEGylation at the B-domain; thus, Plaintiff did not unequivocally disclaim non-random amine/lysine PEGylation in the specification. Substantial evidence supported the jury’s infringement verdict and, therefore, the district court did not err in denying Defendants’ motion for JMOL of noninfringement. Substantial evidence also supported the jury’s verdict that Defendants failed to prove by clear and convincing evidence that the asserted claims are invalid for lack of enablement. Plaintiff presented substantial evidence from which a reasonable juror could find that the specification’s disclosure of instructions as to the reaction conditions required to practice the claimed invention using cysteine PEGylation were sufficient to enable not only nonrandom cysteine PEGylation at the B-domain, but also non-random lysine PEGylation at the B-domain. On damages, substantial evidence supported the jury’s 17.78% royalty rate, which was within the range encompassed by the record as a whole. The district court properly exercised its discretion in allowing Plaintiff to ask the jury to select a rate between the range presented; while an expert must use reliable methodology for determining the range of possible hypothetical negotiation royalty rates, no precedent requires an expert to provide a single proposed royalty rate. Where calculating pre-verdict supplemental damages merely required applying the jury’s royalty rate to the undisputed actual infringing sales base, the Seventh Amendment right to a jury trial does not attach to the award of pre-verdict supplemental damages and the district court acted within its discretion in awarding supplemental damages. With respect to willfulness, the evidence adduced at trial merely demonstrated defendant’s knowledge of the patent and direct infringement of the asserted claims. Knowledge of the asserted patent and evidence of infringement is necessary, but not sufficient, for a finding of willfulness. Rather, willfulness requires deliberate or intentional infringement.
6. RAIN COMPUTING, INC. v. SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG ELECTRONICS CO., LTD., SAMSUNG RESEARCH AMERICA, INC. [OPINION]  (2020-1646, 2020-1656, 3/2/2021) (Lourie, Dyk, Moore)
   Moore, J. Reversing the district court’s judgment on indefiniteness and dismissing appeal. Defendants challenged the court’s determination that “user identification module” does not render the claims indefinite. Patent applicants are free to invoke § 112 ¶ 6 for a claim term nested in a method claim. The term “user identification module” is a means-plus-function term, because it has no commonly understood meaning, it is not generally viewed by one skilled in the art to connote a particular structure, the specification does not mention a “user identification module,” and the purely functional claim language reciting what the “user identification module” is configured to do provides no structure. The structural examples linked to the function of the “user identification module” are all disclosures of computer-readable media or storage devices, which are nothing more than a general-purpose computer. Where a general purposes computer is the corresponding structure and it is not capable of performing the claimed function absent specialized software, an algorithm is required. Nothing in the claim language or the written description provides an algorithm to achieve the claimed function of the “user identification module.” Without an algorithm to achieve the claimed function, the term “user identification module” lacks sufficient structure and renders the claims indefinite.