DC indefiniteness and invalidity findings affirmed as claims lack “reasonable certainty”

TVnGO Ltd. (BVI) v. LG Electronics, et al.

Docket No. 2020-1837 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1837.OPINION.6-28-2021_1796547.pdf) (Non-precedential)


June 28, 2021

Brief Summary:  DC indefiniteness and invalidity findings affirmed (no reasonable certainty). Summary:  TVnGO appealed DC finding that the claims of five patents that share a specification directed to “a TV-Internet Integration box having the ability to merge broadcast TN signals with IP packet data at a customer site” are indefinite (pre-AIA section 112 based on 2005 filing date) and therefore invalid.  The FC panel reviewed the Nautilus (US 2014) indefiniteness standard (“precise enough to afford clear notice of what is claimed”, “particularly pointing out and distinctly claiming the subject matter”, “reasonable certainty”), the DC’s claim construction under the Phillips “ordinary and customary meaning” standard (FC 2005; “in light of the patent’s specification and prosecution history” (Nautilus)), and the indefiniteness determination de novo (“clear and convincing evidence” (Cox, FC 2016)).  The phrases at issue were ““overlay activation criterion” and “overlay activation signal”, and the DC found that “their precise meanings are not reasonably certain in view of the intra-patent inconsistencies”.  TVnGO argued “that a skilled artisan would understand the disputed phrases by stitching together their constituent words” from the specification (e.g., (“the terms – “overlay,” “activation,” “criterion,” and “signal” – are each easily understood, plain English words”, “overlay has a meaning, criterion has a meaning, signal has a meaning, activation has a meaning”).  The FC panel was “unpersuaded that the ordinary meanings of the constituent words alone are enough in the context of this case to establish what these phrases mean” and that there is no other clarifying evidence (e.g., “[n]either phrase is mentioned, let alone defined, in the shared specification, as both were added to the claims during prosecution”, “‘limited information’ provided by the prosecution history isn’t enough to provide reasonable certainty here either”, “unconvinced that the disputed phrases ‘are far from indefinite’ merely because they were ‘added to the claims, discussed, understood and considered by the Examiner, and ultimately allowed’” (Sonix Tech., FC 2017), “the specification’s use of the words ‘activates’ and ‘activating’ injects further uncertainty”, “[h]ere, a person of ordinary skill would encounter two claim phrases without an ordinary meaning in the art” (Teva, FC 2015; Infinity Computer, FC 2021), “inconsistency between the independent and dependent claims… [t]he issue is not breadth of the dependent claims but their use of the disputed phrase in a way that contradicts the independent claims”).   The DC decision was therefore affirmed.

Posted in Claim Construction, Indefiniteness | Leave a comment

Amgen’s petition for en banc hearing regarding enablement of anti-PCSK9 antibody claims denied

Amgen Inc. v. Sanofi, et al.

Docket No. 2020-1074 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1074.OPINION.2-11-2021_1731739.pdf)


February 11, 2021 (updated June 21, 2021)

Update (June 21, 2021):  Amgen’s petition for rehearing en banc was denied.  Judges Lourie, Prost and Hughes authored an opinion issued with the order.  In it, the judges explained that Amgen incorrectly argued that the FC has “created a new test for enablement” as “[g]enus claims, to any type of invention, when properly supported, are alive and well” (referring to “[c]hemical patent specifications”).  However, the opinion explained that “as with genus claims to chemical compounds, if” biological composition claims “encompass more subject matter than just a few species, they need to be enabled accordingly” (“Biological compositions not actually prepared need to be described constructively, if required to enable the full scope of the claims, with procedures and names of resultant compositions, as with chemical compositions…If the genus had been invented by the time of filing, it would have been fully enabled in the patent.”)  In this case, the judges wrote, “the narrow and limited guidance in the specification made far corners of the claimed landscape that were particularly inaccessible or uncertain to make unenabled” and given that “Amgen in fact has separate patent protection on the PCSK9 antibody” (U.S. 8,030,457), “the failure to obtain unsupported, unenabled claims has not deprived it of patent protection on the fruits of its investment.”  Regarding Amgen’s arguments regarding the rewards for innovation, the opinion explains that the innovator can rely on the doctrine of equivalents to protect compounds “so close to species disclosed and claimed by a first entrant as to be an equivalent” and that the “second comer may encounter the expensive hurdle of having to meet its own regulatory requirements, if it does not qualify for ANDA or biosimilar status.”  Regarding functional claims generally, the opinion states that the analysis “is circular; enablement comes only with success, which depends upon enablement”, “one cannot claim everything that works”, “single means claims claim too much” (citing In re Hyatt, FC 1983), and “[m]ultiple means claims simply compound the problem.”  The opinion also refers to many earlier enablement decisions, noting that “[t]he much-cited Wands case is the signature authority on the issue” (In re Wands, FC 1988). Summary of Feb. 11, 2021 FC panel decision:  Amgen appealed DC grant of JMOL for lack of enablement of claims 19 and 29 of US 8,829,165 and claim 7 of US 8,859,741 directed to antibodies against PCSK9.  In a prior appeal related to this suit, the FC remanded the DC decision with respect to “its evidentiary rulings and jury instructions regarding Sanofi’s defenses that the patents lack written description and enablement” and vacated the permanent injunction (Amgen, FC 2017).  Relevant to this appeal, “[t]he jury again found that Sanofi failed to prove that the asserted claims were invalid for lack of written description and enablement”, but the DC “granted Sanofi’s Motion for JMOL for lack of enablement and denied the motion for lack of written description.”  The FC panel explained that it reviewed enablement decision without deference and the underlying factual findings for clear error, and the requirements of an enablement determination (e.g., undue experimentation, Wands factors (Alcon, FC 2014; In re Wands, FC 1988 (“‘go to’ precedent for guidance on enablement”, “disclosure adequately taught using hybridoma technology to produce the needed claims antibodies”)).  It also explained that “[a]lthough a specification does not need to ‘describe how to make and use every possible variant of the claimed invention, when a range is claimed, there must be reasonable enablement of the scope of the range’” (McRO, FC 2020, citing AK Steel, FC 2003).  Amgen argued that “no undue experimentation is required to obtain antibodies fully within the scope of the claims” by, e.g., “following a roadmap using anchor antibodies and well-known screening techniques described in the specification or by making conservative amino acid substitutions in the twenty-six examples” (e.g., “binds to at least one of the following residues” on PCSK9, “an epitope on PCSK9 comprising at least one of residues 237 or 238 of SEQ ID NO:3, and…blocks the binding of PCSK9 to LDLR” (low-density lipoprotein receptor)).  Sanofi argued “that there are millions of antibody candidates within the scope of the claims” the specification lacks sufficient guidance, and “antibody generation is unpredictable”.  The FC panel reviewed the Wands decision as well as its Wyeth (FC 2013 (no enablement of “methods of preventing restenosis with compounds having certain functionality requirements”), Enzo (FC 2019 (claims requiring “particular structure and functionality” not enabled), and Identix (FC 2019 (no enablement due to “lack of guidance across…full scope”, “needle in a haystack”) decisions.  The FC panel also wrote that “functional claim limitations…pose high hurdles in fulfilling the enablement requirement for claims with broad functional language”.  And it concluded that “[t]he binding limitation is…require[s] undue experimentation” since, e.g., “the claims are far broader in functional diversity than the disclosed examples” (AbbVie, FC 2014), “this invention is in an unpredictable field of science”, and the “required experimentation ‘would take a substantial amount of time effort’”.  The FC panel therefore affirmed the DC decision.

Posted in Enablement | Leave a comment

FC panel finds MSFT’s IPR obviousness arguments lack particularity and affirms Board claim construction and no anticipation finding

Microsoft Corp. v. FG SRC, LLC

Docket No. 2020-1928 (IPR2018-01594) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1928.OPINION.6-17-2021_1792142.pdf) (Non-precedential)


June 17, 2021

Brief Summary:  PTAB decision finding MSFT failed to show FG’s claims to be unpatentable affirmed. Summary:  MSFT appealed PTAB (“Board”) decision that the claims of FG’s US 6,434,687 directed to methods for accelerating web site access and processing using reconfigurable servers were not shown to be unpatentable for anticipation by a white paper (“Obelix”) or obvious over Obelix in view of the Skillen patent (US 6,098,065).  The ‘687 patent “explains that a conventional server with conventional processing elements processes data serially, such that N processing iterations are required to process N elements of data” and that “reconfigurable servers can process data in parallel, and N data elements can therefore be processed in a single iteration, reducing processing time considerably”.  In this appeal, MSFT argued that the Board erred in finding ‘687 claim 18 not to be anticipated or obvious by Obelix or Obelix/Skillen because it “erred in implicitly construing the selecting and transmitting limitations to require a current user” (“the claim was shown to be anticipated absent that requirement”) and failed to address its obviousness arguments.  The FC panel reviewed the Board decision for an abuse of discretion (“clearly unreasonable, arbitrary, or fanciful”, “erroneous conclusion of law”, “clearly erroneous fact finding”, or “no evidence on which the Board could rationally base its decision” (Ericsson, FC 2018).  MSFT argued its petition explained its obviousness challenge specific to ‘687 claim 18 as it referred to reasons “‘set forth above’ with respect to claim 2 under the same heading” and its expert declaration.  The FC panel wrote that “Microsoft argues that the Board should have understood the statement to refer to the reasons set forth way above (34 pages above, in fact) with respect to claim 2, in a completely different and unrelated section”, and that the expert declaration also referred to that section.  It concluded that the Board did not “abuse[] its discretion in declining to interpret Microsoft’s petition as challenging claim 18 over Obelix and Skillen based on such tenuous connections in Microsoft’s petition” (“there is no plausible argument…based on obviousness over Obelix and Skillen with any particularity whatsoever”) as “the petitioner is the ‘master of its complaint’” (SAS, US 2018; Intelligent Bio-Systems, FC 2016 (“identify ‘with particularity’ the ‘evidence’”)).  The FC panel reviewed the Board’s claim construction de novo as it was based only on intrinsic evidence (Shire, FC 2015) and the plain and ordinary meaning standard under Phillips (FC 2005) “[b]ecause the ‘687 patent has expired”, finding MSFT’s proposed construction to be “too broad because it does not account for all the language of the claim” and “[t]he written description accords with [the Board’s] understanding of the selecting limitation.”   The Board decision was therefore affirmed.

Posted in Anticipation (35 USC 102), Claim Construction, Inter Parties Review (IPR), IPR, Obviousness | Leave a comment

Digital camera device claims affirmed as patent ineligible under section 101

Yanbin Yu, et al. v. Apple Inc., Samsung Electronics Co., Ltd., et al.

Docket No. 2020-1760 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1760.OPINION.6-11-2021_1789244.pdf)


June 11, 2021

Brief Summary:  DC finding that claims to “improved digital camera” are patent ineligibile (101) affirmed (“whether a device is ‘a tangible system (in § 101 terms, a ‘machine’)’ is not dispositive”).

Summary:  Yu appealed DC grant of Apple and Samsung’s motion to dismiss after finding the asserted claims related to digital cameras to be patent ineligible (section 101).  Representative claim 1 is directed to “[a]n improved digital camera comprising…a first and second image sensor[s]” that produce first and second images, “two lenses” mounted on one of the sensors, “an analog-to-digital converting circuitry coupled to said first and second image sensor[s]” that digitizes the images, “an image memory, coupled to said..circuitry”, and “a digital image processor, coupled to said image memory” that produces an image from the first and second digital images.  The DC “held that the asserted claims were directed to ‘the abstract idea of taking two pictures and using those pictures to enhance each other in some way’” and “lack an inventive concept, noting ‘the complete absence of any facts showing that the[] [claimed] elements were not well-known, routine, and conventional.’”  The FC panel reviewed the DC decision de novo (Ninth Circuit law, Visual Memory (FC 2017)) using “the two-step Mayo/Alice framework” (Alice, US 2014; Mayo, US 2012).  The FC panel agreed “with the district court that claim 1 is directed to the abstract idea of taking two pictures (which may be at different exposures) and using one picture to enhance the other in some way” (“‘a result or effect that itself is the abstract idea and merely invoke[s] generic processes and machinery’ rather than ‘a specific means or method that improves the relevant technology’”).  Yu argued “that claim 1 is directed to a patent-eligible application of this idea as opposed to just the idea itself”, but the FC panel disagreed since “[o]nly conventional camera components are recited to effectuate the resulting ‘enhanced’ image” (“perform only their basic functions… set forth at a high degree of generality”) and “[w]hat is claimed is simply a generic environment in which to carry out the abstract idea” (In re TLI, FC 2016) (“claim 1’s solution to those problems is the abstract idea itself-to take one image and ‘enhance’ it with another”).  The FC panel also disagreed with Yu’s argument “that the asserted advance in the claims is the particular configuration of lenses and image sensors”, explaining that “[e]ven a specification full of technical details about a physical invention may nonetheless conclude with claims that claim nothing more than the broad law or abstract idea underlying the claims” (ChargePoint, FC 2019).  The FC panel also explained in FN2 that while “Yu’s claimed invention is couched as an improved machine (an ‘improved digital camera’)”, “whether a device is ‘a tangible system (in § 101 terms, a ‘machine’)’ is not dispositive” (Alice, In re TLI (“[N]ot every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry.”)) The FC panel therefore agreed with the DC that the claims are abstract under Alice’s step one.  It also agreed with the DC that under Alice’s step two, explaining that “even if claim 1 recites novel subject matter” (e.g., overcame prior art rejections during prosecution), “that fact is insufficient by itself to confer eligibility” (SAP, FC 2018; Two-Way Media, FC 2017), and “the claimed hardware configuration itself is not an advance”, “does not add sufficient substance to the underlying abstract idea of enhancement”, and “merely serve[s] as ‘a conduit for the abstract idea’” (TLI).  The DC decision was therefore affirmed.  Judge Newman’s dissent argued the claimed “camera is a mechanical and electronic device of defined structure and mechanism; it is not an ‘abstract idea’” and “[a] statement of purpose or advantage does not convert a device into an abstract idea.”

Posted in Patent Eligibility (101), Patentability | Leave a comment

DC claim construction and finding of noninfringement by Amazon et al. affirmed

SpeedTrack, Inc. v. Amazon, et al. (multiple retailers)

Docket No. 2020-1573, -1660 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1573.OPINION.6-3-2021_1785939.pdf)


June 3, 2021

Brief Summary:  DC finding that Amazon et al. do not infringe SpeedTrack’s patent to computer file access systems affirmed (no claim construction error). Summary:  SpeedTrack appealed DC finding of noninfringement based on construction of the claims of US 5,544,360 directed to improved computer file access systems.  The FC panel reviewed the system, that there were prior art solutions that “presented…drawbacks” (e.g., mistyping search terms, search restrictions of relational databases), and the alleged improvements described in the ‘360 patent (e.g., “‘hybrid’ folders…that ‘allow[] total freedom from the restrictions imposed by hierarchical and other present day computer filing systems’”).  The FC panel explained that “‘[t]he words of a claim ‘are generally given their ordinary and customary meaning,’ which is ‘the meaning that the term would have to a person of ordinary skill in the art’” and that “the prosecution history can often inform the meaning of the claim language” (Phillips, FC 2005; Vita-Mix, FC 2009 (“[a] patentee may, through a clear and unmistakable disavowal in the prosecution history, surrender certain claim scope”); Teva, US 2015 (“claim construction based on intrinsic evidence de novo and review any findings of fact regarding extrinsic evidence for clear error”)).  “SpeedTrack acknowledge[d] that the ’360 patent applicants added the hierarchical limitation during prosecution ‘[t]o overcome’” prior art rejections, but “disagree[d] regarding the effect of this history on the claim scope—in particular, whether the claims cover predefined hierarchical field-and-value relationships.”  The FC panel agreed with the DC that “the claims exclude predefined field-and-value relationships” as “[t]hey are disclaimed” (e.g., “[t]he ’360 patent applicants repeatedly highlighted predefined hierarchical field-and-value relationships as a difference between Schwartz and the ’360 patent”, “[a]n applicant’s argument that a prior art reference is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds as well” (Andersen, FC 2007); “SpeedTrack’s position contradicts its other litigation statements”; “the doctrine of prosecution disclaimer ensures that claims are not ‘construed one way in order to obtain their allowance and in a different way against accused infringers’” (Aylus Networks, FC 2017); “We also disagree that there was no clear and unmistakable disclaimer merely because the Wal-Mart court and the patent office did not expressly find one.”)  The cross-appellants patent eligibility and indefiniteness arguments were voluntarily dismissed since the DC noninfringement decision was affirmed.

Posted in Claim Construction, Infringement, Software | Leave a comment

IPR decision finding Baxter’s claims nonobvious reversed due in part to erroneous claim construction

Becton, Dickinson and Company v. Baxter Corporation Englewood

Docket No. 2020-1937 (IPR2019-00119) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1937.OPINION.5-28-2021_1784040.pdf)


May 28, 2021

Brief Summary:  IPR decision of no obviousness reversed based in part on erroneous claim construction.

Summary:  Becton appealed PTAB (“Board”) IPR final written decision (FWD) finding Baxter’s US 8,554,579 regarding telepharmacy systems are not invalid for obviousness.  The claims include a “verification limitation” (“wherein each of the steps must be verified as being properly completed before the operator can continue with the other steps of drug preparation process”) and a “highlighting limitation” relevant to the determination of no obviousness.  While the Board found a motivation to combine the cited art and “that Baxter’s ‘evidence of secondary considerations [was] weak’”, it also concluded that one reference (Alexander) “did not teach or render obvious the verification limitation and that combinations of Alexander, Liff, and Morrison did not teach or render obvious the highlighting limitation”.  The Board construed the verification limitation such that “the system will not allow the operator to proceed to the next step until the prior step has been verified” (broadest reasonable interpretation (BRI) since the IPR petition was filed before Nov. 13, 2018), and that Alexander “only discusses that ‘a remote pharmacist may verify each step’; not that the remote pharmacist must verify each and every step before the operator is allowed to proceed.”  The FC panel disagreed with Board’s construction based on the plain language of the claims and specification and that “Alexander discloses systematic step-by-step review and authorization by the pharmacist.”  The FC panel also disagreed with the Board that the highlighting limitation was not disclosed by the prior art (e.g., “‘Liff discloses basic computer functionality—i.e., using prompts that can be highlighted by the operator to receive additional information—that would render the highlighting limitation obvious when applied in combination with other references,’ primarily Alexander.”)  The FC panel concluded that “[t]he Board erred in looking to Liff as the only source a person of ordinary skill would consider for what ‘additional information might be relevant’”, based in part on expert testimony (POSA “would have understood that additional information could be displayed on the tabs taught by Liff”) and KSR (US 2007 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”))  Baxter argued that “the Board erred in determining that Alexander is prior art under 35 U.S.C. § 102(e)(2) (pre-AIA)” because all of Alexander’s claims were cancelled following an IPR (“because the Alexander ‘grant’ had been revoked, it can no longer qualify as a patent ‘granted’ as required for prior art status under Section 102(e)(2)”).  The FC panel disagreed, explaining that “[t]he text of the statute requires only that the patent be ‘granted,’ meaning the ‘grant[]’ has occurred” and “does not require that the patent be currently valid.”  The FC also explained that Baxter did not sufficiently address the Board’s finding of “weak evidence of secondary considerations.”  The Board’s FWD was therefore reversed.

Posted in Anticipation (35 USC 102), Claim Construction, Inter Parties Review (IPR), IPR, Obviousness, Obviousness (Secondary Considerations) | Leave a comment

ITC findings that 10X does not infringe one Bio-Rad patent but does infringe others affirmed

Bio-Rad Laboratories, Inc. v. International Trade Commission (10X Genomics Inc.)

10X Genomics Inc. v. International Trade Commission (Bio-Rad Laboratories, Inc.)

Docket No. 2020-1475, -1605 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1475.OPINION.5-28-2021_1784059.pdf)


May 28, 2021

Brief Summary:  ITC claim construction and infringement (no and yes) findings affirmed.

Summary:  Bio-Rad and 10X each appealed portions of International Trade Commission (ITC) decision finding infringement of Bio-Rad’s US 9,500,664; 9,636,682; and 9,649,635 regarding systems for generating microscopic droplets including an aqueous “sample-containing fluid” and a non-aqueous “background fluid” for use in microfluidics (on “chips”).  10X’s accused infringing products (GEM Chips and Chip GB) relate to next-generation sequencing platforms and were developed by three former Bio-Rad employees.  The FC panel explained that ITC decisions are reviewed for substantial evidence and that it “must affirm a Commission determination if it is reasonable and supported by the record as a whole, even if some evidence detracts from the Commission’s conclusion” (Spansion, FC 2010).

Bio-Rad appealed the ITC decision that Chip GB does not infringe the ‘664 patent, arguing that the Administrative Law Judge (ALJ) incorrectly determined the ChipGB “does not include a ‘sample well, a sample channel, sample-containing droplets, or the claimed ‘droplet generation region’” because it “does not involve a ‘sample’” and that “because the claims recite structural limitations (e.g., wells and channels), infringement of the claims cannot depend on the substances inside those wells and channels.”  The FC panel agreed with the ALJ’s claim construction and infringement determination, concluding “that BioRad failed to meet its burden of showing that the monomer solution in the Chip GB is a ‘sample’” and distinguishing “between ‘samples’ and ‘reagents’” (e.g., “[t]he ’664 patent consistently makes clear that a sample is not a reagent”, “a reagent is not a part of a sample, nor is it the same thing as a sample in the context of the patent”) and no infringement because “the monomer in the Chip GB is not a sample” (e.g., “10X does not analyze the monomers, but rather uses them to make the gel beads that go into reagent kits”, “not clear that Bio-Rad raised” the structural limitations to the ITC but also that “it fails because it is premised on rewriting the claims in an oversimplified form and removing all limitations that differentiate the recited structures from each other”, “[i]nventors are masters of their claims, and the words they use to describe and claim their invention are decisive and binding”, “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard, FC 1990)).

10X appealed the decision that its GEM Chips “directly infringe the asserted patents and that it induces and/or contributes to its customers’ infringement of the ’682 and ’635 patents.”  The FC panel found that 10X was not presenting any new claim construction arguments and that the ALJ correctly construed the “droplet-generating region” (e.g., claim language, specification support, no improper claim differentiation, rejecting “10X’s attempt to impose an unclaimed limitation”).  The FC panel also affirmed the ITC’s direct infringement decision underlying its findings of induced (§ 271(b), Sanofi (FC 2017)) and contributory (§ 271(c), Commil (US 2015)) infringement (e.g., 10X had knowledge of the patents, “10X failed to point to any real available noninfringing uses”, “precedent…focuses on the real way in which the accused product is made, used, and sold” (Fujitsu, FC 2010; Golden Blount, FC 2006)).

Posted in Claim Construction, Contributory Infringement, Infringement | Leave a comment

IPR decision finding certain of Uniloc’s claims obvious based on disputed claim construction, and others non-obviousness, affirmed

Uniloc 2017 LLC v. Apple Inc. (USPTO as intervenor)

Docket No. 2020-1403, -1404 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1403.OPINION.5-12-2021_1776581.pdf)


May 12, 2021

Brief Summary:  PTAB IPR claim construction and obviousness of certain claims, and nonobviousness of other claims, affirmed.

Summary:  Uniloc appealed PTAB IPR final written decision (FWD) finding certain claims of Uniloc’s US 8,539,552 invalid for obviousness, arguing the decision is based on erroneous claim construction.  Uniloc argued the PTAB erroneously “construed the term ‘intercepting’ to mean that ‘the signaling message is received by a network entity located between the endpoints of the call’” and that “under the plain and ordinary meaning of ‘intercepting,’ the entity that ‘intercepts’ a message cannot be an intended recipient of the message.”  While the FC panel agreed “that the signaling message can have only one true ‘intended recipient,’ as the claims of the ’552 patent use that term” but disagreed, finding “the patent contemplates that the sending client device will purposely direct the message through an intermediate recipient”, the PTAB’s construction was “not at odds with the plain meaning of the claims” and “supported by the prosecution history” (e.g., “intercepting” was introduced into the independent claims to overcome a prior art rejection; “the prosecution history, the specification, and the context of the particular claims in which the term ‘intercepting’ appears…[t]hose pieces of intrinsic evidence outweigh Uniloc’s reliance on dictionary definitions” (Finisar, FC 2008; Driessen, FC 2016; Jansen, FC 2003)).  The PTAB’s claim construction and obviousness conclusions were therefore affirmed.  Apple cross-appealed the PTAB’s decision that other claims of ‘552 patent not to be invalid for obviousness.  The FC panel agreed with the PTAB’s conclusion, however, finding Apple’s arguments unpersuasive (e.g., “Apple’s petition fails to establish that Kalmanek renders claim 18 obvious because Apple pointed to—and could only point to—both the SETUP and SETUPACK messages in Kalmanek when alleging invalidity of claim 18 of the ’552 patent.”)  The PTAB’s FWD was therefore affirmed.

Posted in Claim Construction, Inter Parties Review (IPR), IPR, Obviousness | Leave a comment

DC finding of no personal jurisdiction reversed due to TX-based PerDiemCo’s communications with Trimble in California

Trimble Inc. et al. PerDiemCo LLC

Docket No. 2019-2164 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2164.OPINION.5-12-2021_1776598.pdf)


May 12, 2021

Brief Summary:  DC finding of no personal jurisdiction reversed and remanded (e.g., PerDiemCo “exchanged twenty-two communications with Trimble in California over a period of three months”). Summary:  Trimble appealed CA DC judgment dismissing its declaratory judgment (DC) noninfringement action against PerDiemCo for lack of personal jurisdiction (PJ).  PerDiemCo is a Texas limited liability company (LLC) and is the assignee of the eleven disputed patents (listed in FN1).  The FC panel reviewed the question of PJ de novo (Autogenomics, FC 2009; Xilinx, FC 2017), explaining that the question “involves two inquires: whether a forum state’s long-arm statute permits service of process and whether assertion of personal jurisdiction violates due process.”  The state of CA “permits service of process to the limits of the Due Process Clauses of the U.S. Constitution”, folding the two inquiries “into one: whether the exercise of jurisdiction over PerDiemCo would be consistent with due process” and focusing “on the nature and extent of ‘the defendant’s relationship to the forum State’” (Ford (US 2021) (there must be “‘purposeful availment… “[t]he defendant . . . must take ‘some act by which [it] purposefully avails itself of the privilege of conducting activities within the forum State’”), citing Bristol-Myers (US 2017) (“[t]he plaintiff’s claims . . . ‘must arise out of or relate to the defendant’s contacts’ with the forum”); Burger King, US 1985 (“the exercise of [PJ] must also comport with ‘fair play and substantial justice’”, “minimum contacts”); World-Wide, US 1980 (five factors considered:  ‘[1] ‘the burden on the defendant,’ [2] ‘the forum State’s interest in adjudicating the dispute,’ [3] ‘the plaintiff’s interest in obtaining convenient and effective relief,’ [4] ‘the interstate judicial system’s interest in obtaining the most efficient resolution of controversies,’ and [5] the ‘shared interest of the several States in furthering fundamental substantive social policies.’”)  The DC relied on the FC’s Red Wing decision (FC 1998) to find “that it would be unreasonable to assert [PJ] over PerDiemCo based on its communications to Trimble in California.”  The FC panel explained that “[t]hree subsequent developments have clarified the scope of Red Wing” which “remains correctly decided”:  PJ “cannot rest on special patent policies” (SCA, US 2017), “communications sent into a state may create specific [PJ], depending on the nature and scope of such communications” (South Dakota, US 2018; “communications threatening suit or proposing settlement or patent licenses can be sufficient to establish” (Jack Henry, FC 2018; Genetic Veterinary, FC 2019; Elecs. for Imaging, FC 2003 (“hiring an attorney or patent agent in the forum state to prosecute a patent application that leads to the asserted patent”)), and “a defendant’s contacts “must show that the defendant deliberately ‘reached out beyond’ its home” (Ford, US 2021).  The FC panel “conclude[d] that the minimum contacts or purposeful availment test is satisfied in this case” as PerDiemCo, e.g., “exchanged twenty-two communications with Trimble in California over a period of three months” including “an unfiled complaint…used by PerDiemCo to launch negotiations”, “Trimble is headquartered in California, connecting California to Trimble’s claims”, and exercise of PJ would not be unreasonable under the Burger King / World-Wide factors listed above.  The DC’s order was therefore reversed and remanded for further proceedings.

Posted in Jurisdiction | Leave a comment

Patent eligibility decision reversed (“claims do not at all describe how that result is achieved”) and claim construction affirmed based on specification

First Stream Media Corp. (“Samba”) v. Alphonso Inc. et al.

Docket No. 2019-1506, -2133 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1506.OPINION.5-11-2021_1776030.pdf)


May 11, 2021

Brief Summary:  DC eligibility (101) decision reversed (“claims do not at all describe how that result is achieved”); claim construction affirmed (proposed construction “contradicts the specification”).

Summary:  Free Stream appealed DC grant of summary judgment (SJ) of noninfringement of US Pat. No. 9,026,668 from the ND of CA and a separate claim construction order from the ED TX.  Alphonso cross-appealed denial of its motion to dismiss for patent ineligibility (section 101) of US Pat. No. 9,386,356 by the ND CA DC.  The patents relate to systems for providing mobile phone users targeted advertisements.  The DC concluded that ‘356 independent claim 1 was not directed to an abstract idea (Alice (US 2014) step one), but the FC panel agreed with Alphonso that it “is directed to the abstract idea of targeted advertising” and not “a specific asserted improvement in computer capabilities” as Samba argued (Citing Enfish (FC 2016 (“specific improvement to the way computers operate”)), Visual Memory (FC 2017), Finjan (FC 2018), Core Wireless (FC 2018), and Uniloc (FC 2019)).  The FC panel pointed to its “targeted advertising” patent ineligibility decisions (Intell. Ventures, FC 2015; Bridge & Post, FC 2019) as well as McRO (FC 2016 (“whether the claims in the[] patent[] focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery”)).  The FC panel explained that “a claim must ‘ha[ve] the specificity required to transform [the] claim from one claiming only a result to one claiming a way of achieving it’ to avoid ineligibility”  (SAP, FC 2018) and “is ineligible if it “fail[s] to recite a practical way of applying an underlying idea . . . [and] instead [is] drafted in such a result-oriented way that [it] amount[s] to encompassing ‘the principle in the abstract’ no matter how implemented” (Interval Licensing, FC 2018).  Further, “[a]ll that is required at the eligibility phase is that the claim itself “must identify ‘how’ that functional result is achieved by limiting the claim scope to structures specified at some level of concreteness, in the case of a product claim, or to concrete action, in the case of a method claim” (Am. Axle, FC 2020).  Here, the FC panel concluded, “[t]he asserted claims provide for how that is achieved only by stating that the mechanism used to achieve this communication is by piercing or otherwise overcoming a mobile device’s security sandbox” and “the asserted claims do not at all describe how that result is achieved.”  The DC did not reach Alice’s step two because it did not find the claims to be abstract under step one, but the FC panel considered Samba’s argument “that its claims are also eligible under Step 2 because they recite a specific, ordered combination of elements operating in unconventional ways, such that they override ‘their routine and conventional inability to share information with each other’” (citing DDR Holdings, FC 2014 (“claimed invention solved the problem of allowing a website visitor to view a hyperlinked advertisement”); BASCOM, FC 2016 (“an inventive concept can be found in non-conventional and non-generic arrangement of known, conventional pieces”)).  The FC panel concluded that the claimed invention “there is nothing inventive disclosed in the claims that permits communications that were previously not possible” and are not therefore patent eligible (Affinity Labs, FC 2016).   Samba also appealed the TX DC claim construction order for the ‘668 patent as “too restrictive of an interpretation and is contrary to both the plain meaning of ‘communication session’ and the intrinsic record”, but the FC panel agreed with the DC’s conclusion (e.g., “Samba’s desired construction, covering one-way communication, contradicts the specification”).

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