Precedential and Key Federal Circuit Opinions
1. SANHO CORP. v. KAIJET TECHNOLOGY INTERNATIONAL LIMITED, INC. [OPINION] (2023-1336, 7/31/24) (Dyk, Clevenger, Stoll)
Dyk, J. The Court affirmed the Board’s decision finding all challenged claims unpatentable as obvious. The sole issue on appeal was the applicability of the prior art exception of 35 U.S.C. § 102(b)(2)(B). Patent owner argued that, prior to the effective filing date of the relevant prior art, the inventor “publicly disclosed” the relevant subject matter through a non-confidential but otherwise private sale of a product allegedly embodying the claimed invention. The Court found that a non-confidential but otherwise private sale between two individuals arranged via private messages did not qualify for the exception. “Publicly disclosed by the inventor” must mean that it is reasonable to conclude that the invention was made available to the public. If the subject matter of the invention were kept private, the inventor would not have disclosed the invention to the public.
2. VOICE TECH CORP. v. UNIFIED PATENTS, LLC [OPINION] (2022-2163, 8/1/24) (Lourie, Chen, Cummingham)
Chen, J. The Court affirmed the Board’s unpatentability determination. The Court found that the Board did not consider or rely on a new theory absent from the petition, but that the petition identified, via cross-reference, that its prior art analysis on a previous limitation equally applied to later limitations. The Court also held that the appellant did not forfeit its claim construction arguments on appeal because a party’s choice to not re-raise an argument in the party’s request for rehearing to the Board does not, in and of itself, forfeit the argument for review by the Court. However, the Court ultimately declined to consider the claim construction arguments on appeal because there was no showing of prejudice resulting from the Board’s constructions. The Court also rejected challenges to the Board’s obviousness determinations because substantial evidence supported the Board’s decisions.
3. MOBILE ACUITY LTD. v. BLIPPAR LTD. [OPINION] (2022-2216, 8/6/24) (Lourie, Bryson, Stark)
Stark, J. The Court affirmed the district court’s dismissal of a patent infringement action for failure to state a claim because the patents claimed ineligible subject matter under 35 U.S.C. § 101. The district court’s error in word choice, in referring to section 101 as not an affirmative defense, was harmless because the district court applied the correct legal standard for evaluating an affirmative defense at the motion to dismiss stage. The Court also found that the district court did not err in treating six of the asserted claims as representative of all claims of the two asserted patents. Limiting the analysis to representative claims is proper when the claims at issue are substantially similar and linked to the same ineligible concept. In this case, patent owner did not present any non-frivolous arguments that the eligibility of the purported representative claims did not fairly represent all claims of the asserted patents. On the merits, the Court found that the claims were directed to the abstract idea of receiving information, associating information with images, comparing the images, and presenting information based on that comparison. The Court also found that the claims did not recite an inventive concept. The Court also found that the proposed third amended complaint did not fix the problems plaguing the operative complaint, because even the inclusion in the claims of some specific concepts about image comparison does not alter the abstract character of the claims as a whole.
4. CELANESE INTERNATIONAL CORPORATION v. ITC [OPINION] (2022-1827, 8/12/24) (Reyna, Mayer, Cunningham)
Reyna, J. The Court affirmed the International Trade Commission’s finding that asserted patent claims were invalid under the on-sale bar pursuant to 35 U.S.C. § 102(a), because the patentee sold products made using the patented process more than one year before the effective filing dates of the asserted patents. Pre-critical date sales of products made using a secret process would trigger the on-sale bar to patentability and render invalid later-sought patent claims on that process. The Court rejected the notion that, in enacting the AIA, Congress intended to alter the on-sale bar as applied to process inventions or to disturb the underlying rationale in pre-AIA caselaw.
5. ALLERGAN USA, INC. v. MSN LABORATORIES PRIVATE LTD. [OPINION] (2024-1061, 8/13/24) (Lourie, Dyk, Reyna)
Lourie, J. The Court reversed the district court’s determinations that one of the asserted claims was invalid for obviousness-type double patenting and that other asserted claims were invalid for lack of written description.
A first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date. The first-filed, first-issued patent in its family is the patent that sets the maximum period of exclusivity for the claimed subject matter and any patentably indistinct variants. Where a patent was the first patent in its family to be filed and to issue, it does not extend any period of exclusivity on the claimed subject matter.
For written description, the word “optional” in the claims does not indicate a component that must be specifically described, for § 112 purposes, or included in an accused composition, for infringement purposes, but instead denotes something that need not be present. There are only two options, present or absent, and the very word itself describes both possibilities. Although the specification did largely focus on more detailed formulations that included the optional component, the Court found that the specification contemplated at least two embodiments in which the optional component was not required and, additionally, the originally filed claims also disclosed formulations without the optional component. Without some basis in the specification that the invention would be understood to require the optional component, expert testimony cannot be used to fill that gap. Reliance on such testimony, untethered to the inventors’ own description of the invention, would improperly take the written description inquiry outside the four corners of the specification.
6. PLATINUM OPTICS TECHNOLOGY INC. v. VIAVI SOLUTIONS INC. [OPINION] (2023-1227, 8/16/24) (Moore, Taranto, Cecchi)
Cecchi, J. The Court dismissed the appeal because the appellant failed to establish an injury in fact sufficient to confer standing on appeal. Mere speculation about a possibility of suit, without more, is insufficient to confer standing. An unsubstantiated speculation about a threat of future suit is insufficient to show a substantial risk of future infringement or that a plaintiff is likely to assert a claim for the continued distribution of a product. Additionally, vague and conclusory statements are insufficient to establish that a party has concrete plans for the development of its potentially infringing product and do not support standing.
7. REALTIME ADAPTIVE STREAMING LLC v. SLING TV, LLC [OPINION] (2023-1035, 8/23/24) (Moore, Lourie, Albright)
Albright, J. The Court vacated and remanded the district court’s award of attorneys’ fees based on six “red flags.” The Court vacated the award of attorneys’ fees and remanded for the district court to decide again whether attorneys’ fees are warranted because some of these red flags should not have been accorded any weight. The Court agreed with the district court that a significant red flag was a set of cases finding patent ineligible a related patent that was “essentially the same in substance” as the asserted patent. However, the district court erred in finding that a case about a different technology entirely should have put the plaintiff on notice that its patent claims were meritless. Additionally, there was not enough in various Board decisions—which concerned different sections of the Patent Act and did not analyze whether anything in the prior art was well-understood, routine, or conventional—to put plaintiff on notice that its arguments regarding the eligibility of its patent claims were entirely without merit. The district court also failed to adequately explain how Board decisions involving two non-final office actions issued during ex parte reexamination sufficed to support a finding of exceptionality. Next, a notice letter providing notice of adverse case law and the possibility that opposing counsel would pursue § 285 fees did not amount to clear notice that the patent claims were invalid and was therefore not sufficient to support an exceptionality finding in this case. Lastly, the district court erred in suggesting that the defendant’s expert witness testimony was a red flag, particularly when the plaintiff’s expert witness offered specific disagreements. While one expert may have been more persuasive than the other expert, that fact alone cannot properly establish that the defendant’s expert opinions should have put the plaintiff on notice that its arguments regarding the asserted claims were so without merit as to amount to an exceptional case.
