Federal Circuit: Indefinite Claims Reviewable In IPRs

Maier & Maier

On February 4, 2020, the Federal Circuit issued a precedential decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp.. The decision remanded an inter partes review (IPR) proceeding to the Patent Trial and Appeal Board (PTAB) for review of claims under the proposed novelty and obviousness grounds, despite the fact that the Board had determined the claims to be indefinite.

As part of the America Invents Act in 2012, congress created the IPR proceedings at the PTAB. With this new procedure, petitioners were granted the opportunity to challenge the validity of patents in a more efficient and fast-paced manner. However, IPR’s are limited to institution on grounds for rejection under §102 for anticipation and §103 for obviousness. This notably excludes challenges under §112 for indefiniteness.

In the PTAB proceeding leading to appeal, Samsung had petitioned for review of Claims 1-4, 8, and 11 of U.S. Pat. No. 8,650,591. In the PTAB’s Final Written Decision, the Board invalidated claim 11 for obviousness, but declined to analyze 1-4 and 8. Their reasoning was that the claims were mixed subject matter under IPXL analysis, making the claims indefinite and precluding the Board from continuing the review since indefiniteness extends beyond the congressionally granted scope for IPRs.[1]

On appeal, the Federal Circuit explained that the mere fact that the claims were indefinite does not bar the PTAB from reviewing them under 102 and 103:

Even though the validity of the challenged claims may be subject to question for IPXL-type indefiniteness, that is simply another ground on which the claims might be challenged in an appropriate forum (other than the Board)… It does not necessarily preclude the Board from addressing the patentability of the claims on section 102 and 103 grounds. In the remand proceedings, the Board should determine whether claim 1 and its dependent claims are unpatentable as anticipated or obvious based on the instituted grounds.[2]

With the decision, the Federal Circuit preserves the ability for petitioners to use IPRs to challenge patents more efficiently, even in the case where the claims are indefinite.

[1] IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005)

[2] Samsung Electronics America v. Prisua Engineering Corp., Case No. 19-1169, Document 52 at 20 (Fed. Cir. 2020).

Jury Hits Apple & Broadcom With $1.1 Billion Infringement Award To CalTech

Maier & Maier

2020 has started off with a bang as a jury in the Central District of California returned a verdict finding for CalTech on five counts of infringement against both Apple and Broadcom. The suit centered around Broadcom Wi-Fi components that had been used in a variety of products resulting in awards of $270,241,171 from Broadcom and $837,801,178 from Apple.

Originally filed in 2016, CalTech asserted claims from four patents (U.S. Patent No. 7,116,710, U.S. Patent No. 7,421,032, U.S. Patent No. 7,916,781, and U.S. Patent No. 8,284,833). Each of the four is titled “Serial Concatenation of Interleaved Convolutional Codes Forming Turbo-Like Codes” and covers Irregular repeat and accumulate codes or ‘IRA codes’ which improve transmission rates and is connected with the IEEE 802.11 Wi-Fi standard.

CalTech asserted these patents against Broadcom’s Wi-Fi components, including the exemplary BCM4350 “5G WiFi 802.11ac Client”. These components were found to be used in iPhones, iPads, iPods, Apple Watches, Mac computers, HomePod smart speakers, and the discontinued AirPort wireless routers. Based on their use of the IRA codes, the jury found Apple and Broadcom owed reasonable royalties for these products dating back to 2010, bringing the total damages to $1.1 Billion.

Maier & Maier’s Stephen G. Kunin Tapped For 15th Annual Advanced Patent Law Institute

Maier & Maier

Next month is the 15th Annual Advanced Patent Law Institute at the USPTO, and Maier and Maier’s own Stephen G. Kunin is set to moderate the Thursday morning session focused on Section 101: High Tech v. Life Sciences. Per the program description:

‘The U.S. patent statutes apply equally to all patent applications, but the application of the patent eligibility requirement of Section 101 varies across technologies. Discuss, compare and contrast eligible and non-eligible claims in different fields, review the current examination guidance, and hear an update on legislate reform efforts.’

Kunin will be joined by a panel of USPTO officials and practitioners to share his expertise on the topic. For more information on the program set for March 12-13, 2020, find the live agenda here.

USPTO Awaits Arthrex En Banc Rehearing Decision As PTAB Judges Remain In Flux

Maier & Maier

Final briefing from Appellant Arthrex, Inc., Appellees Arthrocare Corp. and Smith & Nephew, Inc., and the Intervening United States Government was filed January 17, 2020 on the request for en banc rehearing. The decision at issue centered on the constitutionality of the appointment process for the PTAB Administrative Patent Judges (APJs) and whether PTAB proceedings as a whole were unconstitutional.

Currently, APJs are appointed by the U.S. Secretary of Commerce. In the original challenge, Arthrex Inc. argued that PTAB proceedings are unconstitutional because this appointment proceeding is insufficient for principal officers. Under the U.S. Constitution, principal officers must be appointed by the President of the United states, with the advice and consent of the Senate.

In the decision last fall, the Federal Circuit severed a tenure provision for the APJ, determining that this would convert them from principal officers to inferior officers. As inferior officers, their appointment by the Secretary of Commerce would be constitutional.

In the briefings filed last week, all parties found flaws in this decision. Arthrex argued that the severance was not sufficient to make the appointments constitutional. Smith & Nephew argued that APJs were already inferior officers and the severance of tenure was unnecessary. Finally, the intervening U.S. found several flaws in the decision, including both the finding that APJs were not subject to sufficient direction or supervision and an alleged misunderstanding of the default federal-employee removal standard.

The three parties’ filings were joined by amici briefs by both the New York Intellectual Property Law Association and the Association for Accessible Medicines, both writing in opposition to the APJs being labeled principal officers and in support of the importance of the PTAB, citing the widespread ramifications of the constitutionality issue.

With the briefings all submitted, the USPTO along with patent owners and petitioners alike await the decision.

Supreme Court Rejects Federal Circuit’s Plea For Help With §101

Maier & Maier

This past summer, the Federal Circuit issued an en banc decision against rehearing in Athena Diagnostics, Inc., et al. v. Mayo Collaborative, et al. In the 7-5 decision, there were a staggering 8 separate opinions (four concurring and four dissenting). The common refrain in each was the need for the Supreme Court to address the binding precedent from Mayo.

On January 13, the Supreme Court denied that plea from the Federal Circuit by refusing to grant certiorari on the case.

This is not the only case in which the Supreme Court could have addressed §101, as it also declined to grant certiorari on both HP Inc. v Berkheimer, Hikma Pharmaceuticals, et al. v. Vanda Pharmaceuticals, which raised similar issues. However, it was viewed as the one most likely to be granted certiorari due to the direct plea from the Federal Circuit. In fact, the Solicitor General had even weighed in upon the Supreme Court’s request for views on Hikma, stating that the Court would be better served taking up the issue in Athena. As the Solicitor General emphasized, Athena’s petition “was accompanied by multiple separate opinions articulating different understandings of Mayo and seeking clarification from this Court.” The Court opted instead to deny both petitions.

With the Supreme Court’s declination to weigh in further, the Federal Circuit must place its hopes in the pending legislation in congress to reform subject matter eligibility under §101 and provide clarity to the ongoing situation.

Alice Test Saves Nintendo From Jury’s $10.1 Infringement Verdict As Northern District of Texas Rules Patent Invalid Under §101

Maier & Maier

On January 17th, 2020, Chief Judge Barbara Lynn granted Nintendo’s Motion for Judgment as a Matter of Law, invalidating iLife’s patent claim asserted against Nintendo for its Wii U games and the resulting jury verdict award of $10.1 million.

In the motion, Nintendo raised challenges that the patent (U.S. Pat. No. 6,864,796) for Systems Within a Communications Device for evaluating Movement of a Body and Methods of Operating the Same was invalid as directed to ineligible subject matter under §101 and indefinite under §112 and invalid for lack of enablement and written description under §112.

Despite the jury’s finding that the patent was not invalid, the court found the patent invalid under Alice analysis. At step 1, the court determined that “Claim 1 is directed to the abstract idea of ‘gathering, processing and transmitting…information,’” comparing the claim to those in Elec. Power Grp., LLC v. Alstom S.A.. Meanwhile at step 2, the court found nothing inventive in the claim that could save it for invalidity as ineligible subject matter, rejecting iLife’s identification of inventive aspects disclosed in the written description.

This decision comes at a time when the Supreme Court again rejected the opportunity to provide clarification on §101 subject matter eligibility, having denied certiorari to multiple petitions on the matter including HP Inc. v Berkheimer, Hikma Pharmaceuticals, et al. v. Vanda Pharmaceuticals, and Athena Diagnostics, Inc., et al. v. Mayo Collaborative, et al.

Maier & Maier Helps GREE, Inc. Successfully Overcome §101 And §112 Attacks At The PTAB By Supercell Oy

Maier & Maier

On October 15, 2019, the Patent Trial and Appeal Board issued a Final Written Decision upholding all 19 remaining claims at issue as valid over 101 and 112 arguments in PGR2018-00061. The challenged patent, 9,700,793, “relates to a recording medium storing a game program, a game processing method, and an information processing apparatus.” The petition proposed three grounds of rejection (one under §101 and two under §112), and the Board upheld the patents validity against all three.

Maier & Maier successfully argued that the Petitioner’s claim construction improperly omitted aspects of the claims. This was crucial to the Board’s Alice analysis, where they were convinced the claims were directed towards patentable subject matter. Supercell’s proposed §112 rejections also failed because the Board found that Petitioner had not sufficiently established that one of ordinary skill in the art would not understand the claims in light of the specification under § 112(a), and because the claims were not lacking antecedent basis under § 112(b).

This proceeding was part of an ongoing arms race in the social gaming technology field. In total, Supercell Oy filed eighteen PTAB petitions against GREE’s portfolio. Supercell Oy tapped Fenwick & West to represent them, while GREE countered with Maier & Maier PLLC (4 proceedings), Ropes & Gray (4 proceedings), Kilpatrick Townsend & Stockton LLP (4 proceedings), Oliff PLC (3 proceedings), and Oblon McClelland Maier & Neustadt, LLP (1 proceeding).

Overall ten of the eighteen petitions were instituted, with Maier & Maier earning two of the non-institution decisions. With this victory, Maier & Maier successfully helped GREE defeat 75% of the petitions by Supercell, dwarfing usual outcomes in both institution rates (50% denied for GREE compared to the average of 26.8%) and full trial outcomes where up to 80% of claims are ultimately invalidated.

All the above statistics and information about the individual PTAB proceedings was obtained using the PostGrant Portal.

 

5G Essential Patent Declaration Updates

Maier & Maier

The 5G Standard Essential Patent (SEP) Declaration efforts are ongoing as companies around the globe are vying for position in the 5G IP game. The standard looks to define the patents necessary to implement 5G technology into the market to organize future licensing arrangements and portfolio evaluations. The declaration process is being overseen by 3GPP, a partnership of seven different telecommunications standard development organizations.[1]

The 5G SEP efforts focus on innovations lowering latency, increasing reliability, and providing efficient, low cost coverage to support baseband and radio technologies exceeding 6GHz. Previous connectivity in 4G technologies used sub-6GHz wavelengths, overlapped with existing radio access networks. The shift from 4G to 5G above that threshold requires a massive leap in performance and energy efficiency, and a heavy investment in infrastructure to support the new network.

The investments made in 5G center around enabling the necessary technology to advance beyond 4G and mobile devices and move to 5G which aims to integrate a wide variety of everyday items and the internet of things.[2] There are a significant number of subcategories/element technologies necessary to achieve this goal:

    • NOMA
    • Massive MIMO
    • Separation of C plane and U plane
    • URLCC implementation
    • Network slicing / NFV
    • 5G reference signal
    • Millimeter wave band
    • Signal waveform
    • Unlicensed band usage
    • Initial access
    • mMTC/IoT
    • D2D/V2X
    • Frame structure
    • Data flow aggregation for multiple connectivity
    • Flexible duplex

The 5G SEP Declaration process is likely to continue until the mid 2020’s, with over 300,000 declared patents thus far. [3] Of this pool, several companies have made substantial contributions to the total.[4] This includes major global companies like Huawei (17.1%), Ericsson (14.7%), Samsung (13.1%), Qualcomm (11.7%), and Nokia (10.2%), among others. How each continues to develop 5G SEP technology will play a significant part in their ability to leverage the 5G SEP landscape moving forward.

[1] https://www.3gpp.org/about-3gpp/partners

[2] https://www.cybersoken.com/file/5G-SEP-ENG.pdf

[3] https://www.lexology.com/library/detail.aspx?g=e1dc4072-1695-4279-b7fa-3fe3e19982b8

[4] https://www.twobirds.com/~/media/pdfs/news/articles/2019/determining-which-companies-are-leading-the-5g-race.pdf?la=en&hash=8ABA5A7173EEE8FFA612E070C0EA4B4F53CC50DE

Federal Circuit Rules Design Patent Scope Can Be Limited By Claim Language

Maier & Maier

On September 12, 2019, the Federal Circuit upheld the District Court of New Jersey’s finding that a design patent’s scope is limited by the language in its claims, rather than just its figures. The decision, in Curver Luxembourg, SARL v. Home Expressions Inc., heightens the importance of titles and claim language used when drafting design patents, rather than limiting the scope to solely the figures themselves. This holding should be carefully read by applicants and practitioners alike to inform their drafting and responses during examination.

In the case, Curver Luxembourg was attempting to assert a design patent, D677,946 against Home Expressions for the “Y” design pattern they used on baskets. The problem was that the design patent was entitled “Pattern for a Chair” and claimed “ornamental design for a pattern for a chair”. The District Court granted Home Expressions’ motion to dismiss under Rule 12(b)(6) for failure to state a claim.

On appeal for the dismissal, Curver Luxembourg argued that the figures showed only a pattern not the article it was on. They argued that because the pattern was all that was shown in the figures, it should not be limited in its application to solely chairs. This argument was not persuasive, especially considering the prosecution of the application.

Originally, the application was submitted with the title “FURNITURE (PART OF-)” and claimed a “design for a furniture part”. The examiner had objected to the title under the Patent Office’s Manual of Patent Examining Procedure (MPEP) § 1503(I) stating that design patents must designate a “particular article”. The examiner suggested the final title and claims, which the applicant accepted. This language was included by the District Court as part of the “Ordinary Observer” test for design patent infringement. Since the basket was not a chair, the District Court found no reasonably plausible infringement and dismissed the suit.

On appeal, the Federal Circuit explained that “Curver’s argument effectively collapses to a request for a patent on a surface ornamentation design per se.” Balking at the idea of doing so, the decision declines “to construe the scope of a design patent so broadly here merely because the referenced article of manufacture appears in the claim language, rather than the figures.”

USPTO Expands Track 1 Program to 12,000 Grants Per Year

Maier & Maier

Under the America Invents Act, one of the new programs put into effect in 2011 was the Prioritized Examination Track. This Pilot Program allowed applicants to petition for special status in examination, placing it on a separate special docket with a goal of 12 months to issue.

In order to qualify, the applicant must comply with certain requirements. Most notably, they must pay an additional fee ($4,000). Additionally, the program limits the number of claims in the application to a maximum of 4 independent claims and 30 claims total.

The USPTO is expanding this program based on its tremendous popularity and success, with more applicants petitioning each year. The current expansion comes at a time when the USPTO would likely have met the previous maximum of 10,000 grants well before the end of the calendar year.

The increase went into effect on September 3, 2019 and affords more applicants the opportunity to take advantage of this growingly popular program. For more information or to see if Track 1 status may be right for your application, reach out to us at our contact page.