United States: Federal Circuit Patent Watch: Sanctions "Will Likely Result" If A Party "Incorporate[s] By Reference Arguments Into One Brief From Another"

Precedential and Key Federal Circuit Opinions

1. PROMPTU SYSTEMS CORPORATION v. COMCAST CABLE COMMUNICATIONS, LLC [OPINION] (2022-1093, 2/16/2024) (Moore, Prost, and Taranto)

Per Curiam. The Court sua sponte issued an order that "[p]arties may not incorporate by reference arguments into one brief from another unless in compliance with Fed. R. App. P. 28, and in no event is such incorporation permitted if it would result in exceeding the applicable word count," and "violating these provisions in the future will likely result in sanctions."

2. GOOGLE LLC v. ECOFACTOR, INC. [OPINION] (2022-1750, 2022-1767, 2/7/2024) (Reyna, Taranto, and Stark)

Reyna, J. The Court reversed the PTAB's claim construction of a limitation related to five inputs, vacated the PTAB's determination that the challenged claims were not shown to be unpatentable, and remanded.

The disputed limitation required "determining a first time ... based at least in part on" five inputs recited in the limitation. Appellant argued that a prior art reference calculated a "first time" based on one of the five inputs, which itself was calculated from another one of the five inputs. The Board determined that claim construction was unnecessary, and then concluded, based on the claim language, that the five inputs of the disputed limitation were "separate and distinct components that required distinctly different input data." The Board found that Appellant's theory of obviousness did "not use each of the five distinct inputs," but rather "double counted" an input.

On appeal, Appellant argued that "the Board, despite stating otherwise, construed the [disputed] limitation" and violated the APA, and that the "Board's implicit claim construction" was wrong. The Court "agree[d]" with Appellant that "the Board's assessment of the [disputed] limitation amount[ed] to claim construction," holding that "the Board's statement that it was not engaging in claim construction [wa]s not dispositive as to whether claim construction occurred." The Court further held that because Appellant "had notice of the contested claim construction issues and an opportunity to be heard," the Board's claim construction did not violate the APA.

The Court concluded that the Board erroneously construed the disputed limitation, which was "not limited to inputs that are entirely separate and distinct." The Court explained that although there is a "presumption" that "separately listed claim limitations may indicate separate and distinct physical structure," that presumption "may always be rebutted in the context of a particular patent." Here, "the specification contemplate[d] an embodiment in which one claimed input" was "calculated based on at least one other claimed input."

3. WEBER, INC. v. PROVISUR TECHNOLOGIES, INC. [OPINION] (2022-1751, 2022-1813, 2/8/2024) (Reyna, Hughes, and Stark)

Reyna, J. The Court reversed the PTAB's determination that Appellant's operating manuals were not prior art printed publications, vacated the Board's conclusions that Appellant failed to establish unpatentability of the challenged claims, and remanded for further proceedings.

Appellant presented its obviousness theories based on its commercial food slicer operating manuals. The Board found that the operating manuals were distributed to just "ten unique customers" and that the operating manuals were "subject to confidentiality restrictions based on the Board's interpretation of the operating manuals' copyright notice" and the "intellectual property rights clause" in Appellant's terms and conditions.

On appeal, the Court reversed the Board's finding that Appellant's operating manuals did not qualify as printed publications. The record evidence showed that Appellant's operating manuals were "accessible to interested members of the relevant public" by "reasonable diligence." For instance, Appellant's employees testified that the operating manuals could be obtained upon purchase of the Appellant's food slicer. And though the parties "dispute[d] the exact number of customers who received the operating manuals," "[n]o minimum number of occasions of access is dispositive of the public accessibility inquiry in all cases."

The Court held that "[t]he Board's contrary conclusions on public accessibility were based in part on the Board's inordinate emphasis on alleged confidentiality restrictions associated with the operating manuals." The Court held that Appellant's "assertion of copyright ownership does not negate its own ability to make the reference publicly accessible," and that "[t]he intellectual property rights clause from [Appellant's] terms and conditions" had "no dispositive bearing on Appellant's public dissemination of operating manuals to owners after a sale has been consummated."

Finally, the Court reversed the Board's determinations that the manuals did not disclose two of the relevant claim limitations.

4. RAI STRATEGIC HOLDINGS, INC. v. PHILIP MORRIS PRODUCTS S.A. [OPINION] (2022-1862, 2/9/2024) (Chen, Stoll, and Cunningham)

Stoll, J. The Court affirmed-in-part, vacated-in-part, and remanded the PTAB's final written decision in a post-grant review holding certain challenged patent claims unpatentable as obvious or lacking written description.

The Court held that substantial evidence did not support the Board's finding that certain claims lack written description support under 35 U.S.C. § 112. The question was whether the specification of the patent, which was directed to "electrically powered smoking articles that provide an inhalable substance in vapor or aerosol form by heating tobacco or other substances," provided written description support for a heating member with "a length of about 75% to about 85% of a length of the disposable aerosol forming substance" as required by the claims.

The patent specification disclosed that the length of the heating member may be "about 75% to about 125%" or "about 85% to about 115%." The Court held that, given the "predictability of electro-mechanical inventions such as the one at issue here, and the lack of complexity of the particular claim limitation at issue"—i.e., the length of a heating member—"a lower level of detail is required to satisfy the written description requirement than for unpredictable arts." Accordingly, the Court found that there was "no evidence that the claimed subrange result[ed] in a different invention than the invention disclosed in the specification."

The Court also held that substantial evidence supported the Board's finding that a skilled artisan would have been motivated to combine the cited prior art references.

5. UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US [OPINION] (2022-2248, 2/9/2024) (Reyna, Taranto, and Stoll)

Taranto, J. The Court affirmed summary judgment of noninfringement by the Court of Federal Claims. The Claims Court granted judgment for the government on the ground that it had a license, under the Bayh-Dole Act, 35 U.S.C. § 202(c)(4), to practice the patent. Appellant alleged that the United States was liable for infringement of Appellant's patent that claimed doubly transgenic mice with accelerated pathology for Alzheimer's Disease. It was undisputed that a laboratory, with the government's authorization and consent, had been producing and using mice covered by the patent on behalf of the government. The dispute on appeal was whether the invention was a "subject invention" within § 202(c)(4), which "gives the government a license certain federally funded inventions." The Court held that under the Bayh-Dole Act, "'funding agreement' includes 'any . . . subcontract of any type' for the performance of work under a funding agreement." In this case, the court held that a subcontract at issue included language covering payment for work already performed before the subcontract is executed or its 'effective' date." Accordingly, the Court held that the subcontract provided a license to the government under § 202(c)(4).

6. PROMPTU SYSTEMS CORPORATION v. COMCAST CORPORATION [OPINION] (2022-1939, 2/16/2024) (Moore, Prost, and Taranto)

Taranto, J. The Court concluded that the district court incorrectly construed certain claim terms, vacated the district court's judgment of no infringement, and remanded.

First, the Court concluded that the district court erred by narrowly construing "back channel" in as limited to "[a] fixed band of frequencies or time slot(s) for transmitting signals to a speech processing system or engine." The Court found that "[n]othing in the claim language" suggested the limitation was limited "to a fixed band of frequencies or time slots."

Second, the Court held that the district court's construction of "speech recognition system" as "a system whose function is speech recognition" improperly "presuppose[d] that speech recognition [wa]s the exclusive function of the speech recognition system." But the Court did not "go further to find words for a proper construction to replace" the one the Court rejected, and held that "[a]dditional exploration should take place on remand, to the extent necessary."

Third, the Court held that the district court's construction of "coupled to" as "connected in or near" incorrectly read a proximity requirement ("in or near") into the claim term at issue. The Court construed "coupled to" as meaning "connected to," holding that the Court saw "no sufficient reason to add a proximity requirement here."

Fourth, the Court held that the district court improperly construed the claim term "wireline node" by adopting the specification's definition of "centralized wireline node." The Court held that the absence of the "centralized" modifier in the claims meant that the claimed "wireline node" is broader than the "centralized wireline node" defined in the specification. The Court adopted Appellant's proposed construction.

Finally, Appellant challenged two aspects of the district court's claim construction of "centralized processing station." The Court reversed the district court's "location requirement": that a "centralized processing station" must be located "at a cable-TV network head-end unit." The Court affirmed the district court's "function requirement": that the "centralized processing station" itself "performs voice recognition on voice commands."

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