Precedential Federal Circuit Opinions

1. HYATT v. HIRSCHFELD [OPINION] (2018-2390, 2018-2391, 2018-2392, 2019-1038, 2019-1039, 2019-1049, 2019-1070, 06/01/2021) (Reyna, Wallach, Hughes)
   Reyna, J. The Court addressed the issue of “submarine patents” and held that “prosecution laches is a defense available to the Patent and Trademark Office in an action to obtain a patent under 35 U.S.C. § 145.” The Court noted that submarine patents are those that result from a patent applicant repeatedly filing applications, abandoning them and filing continuation applications in their place so that the patentee “could obtain a patent at a financially desirable time when the accused product market had become suitably developed.” The Court noted that submarine patents can upset the expectations of product manufacturers and create a drain on Patent Office resources. “During negotiations of the Agreement on Trade-Related Aspects of Intellectual Property (‘TRIPS Agreement’) at the Uruguay Round of the General Agreement on Tariff and Trade (‘GATT’), the U.S. sought to address the problem of submarine patents by agreeing to change the term of U.S. patents from 17 years following the date of issuance to 20 years following the filing date of the application or an earlier non-provisional application to which the subject application claims priority.” In this case, the Court addressed multiple applications claiming priority to applications that the applicant, Hyatt, had filed in the 1970s and 1980s. The Court held that prosecution laches could be asserted by the Patent Office against Mr. Hyatt. The Court explained that “[a]n applicant must not only comply with the statutory requirements and PTO regulations but must also prosecute its applications in an equitable way that avoids unreasonable, unexplained delay that prejudices others.” The Court concluded that “the PTO has carried its burden of proving that Hyatt engaged—intentionally or not—in a clear abuse of the PTO’s patent examination system that contributed to delay in the four applications at issue. Barring significant evidence to the contrary from Hyatt, the PTO has therefore demonstrated material prejudice.” The Court remanded for further proceedings.
2. SPEEDTRACK, INC. v. AMAZON.COM, INC. [OPINION] (2020-1573, 2020-1660, 06/03/2021) (Prost, Bryson, Reyna)
   Prost, J. The Court affirmed a final judgment of non-infringement that hinged on the district court’s claim construction. The patent at issue is directed to a “computer filing system for accessing files and data according to user-designated criteria.” The Court held that the district court’s claim construction correctly applied a prosecution disclaimer based on amendments and arguments that the applicant made during prosecution. In particular, the Court agreed with the district court that “[t]he prosecution history demonstrates clear and unambiguous disavowal of category descriptions based on hierarchical field-and-value systems” and affirmed the district court’s claim construction.
3. CHANDLER v. PHOENIX SERVICES LLC [ORDER] (2020-1848, 06/10/2021) (Chen, Wallach, Hughes)
   Hughes, J. The Court held that it lacked jurisdiction over the appeal of “a Walker Process monopolization action under § 2 of the Sherman Act,” because the case did not “arise under the patent laws of the United States.” “To succeed on a Walker Process claim, a plaintiff must prove (1) that the antitrust-defendant obtained the patent by knowing and willful fraud on the patent office and maintained and enforced that patent with knowledge of the fraudulent procurement, and (2) that the plaintiff can satisfy all other elements necessary to establish a Sherman Act monopolization claim” (quotation marks and citation omitted). In holding that it lacked jurisdiction over the appeal, the Court explained: “while Walker Process antitrust claims may relate to patents in the colloquial use of the term, our jurisdiction extends only to those cases in which a well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff’s right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims…. Here, because Chandler’s cause of action arises under the Sherman Act rather than under patent law, and because the claims do not depend on resolution of a substantial question of patent law, we lack subject matter jurisdiction.” The Court therefore transferred the appeal to the U.S. Court of Appeals for the Fifth Circuit, which has appellate jurisdiction over the District Court for the Northern District of Texas.
4. YU v. APPLE INC. [OPINION] (2020-1760, 2020-1803, 06/11/2021) (Newman, Prost, Taranto)
   Prost, J. The Court affirmed a district court’s decision granting a motion to dismiss two patent infringement suits on the basis that the asserted patent is invalid under 35 U.S.C. § 101. The patent at issue is generally directed to “digital cameras using multiple sensors with multiple lenses.” The Court agreed with the district court that the claims are “directed to the abstract idea of taking two pictures (which may be at different exposures) and using one picture to enhance the other in some way.” The Court also agreed that the claims lack “an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible invention.” The Court concluded that “[t]he claimed configuration does not add sufficient substance to the underlying abstract idea of enhancement—the generic hardware limitations of claim 1 merely serve as a conduit for the abstract idea.” Judge Newman dissented.