CAFC Patent Cases, 2/2/21 – 2/15/21

CAFC Patent Cases, 2/2/21 – 2/15/21

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Precedential Federal Circuit Opinions

  1. CHUDIK v. HIRSHFELD [OPINION]  (2020-1833, 2/8/2021) (Taranto, Bryson, Hughes)
    Taranto, J.  Affirming PTO decision regarding length of patent term adjustment.  The statutory language regarding “C-delay” for appellate review requires “a reversal decision made by the Board or a reviewing court, thus excluding time spent on a path pursuing such a decision when, because of an examiner reopening of prosecution, no such decision is ever issued…  The unavailability of B-delay [in this case] for nearly two years (655 days) of delay in the PTO illustrates what applicants should understand when deciding whether to request a continued examination rather than take an immediate appeal. The potential benefit of immediate re-engagement with the examiner through such continued examination comes with a potential cost.”
  2. CXLOYALTY, INC. v. MARITZ HOLDINGS INC. [OPINION]  (2020-1307, 2020-1309, 2/8/2021) (Prost, Lourie, Hughes)
    Prost, J.  Affirming Board decision in CBM that original claims related to loyalty programs are ineligible under § 101.  Also reversing Board decision that substitute claims are not ineligible and finding those claims ineligible too.  Also dismissing patent owner’s challenge to the Board’s decision that the patent was eligible for CBM review.  The Court also noted that “[throughout] its Final Written Decision, the Board repeatedly referred to the United States Patent and Trademark Office’s 2019 Revised Patent Subject Matter Eligibility Guidance” and that “this guidance ‘is not, itself, the law of patent eligibility, does not carry the force of law, and is not binding on our patent eligibility analysis.’”
  3. INFINITY COMPUTER PRODUCTS v. OKI DATA AMERICAS, INC. [OPINION]  (2020-1189, 2/10/2021) (Prost, Clevenger, Taranto)
    Prost, J.  Affirming judgment of invalidity due to indefiniteness of claims relating to fax machines.  “As with the term ‘molecular weight’ in Teva, the claim language and specification do not provide reasonable certainty about a crucial aspect of ‘passive link,’ namely, where it ends. And far from resolving the uncertainty during prosecution, [patent owner] took conflicting positions during prosecution regarding the scope of ‘passive link.’ … On the record before us, therefore, we agree with the district court that the intrinsic evidence leaves an ordinarily skilled artisan without reasonable certainty as to where the passive link ends and where the computer begins.”
  4. AMGEN INC. v. SANOFI [OPINION]  (2020-1074, 2/11/2021) (Prost, Lourie, Hughes)
    Lourie, J.  Affirming JMOL that claims related to lowering cholesterol are invalid due to lack of enablement.  The Court reviewed the Wands factors and concluded that each “appealed claim in this case is a composition claim defined, not by structure, but by meeting functional limitations. We agree with the district court’s finding that the specification here did not enable preparation of the full scope of these double-function claims without undue experimentation…  Here, the evidence showed that the scope of the claims encompasses millions of candidates claimed with respect to multiple specific functions, and that it would be necessary to first generate and then screen each candidate antibody to determine whether it meets the double-function claim limitations.”  The Court also stated that while “functional claim limitations are not necessarily precluded in claims that meet the enablement requirement, such limitations pose high hurdles in fulfilling the enablement requirement for claims with broad functional language.”
  5. MOJAVE DESERT HOLDINGS, LLC v. CROCS, INC. [ORDER]  (2020-1167, 2/11/2021) (Newman, Dyk, O’Malley)
    Dyk, J.  Granting motion to substitute one party for another.  “If the Board were permitted to preclude substitution on the basis of a transfer in interest because of a late filing, this would defeat the important interest in having the proper party before the Board. The Board erred by not substituting [the successor-in-interest] as the third-party requester while the inter partes reexamination was pending before the Board.”
  6. SYNCHRONOSS TECHNOLOGIES, INC v. DROPBOX, INC. [OPINION]  (2019-2196, 2019-2199, 2/21/2021) (Prost, Reyna, Taranto)
    Reyna, J.  Affirming decision that some claims are invalid and others are not infringed.  The evidence supported the district court’s conclusion that some claims “contain an impossibility” and were therefore invalid under § 112, paragraph 2.  Also, means-plus-function claims were indefinite because the specification did not disclose sufficient corresponding structure.  “It is not enough that a means-plus-function claim term correspond to every known way of achieving the claimed function; instead, the term must correspond to ‘adequate’ structure in the specification that a person of ordinary skill in the art would be able to recognize and associate with the corresponding function in the claim.”  Also, patent owner’s proposed constructions for “device,” “system,” and “apparatus,” included the language “software … residing on … hardware” resulted in noninfringement because the defendant did not sell hardware.  “Because [defendant] does not provide its customers with any hardware in conjunction with its accused software, [defendant] does not make, sell, or offer for sale the complete invention.”

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