Precedential and Key Federal Circuit Opinions
1. FINJAN LLC V. SONICWALL, INC [OPINION] (22-1048, 10/13/2023) (Reyna, Bryson, and Cunningham)
Cunningham, J. The Court vacated the district court’s judgment of invalidity and remanded for further proceedings and affirmed “the district court’s grant of summary judgment of noninfringement and the district court’s decision to exclude Finjan’s expert analysis.” The at-issue patents “relate to ways to protect network-connectable devices from undesirable downloadable operations” and “relate[] to adaptive, rule-based content scanners that scan mobile content for exploits to facilitate network security.” The Court explained that “Finjan raise[d] four arguments.” “First, Finjan challenges the district court’s grant of judgment of invalidity of the claims [of three] of the [Downloadable P]atents based on collateral estoppel.” The Court explained that it “cannot uphold applying collateral estoppel based on a vacated judgment.” “Second, Finjan seeks to reverse the district court’s judgment of noninfringement as to the asserted claims of the Downloadable Patents, contending that receiving packets that contain a downloadable or portions thereof constitutes receiving a downloadable.” The Court explained that “the district court’s judgment of noninfringement flows from the parties’ agreed-upon [claim] construction.” It emphasized that “[t]he asserted claims use ‘Downloadable’ in different ways[,] but “the parties adopted a single construction of ‘Downloadable’ for each of these claims[.] As a result, the Court explained that it “do[es] not permit parties on appeal to raise claim construction arguments challenging a stipulated construction.” “Third, Finjan challenges the district court’s grant of summary judgment of noninfringement as to the ARB Patent, alleging that multiple computers can collectively perform the ‘by a computer’ or ‘by the computer’ limitations.” The Court “agree[d] with SonicWall” that “Finjan never disputed that its Capture ATP and Gateway products are performed by different computers, challenging only whether the claims required the ‘same computer’ to perform the claim limitations” and “affirm[ed] the district court’s grant of summary judgment of noninfringement as to the asserted claims of the ARB Patent.” Finally, “Finjan argue[d] that the district court abused its discretion in striking Finjan’s expert apportionment analysis, which purportedly mirrored an apportionment analysis we previously approved in Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1312–13 (Fed. Cir. 2018).” The Court explained that “the district court did not abuse its discretion” because “Finjan’s expert admitted that he presented no analysis to assess the value of the sub-features” and, therefore, “failed to carefully tie his analysis to allegedly infringing features and to exclude value attributable to unpatented features.”
2. SCHWENDIMANN V. NEENAH, INC. [OPINION] (2022-1333, 2022-1334, 2022-1427, 2022-1432,10/6/2023) (Prost, Clevenger, and Cunningham)
Clevenger, J. The Court affirmed the Patent Trial and Appeal Board’s decision finding “all of the Challenged Claims in the Appealed patents” were “unpatentable as obvious” over the prior art. “The Appealed Patents relate to transfer sheets and methods for transferring images onto dark-colored fabrics.” According to the Court “[m]ulti-layer image transfer sheets for transferring images onto fabrics were well known in the prior art.” The Court explained that “[t]he Appealed Patents addressed this problem in the prior art and claimed a single-step solution whereby the white background was incorporated into the image transfer sheet, allowing the white background and dark image to be applied simultaneously onto the dark fabric.” On appeal, the Court first explained that substantial evidence supports “the Board’s finding that a skilled artisan would be motivated to combine” the prior art references because they “expressly disclose multi-layered transfer sheets, which is further supported by [expert] testimony.” Second, the Court explained that “the [prior art] disclosures . . . and the scientific literature in the record along with [expert] testimony are substantial evidence supporting the Board’s conclusion that a skilled artisan would have had a reasonable expectation of success in making the proposed combination.” Finally, the Court explained that Schwendimann’s assertion that “the Board erred by not explaining—why a skilled artisan would have chosen [a certain reference] as the ‘primary reference’ for the proposed combination (the ‘Primary Reference Argument’)” lacked merit. The Court explained that Schwendimann “did not preserve her Primary Reference Argument she now makes on appeal,” because the arguments below were analogous art arguments. Thus, the Court affirmed the Board’s decision.
3. SISVEL INTERNATIONAL S.A. V. SIERRA WIRELESS, ULC [OPINION] (22-1493, 22-1547,10/6/2023) (Moore, Clevenger, and Chen)
Chen, J. The Court affirmed-in-part, vacated-in-part, and remanded the Patent Trial and Appeal Board’s decision that “claims 1–3 and 9 of U.S. Patent No. 6,529,561 (’561 patent) were unpatentable, [while] uph[olding] claims 4–8 and 10.” “The ’561 patent relates to methods of channel coding when transmitting data in radio systems.” The Court explained that “[c]hannel coding is a technique that adds redundant information to a data block, thereby creating a coded data block.” Cross-Appellants filed for inter partes review challenging “claims 1–3, 5–7, 9, and 10 as unpatentable under 35 U.S.C. § 103 over [the prior art reference] Chen, as well as claims 1–10 as unpatentable under § 103 over [prior art references] Chen and Eriksson or Chen and GSM 03.64.” “The Board determined that Chen rendered claims 1–3 and 9 obvious, but upheld claims 4–8 and 10.” “On appeal, Sisvel argue[d] that (1) Chen fail[ed] to disclose a second puncturing pattern”; and “(2) the Board did not provide a sufficiently detailed explanation to support its finding that Chen disclose[d] the ‘combining’ limitation, and ignored its rebuttal arguments[.]” The Court “disagree[d] with Sisvel on both counts” holding that (1) “[s]ubstantial evidence supports the Board’s finding that Chen discloses the claimed ‘second puncturing pattern’”; and (2) “the Board’s analysis of the ‘combining’ limitation [wa]s sufficiently detailed, adequately addresses Sisvel’s related arguments, and is supported by substantial evidence.” “Cross-Appellants argue[d] that (1) the Board’s finding that a skilled artisan would not have been motivated to combine Chen and the GSM [prior art] references is not supported by substantial evidence” and “(2) the Board erroneously found insufficient corresponding structure in the specification for the term ‘means for detecting[.]’” The Court held “substantial evidence supports the Board’s finding of a lack of motivation to combine Chen and the GSM references, but that the Board erred in analyzing the ‘means for detecting’ limitation.” The Court “agree[d] with the Board that Cross-Appellants’ first, second, and third reasons to combine were merely assertions that the references were analogous art, which, without more, is an insufficient articulation for motivation to combine” and “that Cross-Appellants’ remaining rationales were too conclusory, lacked clarity, or suffered from both problems.” Thus, the Court affirmed-in-part, vacated-in-part, and remanded the Board’s decision.
