Precedential Federal Circuit Opinions
1. DBN HOLDING, INC. v. ITC [OPINION] (2020-2342, 3/1/22) (Moore, Newman, Reyna)
Reyna, J. Affirming ITC’s decision to not modify a civil penalty. Defendant argued that the previously imposed civil penalty should be modified or set aside because the asserted claims were subsequently invalidated. “By entering the consent order, [defendant] agreed to discontinue any violation of Section 337. The ITC, in turn, terminated the investigation as required. From a contractual perspective, the breach of this promise provides the ITC a distinct ground for imposing a civil penalty. [Defendant] agreed to the terms of the consent order, and those terms ‘unambiguously indicate[] that the invalidation trigger—like the expiration and unenforceability triggers—applies only prospectively.’ [citation omitted.] Had the consent order been written in retrospective terms, [defendant] might have a stronger argument that the invalidation of the asserted claims renders the consent order null and void, or that modification is required. But under the clear terms of the consent order, [defendant] remained potentially liable for any violations up to the time of invalidation.”
2. BROADCOM CORPORATION v. ITC [OPINION] (2020-2008, 2021-1260, 2021-1362, 2021-1511, 3/8/22) (Lourie, Hughes, Stoll)
Lourie, J. Affirming ITC decision of no Section 337 violation. Also affirming decisions in IPRs that some claims were obvious and others had not been proved to be obvious. Regarding domestic industry, the patent owner did not dispute that its domestic industry product, an SoC, did not contain the “clock tree driver” required by one claim. But patent owner argued that the domestic industry requirement was satisfied due to its collaboration with customers to integrate the SoC with “clock tree driver” firmware. The ITC rejected this argument noting that the patent owner had not identified a specific article that contained the claimed “clock tree driver” and the Court affirmed the decision of no domestic industry.
3. APPLE INC. v. MPH TECHNOLOGIES OY [OPINION] (2021-1532, 2021-1533, 2021-1534, 3/9/2022) (Moore, Prost, Taranto)
Moore, J. Affirming Board decision that claims had not been shown to be obvious. The Court found the use of passive voice in a claim to be unimportant to its interpretation. “The plain meaning of ‘intermediate computer configured to receive from a mobile computer a secure message sent to the first network address’ requires the mobile computer to send the message to the first network address. The phrase identifies the sender (i.e., the mobile computer) and the destination (i.e., the first network address). The proximity of the concepts links them together, such that a natural reading of the phrase conveys the mobile computer sends the secure message to the first network address. That the claims use passive voice is of no import. The plain language establishes direct sending.”
4. In Re VOLKSWAGEN GROUP OF AMERICA, INC. [OPINION] (2022-108, 2022-109, 3/9/2022) (Dyk, Reyna, Chen)
Per Curiam. Granting petition for writ of mandamus, vacating orders denying motions to dismiss or transfer, and remanding. The Court held that automobile dealerships did not constitute regular and established places of business of the automobile manufacturers.
5. FLEMING v. CIRRUS DESIGN CORPORATION [OPINION] (2021-1561, 3/10/22) (Lourie, Hughes, Stoll)
Stoll, J. Affirming Board decisions finding claims related to ballistic parachute systems unpatentable. The Court rejected patent owner’s argument that the prior art teaches away from the invention. “That the prior art cautioned pilots not to use an autopilot in some emergency situations on some aircraft does not mean that the skilled artisan would have been dissuaded from doing so in all emergency situations on all aircraft.” The Court also affirmed the Board’s denial of patent owner’s motion to amend the claims because they lacked written description.
6. ALMIRALL, LLC v. AMNEAL PHARMACEUTICALS LLC [OPINION] (2020-2331, 3/14/2022) (Lourie, Chen, Cunningham)
Lourie, J. Affirming Board decision that claims related to acne treatment were obvious. Some of the claims included a negative limitation, i.e., “wherein the topical pharmaceutical composition does not comprise adapalene.” Patent owner argued that although the prior art “does not indicate that any of its formulations include adapalene, more is needed for a disclosure of a negative claim limitation.” The Court disagreed explaining that it was reasonable for the Board to find that “a skilled artisan would recognize that the [prior art] reference discloses a complete formulation–excluding the possibility of an additional active ingredient.”
