Recent Case Highlights - Klarquist Patent DefensesKlarquist Patent Defenses

Patent Defenses turns 20 in 2024

2024 Q3 Patent Defenses Update

Fed. Cir. Grants En Banc Review on Damages Expert Gatekeeping

The Federal Circuit granted Google’s petition for rehearing en banc to address a district court’s gatekeeping of patent damages experts, here an expert assigning a per-unit royalty rate to the patent owner’s allegedly comparable past lump-sum portfolio license agreements. Klarquist submitted a brief on behalf of seven amici supporting en banc review.

EcoFactor (Fed. Cir. 06/03/24) (2-1) (aff’g damages award and admission of patent-owner expert testimony on royalty rate), vacated and en banc review granted (Fed. Cir. 09/25/24) (briefing “limited to addressing the district court’s adherence to Federal Rule of Evidence 702 and Daubert[,] in its allowance of testimony from EcoFactor’s damages expert assigning a per-unit royalty rate to the three licenses in evidence in this case”).

Whiplash! Obviousness-Type Double Patenting

August 2023: A year ago, the talk of the (patent-practitioner) town was In re Cellect, holding that patent term adjustment (PTA) affects the date of patent expiration for obviousness-type double patenting (ODP) purposes, and affirming the ODP rejection of a (’369) patent expiring later (due to PTA) over a later-filed, later-issued, but earlier-expiring (’036) patent in same family having a common priority date. In re Cellect (Fed. Cir. 08/28/23). Patent practitioners were aghast, and a cert. petition was filed. (The Supreme Court was scheduled to consider this petition at its “long conference” this Monday, September 30.)

August 2024: But now the Federal Circuit, while standing by its holding on the impact of PTA, has declared that the result in In re Cellect will not be repeated.

“A first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date,” in view of “the purpose of the ODP doctrine, which is to prevent patentees from obtaining a second patent on a patentably indistinct invention to effectively extend the life of a first patent to that subject matter,” and because ruling otherwise would “effectively abrogate the benefit Congress intended to bestow on patentees when codifying PTA.” Allergan (Fed. Cir. 08/13/24) (distinguishing In re Cellect as not addressing this question of law at least in part because no party had presented it).

The Patent Office cited Allergan in opposing the In re Cellect cert. petition.

The New “On Sale” Bar (for First-Inventor-to-File Patents) Is Much Like the Old “On Sale” Bar

An applicant’s commercialization of an invention (e.g., through sale of a product of a claimed process) starts the one-year grace period for the applicant to file a patent application, even if it does not publicly disclose the invention.

Celanese (Fed. Cir. 08/12/24) (aff’g ITC that patent applicant’s pre-critical date sales of product made outside U.S. in secret by patented process invalidates the claims under AIA section 102(a)(1): “for patented processes, the on-sale bar applies when one commercially exploits the process by seeking compensation from the public for carrying out that process before the critical date”).

But it does not defeat the prior art status of a third-party “disclosure” before the application was filed, unless the applicant’s commercialization publicly disclosed the invention.

Sanho (Fed. Cir. 07/31/24) (aff’g PTAB obviousness despite inventor having privately (but without confidentiality obligation) sold device embodying claimed invention (and delivered one sample to buyer) before effective filing date of lead prior art reference, in part because “publicly disclosed” is not the same as “public use” (which encompasses a private commercial use), and expressly not deciding “whether to apply the prevailing standard for when a printed publication is sufficiently publicly accessible to qualify as prior art”).

Preliminary Injunction Against a Cancer-Relapse Test in a Two-Supplier Market

Patent preliminary injunctions remain rare, but a new precedential decision may encourage more non-NPE patent owners to seek a preliminary injunction even where that results in a one-supplier market.

Natera (Fed. Cir. 07/12/24) (aff’g preliminary injunction against competing tumor-informed molecular residual disease tests for detecting cancer relapse in two-product market, with carve-out for patients who had already started use with accused product, where direct competitors in two-competitor market, unwillingness to license the patent, potential loss of business relationships, obstacles to customers switching between providers, sufficient causal nexus, and the patentee showed it is more likely than not to prevail over an invalidity challenge, and rejecting argument that accused infringer needed to show “mere vulnerability” of the patent to an invalidity challenge to defeat an injunction).

An Issue Preclusion Profusion

The principles and elements of issue and claim preclusion are well established. For example, under issue preclusion, when an issue of fact or law is actually litigated and determined by a final judgment, the losing party had a full and fair chance to litigate the issue, and the determination is essential to the judgment, the determination (with certain equitable exceptions) is conclusive in a separate, second action between the parties. But the patent-case “fact patterns” to which these principles are applied are quite varied. And panels sometimes seem to disregard the well-settled principles.

Doctrine of Equivalents Is “Same Issue” as Literal Infringement

Wisconsin Alumni II (Fed. Cir. 08/28/24) (aff’g that later versions of Apple chips accused in second action were “essentially the same” as those accused in first action, and that “doctrine of equivalents” infringement theory in second action is “same issue” as literal infringement issue that plaintiff lost in first action, as they involve same statute, have been treated as same issue by S. Ct., and evidence would be substantially the same).

Sec. 101 Interlocutory Dismissal Order Became Final for All Dismissed Patent Claims Upon Stipulated Dismissal with Prejudice Despite Amended Complaint Having Dropped Some Claims

Koss (Fed. Cir. 07/19/24) (aff’g that stipulated dismissal of action with prejudice made final the district court’s previously interlocutory order on a motion to dismiss that all claims of three patents were invalid under Section 101 where amended complaint then asserted only limited claims of two of the patents, because order merged with the non-appealed stipulated dismissal, and therefore final order had issue preclusive effect).

Invalidity-Related Fact Finding Against Patent Owner in IPR Does Not Preclude Patent Owner on That Fact Question in District Court

Due to different standards of proof, “a finding underlying an unpatentability decision in an IPR proceeding [does not] collaterally estop[] a patentee from making validity arguments regarding separate, related claims in district court litigation.” ParkerVision (Fed. Cir. 09/06/24) (rev’g Daubert ruling excluding patent owner expert testimony; the defendant-petitioner proving the capabilities of a prior art apparatus by a preponderance of the evidence (in an IPR proceeding on different patent claims) does not preclude the patent owner on that factual issue where it must be proven by clear and convincing evidence).

Panel Disregards “Separate, Second Proceeding” Requirement for Issue and Claim Preclusion

Zyxel (Fed. Cir. 07/22/24) (rev’g PTAB non-obviousness as to one original claim and remanding to PTAB to consider whether this creates “collateral estoppel” as to patentability of amended claims with same elements; not forfeited for failure to raise collateral estoppel prior to appeal because not available until Fed. Cir. ruled original claim unpatentable).

101: No “How,” No Way!

Alice in a nutshell: No “how” in the claim, no way it’s valid.

The Federal Circuit insists on what we call “how claims,” i.e., claims that recite as the alleged advance a physical-realm particular way (particular structures, materials, and/or acts) of how to perform a function or achieve a result. Particularity in the mental realm of information and information manipulation, however, does not suffice because even narrow and specific abstract ideas are patent ineligible. Below are excerpts from three of this quarter’s seven Federal Circuit opinions finding claims patent ineligible under these principles:

“Claim 1 does not disclose how to maintain a usage history database, track viewer consumption, or generate a program guide. Instead, the claims recite functions in the abstract.” Broadband (Fed. Cir. 09/03/24).

“These claims consist solely of result-orientated, functional language and omit any specific requirements as to how these steps of information manipulation are performed.” Mobile Acuity (Fed. Cir. 08/06/24).

The claim’s “steps demonstrate that the claims are directed to receiving, storing, transmitting, determining, selecting, and generating information, which place them in the ‘familiar class of claims directed to a patent-ineligible concept.’” Miller Mendel (Fed. Cir. 07/18/24).

The Court also reversed a patent ineligibility judgment this quarter emphasizing that the claims were limited to a particular way of performing the claim-recited functions:

Contour IP (Fed. Cir. 09/09/24) (rev’g Summ. J. ineligibility: claims “require specific, technological means—parallel data stream recording with the low-quality recording wirelessly transferred to a remote device—that in turn provide a technological improvement to the real time viewing capabilities of a [point-of-view] camera’s recordings on a remote device.” The “claims do not cover other ways that a camera processor might generate multiple video streams of varying quality for wireless transmission, such as streams created ‘in sequence.’”).

2024 Q2 Patent Defenses Update

Highlights and Strategies from April – June S. Ct.’s decisions on substantive Patent Law.

The End of Chevron Deference: Impact on Substantive Patent Law

1984 Chevron Deference Rule: Where a statute administered by a federal agency is silent or ambiguous on a point, a court must defer to that agency’s reasonable interpretation thereof, even if the court otherwise would have interpreted the statute differently.

S. Ct.’s Final Application of Chevron Deference Was in Cuozzo, a Patent Case: “This Court, for its part, has not deferred to an agency interpretation under Chevron since 2016. See Cuozzo, 579 U.S. at 280 (most recent occasion).” Loper Bright (U.S. 06/28/2024) (6-3). Cuozzo approved USPTO’s use of “broadest reasonable interpretation” claim construction standard in IPRs (which USPTO since has abandoned).

The End of Chevron Deference:

Loper Bright (U.S. 06/28/2024) (overruling Chevron; under the APA, “agency interpretations of statutes—like agency interpretations of the Constitution—are not entitled to deference,” although courts may “seek aid from the interpretations of those responsible for implementing particular statutes,” “interpretations issued contemporaneously with the statute at issue, and which have remained consistent over time, may be especially useful in determining the statute’s meaning,” and “an agency’s interpretation of a statute … may be especially informative ‘to the extent it rests on factual premises within [the agency’s] expertise.’”).

Impact on Patent Cases:

Existing and future USPTO and ITC statutory interpretations (not already approved by a reviewing court) now are more open to challenge.
But USPTO and ITC statutory interpretations already approved by the Supreme Court or, to a lesser extent, the Federal Circuit, are unlikely to be overturned, due to the statutory stare decisis “[W]e do not call into question prior cases that relied on the Chevron framework. The holdings of those cases that specific agency actions are lawful … are still subject to statutory stare decisis despite our change in interpretive methodology.” Loper Bright (U.S. 06/28/2024).
- For example, the en banc Suprema II (Fed. Cir. 08/10/15) ruling that Section 337 bars importation of goods that when imported do not infringe but after importation are used by the importer to directly infringe at the inducement of the goods’ seller, was based on Chevron deference to ITC interpretation of ambiguous statute.

Loper Bright’s Lesson for a Party Asserting “Indefiniteness” Under Nautilus

The Supreme Court emphasized that even the most impenetrable statute has a best meaning: “Courts instead understand that such statutes, no matter how impenetrable, do—in fact, must—have a single, best meaning. That is the whole point of having written statutes; ‘every statute’s meaning is fixed at the time of enactment.’” Loper Bright (U.S. 06/28/2024). The same applies to patent claims. Even ambiguous (indefinite) patent claims have a best meaning and therefore there is nothing inconsistent with a defendant both asserting a (best) construction for a claim term and also arguing that the claim term is “indefinite.”

Silence in a Specification Speaks Volumes

On several patentability issues, a patent specification’s failure to explain something often is treated as admitting that that something already was known to a skilled artisan. This includes Alice step two.

Beteiro (Fed. Cir. 06/21/24) (“That only 15 lines out of a [98-column Spec.] are addressed to what Beteiro now insists is unconventional technology greatly undermines the plausibility of Beteiro’s allegations. The inventors do not in the specification purport to have advanced GPS or mobile device technology; they provide no description whatsoever of any hardware or software for equipping GPS on a mobile device. In context, this can only plausibly mean that the patent applicant drafted the specification understanding that a person of ordinary skill in the art knew what GPS was, how to include it on a mobile device, and that using it for the purposes disclosed in the patent was routine, conventional, and well-understood.”).

The More You Claim the More You Must Explain

This non-precedential decision is a routine application of full-scope enablement law to a claimed polymer, but it does pen a catchy slogan:

In re The Pen (Fed. Cir. 06/12/24) (non-precedential) (aff’g rejection of ex parte application claims for lack of full-scope enablement where full scope of the claims encompassed “polymers with any “R” group and an “n” (number of conjugated repeating units) of more than 8, at least 50, or at least 1000,” but closest prior art achieved an “n” to only 8. “In short, the more you claim, the more you must explain.”).

Parallel Proceedings in District Court and PTAB

When a parallel PTAB proceeding is pending, a patent owner win in district court is at risk even, sometimes, after the Federal Circuit affirms a district court finding of infringement liability.

“We apply a ‘yes/no’ analysis: is there, post-mandate, anything left to do other than execute the judgment? If the answer is ‘yes,’ then the case as a whole is not ‘final’ and is not, therefore, immune to the impact of subsequent developments with respect to the validity of the patents on which its infringement and invalidity claims are based.” Packet Intelligence (Fed. Cir. 05/02/24) (vacating judgment and damages award for patent owner based on Fed. Cir. affirmance of PTAB IPR unpatentability finding even though Fed. Cir.’s earlier mandate had affirmed liability and remanded on damages only).

But the successful patent challenger in an IPR cannot recover its attorney fees.

Dragon II (Fed. Cir. 05/20/24) (2-1) (aff’g grant of attorney fees for work in litigation but denial of fees for work in successful IPR petition, initiated in response to district court action and leading to stay of the district court action, leading to cancellation of asserted claims, because IPRs are not “cases” under section 285, distinguishing PPG because here defendant voluntarily initiated IPR proceeding).

Value of an Octane Fitness Letter

When receiving a cease and desist letter or complaint asserting patent infringement, one should consider responding with an “Octane Fitness letter,” explaining at least one clear reason why the accused activity does not infringe any claim. The delivery of such a letter later can be a factor supporting an award of attorney fees against the patent owner (and be evidence of no inducement intent).

Dragon II (Fed. Cir. 05/20/24) (aff’g award of fees where exceptionality based on “clear prosecution history disclaimer, which precluded a finding of infringement by any of the accused products; public availability of information demonstrating noninfringement by the accused products before Dragon filed the infringement suits; notice of noninfringement sent by Appellants to Dragon after the complaints were filed; and Dragon’s continued litigation after being put on notice of the objective baselessness of its infringement allegations.”).

Apportionment Mandate Muddied

Patent-infringement damages should not encompass the value of conventional or non-infringing acts, structures, or materials in the accused method or product. The Federal Circuit often applies this “apportionment” mandate strictly, but not always.

This decision concerns so-called “built-in apportionment,” where a patent owner argues that comparable existing license agreements set a royalty rate that was tied to the contribution of the infringed patent or comparable technology. Here, the allegedly comparable license agreements were three lump-sum portfolio licenses and the defendant, Google, argued that these did not account for apportionment to the single patent asserted against it. The panel disagreed, essentially treating apportionment as a talking point in the hypothetical negotiation rather than a strict mandate. A petition for rehearing en banc is likely.

EcoFactor (Fed. Cir. 06/03/24) (2-1) (where single patent found infringed, aff’g denial of new trial and admission of patent-owner expert reliance on three existing patent-owner lump-sum portfolio licenses, in part because expert testified this difference would be offset in hypothetical negotiation by those earlier licenses being settlements putting downward pressure on royalty rate).

2024 Q1 Patent Defenses Update

Highlights and Strategies from January–March Fed. Cir. decisions on substantive patent law

This was a busy quarter for the Federal Circuit with precedential decisions on the nature of CRM claims, the section 271(e)(1) safe harbor, the importance of instructing a jury on each individual indicia of non-obviousness, written description of a claimed range in mechanical arts, and reasonable-royalty damages based foreign activities, plus nine more written decisions finding claims directed to an abstract idea, and a pre-argument remand to allow the USPTO to further consider means-plus-function claiming of antibodies.

And the USPTO issued misguided guidance for examiners on section 112(f) step-plus-function claim elements.

CRM Claim Covers a Memory-Device Unit with a Copy of Software as Distinct From the Software Itself

In 2007, interpreting 35 U.S.C. § 271(f), the Supreme Court ruled that intangible software information, or “software in the abstract detached from any medium” as distinct from a physical copy of software, is not a “combinable component” under Sec. 271(f). Microsoft v. AT&T (U.S. 04/30/2007). Last week, the Federal Circuit cited that distinction as support for its narrow description of what constitutes “making” infringement for a CRM claim.

“The Supreme Court has recognized the important distinction between software and a particular copy of it on a CRM.” Brumfield (Fed. Cir. 03/27/24) (aff’g exclusion of damages expert theory seeking reasonable royalty on foreign sales of software, for infringement of a CRM claim, where expert’s report was “not focused on making an individual memory-device unit, whether freestanding (like a memory stick) or a part of a larger physical unit (like a hard drive in a personal computer or server). They have referred, instead, to the TWS BookTrader software itself—’the instructions themselves detached from any medium’ (rather than a ‘tangible ‘copy’’), ‘software in the abstract,’ software ‘[a]bstracted from a usable copy.’” (citing Microsoft v. AT&T)).

Mooring in the Section 271(e)(1) Safe Harbor

Edwards Lifesciences (Fed. Cir. 03/25/24) (2-1) (aff’g J. of no infringement under 271(e)(1) safe haven where two (allegedly infringing) sample products were imported into U.S. by employee attending medical conference to recruit doctors to conduct clinical trials that would be needed for FDA approval, which products never left employee’s bag, regardless of why defendant imported the samples).

Continuing Development of Functional Claiming in Antibody Art Post Amgen

In Amgen (U.S. 05/18/2023), the Supreme Court ruled invalid for lack of full-scope enablement claims to an entire class of antibodies defined by their function. Some amici had argued that the claims should have been interpreted under the statute enacted to deal with such purely functional claims, namely 35 U.S.C. § 112(f). The Federal Circuit now has remanded an appeal to allow the USPTO to rethink this topic.

In re Xencor (Fed. Cir. 01/23/24) (non-precedential) (permitting remand at USPTO request “so that the USPTO’s Appeals Review Panel can be convened to ‘clarify the USPTO’s position on the proper analysis of Jepson-format and means-plus function claims in the field of biotechnology, and particularly in the antibody art’”).

USPTO Missteps on Step Plus Function

The Office just gave its examining corps an easy (and incorrect) way to determine whether a limitation in a method claim triggers interpretation under 35 U.S.C. § 112(f):

Means-plus-function limitations appear much more frequently than step-plus-function limitations, which are rare. In process claims, if the claim element uses the phrase “step for,” § 112(f) is presumed to apply, but the term “step” alone and the phrase “steps of” tend to show that § 112(f) does not apply. A step limitation must not recite an act to be treated under § 112(f), but most process claims include steps with acts described by a verb ending in “-ing” (such as passing, heating, reacting, transferring, determining, etc.), which will avoid § 112(f).

USPTO Memorandum (“Resources for Examining Means-Plus-Function and Step-Plus-Function Claim Limitations (35 U.S.C. 112(f))”) (03/18/2024) (emphasis added).

So, Patent Office Examiners have been told that any result or function recited as a verb ending in “-ing,” such as “finding a needle in a haystack,” does not trigger interpretation under section 112(f). This is incorrect. The dividing line between a step and an act under this statute is not so simple. See https://klarquist.com/patent-defenses/1126f-claim-language/.

Obviousness: Each Objective Indicia of Non-Obviousness Matters

Inline Plastics (Fed. Cir. 03/27/24) (granting new trial overturning obviousness verdict where district court committed prejudicial legal error by failing to include in its objective-indicia instructions (limited to long-felt need and commercial success) mention of industry praise, copying, and licensing, despite evidence being presented thereon and defendant preserving request for such instruction).

Written Description of Claimed Range in Mechanical Arts

RAI Strategic (Fed. Cir. 02/09/24) (rev’g PTAB PGR finding of written description unpatentability where claim recited heating element length of about 75% to about 85% of length of heated substance and Spec. described ranges of 75%–125%, 80%–120%, 85%–115% and 90%–110%, because “no evidence suggesting that the” broader disclosed ranges “disclose a different invention than the claimed range of ‘about 75% to about 85%,’” and noting that mechanical arts are more predictable).

Requirements for Increasing Reasonable-Royalty Damages Based on Foreign Conduct Related to Domestic Infringing Conduct

In 2018, the Supreme Court opined on the availability of lost profits damages based on foreign conduct related to domestic infringing conduct under 35 U.S.C. § 271(f). WesternGeco III (U.S. 06/22/2018). A Federal Circuit panel now has mostly adopted that WesternGeco framework where the damages sought are a reasonable royalty and the infringement is under section 271(a), with particular guidance when the claim is a CRM claim, but expressly leaving open two questions for future development.

“The hypothetical negotiation must turn on the amount the hypothetical infringer would agree to pay to be permitted to engage in the domestic acts constituting “the infringement.” 35 U.S.C. § 284. If the patentee seeks to increase that amount by pointing to foreign conduct that is not itself infringing, the patentee must, at the least, show why that foreign conduct increases the value of the domestic infringement itself—because, e.g., the domestic infringement enables and is needed to enable otherwise-unavailable profits from conduct abroad—while respecting the apportionment limit that excludes values beyond that of practicing the patent.” Brumfield (Fed. Cir. 03/27/24) (aff’g exclusion of a damages expert’s theory because it was “legally insufficient, even under the WesternGeco framework,” for failing to focus on “the infringement,” namely making a CRM media by copying software thereon as distinct from the software itself. Characterizing this requirement as “a necessary beginning,” and expressly leaving open questions of (1) “whether the ‘reasonable, objective foreseeability’ presumptive standard for lost profits, is applicable where the damages are for a (non-established) reasonable royalty,” and (2) what, if any, consideration is given to the “general avoidance of extraterritorial reach” when applying the “proximate cause” requirement after WesternGeco).

Inexplicable Supreme Court Disregard for Patent Defenses!

The Supreme Court inexplicably denied certiorari despite the cert. petition citing Patent Defenses commentary in support. This slight may dent the Court’s public popularity.

See Petition in United Therapeutics (01/23/24) (arguing that Fed. Cir. refusal to give preclusive effect to PTAB decision pending appeal is contrary to S. Ct. and other Circuits; citing Patent Defenses commentary on Fed. Cir. decision).

Nine More Opinions Finding Claims Directed to Abstract Idea

Directed to Abstract Idea:

Abstract Idea Decision	“Abstract Idea” To Which Claims Directed	Ruling
Bluebonnet (Fed. Cir. 03/29/24) (non-precedential) (Stark, J.)	“customizing a product according to a customer’s likes and dislikes, applied to the somewhat narrower context of computer-based media playlists.”	aff’g R. 12(c) at least 1 claim
Rady (Fed. Cir. 03/27/24) (non-precedential) (per curiam)	“gathering and storing data about the unique imperfections of a physical object”	aff’g R. 12(b)(6) at least 1 claim
Brumfield (Fed. Cir. 03/27/24) (Taranto, J.)	“receipt and display of certain market information (bids and offers) in a manner that newly helps users see the information for use in making trades”	aff’g Summ. J. at least 2 claims
Savvy Dog (Fed. Cir. 03/21/24) (non-precedential) (Stoll, J.)	“displaying the game field before the player commits to play the game”	aff’g Summ. J. at least 1 claim
Chewy (Fed. Cir. 03/05/24) (Moore, J.)	“identifying advertisements based on search results”	aff’g Summ. J. 4 claims
In re Zimmerman (Fed. Cir. 02/09/24) (non-precedential) (per curiam)	“matching combinations of financial instruments through steps of receiving data, storing data, processing data, and executing trades”	aff’g ex parte rejection 73 claims
Eolas (Fed. Cir. 02/01/24) (non-precedential) (Stoll, J.)	“interacting with data objects on the World Wide Web”	aff’g Summ. J. 6 claims
Plotagraph (Fed. Cir. 01/22/24) (non-precedential) (Dyk, J.)	“changing the position of components in an image to create the appearance of movement, i.e., animation”	aff’g R. 12(b)(6) at least 5 claims
Int’l Business Machines (Fed. Cir. 01/09/24) (non-precedential) (2-1) (Hughes, J.)	“[i]dentify[], analyz[e], and present[] certain data to a user” “displaying and organizing information”	aff’g R. 12(b)(6) at least 3 claims

2023 Q4 Patent Defenses Update

Highlights and Strategies from October–December Fed. Cir. decisions on substantive patent law

Proportionality in Damages Awards

A fundamental principle running throughout patent law is proportionality. In the damages context, this includes apportioning value between the patented improvement and the remaining aspects of the accused product or method. This mandate has ripped up several large patent-infringement verdicts, including one last month for $1.5 Billion. See https://klarquist.com/patent-defenses/time-limitation-on-damages/#d-apportionment.

VLSI Tech. (Fed. Cir. 12/04/23) (vacating jury damages award of $1.5 Billion, where expert’s reasonable royalty calculation was based in part on performance of non-infringing functionality).
See also Finjan (Fed. Cir. 10/13/23) (aff’g exclusion of technical expert testimony which apportioned to certain top-level functions in the defendant’s documentation, where documentation also identified nearly 100 sub-features of those top-level functions, and expert did not analyze whether defendant’s “customers derived value solely from the patented features of the top-level function or whether the top-level functions included non-accused or non-patented functions at all”).

Particularity in Equivalents Infringement

The same VLSI decision illustrates a second fundamental principle throughout patent law: particularity. It reversed a separate $675 Million verdict for failure of proof of equivalents infringement, emphasizing the importance of showing that the accused device performed in substantially the same “way” as the alleged invention. See https://klarquist.com/patent-defenses/equivalents/#a-required-evidence.

“Such matching requires that each of function, way, and result be ‘substantially the same,’ with the ‘way’ requirement of particular importance, as a practical matter, in keeping the doctrine properly limited.” VLSI Tech. (Fed. Cir. 12/04/23).

One Argument Persuades Examiner? Consider Expressly Abandoning Other Arguments

Unsuccessful arguments patent applicants make in prosecution may later be treated as prosecution disclaimer or prosecution history estoppel. So, if one argument persuades the Examiner, consider expressly abandoning on the record other, unsuccessful arguments. See https://klarquist.com/patent-defenses/how-construed/#drole-of-prosecution-history.

Malvern (Fed. Cir. 11/01/23) (rejecting narrow construction based on alleged disclaimer, on ground that the applicant implicitly had abandoned its argument: “where an applicant abandons its unsuccessful argument, we conclude that the prosecution history lacks the clarity necessary to establish prosecution disclaimer”).

Are Numbers in Claims Always Subject to Rounding?

There is no blanket rule requiring or foreclosing rounding of numbers in a patent claim. See https://klarquist.com/patent-defenses/how-construed/#jparticular-claim-language.

Actelion (Fed. Cir. 11/06/23) (remanding for district court to consider extrinsic evidence on whether “pH of 13” includes pH value of 12.5 where intrinsic evidence does not provide clear answer).

“Processor Configured to” Sometimes is a Means-plus-Function Element

“Processor” sounds like particular structure, but don’t assume that it is not a means-plus-function element. See https://klarquist.com/patent-defenses/1126f-claim-language/#a-whether-sec-1126f-treatment-invoked.

WSOU Investments (Fed. Cir. 10/19/23) (non-precedential) (aff’g that “processor configured to provide a pre-emptive user output when the sub-set of pixels approaches an edge of the set of available pixels” triggers 112(6/f) because Spec. “treats the word ‘processor’ so broadly as to generically be any structure that manipulates data [e.g.] ‘[i]mplementation of the processor 4 can be in hardware alone . . ., have certain aspects in software including firmware alone or can be a combination of hardware and software (including firmware)’”).
WSOU Investments (Fed. Cir. 10/06/23) (non-precedential) (aff’g that “collaborative application management processor configured to manage collaborative applications” triggers 112(6/f) because there “is no categorical rule that ‘processor’ is or is not structural,” the additional claim-element language is “purely functional,” “the epitome of functional claiming: a black box that captures any and all structures that fulfill the function,” “there is no indication of how the processor manages collaborative applications,” “claims do not describe how this processor interacts with the other claimed components in a way that might inform the structural character of the limitation,” and Spec. doesn’t use term “processor,” instead referring to “means” for this function).

The Role of Extrinsic Evidence in Williamson Step Two

After determining that claim language triggers construction under 35 USC 112(6/f), the second step is to determine whether the specification discloses particular structures, acts and materials that are both sufficient to perform the function and also linked to that function. An October decision surveyed the case law on the role of extrinsic evidence in this second step. See https://klarquist.com/patent-defenses/1126f-claim-language/#b-construction-of-sec-1126f-claim-element.

Case law is divided into “two distinct groups: First, cases in which the specification discloses no algorithm; and second, cases in which the specification does disclose an algorithm but a [party] contends that disclosure is inadequate.’ Where the specification discloses no algorithm, the knowledge of a skilled artisan is irrelevant. But where the specification discloses some arguable algorithm, even if a party contends that the algorithm is inadequate, the sufficiency of the purportedly-adequate structure disclosed in the specification must be evaluated in light of the knowledge possessed by a skilled artisan.” Sisvel (Fed. Cir. 10/06/23) (vacating PTAB ruling that means-plus-function element lacked corresponding algorithm where PTAB erroneously excluded evidence that POSITA would understand the software protocols (known in the art) identified by name in the Spec.).

Need Clear Statement of the Motivation to Combine

Crafting a solid motivation-to-combine argument is challenging. Many motivation-to-combine arguments are unclear, superficial and/or mere hindsight, to varying degrees. An October decision addressed an extreme example of this. See https://klarquist.com/patent-defenses/obviousness-sec-103/#d-motivation-to-combine-or-modify-art.

Sisvel (Fed. Cir. 10/06/23) (aff’g PTAB finding of no showing of motivation where Petition “does not explain what reference is the primary versus secondary reference, what elements are missing from the primary reference, what elements should be added from the secondary reference to reach the claimed invention, or why those particular elements would be obvious to add”).

Piercing Litigation-Driven Prosecution Tricks

We’ve all seen patent families that took a sharp turn after a competitor’s product was released. While non-precedential, here’s a refreshing reality-based treatment of such a prosecution tactic. https://klarquist.com/patent-defenses/how-construed/#brole-of-other-claims.

Barrday (Fed. Cir. 11/16/23) (non-precedential) (2-1) (aff’g construction of “securing yarn” as excluding yarns from upper or bottom layer despite several dependent claims reciting just that, noting that dependent claims were added post filing and likely litigation-driven, being added weeks after letter from defendant explaining non-infringement).

Untruths and Consequences

Congratulations to Amazon.com on winning a $5 Million fees award. See https://klarquist.com/patent-defenses/cases-awarding-fees/.

In re PersonalWeb (Fed. Cir. 11/03/23) (2-1) (aff’g exceptional case finding and award of $5,187,203.99 in attorney fees and costs to Amazon.com, where “a straightforward application of Kessler barred PersonalWeb’s claims,” the claims were “baseless under well-settled claim preclusion precedents,” plaintiff’s “pattern of flipflopping infringement theories,” “PersonalWeb engaged in unreasonable conduct post-claim construction that prolonged” the case, and plaintiff submitted inaccurate declarations).