Precedential Federal Circuit Opinions   

1.  INTEL CORPORATION v. PACT XPP SCHWEIZ AG [OPINION]  (2022-1037, 3/13/23) (Newman, Prost, Hughes)

Prost, J. Reversed and remanded in favor of petitioner Intel because the Board’s final written decision against petitioner lacked substantial evidence to support its findings regarding the prior art. First, the Board found that the petitioner failed to show how a first reference, Kabemoto, disclosed a claim feature. However, the petitioner relied on a second reference, Bauman, for that claim feature in its petition and throughout the proceedings. Second, the Board rejected petitioner’s known technique rationale, stating that if Kabemoto already addresses a particular problem through the use of a known technique similar to that of Bauman, then a person of ordinary skill in the art would not regard Bauman’s technique as an obvious improvement to the Kabemoto. However, that Kabemoto and Bauman address the same problem and that Bauman’s technique was a known way to address that problem is precisely the reason that there’s a motivation to combine, because when a known technique has been used to improve one device, then a person of ordinary skill in the art would recognize that it could improve similar devices in the same way.

2.  ALTERWAN, INC. v. AMAZON.COM, INC. [OPINION]  (2022-1349, 1/9/23) (Lourie, Dyk, Stoll)

Dyk, J. Vacated and remanded for further proceedings because the stipulation of non-infringement, based on the district court’s claim construction rulings, was ambiguous and therefore defective. The stipulation failed to identify which claims remain at issue in the appeal; and, more importantly, it was unclear what portions of claim construction require affirmance for defendant to prevail on non-infringement. Furthermore, it was apparent at oral argument that the parties have significant disagreements as to the effect of the stipulation that render it impossible to review.  Moreover, the district court’s construction of the term non-blocking bandwidth is not reasonable because it requires the impossible, specifically for a system to provide bandwidth even when the Internet is inoperable.

3.  APPLE INC. v. VIDAL [OPINION]  (2022-1249, 3/13/23) (Lourie, Taranto, Stoll)

Taranto, J. Reversed the unreviewability dismissal of plaintiffs’ challenge to the USPTO Director’s application of NHK-Fintiv Rule as having been improperly issued for failure to conduct notice-and-comment rulemaking. Whether notice-and-comment rulemaking procedures had to be employed presents a matter separate from the matter of substantive reviewability of the action for being contrary to statute or arbitrary and capricious. There is no basis for extending the lack of judicial review of institution decisions to also cover the Director’s choice of whether to use notice-and-comment rulemaking to announce instructions for the institution decision.  Affirmed the unreviewability dismissal of plaintiffs’ challenges to the USPTO Director’s instructions as contrary to statute and arbitrary and capricious.

WilmerHale represented plaintiffs-appellants Apple Inc., Intel Corporation and Cisco Systems, Inc.