The following arguments will be available to the public live, both in-person and through online audio streaming. Access information will be available by 9 AM ET each day of argument at: https://cafc.uscourts.gov/home/oral-argument/listen-to-oral-arguments/.
Wednesday, July 12, 2023
Apple Inc. v. Corephotonics, Ltd., No. 22-1350, Courtroom 201
Corephotonics, Ltd ("Corephotonics") filed suit against Apple in the Northern District of California, alleging infringement of ten patents, including U.S. Patent No. 10,225,479 ("the '479 patent"). In turn, Apple filed two petitions for inter partes review, each based on different independent claims of the '479 patent. The Patent Trial and Appeal Board ("the Board") instituted review of both petitions. In the first petition, the Board held that claims 1-16, 18, 23-38, and 40 of the '479 patent were not unpatentable as obvious because the asserted art does not teach the disputed limitation "fused image with a point of view (POV) of the Wide camera" when construing the claim language to mean "a fused image having a Wide perspective POV and a Wide position POV." In the second petition, the Board held that claims 19-22 were not unpatentable as obvious at least in part because a discrepancy in Apple's expert data called into question whether a person of ordinary skill in the art would have formed the claimed invention with a reasonable expectation of success. Apple appealed.
On appeal, Apple argues the Board (1) erred in its construction of the disputed claim term and (2) violated the Administrative Procedure Act ("APA") by sua sponte elevating a minor mistake to a case-dispositive issue. Regarding the first issue, Apple asserts that the Board erroneously limited the construction of the term "point of view of the Wide camera" to one preferred embodiment, ignoring the '479 patent's use of "point of view" to mean either position or shape or both. Moreover, Apple asserts that the cited art teaches this alternative construction which warrants reversal. Regarding the second issue, Apple contends that the data-entry error of their expert had no impact on the greater issue of obviousness and, similarly, contends that Corephotonics never asserted otherwise. Therefore, Apple concludes that the Board's reliance on the data-entry error to avoid resolving the parties' actual dispute of obviousness was done without notice to the parties and, thus, necessitates a remand.
Corephotonics responds that the Board's decisions were proper. First, Corephotonics argues that the Board's claim construction is fully consistent with the usage of the terms in the '479 patent specification. Additionally, Corephotonics asserts that the cited art does not render the disputed limitation obvious under either construction. Second, Corephotonics argues that Apple is incorrect in its assertion that neither party identified the error in Apple's expert data as material to the obviousness inquiry. Rather, Corephotonics claims that it identified the error in its response brief where it argued that the error made the calculations of Apple's expert incorrect. Because those calculations were part of Apple's prima facie case, Corephotonics concludes that the error was necessarily material. Thereby, Corephotonics maintains that there was no new issue raised by the Board sua sponte requiring remand under the APA.
Wednesday, July 12, 2023
MacDermid Enthone Inc. v. BASF Corporation, No. 22-1356, Courtroom 402
In 2015, MacDermid Enthone Inc. ("Enthone") sued BASF Corporation ("BASF") for infringement of U.S. Patent No. 7,303,992 ("the '992 patent"). BASF petitioned for inter partes review of the '992 patent. The Patent Trial and Appeal Board ("the Board") instituted review and, in 2017, issued a Final Written Decision in which it found a "general unpredictability in the field and the art" and thus required "that there must be some specific motivation to employ specific plating bath components," of which it found none in the asserted references. BASF appealed this decision, challenging the Board's motivation to combine standard as being overly stringent. The Federal Circuit vacated and remanded in 2018, clarifying that there "need not be 'precise teachings' of a motivation to combine in the prior art" but rather a "sufficiently 'apparent reason to combine the known elements in the fashion claimed by the patent at issue,' ... in light of the record evidence of 'general unpredictability in the field and the art.'" On remand, the Board ruled the '992 patent obvious, finding sufficient motivation to combine the teachings of BASF's cited references. Enthone appealed.
On appeal, Enthone argues that the Board erred in several respects. First, Enthone contends that it was an error under the Administrative Procedure Act (APA) for the Board to go outside of the petition to find the claims obvious based on a theory never raised by BASF. In addition, Enthone alleges that the Board's finding of obviousness was arbitrary and capricious because (1) its analysis was internally inconsistent on the same technical issue, (2) its findings were unsupported by substantial evidence, and (3) its motivation standard was improper given the unpredictability in the art as articulated in the Federal Circuit's 2018 decision.
BASF responds that the Board's findings of fact are indeed supported by extensive record evidence and thorough analysis. With respect to Enthone's allegation of legal error, BASF counters that the allegedly absent theory upon which the Board ruled was indeed present in its petition. Moreover, BASF notes that the Federal Circuit's prior decision explicitly instructed the Board to consider whether the disputed reference rendered the claims obvious. Therefore, BASF concludes that the Board did not deviate impermissibly from the invalidity theory set forth in their petition and, thus, Enthone is not being denied its procedural rights guaranteed under the APA as alleged.
Thursday, July 13, 2023
RAI Strategic Holdings, Inc. v. Philip Morris Products S.A., No. 22-1862, Courtroom 201
RAI Strategic Holdings, Inc. ("RAI") asserted U.S. Patent No. 10,492,542 ("the '542 patent") against Philip Morris Products S.A. ("PMP") for patent infringement in the Eastern District of Virginia. After the district court case was stayed, PMP filed a petition for post-grant review before the Patent Trial and Appeal Board ("the Board") and the Board instituted review. In its Final Written Decision, the Board held (1) the claims unpatentable as obvious and (2) certain dependent claims as unpatentable for lacking written-description support. After the Board denied RAI's rehearing request, RAI appealed.
On appeal, RAI argues that the Board erroneously determined the claims were obvious at least because one of ordinary skill in the art would not have had a reasonable motivation to combine the references asserted by PMP. In addition, RAI contends that the Board wrongly determined that the dependent claims reciting a range of "about 75% to about 85%" lacked written description support because the '542 patent describes a broadest range of "about 75% to about 125%," which "plainly includes the claimed range," and discloses separate endpoints of both "about 75%" and "about 85%." Therefore, RAI alleges that the Board's holding is contrary to the Federal Circuit's "longstanding rule that a claim term need not be stated verbatim in the specification to satisfy the written description requirement." See Nalpropion Pharms., Inc. v. Actavis Labs FL, Inc., 934 F.3d 1344, 1350-51 (Fed. Cir. 2019) (instructing that "[r]igidity should yield to flexible, sensible interpretation" of the disclosure when evaluating written description).
PMP responds that the Board's decision is correct and supported by substantial evidence. On the issue of obviousness, PMP argues that the Board properly found that a person of ordinary skill in the art would have been motivated to combine the teachings of the pertinent references based on both their express disclosure and the unrebutted declaration testimony of PMP's expert. On the issue of written description, PMP contends that the Board correctly found that the '542 patent lacks written description support for a range of "about 75% to about 85%" because it does not disclose such a range but rather recites only much broader and higher ranges, e.g., 75% to 125% and 85% to 110%. PMP cites to the Federal Circuit's decision in Gen. Hosp. Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372 (2018) ("disclosure of a broad range of values does not by itself provide written description support for a [subset] within that range") to conclude that the written description rejection should be affirmed.
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