Precedential Federal Circuit Opinions

1. SEABED GEOSOLUTIONS (US) INC. v. MAGSEIS FF LLC [OPINION] (2020-1237, August 11, 2021) (MOORE, LINN and CHEN)

   Moore, Chief Judge. Vacating final written decision of the Patent Trial and Appeal Board. The Board found, based entirely on extrinsic evidence, that “fixed” had a special meaning in the relevant art at the time of the invention: “not gimbaled.” The Court held that, if the meaning of a claim term is clear from the intrinsic evidence, there is no reason to resort to extrinsic evidence. Based upon the intrinsic evidence, the word “fixed” in the claims carried its ordinary meaning, i.e., attached or fastened. Thus, the intrinsic evidence as a whole supported an interpretation of “geophone internally fixed within [the] housing” that did not exclude gimbaled geophones.

2. PERSONALWEB TECHNOLOGIES LLC v. GOOGLE LLC, YOUTUBE, LLC [OPINION] (2020-1543, August 12, 2021) (LOURIE, PROST, and REYNA)

   Prost, J. Affirming district court decision granting judgment on the pleadings that various claims of the asserted patents were ineligible for patenting and invalid under 35 U.S.C. § 101. The district court’s view, which closely tracked the claim language, was correct in that the patents are directed to a three-step process: (1) using a content-based identifier generated from a hash or message digest function, (2) comparing that content-based identifier against something else, that is, another content-based identifier or a request for data; and (3) providing access to, denying access to, or deleting data. With respect to step 1 of the framework set forth in Mayo and further detailed in Alice, the claimed functions were mental processes that can be performed in the human mind or using a pencil and paper; each component of the claims’ three-step progression reflects a concept that the Court has already described as abstract. With respect to step two, there was nothing inventive about any claim details, individually or in combination, that are not themselves abstract ideas. Merely adding generic computer functionality to increase the speed or efficiency of the process did not confer patent eligibility on an otherwise abstract idea.

3. ELI LILLY AND COMPANY v. TEVA PHARMACEUTICALS INTERNATIONAL GMBH [OPINION] (2020-1876, 2020-1877, 2020-1878, August 16, 2021) (LOURIE, BRYSON, and O’MALLEY)

   Lourie, J. Affirming final written decision of the Patent Trial and Appeal Board holding that the claims of the challenged patents were not unpatentable as obvious. Petitioner contended that the Board erred by reading a result into the constructions of the preambles and the term “effective amount,” which led the Board to erroneously require proof that a skilled artisan would have expected to achieve results that are unclaimed. In view of the case law regarding statements of intended purpose in claims directed to methods of using compositions, and in view of the intrinsic evidence, including the claim language and the written description of the challenged patents, there was no error in the Board’s conclusion that the preambles are limiting. Nor did the Board err in requiring proof that a person of ordinary skill in the art would have had a reasonable expectation that performing the recited method would bring about the recited result. Petitioner also contended that, even if the preambles are limiting and the claims thus require administration of an antibody with an expectation of results, the Board erred by applying too high a standard when weighing the evidence to determine whether a skilled artisan would have had a reasonable expectation of success. When it comes to competing interpretations of the teachings of prior art references, if two inconsistent conclusions may reasonably be drawn from the evidence in record, the PTAB’s decision to favor one conclusion over the other is the epitome of a decision that must be sustained upon review for substantial evidence. The Board weighed the evidence supporting each side of the factual dispute and found that sufficient uncertainty and unpredictability remained; that finding is consistent with the Court’s past holdings that unpredictability of results equates more with nonobviousness rather than obviousness.

4. TEVA PHARMACEUTICALS INTERNATIONAL GMBH v. ELI LILLY AND COMPANY [OPINION] (2020-1747, 2020-1748, 2020-1750, August 16, 2021) (LOURIE, BRYSON, and O’MALLEY)

   Lourie, J. Affirming final written decision of the Patent Trial and Appeal Board holding that the claims of the challenged patents were unpatentable because they would have been obvious. The relevant inquiry is not (as Patent Owner suggests) whether the asserted concerns would have presented a reason not to use the claimed antibodies in human treatments. Rather, the relevant inquiry—which the Board extensively analyzed—is whether those concerns would have dissuaded a skilled artisan from making the claimed antibodies to study their therapeutic potential in the first place. Substantial evidence supported the Board’s finding that there would have been a motivation to make the claimed antibody to study its therapeutic potential for use in treatment of human disease. On objective indicia of non-obviousness, the Board erred to the extent the Board announced a bright-line rule that the presumption of nexus does not apply if any unclaimed feature materially affects the functioning of a product that is alleged to be coextensive. However, the Board conducted the necessary factual analysis of the unclaimed features of the relevant products and reached the correct conclusion that no presumption of nexus applied. The Court noted that it is hard not to imagine a presumption of nexus between a structurally claimed genus of chemical compounds and a commercial product that meets each claim limitation. But because the claims had a broad scope due to their lack of structural limitations, the unclaimed features in the commercial products were of particular importance to the coextensiveness analysis. The Board’s factual findings regarding unclaimed features were supported by substantial evidence. Likewise, the Board’s conclusion that a Patent Owner license lacked nexus to the challenged claims was supported by substantial evidence. Given that 188 patents were licensed, the nexus between the license and the validity of any particular claim was rather tenuous. Thus, the Board was correct to require that Patent Owner show something more than the mere existence of the license, which Patent Owner failed to do.

5. VALVE CORPORATION v. IRONBURG INVENTIONS LTD [OPINION] (2020-1747, 2020-1748, 2020-1750, August 16, 2021) (NEWMAN, LOURIE, and DYK)

   Dyk, J. Affirming in part, reversing in part, and vacating in part two final written decisions of the Patent Trial and Appeal Board determining that various challenged claims were not shown to be unpatentable. Where there was a challenge to authenticity of evidence submitted to support public accessibility, the Board erred in holding that it was not obligated to conduct an authentication by comparison merely because Petitioner provided no testimony on that issue. The record showed that the relevant exhibit and proffered prosecution documents were virtually identical, and there was overwhelming evidence that the relevant exhibit was a copy of an online article that was publicly accessible before the critical date. Valve had forfeited its Appointments Clause challenge, because the Supreme Court’s decision in Arthrex did not disturb the Federal Circuit’s prior holding that a petitioner had forfeited its Appointments Clause challenge because “unlike the patent owner in Arthrex, [the petitioner] requested that the Board adjudicate its petition [and] thus, affirmatively sought a ruling from the Board members, regardless of how they were appointed.” With respect to Patent Owner’s cross-appeal, the Court concluded that Petitioner’s claim constructions were correct under the broadest-reasonable-interpretation standard, and there was no contention that the claims are patentable under that construction.

6. GILBERT P. HYATT v. ANDREW HIRSHFELD [OPINION] (2020-2321, 2020-2323, 2020-2324, 2020-2325, August 18, 2021) (MOORE, REYNA and HUGHES)

   Hughes, J. Affirming the district court’s denial of expert fees under 35 U.S.C. § 145. The American Rule presumption requires that litigants pay their own fees unless a statute or contract provides otherwise. No magic words are needed to override the American Rule, but the requirement that Congressional intent be specific and explicit is a high bar. This was a close case. There are many arguments that the phrase “[a]ll the expenses of the proceedings” should be understood to include expert fees. But the American Rule sets a high bar, and none of those arguments are sufficiently specific and explicit to override the presumption against fee shifting. The Supreme Court’s NantKwest decision interpreted the same § 145 language at issue, and the Court held that the reference to “expenses” does not invoke attorney’s fees with enough clarity to overcome the American Rule. Although the Court’s holding that attorney’s fees are not shifted does not inherently dictate that expert fees cannot be shifted, much of the Supreme Court’s reasoning in NantKwest applied equally with respect to expert fees.

7. CAMPBELL SOUP COMPANY v. GAMON PLUS, INC. [OPINION] (2020-2344, 2021-1019, August 19, 2021) (MOORE, PROST and STOLL)

   Moore, Chief Judge. Reversing final written decisions of the Patent Trial and Appeal Board that Petitioners did not demonstrate that the challenged design patents were obvious. There was strong evidence of obviousness in the record, which was not overcome by evidence of copying alone. Substantial evidence did not support the Board’s finding of a presumption of nexus and a nexus-in-fact between the claimed designs and the evidence of commercial success and praise. In determining coextensiveness in connection with the presumption of nexus, the question is not whether unclaimed features were insignificant to a product’s ornamental design. The question is instead whether unclaimed features are “insignificant,” period. Because the relevant product undisputedly included significant unclaimed functional elements, no reasonable trier of fact could find that it was coextensive with the claimed designs. With respect to nexus-in-fact, the Court also held that, as in the utility patent context, objective indicia must be linked to a design patent claim’s unique characteristics. Patent Owner failed to present evidence that the commercial success and praise of the relevant product derived from those claimed unique characteristics.