Precedential Federal Circuit Opinions
1. IN RE: FLOAT'N'GRILL LLC [OPINION] (2022-1438, 7/12/2023) (Prost, Linn, and Cunningham)
Linn, J. The Court affirmed the Patent Trial and Appeal Board’s decision “affirming the Examiner’s rejections under 35 U.S.C. §§ 112(b) and 251[.]” The Court concluded that “the reissue claims in question do not cover ‘the invention disclosed in the original patent’ as required by 35 U.S.C. § 251” so they “affirm[ed] that rejection and [did] not address the indefiniteness of th[e] claims under 35 U.S.C. § 112(b).” That at-issue patent was “directed to a float designed to support a grill to facilitate a user grilling food while remaining in a body of water.” After issuance, Float’N’Grill “filed a reissue application” and the Examiner rejected claims “for failure to satisfy the reissue standard of 35 U.S.C. § 251.” “The Board sustained all of the Examiner’s rejections, except for indefiniteness” of two claims that “remained rejected under 251[.]”
On appeal, the Court reemphasized the original patent requirement that “[o]nce a patent is granted . . . a patentee seeking to change the scope of the claims through reissue is subject to additional statutory limitations in 35 U.S.C. § 251” including that “reissue claims must be directed to ‘the invention disclosed in the original patent.’” The Court “h[e]ld that reissue claims broadening a limitation to cover undisclosed alternatives to a particular feature appearing from the face of the original specification to be a necessary, critical, or essential part of the invention, do not meet the original patent requirement of § 251.” Here, the Court “agree[d] with the Board that the reissue claims in this case are not directed to the invention disclosed in the original patent and, therefore, do not meet the original patent requirement of § 251.”
The Court explained “the original specification describes a single embodiment of the invention characterized as a float apparatus having a grill support including a plurality of magnets for safely and removably securing the grill to the float[,] while the reissue eliminated “[t]he plurality of magnets component of the grill support structure[,]” which was the “only disclosed component for removably securing the grill to the support.” Thus, the Court determined the “Board did not err in affirming the rejection of reissue claims . . . for failure to satisfy the original patent requirement of § 251.”
2. SNIPR TECH. LTD., V. ROCKEFELLER UNIV. [OPINION] (2022-1260, 7/14/2023) (Chen Wallach, and Hughes)
Chen, J. The Court reversed the Patent Trial and Appeal Board’s decision and found that “the text, purpose, and history of the AIA make clear that first-inventor-to-file patents exclusively governed by the AIA cannot be subject to an interference (save for one exception not applicable here)[.]” The Court explained that “in 2011, the AIA changed how priority is determined, by converting the U.S. patent system from a first-to-invent to a first-inventor-to-file system.” It explained under the prior “first-to-invent system” that “[w]hen two different inventive entities claimed the same subject matter in a patent or patent application, the Patent Office would conduct an often arduous administrative proceeding—an interference proceeding—to determine the right of priority, i.e., who was the first inventor.”
The Court explained that when passing the AIA, “Congress disliked interferences and wanted to get rid of them, and also sought to align the United States with the patent filing systems around the world.” The “AIA also repealed interferences” and replaced “it with a new proceeding called a ‘derivation.’” The “derivation proceedings determine whether an earlier filer had derived the claimed invention from a later filer.” SNIPR owns a family of five patents directed to CRISPR technology “examined and issued under the AIA’s first-inventor-to-file patentability requirements.” Rockefeller’s application claims priority to a PCT application. “Based on the Rockefeller Provisional’s filing date, the Rockefeller Application is a pure pre-AIA application.” “The Board initially declared an interference between claims” of “the Rockefeller Application and all claims of the SNIPR patents to determine which party was the first to invent the claimed subject matter.”
“SNIPR moved to terminate the interference” arguing “the AIA eliminated interferences for AIA patents such as the SNIPR Patents.” The Board denied SNIPR’s motion, reasoning that pre-AIA patent claims (such as Rockefeller’s)” are subject to “an interference[.]” The issue on appeal was “whether pure AIA patents may be part of an interference.” The Court “agree[d] with SNIPR and h[e]ld that pure AIA patents may not be part of an interference.”
3. TRINITY INFO MEDIA, LLC FKA TRINITY INTEL MEDIA, LLC V. COVALENT, INC. [OPINION] (2022-1308, 7/14/2023) (Stoll, Bryson, and Cunningham)
Cunningham, J. The Court affirmed the district court’s determination on a motion to dismiss that claims “directed to a poll-based networking system that connects users based on similarities as determined through poll answering and provides real-time results to the users” does “not claim patentable subject matter under 35 U.S.C. § 101.”
The Court explained that “[a] patentee must do more than invoke a generic need for claim construction or discovery to avoid grant of a motion to dismiss under § 101. Instead, the patentee must propose a specific claim construction or identify specific facts that need development and explain why those circumstances must be resolved before the scope of the claims can be understood for § 101 purposes.”
Following the Alice framework, the Court concluded that, at step one, the claims were “directed to the abstract idea of matching based on questioning.” At Alice step two, the Court explained there was no “inventive concept” and “the asserted claims are organized in an expected way—receiving user information, asking that user questions, receiving answers, identifying and displaying a match based on those answers.”
