Posts in Federal Circuit

CAFC Denies Apple Transfer Out of Albright’s Court

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied Apple’s petition for a writ of mandamus asking the court to compel Judge Alan Albright of the U.S. District Court for the Western District of Texas to transfer its case to the Northern District of California. Carbyne Biometrics sued Apple for infringement of six patents via Apple’s “Secure Enclave” and Apple Cash platform features. Apple moved for transfer in July 2023, the motion was briefed in November 2023 and the district court denied the motion in December 2023 and said it would soon issue a decision. Apple filed the petition for writ of mandamus when no decision had issued by January 31, 2024 asking the CAFC to either stay the proceedings until a decision had issued or to compel transfer.

SCOTUS Denies Petition to Review CAFC Precedent on Justification for Primary Reference Selection

The U.S. Supreme Court on Monday, March 18, denied a petition filed by patent owner Jodi A. Schwendimann asking the Court to review a decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) that affirmed a Patent Trial and Appeal Board (PTAB) determination that Schwendimann’s patents were obvious. The petition specifically asked the Court to review the CAFC’s holding that Schwendimann’s argument that “justification for selection of a primary reference is a necessary step to guard against hindsight bias for the motivation to combine references” was unsupported by Federal Circuit case law.

CAFC Affirms District Court’s Inventorship Analysis

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday affirmed a district court finding that two inventors should be added as co-inventors to a patent for a method of transporting gaseous fluids. The CAFC concluded that the record “does not leave us with a definite and firm conviction that a mistake has been made” in finding the inventors contributed significantly to the invention.

CAFC Affirms PTAB Finding that Reasonable Pertinence Proves Analogous Art

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a brief opinion authored by Judge Chen today that rejected Daedalus Blue LLC’s appeal of a Patent Trial and Appeal Board (PTAB) decision finding certain claims of its patent on a data management system unpatentable. The PTAB held that U.S. Patent No. 8,671,132 was unpatentable as obvious over combinations of three prior art references: “Gelb”, “Tivoli”, and “Callaghan.” Daedalus in part argued on appeal that the Board incorrectly found that Gelb is analogous art because Gelb “is not reasonably pertinent to the problems identified in the ’132 patent.”

Federal Circuit Council Tells District Court to Scrap Surviving Challenges in Newman Case

The Judicial Council of the Federal Circuit told the U.S. District Court for the District of Columbia on Friday that it should dismiss Judge Pauline Newman’s remaining challenges to the Council’s decision to suspend Newman indefinitely from the court because all of Newman’s claims “fail as a matter of law.” Most recently, on February 12, the District of Columbia court denied a motion for preliminary injunction filed by Judge Newman. Despite acknowledging that all of the recent complaints against Newman’s mental fitness continue to be unsubstantiated, the D.C. district court determined that most of Judge Newman’s requested relief was foreclosed by legal precedent limiting constitutional challenges to the Judicial Conduct and Disability (JC&D) Act. However, the court said it maintains jurisdiction over three of the 11 counts, and part of another, brought by Newman.

Federal Circuit Reverses PTAB Claim Construction, Reviving Cooling Patent

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday, March 7, vacated a decision of the Patent Trial and Appeal Board (PTAB) that had held unpatentable certain claims to CoolIT Systems, Inc.’s patent. U.S. Patent 9,057,567 is titled “Fluid Heat Exchange Systems” and is directed to a system for fluid heat transfer to cool electronic devices. On appeal to the CAFC, CoolIT argued that the PTAB erred in construing one of the claim terms, “matingly engaged” and that even under the PTAB’s construction, the asserted prior art did not meet the matingly engaged limitation.

After Weber v. Provisur, Confidentiality Provisions May Not Be Sufficient to Protect Your Documents from Being Prior Art

On February 8, 2024, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Weber, Inc. v. Provisur Technologies, Inc., reversing the finding of the Patent Trial and Appeal Board (PTAB) that certain operating manuals with limited dissemination and confidentiality restrictions did not qualify as prior art. The Federal Circuit’s decision concluded that the Board misapplied the analysis for meeting the public accessibility standard for a printed publication to qualify as prior art.

Federal Circuit Says Narrowing Limitation Does Not Create a Contradiction Leading to Indefiniteness

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today reversing the Western District of Texas district court’s indefiniteness analysis and explaining that it improperly found a contradiction between two claim limitations to arrive at its indefiniteness holding. Amperex Technology Limited filed an action seeking declaratory judgment of noninfringement and challenged the validity of certain claims of Maxell, Ltd.’s U.S. Patent No. 9,077,035 for a rechargeable lithium battery and Maxell asserted infringement of the patent in a separate action. The two actions were consolidated in the Western District of Texas and the court ultimately held that two of the “wherein” clauses of the sole independent claim 1 of the ‘035 patent contradicted one another.

CAFC: PHOSITA Can Bridge Gaps with Reasonable Success Under Result-Effective Variable Doctrine

On March 5, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Pfizer Inc. v. Sanofi Pasteur Inc. affirming lower rulings by the Patent Trial and Appeal Board (PTAB) that invalidated Pfizer’s patent claims and denied motions to amend (MTA). Although the Federal Circuit vacated the PTAB’s MTA denials with respect to two patent claims, the ruling adds new contours to the appellate court’s case law on obviousness in ways that could affect companies that are patenting chemical inventions with claimed numerical ranges.

CAFC Partially Reverses Noninfringement Judgment But Scraps IBM Web Advertising Claims as Ineligible

The U.S. Court of Appeals for the Federal Circuit (CAFC) in a precedential decision today mostly upheld a district court ruling that found Chewy, Inc. did not infringe several claims of one IBM web advertising patent and that granted summary judgment of patent ineligibility on certain claims of another. However, the decision, authored by Chief Judge Kimberly Moore, reversed the district court’s finding of noninfringement on one of the five asserted claims of one patent, remanding the case for further proceedings on that issue.

USPTO Issues Updated Obviousness Guidance Tracing 15 Years of Case Law Following KSR

On February 27, the U.S. Patent and Trademark Office (USPTO) published a notice in the Federal Register providing updated guidance for agency decision-makers on making proper determinations of obviousness under the U.S. Supreme Court’s 2007 ruling in KSR International Co. V. Teleflex Inc. While the USPTO’s examiner guidance doesn’t constitute substantive rulemaking, it traces 15 years of case law from the U.S. Court of Appeals for the Federal Circuit to clarify several areas of confusion stemming from the Supreme Court’s calls for a flexible approach to the obviousness analysis for patent validity.

Happy 40th Anniversary, Judge Pauline Newman!

Today, Judge Pauline Newman celebrates 40 years on the U.S. Court of Appeals for the Federal Circuit (CAFC). Newman was appointed to the court on January 30, 1984, by then-President Ronald Reagan and officially assumed office on February 28, 1984. Newman was the first judge to be appointed directly to the Federal Circuit; all of the standing judges at that time attained their position through the merger of the Court of Customs and Patent Appeals and the appellate division of the United States Court of Federal Claims. She filled the Federal Circuit vacancy created at that time by Judge Philip Nichols Jr., who had taken senior status.

CAFC Affirms Albright Rulings in Alexa Shopping List Patent Suit

On February 26, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Freshub, Ltd. v., Inc., affirming a ruling by U.S. District Judge Alan Albright of the Western District of Texas in the face of appeals from both parties to the case. The Federal Circuit left the lower ruling intact after finding that the record developed at trial did not establish clear error with regards either to Freshub’s patent infringement allegations or Amazon’s inequitable conduct defense.

‘Where Are the Designers on This?’: Some Post-Argument Thoughts on LKQ v. GM

On February 5, 2024, the U.S. Court of Appeals for the Federal Circuit (CAFC) held its en banc oral argument to reconsider the obviousness test for design patents. Overall, the many judges’ questions indicated a hesitancy to change the current law, as they expressed concern with positions advanced by the patent challenger. Listening to the argument, it became instantly clear that the designer’s voice was missing from the arguments of both parties. The judges had deeply probing and important questions that need the input of a design professional. As an experienced design professional, I penned this article to highlight the designer’s voice by providing answers to several critical questions posed by the court during oral argument.

CAFC Puts Patent Community on Notice of Sanctions for Incorporation by Reference Violations

On February 16, the U.S. Court of Appeals for the Federal Circuit issued a pair of precedential rulings in Promptu Systems Corp. v. Comcast Cable Communications, LLC, vacating a final judgment of infringement after reversing part of the district court’s claim construction rulings. The entire U.S. patent community, however, should take notice of the Federal Circuit’s sua sponte order informing future litigants that evading briefing limits by incorporating much larger documents by reference will likely result in sanctions.