Federal Circuit 2024 in Review

Holdings:

• Inherency and reasonable expectation of success: “Inherency may supply a missing claim limitation in an obviousness analysis. [. . .] [I]nherency may be demonstrated by the natural result flowing form the operation as taught would result in the performance of the questioned function. [. . .] When claims require prior knowledge of the inherent property–e.g., for motivation to combine–then a petitioner would still generally need to demonstrate a reasonable expectation of success. [. . .] But that situation is different from simply claiming an inherent property of an otherwise obvious composition or process–i.e., one obvious without regard to the property at issue. In this latter context, there is no question of a reasonable expectation of success.”
• Lead compound analysis: Caselaw provides that “whether a new compound would have been prima facie obvious . . . ordinarily follows a two-part inquiry. When it applies, the lead-compound analysis typically proceeds with a two-part inquiry. First, the court determines whether a chemist of ordinary skill would have selected the asserted prior art compounds as lead compounds, or starting points, for further development efforts. [. . .] The second inquiry in the analysis is whether the prior art would have supplied one of ordinary skill in the art with a reason or motivation to modify a lead compound to make the claimed compound with a reasonable expectation of success” (emphasis added, internal citations and quotations omitted).
  • The lead-compound analysis is not required where the prior-art references expressly suggest the proposed modification.
  • “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. . . . In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.” (Quoting KSR.) “The Board identified a design need of 'finding a SPA IgG binding domain that is resistant to protein degradation.' The Board also identified a finite number of identified, predictable solutions. [. . .] Under these circumstances, we conclude that no lead compound analysis was required.”

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Holdings:

• “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In the context of claimed numerical ranges . . . we have explained that an overlap between a claimed range and a prior art range creates a presumption of obviousness that can be rebutted with evidence that the given parameter was not recognized as result-effective. That does not mean, however, that the determination whether or not a variable is result-effective is only appropriate when there is such an overlap. A routine optimization analysis generally requires consideration whether a person of ordinary skill in the art would have been motivated, with a reasonable expectation of success, to bridge any gaps in the prior art to arrive at a claimed invention. Where that gap includes a parameter not necessarily disclosed in the prior art, it is not improper to consider whether or not it would have been recognized as result-effective. If so, then the optimization of that parameter is 'normally obvious.'”

• Summary

Holdings:

• “It does not suffice to meet the motivation to combine requirement to recognize that two alternative arrangements . . . were both known in the art. [. . .] These [two alternate prior art] disclosures, however, do not provide any reason why a skilled artisan would use [one over the other]. The mere fact that these possible arrangements existed in teh prior art does not provide a reason that skilled artisan would have substituted the [one] with [the other]. There was no argument in the petition regarding why a skilled artisan would make this substitution–other than that the two different . . . systems were 'known and used.' The petition does not argue [that the secondary reference] articulates any reason to substitute one for another or any advantages that would flow from doing so. Nor does . . . Aligned Vision's expert, articulate any reason why a skilled artisan would combine these references. In his declaration, he testified 'it would have been obvious' to use [one system] instead of [the other] because 'both such . . . systems were known.”
• “KSR provides an important understanding of the circumstances in which limitations from different references can be combined to conclude that a claimed invention would have been obvious. In KSR, the Supreme Court explained, when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. KSR did not do away with the requirement that there must exist a motivation to combine various prior art references in order for a skilled artisan to make the claimed invention. Here, there was no argument about common sense in the petition or in [the expert's] declaration. There was no evidence that there are a finite number of identified, predictable solutions. There is no evidence of a design need or market pressure. In short, this case involves nothing other than an assertion that because two coordinate systems were disclosed in a prior art reference and were therefore “known,” that satisfies the motivation to combine analysis. That is an error as a matter of law. It does not suffice to simply be known. A reason for combining must exist.

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Holdings:

• “The issue here is whether placing something 'on sale' in section 102(a)(1) means that the invention embodied by the device sold is necessarily 'publicly disclosed' for purposes of section 102(b)(2)(B). [. . .] Sanho's first problem is that the words 'publicly disclosed' are not the same as the word 'disclosed.' The use oft he two different phrases . . . suggests that Congress intended the phrases to have different meanings. [. . .] We think that the added word, 'publicly,' both negates Sanho's consistent usage argument and suggests that the sorts of disclosures that qualify for the exception in section 102(b)(2)(B) are a narrower subset of 'disclosures' (i.e., the disclosures that are 'public').
• Summary and key takeaways
• Summary

Holdings:

• “The statutory phrase 'printed publication' from § 102 has been defined to mean a reference that was 'sufficiently accessible to the public interested in the art.' The touchstone of whether a reference constitutes a printed publication is public accessibility. The standard for public accessibility is whether interested members of the relevant public could locate the reference by reasonable diligence.”
• “In Cordis, the references were two academic monographs describing an inventor's work on intravascular stents that were only distributed to a handful of university and hospital colleagues as well as two companies interested in commercializing the technology. We observed that the record contained 'clear evidence that such academic norms gave rise to an expectation that disclosure will remain confidential.' Cordis is readily distinguishable from this case. Weber's operating manuals were created for dissemination to the interested public to provide instructions about how to assemble, use, clean, and maintain Weber's slicer. . . . These operating manuals stand in stark contrast to Cordis and the confidential nature of the monographs and circumstances surrounding disclosure, including academic confidentiality norms. [. . .] The record evidence shows that Weber's operating manuals were accessible to interested members of the relevant public by reasonable diligence. For instance, Weber employees testified that the operating manuals could be obtained either upon purchase . . . or upon direct request to a Weber employee.
• “No minimum number of occasions of access is dispositive of the public accessibility inquiry in all cases.”
• “We disagree with the Board's decisions that the operating manuals were not printed publications because they were subject to confidentiality restrictions. The copyright notice itself allows the original owners and their personnel to copy the operating manual for their own internal use. Weber expressly instructed customers who were re-selling their slicers to transfer their operating manuals to purchasing third parties. Weber's assertion of copyright ownership does not negates its own ability to make the reference publicly accessible. The intellectual property rights clause from Weber's terms and conditions covering sales, likewise, has no dispositive bearing on weber's public dissemination of operating manuals to owners after a sale has been consummated.”

• Summary and analysis
• Summary, takewaways

Holdings: “We conclude that the Rosen-Durling test requirements—that (1) the primary reference be “basically the same” as the challenged design claim; and (2) any secondary references be “so related” to the primary reference that features in one would suggest application of those features to the other—are improperly rigid. The statutory rubric along with Supreme Court precedent including Whitman Saddle, Graham, and KSR, all suggest a more flexible approach than the Rosen-Durling test when determining obviousness.”

• Review and analysis
• Examiner Guidance
• Summary and implications

Holdings:

• “We apply a two-step test to determine whether a limitation should be accorded patentable weight under the printed matter doctrine. First we determine whether the limitation in question is directed toward printed matter. A limitation is printed matter only if it claims the content of information. [. . .] Only if the limitation in question is determined to be printed matter do we proceed to the second step, which asks whether the printed matter nevertheless should be given patentable weight. Printed matter is given such weight if the claimed informational content has a function or structural relation to the substrate.”
  • The fact that there is a communication itself is not content; content is what the communication actually says. Nor is the form of a communication, such as whether the communication is encrypted, considered to be content. Printed matter encompasses what is communicated–the content or information being communicated–rather than the act of a communication itself. [. . .] Because 'encrypted communications' [of claim 4] and 'program code' [of claim 7] are not being claimed here for the content they communicate, they are not printed matter. The inquiry stops there; if the claim element is not printed matter, we need not consider whether it has a functional or structural relation to its substrate.”

• Review and analysis
• Summary

Holdings:

• “It is undisputed before us that the claim language at issue—“for identifying a single biomolecule”—refers to a capability of an apparatus. What is disputed is the meaning of “identifying a single biomolecule.” That phrase has an ordinary meaning on its face and in context. The language refers to (a) ascertaining the identity of a biomolecule, i.e., what that biomolecule is, and (b) doing so by examining just that one biomolecule, not others (even copies). It is that capability the apparatus must have, no matter what other capabilities it has or how the apparatus may be used in a particular instance. [. . .] The proper construction in this case is determined by the ordinary meaning of the claim language understood in the context of the patent document. [. . .] We agree with the Board that this identifying-by-examining-one-alone meaning is the ordinary meaning of the phrase in context. The striking feature of the phrase is its inclusion of the word “single.” There is no apparent reason for the inclusion of the word “single” in the phrase except to indicate that the capability required is to identify a molecule with just that one molecule in view. [. . .] The '441 patent's specification confirms this understanding.”
• “We reject PacBio's contention that the Board's (and our) reading 'conflates identifying a single molecule with detecting a single molecule.' [. . .] Such a claim does not conflate identification with detection but instead uses a detection requirement to specify a particular identification capability.

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• “The specification need not expressly recite the claimed range to provide written description support. While the '542 specification does not disclosed the claimed range itself, it does expressly disclose both endpoints by providing that the length of the heating member may be 'about 75% to about 125%.”
• In addition to considering what the specification expressly discloses, we also consider the context of the technology at issue and the knowledge gained by a person of ordinary skill in the art reading the specification. Given the predictability of electro-mechanical inventions such as the one at issue here, and the lack of complexity of the particular claim limitation at issue–i.e., reciting the length of a heating member–'a lower level of detail is required to satisfy the written description requirement than for unpredictable arts. Further, nothing in the specification indicates that changing the length of the heating member changes the invention, whether as to operability, effectiveness, or any other parameter.”

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• “The MTA [motion to amend] Pilot Program introduced the option for patent owners to receive preliminary guidance from teh Board with respect to motions to amend. To be sure, the MTA Pilot Program did not eliminate requirements as to contents of the original motion or the limitations on reply briefs. [. . .] It thus appears that the MTA Pilot Program is designed to allow reply briefs to address and correct errors. We do not think the Board erred in permitting UNMRI to use its reply brief to supplement the written description support that should have been, but was not, included in its original motion to amend.”
• “Even if allowing the reply brief to supply the missing information had been inconsistent with the regulation, we conclude that any error was harmless error . . . because ZyXEL was not prejudiced by the Board's decision to allow the reply brief to supplement the initial motion. [While] ZyXEL asserts . . . that it had no opportunity to present any expert declarations to refute UNMRI's new arguments[,] . . . ZyXEL never made any request to the Board to waive its rules and permit it to file an expert declaration. [. . .] Second, ZyXEL does not . . . point to any relevant evidence that it would have presented if the opportunity had been available.”

• Review and analysis (Orig.)
• Summary

Holdings:

• Background: “37 C.F.R. § 42.73(d)(3) . . . prohibits a patent owner from 'taking action inconsistent with the adverse judgment' in various proceedings, including IPR proceedings. [. . .] In particular, the regulation prohibits a patent owner from 'obtaining in any patent: (i) A claim that is not patentably distinct from a finally refused or canceled claim.'
  • “In the inter partes reexaminations [of the '353 patent in which 18 claims were found invalid in a 2014 IPR decision] the examiner found the overwhelming majority of claims unpatentable over the prior art. . . . On appeal, the Board reversed the examiner's obviousness rejections on the ground that there was 'insufficient articulated reasoning.' The Board, however, entered a new ground of rejection as to all pending claims based on 37 C.F.R. § 42.73(d)(3)(i). Going claim by claim, the Board found that each claim was either essentially the same as a canceled claim or merely a combination of limitations that had previously been invalidated. [. . .] For that reason, the Board held that the claims were not 'patentably distinct' from those that had been invalidated in the IPR proceeding and were therefore invalid under section 42.73(d)(3)(i) of the PTO's regulations.
• ”[T]he terms 'not patentably distinct' and 'substantially the same' are equivalent. [. . .] In holding that the claims before it were not materially different from the canceled claims in any way that would affect patentability, the Board's approach merely considered whether the resolution of an issue in a previous case bards the relitigation of that issue in a subsequent case. That is the same question addressed under the common law rule. [. . .] Section 42.73(d)(3)(i) goes beyond the common law rule by calling for a comparison between the claims an applicant is 'obtaining' and the 'finally refused or canceled claim.' Whether the Board's action is lawful thus depends on whether the PTO had statutory authority to issue the regulation.”
• “35 U.S.C. § 316(a)(4) . . . authorizes the Director to prescribe regulations 'establishing and governing inter partes review under this chapter and the relationship of such review to other proceedings under this title.' [This section] refers broadly to regulations 'governing inter partes review and the relationship of such review to other proceedings' before the PTO, and it provides a separate source of rulemaking authority for the PTO to issue such regulations. Thus, . . . section 316(a)(4) is not limited to authorizing the PTO to issue procedural rules. [. . .] Section 42.73(d)(3) . . . is clearly directed to 'governing inter partes review' and the 'relationship of such review to other proceedings' before the PTO. [. . .] Preventing a patent owner or applicant from acting inconsistently with the outcome of an IPR proceeding ensures that the decisions in those proceedings have practical effect. Preventing such inconsistent action is therefore closely tied to the statutory grant of authority to issue regulations 'governing inter partes review.'”
• “Although we agree that the PTO was authorized to promulgate section 42.73(d)(3)(i), we disagree with the Board's application of that regulation to previously issued claims. By its terms, the regulation applies to 'obtaining' a claim–not maintaining an existing claim. For that reason, we vacate the Board's decision as to the 'issued claims' on appeal but affirm its application of the regulation to the 'amended claims.'”
• “There are 107 amended claims at issue in this case. SoftView does not raise specific arguments with respect to whether particular amended claims are patentably distinct from the canceled claims. Our review is therefore limited to the Board's general methodology, which we uphold. [. . .] Even if we were to agree with SoftView's positions, SoftView's failure to tie its claim construction arguments to specific claims prevents us from determining whether the Board's constructions could impact the conclusion.”

• Summary and takeaways

Holdings:

• Denying a revised motion to amend: LG's joinder motion to ZTE's IPR proceeding provided that, LG would take a “passive role” and “will assume the primary role only if ZTE ceases to participate in the IPR.” However, the Board allowed LG to appose CyWee's revised motion to amend, concluding “although ZTE still participated in the IPR, the proceeding 'no longer appeared to be meaningfully adversarial” as to the revised motion to amend (which ZTE declined to oppose). The court found no error in this conclusion as ZTE itself stated that it “withdrew 'all objections to the revised amended claims' and therefore did not 'challenge the patentability of the revised amended claims.”
• “The principle that the IPR statutory provisions permit consideration of only the grounds in the petition does not apply in the context of motions to amend where the patent owner has introduced new claims into the proceedings.”
• Summary and analysis
• Backstory

Holdings:

• “The question before us is whether the Plantronics district court's invalidation of all claims of the '155, '025, and '934 patents is final, as Bose contends, or was superseded by Koss's Second Amended Complaint, as Koss contends. Typically, when a district court issues a final judgment, any interlocutory orders merge with that final judgment. [. . .] Koss attempts to distinguish this precedent by arguing that the district court's ineligibility ruling became a nullity on the filing of the Second Amended Complaint. Not so. [. . .] The district court's invalidity order, which was interlocutory when issued, merged with the final judgment dismissing the case with prejudice. In other words, while the invalidity order may not have been final and appealable when it issued in November 2022, it became final and appealable in August 2023 when Koss stipulated to the dismissal of its suit. As in Hartley, Koss neither appealed the invalidation nor had it vacated.”

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Holdings:

• “To establish a case or controversy, the appellant must meet the irreducible constitutional minimum of standing. This requires that the appellant: (1) suffered an injury in fact, (2) that is fairly traceable to the challenged conduct of the defendant, and (3) that is likely to be redressed by a favorable judicial decision.
• “Where a party relies on potential infringement liability as a basis for standing, the party “must establish that it has concrete plans for future activity that creates a substantial risk of future infringement or will like cause the patentee to assert a claim of infringement.”
• PTOT's unsubstantiated speculation about a threat of future suit [based in part on a letter dated prior to an earlier infringement action that was dismissed with prejudice] is insufficient to show a substnatial risk of future infringement or that Viavi is likely to assert a claim against it for the continued distribution of bandpass filters accused in Viavi II. Therefore PTOT has not established an injury in fact.
• “Of course, IPR petitioners need not conceded infringement to establish standing to appeal. But [Director of Operation Management at PTOT] Lin's vague and conclusory statements are insufficient to establish that PTOT has concrete plans for the development of bandpass filters. [. . .] Lin states that 'PTOT anticipates that Viavi will assert the '369 patent against PTOT's bandpass filters currently under development in the same way that Viavi has sued PTOT on its prior bandpass filters.' Lin's contentions, however, do not pass muster to establish there is a substantial risk of a future infringement suit.

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• “Even if the PTO's guidance governing Director Review was not exempt from notice-and-comment rulemaking [under the APA], any error by the PTO in that regard would be harmless absent a showing of prejudice by the party challenging the agency action . . . and cannot serve as a basis to reverse or vacate the Board's decisions.”
• Great summary