Federal Circuit Patent Watch: Federal Circuit rejects invitation to create a bright-line rule regarding whether numerical ranges provided in a patent claim are subject to rounding

Federal Circuit Patent Watch: Federal Circuit rejects invitation to create a bright-line rule regarding whether numerical ranges provided in a patent claim are subject to rounding

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Precedential and Key Federal Circuit Opinions

1.  MALVERN PANALYTICAL INC. v. TA INSTRUMENTS-WATERS LLC [OPINION] (2022-1439, 11/1/2023) (Prost, Hughes, and Cunningham)

Prost, J. The Court vacated the district court’s stipulated judgment of non-infringement because the district court erred in construing “pipette guiding mechanism” and remanded for further proceedings. The district court limited “pipette guiding mechanism” to manual guiding mechanisms, based on statements in the prosecution history of an unrelated patent owned by Plaintiff. The statements in the unrelated patent prosecution had been disclosed to the examiner in the prosecution of the asserted patent at issue. The Court held that the statements in the prosecution history for the unrelated patent did not “clearly and unambiguously disclaim any scope of ‘pipette guiding mechanism,’” and lacked the “clarity necessary to establish prosecution disclaimer.” 

2.  In Re PERSONALWEB TECHNOLOGIES LLC [OPINION] (2021-1858, 2021-1859, 2021-1860, 11/3/2023) (Lourie, Dyk, and Reyna)

Reyna, J. The Court affirmed a district court award of attorneys’ fees entered against Patent Owner. The Court held that “a straightforward application” of the Kessler doctrine “barred” Patent Owner’s claims. 

In an action filed in Texas, Patent Owner “stipulated to dismissal with prejudice of all of its claims against Amazon and its S3 product,” stating that Patent Owner “stipulates ‘that all claims’ in the Texas Action should ‘be dismissed with prejudice.’” “The district court then issued an order dismissing with prejudice ‘all claims’ against Amazon and its S3 product, and the district court entered final judgment against” Patent Owner. According to the Court, “[i]t is well-settled that this final judgment operated as an adverse adjudication on the merits” of Patent Owner’s infringement claims.

But years later, Patent Owner “asserted the same patents from the Texas Action” against “the same accused infringing technology from the Texas Action—Amazon S3.” “The only difference” was that Patent Owner “accused Amazon’s customers of infringement.” On appeal (from the merits case), the Court reviewed the Texas Action dismissal and concluded that Patent Owner “abandoned its claims against Amazon without reservation, explicit or implicit.” The Court held that Patent Owner’s “claims involving the Amazon S3 product were precluded under the Kessler and claim preclusion doctrines,” and thus, “the district court did not abuse its discretion when it determined” that Patent Owner’s “arguments were ill-supported and should not have been brought.”

Judge Dyk dissented on the ground that Patent Owner’s “Kessler argument was not objectively baseless,” partly because “[t]he Supreme Court invited the Solicitor General to file an amicus brief, which she did after the district court decision here, agreeing with” Patent Owner “that Kessler should not have barred” Patent Owner’s claims.

3.  ACTELION PHARMACEUTICALS LTD v. MYLAN PHARMACEUTICALS INC. [OPINION] (2022-1889, 11/6/2023) (Reyna, Stoll, and Stark)

Stoll, J. The Court vacated the district court’s claim construction order with respect to the term “a pH of 13 or higher” and the judgment of infringement under that construction, and remanded for the district court to consider the extrinsic evidence and its impact on claim construction. The parties disputed the meaning of the claim term “a pH of 13 or higher.” Defendant argued that the proper construction cannot cover any pH values less than 13. Plaintiff argued that “a pH of 13” in the context of the asserted claims “is subject to rounding,” such that a pH of 12.5 would meet the requirement of “a pH of 13 or higher.” For support, Plaintiff cited three textbooks as extrinsic evidence for its construction. The district court did not address this extrinsic evidence. Instead, it adopted Plaintiff’s proposed construction based on the intrinsic record alone.

The Court held that “there is no blanket rule that ranges, or specifically open-ended ranges, must foreclose rounding.” The Court also “reject[ed] any invitation to create a bright-line rule—either that language like ‘precisely’ or ‘exactly’ is always needed to avoid rounding or that the lack of approximation language, even when it may be found elsewhere in the claims, dictates a precise value.” The Court also found that “the proper claim construction [could not] be reached without the aid of extrinsic evidence, and that the district court should have considered, at minimum, the textbook excerpts offered and addressed by the parties.”

4.  ALLGENESIS BIOTHERAPEUTICS INC. v. CLOUDBREAK THERAPEUTICS, LLC [OPINION] (2022-1706, 11/7/2023) (Moore, Stoll, and Cunningham)

Moore, C.J. The Court dismissed the appeal of an IPR final written decision because the appellant (patent challenger) failed to establish an injury in fact sufficient to confer standing to appeal. The Board determined that Appellant failed to show the challenged claims were anticipated by, or would have been obvious over its own PCT Application Publication because, under the Board’s priority determination, Appellant’s PCT application did not qualify as prior art. 

On appeal, Appellant asserted it had standing to appeal the Board’s decision based on the Board’s priority determination. According to Appellant, because the claims of Appellee’s patent and Appellant’s PCT “both relate to the same invention …, the Board’s relative priority determination affects the scope” of Appellant’s “own patent rights” because the Board’s determination would “have a preclusive effect on the scope of” Appellant’s “pending patent application.” 

The Court held that Appellant “ha[d] not established that the Board’s decision will have preclusive effect.” “Collateral estoppel w[ould] not attach to the Board’s non-appealable priority determination” and “[i]f the examiner were to reach the same priority determination during prosecution of [Apellant’s] pending application,” Appellant could “challenge that determination in a separate appeal.” Further, Appellant “failed to articulate with any specificity how the Board’s priority determination will impact its issued patents or pending continuation applications which claim priority to its PCT application.”


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