These seven Federal Circuit cases from 2022 have important nuggets in them, even though they weren’t high-profile or didn’t involve billions in damages.
[To the tune of Rudolph]:
You know Mayo and Markman and Alice and Fintiv;
Juno and Axle (American) and Amgen and Teva.
But do you recall … the handful of Federal Circuit decisions that got little press but may be important to your practice, at all?
Didn’t think so. (Although this may be exaggerated—it depends on how much you read and what you remember from it.)
Neither did I, so I searched through the last year of precedential U.S. Court of Appeals for the Federal Circuit opinions to find those that may have important nuggets in them, even though they weren’t high-profile or didn’t involve billions in damages.
These are those decisions.
Kyocera Senco Industrial Tools, Inc. v. ITC, 22 F.4th 1369 (Fed. Cir. Jan. 21, 2022)
Experts play a huge role in patent litigation. The Kyocera case suggests the presence of a nuclear weapon that could kill experts and then kill their clients’ cases. The case was about power nailers—those tools that roofers and framers haul around to drive many more nails than they could drive manually. The relevant expert had expertise in the more general area of fastener driving tools, but not in the specific area of power nailers. The case does not hold that your expert has to map perfectly to your technology, but it does make available an argument whenever your opponent’s expert has a background in an adjacent technology. The tactic going forward will involve citing Kyocera and then convincing your trial judge that the opposing expert is too far away—at least as far away as the Kyocera expert (who seemed pretty darn close, to tell the truth). It’s hard to believe the Federal Circuit will repeat this holding often, but it is a potentially killer tool for any patent litigator.
Dyfan, LLC v. Target Corp., 28 F.4th 1360 (Fed. Cir. Mar. 24, 2022)
For those who practice in software, Dyfan may be a critical means-plus-function decision. That is so because software is largely described (and claimed) by the functions it performs when it is executed, and purely functional claim limitations in apparatus/system claims are supposed to be subject to means-plus-function treatment. This can result in the particular limitation being limited to a computer that performs the particular algorithm that the patent describes (see WMS Gaming), which can be very narrow. Or if the patent describes no such algorithm, which is common because drafters often fall into means-plus-function-land without intending it, then the claim is invalid.
Dyfan held, at least in one context, that the common software terms “code” and “application” (modified by certain functional language) connoted enough structure to avoid construction as means-plus-function terms (see Zeroclick)—based in part on unrebutted testimony from the patentee’s expert. The court reached a similar conclusion for the term “system,” where that was the only term of substance in a preamble. This decision is important because many software claims use similar language, and probably would be invalid as indefinite if they were found to be subject to means-plus-function treatment.
Niazi Licensing Corp. v. St. Jude Medical S.C., Inc., 30 F.4th 1339 (Fed. Cir. Apr. 11, 2022)
While we’re on indefiniteness, it can arise in a variety of ways—like means-plus-function limitations that don’t have corresponding structure, but also claims that use subjective claim terms—most famously the term “aesthetically pleasing,” found in Datamize back in 2005. In Niazi this year, the Federal Circuit ruled that the flexible terms “resilient” and “pliable” were not too subjective. Rather, the record provided objective boundaries by which a skilled artisan could identify their scope: “[t]he terms are broad, but they are not uncertain.” This is a good case for patentees whose opponents are suggesting that claims (e.g., those that recite things descriptively or with terms of degree) are defective unless the patentee can provide a construction that has numeric precision.
Intuitive Surgical, Inc. v. Ethicon LLC, 25 F.4th 1035 (Fed. Cir. Feb. 11, 2022)
Let’s talk quickly about post-grant. It’s been said that most of the front-and-center issues have been hammered out. Intuitive involved an issue not front-and-center because it came up only through particular actions by the United States Patent and Trademark Office (USPTO). Specifically, two inter partes reviews (IPRs) had been filed against a patent on the same day, but the USPTO—rather than deciding them simultaneously, decided only one and then dismissed the other as estopped under 35 U.S.C. § 315(e)(1). The Federal Circuit agreed that the USPTO could effectively change two parallel IPRs into serial IPRs—and then dismiss one at the very end. Keep this decision in mind if you are facing a complex IPR that won’t readily fit within the page limits and are tempted to split it into two.
California Institute of Technology v. Broadcom Ltd., 25 F.4th 976 (Fed. Cir. Feb. 4, 2022)
The Federal Circuit used to apply a presumption against extraterritorial application of U.S. patents. The Supreme Court changed that in WesternGeco, a case about 271(f)(2) infringement. Little progress has been made since to identify how much WesternGeco broadened the more common area of § 271(a) infringement. In CalTech v. Broadcom, the Federal Circuit at least approved of a district court refusing to instruct a jury that there is a presumption against extraterritoriality for patent damages, since there was no dispute that the laws apply only domestically, and the dispute was whether the nature of the accused activities was foreign or domestic. This is a big issue because so much innovation-related activity occurs in the U.S., followed by manufacturing, sales, and use that occur outside the U.S. I draw your attention to this issue so that you can recognize how much WesternGeco upset the underlying law and perhaps make new post-WesternGeco law in this area.
Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154 (Fed. Cir. Apr. 29, 2022)
I can’t go without citing a decision on obviousness, which is present everywhere now that IPRs dominate the Federal Circuit’s IP docket. Auris is (indirectly) a case about objective indicia of nonobviousness. The Patent Trial and Appeal Board had found claims not proven invalid because of skepticism in the art—i.e., doctors were not enthusiastic, at the time of the invention, on the emerging field of robotic surgery. But the Federal Circuit ruled 2-1 that such evidence did not stand in the way of finding that there was a motivation to combine because that skepticism was too general. To get weight, the skepticism needed to be directed more to the particular robotic surgery problem and solution in this case. Be careful to align the views of the relevant public with the particular invention, not with some more general issue about the field of the invention.
Cupp Computing AS v. Trend Micro Inc., __ F.4th __ (Fed. Cir. Nov. 16, 2022)
This simple case is hot off the presses and made precedential a basic point that the court had previously made in a non-precedential opinion—i.e., the “Board is not required to accept a patent owner’s arguments as disclaimer when deciding the merits of these arguments.” Such a rule had long been true for normal prosecution because it encouraged applicants to amend so as to make claim scope clearer to the public (a laudatory goal). Here, the Federal Circuit recognized the goal of IPR that allows the USPTO to “revisit” its decisions, such that patent owner efforts to “shapeshift” claims should be blocked. Notably, IPR disclaimers are binding in later litigation—so that for the most part, they can hurt a patent owner, but not help them.
As you nestle down with hot cocoa, a cozy fire, and your family, be comforted by the knowledge that you now know more about your profession than you did ten minutes ago. What gift could be better than that?
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