Precedential Federal Circuit Opinions
1. PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. [OPINION] (2021-1942, 2021-1975, 9/27/2022) (Prost, Reyna, and Stark)
Prost, J. Affirming in part and vacating in part decision of Patent Trial and Appeal Board finding that petitioner had proved unpatentable as obvious certain, but not all, claims of the challenged patent. The Board did not abuse its discretion in denying patent owner’s motion to exclude certain reply evidence—the petition set forth a prima facie obviousness case, and the reply adduced evidence shedding light on the challenged patent’s scope after patent owner had tried to narrow it. However, the Board never explained how the prior art combination teaches or suggests certain limitations; patent owner did not, as the Board appears to have suggested, acquiesce in petitioner’s arguments with respect to those limitations. The Board’s adoption of petitioner’s argument and evidence, coupled with its mischaracterization of patent owner’s arguments, precluded the Court from engaging in meaningful appellate review and, therefore, violated the APA. The Board also erred in rejecting petitioner’s challenge to certain claims, either because the Board never directly or implicitly addressed the arguments in the petition or because the Board’s findings on those claims are inconsistent with its findings with respect to other challenged claims.
2. COOPERATIVE ENTERTAINMENT, INC. v. KOLLECTIVE TECHNOLOGY, INC. [OPINION] (2021-2167, 9/28/2022) (Moore, Lourie, and Stark)
Moore, Chief Judge. Reversing district court’s ruling holding all claims of the challenged patent ineligible under 35 U.S.C. § 101. The district court erred because the amended complaint plausibly alleged that the asserted patent claims recited inventive concepts at Alice step two, precluding dismissal. First, patent owner’s allegations related to system capacity are plausibly tethered to the claimed distribution of content and, drawing all inferences in favor of the patent owner at the motion to dismiss stage, the district court erred in rejecting the patent owner’s allegations regarding improved performance of a content delivery network with reductions in costs and improvements in several aspects of system performance. Second, patent owner argued that certain features—trace route segmentation—were required by the claims and, given that on a motion to dismiss the non-movant’s claim constructions should be adopted, the district court erred in rejecting the patent owner’s allegation that the use of trace route segmentation was inventive particularly when defendant did not contest that allegation.
3. MYLAN PHARMACEUTICALS INC. v. MERCK SHARP & DOHME CORP. [OPINION] (2021-2121, 9/29/2022) (Lourie, Reyna, and Stoll)
Lourie, J. Affirming decision of the Patent Trial and Appeal Board holding that petitioner failed to show that the challenged claims were anticipated or would have been obvious. The Board did not err in finding that a class of 957 predicted salts that may result from the 33 disclosed compounds and eight preferred acids, some of which may not even form under experimental conditions, is insufficient to meet the “at once envisage” standard for finding that the prior art may be deemed to disclose each member of a genus. Substantial evidence supported the Board’s decisions that petitioner failed to show that, as to certain claims, patent owner was not entitled to antedate the prior art and, as to other claims, that those other claims would have been obvious to a skilled artisan.
4. WEISNER v. GOOGLE LLC [OPINION] (2021-2228, 10/13/2022) (Reyna, Hughes, and Stoll)
Stoll, J. Affirming-in-part and reversing-in-part district court decision holding all of the asserted patent claims ineligible under 35 U.S.C. § 101. For two of the asserted patents, the claims were directed to creating a digital travel log, and the automation or digitization of a conventional method of organizing human activity like the creation of a travel log on a computer did not bring the claims out of the realm of abstractness. The purported benefit of limiting data accumulation to “members” was not captured in the claims and, accordingly, did not shift the focus of the claims away from the abstract idea of a digital travel log. Regarding step two of the analysis, the specification described the components and features listed in the claims generically, supporting the conclusion that these components and features were conventional, not inventive concepts. For the other two asserted patents, the district court erred in concluding that that they had been shown to be patent ineligible at the Rule 12(b)(6) stage. The district court erred by failing to separately analyze these patents. Although the specifications in all four patents are the same, the representative claims of two of the patents are directed to creating and using travel histories to improve computerized search results, not to creating digital travel logs. Patent owner plausibly alleged that those two patents recite a specific implementation of the abstract idea that purported to solve a problem unique to the Internet and that, accordingly, these claims should not have been held ineligible under step two at the Rule 12(b)(6) stage.
