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Facebook v Windy City Innovations

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Facebook, Inc., v. Windy City Innovations, LLC

Nos. 2018-1400, 2018-1401, 2018-1402, 2018-1403, 2018-1537,2018-1540, 2018-1541  Opinion Issued: March 18, 2020 Opinion Modified: September 4, 2020  Before Chief Judge Prost, with Circuit Judges Plager and O’Malley.

Windy City Innovations, LLC (“Windy City”) filed a complaint accusing Facebook, Inc. (“Facebook”) of infringing certain patents. Exactly one year after being served with Windy City’s complaint, Facebook timely petitioned for inter partes review (“IPR”) of several claims of each patent. Windy City had not yet identified the specific claims it was asserting in the district court proceeding. The Patent Trial and Appeal Board (“Board”) instituted IPR of each patent. After Windy City had identified the claims it was asserting in the district court litigation, Facebook filed two additional petitions for IPR of additional claims, along with motions for joinder to the already instituted IPRs on those patents. The Board granted Facebook’s motions for joinder even though the one year deadline for institution had passed for the two additional petitions. The Court held that joinder of the new claims was improper, vacated the Board’s final written decisions as to those claims, and remanded for the Board to consider whether the termination of those proceedings finally resolved them.

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Alacritech v Intel, Cavium, Dell

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Alacritech, Inc. v. Intel Corporation, Cavium, LLC, Dell, Inc.

Nos. 2019-1467, 2019-1468 Fed. Cir. July 31, 2020 Before Circuit Judges Moore, Chen, and Stoll.

Alacritech appealed the Patent Trial and Appeal Board’s decisions holding certain claims of U.S. Patent No. 8,131,880 unpatentable as obvious. The Court held that the Board did not adequately support its finding that the asserted prior art combination teaches or suggests a limitation recited in claims 41-43 of the patent, but found no reversible error in the Board’s remaining obviousness determinations.

The claim limitations at issue require that reassembly of packets take place in the network interface, as opposed to a central processor. None of the parties disputed that reassembly is disclosed by the asserted prior art. The crux of the dispute was where reassembly takes place in the prior art and whether that location satisfies the claim limitations. (more…)

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Fitbit v Valencell

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Fitbit, Inc. v. Valencell, Inc.

No. 2019-1048 Fed. Cir. Before Circuit Judges Newman, Dyk, and Reyna.

Apple petitioned the Board for IPR of claims 1–13. The Board denied review of claims 3–5. Fitbit filed an IPR petition for claims 1, 2, and 6–13 and moved for joinder with Apple’s IPR, which the Board granted. After the PTAB trial, but before the Final Written Decision, the Supreme Court decided SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), holding that the America Invents Act requires that all challenged claims must be reviewed by the Board if the IPR petition is granted. The Board re-instituted the IPR to add claims 3–5 of the patent. The Final Written Decision held claims 1, 2, and 6–13 unpatentable, and held claims 3–5 not unpatentable. Following the decision, Apple withdrew from the proceeding. (more…)

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Esip 2 v Puzhen Life

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Esip Series 2, LLC v. Puzhen Life USA, LLC

No. 2019-1659 Fed. Cir. Before Circuit Judges Lourie, Reyna, and Hughes.

The Court affirmed the decision of the Patent Trial and Appeal Board that certain claims of ESIP’s patent are invalid as obvious. The Court also rejected ESIP’s argument that the Board should not have instituted inter partes review because Puzhen failed to identify “all real parties in interest” as required by 35 U.S.C. § 312, finding that the Board’s decision to institute inter partes review was non-appealable.

U.S. Patent No. 9,415,130 (“the ’130 patent”) relates to a “system and method for combining germicidal protection and aromatic diffusion in enclosed habitable spaces.” ESIP challenged four fact findings by the Board in determining that the claims at issue would have been obvious. The Court determined that all four fact findings were supported by substantial evidence. The Court found no error in the Board’s decision to credit the opinion of one expert over another and expressed that it does not reweigh evidence on appeal. (more…)

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Argentum Pharmaceuticals v Novartis

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Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corporation

No. 2018-2273 Fed. Cir. Before Circuit Judges Lourie, Moore, and Reyna.

In this appeal from the Patent Trial and Appeal Board, the Court held that Argentum lacks Article III standing and dismissed the appeal.

Standing requires that the Argentum “

  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.”

The burden of proof was on Argentum to demonstrate standing. Argentum was pursuing a generic version of Novartis’ Gilenya® product, along with its partner KVK-Tech, Inc. They were in the process of filing an ANDA, but had not yet filed it. The ANDA would be filed by KVK. The Court indicated that KVK, not Argentum, may be at risk of being sued. However, “even if the litigation were personal to Argentum, it would not confer standing because it is merely conjectural.” (more…)

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Nike v Adidas

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Nike, Inc. v. Adidas AG

No. 2019-1262 Fed. Cir. April 9, 2020 Before Circuit Judges Lourie, Chen, and Stoll.

Nike appealed the Patent Trial and Appeal Board’s decision on remand denying its request to enter substitute claims 47–50 of U.S. Patent No. 7,347,011 on the ground that those claims are unpatentable under 35 U.S.C. § 103. Nike further asserted that the Board violated the notice provisions of the APA by finding that a limitation of substitute claim 49 was well-known in the art based on a prior art reference that was in the record, but was never cited by Adidas for disclosing that limitation. The Court held that substantial evidence supported the Board’s finding that Nike failed to establish a long-felt need for substitute claims 47–50. The Court determined that the prior art revealed existing solutions to reducing waste during shoe production, which was the long felt need Nike argued that it had solved. (more…)

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Arctic Cat v Bombardier

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Arctic Cat Inc. v. Bombardier Recreational Products Inc., BRP U.S. Inc.

2019-1080 Fed. Cir. Before Circuit Judges Lourie, Moore, and Stoll.

The Court affirmed a judgment of the District Court that Arctic Cat is not entitled to recover pre-complaint damages from Bombardier due to the failure of Arctic Cat’s licensee to mark products in accordance with 35 U.S.C. §287. The issue presented was whether the cessation of sales of unmarked products excuses noncompliance with the notice requirement of §287, such that a patentee may recover damages for the period after sales of unmarked products ceased but before the filing of a suit for infringement. The Court held that it does not. A patentee who never makes or sells a patented article may recover damages, even without notice to an alleged infringer. If a patentee makes or sells a patented article and fails to mark it in accordance with §287, the patentee cannot collect damages until it provides notice or sues the alleged infringer. Damages accrue beginning with notification or suit. The patentee can provide notice by direct communication or by marking. A patentee’s licensees must also comply with §287. Arctic Cat had a license agreement expressly providing that its licensee Honda had no obligation to mark. While the date that Honda ceased making the patented products was in dispute, the Court found that that factual inquiry to be irrelevant to the analysis. Arctic Cat argued that, because §287 is written in the present tense, the statute only applies while a patentee is “making, offering for sale, or selling” its products. The Court responded (more…)

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Koninklijke Philips v Google, Microsoft PTAB

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Koninklijke Philips N.V. v. Google LLC, Microsoft Corporation, Microsoft Mobile, Inc.

No. 2019-1177 Fed. Cir. Philips v Google Microsoft PTAB summary

The Court affirmed the decision of the Patent Trial and Appeal Board (“Board”) in an inter partes review of U.S. Patent No. 7,529,806 finding that the claims were unpatentable as obvious.

The Board instituted inter partes review on the grounds of obviousness over a reference designated as SMIL 1.0 and obviousness over SMIL 1.0 in combination with a reference designated as Hua. The latter grounds was not advanced in Google’s petition.

The Court held that the Board erred by instituting inter partes review based on a combination of prior art references not advanced in Google’s petition, noting that the Supreme Court has explained that 35 U.S.C. § 311(a) does not “contemplate a petition that asks the Director to initiate whatever kind of inter partes review he might choose.” SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). The Court went on to further quote the Supreme Court’s explanation of § 314(b) that the Director is given only the choice “whether” to institute an inter partes review. That language indicates a binary choice—either institute review or don’t. (more…)

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Chamberlain v One World – Techtronic Industries

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The Chamberlain Group, Inc. v. One World Technologies, Inc., DBA Techtronic Industries Power Equipment

No. 2018-2112 Before Circuit Judges Dyk, Reyna, and Hughes. Opinion by Circuit Judge Hughes.

The patent considered was directed to improved methods of human interaction with “barrier movement operators,” such as garage door operator systems. The claims on appeal were directed to an “interactive learn mode” that “guide[s] a user through installation and learn mode actions.” The Court affirmed the PTAB’s finding that the claims on appeal were anticipated under 35 U.S.C. § 102(b).

Appellant argued that one of the claim steps should be construed to require identifying multiple activities. According to the Appellant, the prior art reference “clearly establishes that its controller identifies a single activity; it either sets the ‘up’ limit, or it sets the ‘down’ limit.” At the oral hearing, Appellant argued for the first time that the prior art reference failed to anticipate the claim’s final step — transmitting guidance “responsive to the first and second identifying steps.” Appellant further argued that the claim requires identifying multiple activities before transmitting any guidance “responsive to” the identification step. (more…)

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Airbus v Firepass Corporation

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Airbus S.A.S. v. Firepass Corporation

No. 2019-1803 Fed. Cir. Before Circuit Judges Lourie, Moore, and Stoll.

Airbus S.A.S. appealed the Patent Trial and Appeal Board’s reversal of the patent examiner’s rejection of certain new claims presented by patent owner Firepass Corporation in an inter partes reexamination of U.S. Patent No. 6,418,752. The issue on appeal was the Board’s finding that an asserted prior art reference (the “Reference”) fails to qualify as relevant prior art because it is not analogous to the claimed invention of the ’752 patent. The Court vacated the Board’s reversal of the rejection and remanded for consideration of the reference. The Court stated that two separate tests define the scope of analogous prior art:

  1. whether the art is from the same field of endeavor, regardless of the problem addressed and,
  2. if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.

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