IN RE:  JANSSEN BIOTECH, INC., Appeal No. 2017-1257 (Fed. Cir. January 23, 2018).  Before Prost, Reyna, and Wallach.  Appealed from PTAB. (Obvious-Type Double Patenting)


In an ex parte reexamination, the claims of a patent owned by Janssen (the ‘471 patent) were held unpatentable under the doctrine of obviousness-type double patenting over the claims of other patents in the same family.  Janssen filed the application that issued as the ‘471 patent as a CIP application claiming priority to two applications, the ‘413 application and the ‘406 application, after receiving a restriction requirement in the ‘413 application.

During the reexamination, Janssen tried to retroactively convert the ‘471 patent into a divisional application of the ‘413 application by canceling subject matter drawn from the ‘406 application and requesting that the ‘471 patent be amended to delete the benefit claim to the ‘406 application.  The examiner entered the amendments for the purpose of reexamination but maintained the double patenting rejections on the basis that the safe-harbor provision of 35 U.S.C. §121 did not apply.  The Board affirmed the examiner and Janssen appealed.


Did the Board err in affirming the examiner?  (continue reading)

Summary by:  Chris Wheeler

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ADVANCED VIDEO TECHNOLOGIES LLC v. HTC CORPORATION, Appeal No. 2016-2309 (Fed. Cir. January 11, 2018).  Before Reyna, O’Malley and Newman.  Appealed from S.D.N.Y. (Judge McMahon).  (Standing)


Advanced Video Technologies (“Advanced Video”) sued defendants for patent infringement.  The patent lists three inventors, and the invention was created when the three inventors were employees of Infochips Systems Inc. (“Infochips”).  Infochips went out of business, and a third-party entity, AVC Technology (“AVC”), acquired Infochips’ assets.  AVC filed the parent application of the patent at issue, and two of the three inventors assigned their interests in the invention to AVC, while the remaining inventor (“co-inventor”) refused to assign her interests.

Ultimately, Advanced Video acquired the assets of AVC, including the patent at issue.  Advanced Video asserted that it had standing to sue because the co-inventor transferred her ownership interests in the patent under an employment agreement with Infochips.  The district court found that Advanced Video lacked standing because the co-inventor had not assigned her interests in the patent under the employment agreement, and she was not a party to the action.  Thus, the district court dismissed the case for lack of standing.  Advanced Video appealed the district court’s decision.


Did the district court err in holding that Advanced Video lacked standing?   (continue reading)

Summary byDonna Mason

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WI-FI One, LLC v. BROADCOM CORP., Appeal No. 2015-1944-46 (Fed. Cir. January 8, 2018) (en banc, 8-4, Reyna).  Appealed from the U.S. Patent and Trademark Office.  (Judicial Review)


Broadcom filed three inter partes reviews (IPRs) against three patents owned by Ericson, which subsequently transferred ownership to Wi-Fi One.  Prior to the IPR filings, Ericson was involved in an infringement litigation involving the three patents.  During the IPRs, Wi-Fi One argued that the IPRs were time-barred under 35 U.S.C. §315(b) because Ericson had already asserted the patents against defendants who were in privy with Broadcom more than one year prior to filing the petitions in the IPRs.  The Board disagreed and instituted the IPRs.

Under §315(b), “an inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”  In Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015), the Federal Circuit held that a §315(b) time-bar determination is final and nonappealable under 35 U.S.C. §314(d).

Subsequent to the Federal Circuit’s decision in Achates, the Supreme Court decided Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), in which the Court held that §314(d) bars judicial review of a Board determination that an IPR petition sufficiently pleaded the grounds of unpatentability with particularity.  The Court acknowledged that case precedent favors a strong presumption in favor of judicial review of agency decisions, but that such a presumption could be overcome by clear and convincing indications of Congress’s intent to bar judicial review.  The Court held that Congress clearly intended to bar judicial review of the Board’s determination of the particularity of an IPR petition.

In light of the holdings of Achates and Cuozzo, the Federal Circuit denied Wi-Fi One’s appeal of the Board’s decision that the IPRs were not time-barred under §315(b).  Wi-Fi One petitioned for rehearing en banc, which was granted.


Is the Board’s decision that an IPR is not time-barred under §315(b) subject to judicial review?  (continue reading)

Summary by:  Matt Stanford

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MICROSOFT CORPORATION v. BISCOTTI, INC., Appeal No. 2016-2080, 2082, 2083 (Fed. Cir. December 28, 2017).  Before Newman, O’Malley, and Reyna.  Appealed from PTAB.  (AnticipationSummary by:  John Hocker


Biscotti sued Microsoft for infringement of patents disclosing real-time video calling solutions.  In response, Microsoft petitioned the PTAB for inter partes reviews of the patents, offering evidence of a U.S. Patent to Kenoyer that allegedly invalidated Biscotti’s claims.

Kenoyer discloses a similar structure, namely, a multicomponent videoconferencing system including a camera, a display, a microphone, and speakers.  Microsoft alleged that Kenoyer anticipated asserted claim 6 because the “storage medium” limitation was disclosed by Kenoyer’s recitation of: “[e]mbodiments of a subset or all (and portions or all) of the above may be implemented by program instructions stored in a memory medium … and executed by a processor.”  Microsoft argued that the specification, at various places, disclosed the functions described by the claimed storage medium instructions.  However, Biscotti contended that the cited language referred only to the description of FIG. 22, which immediately preceded the language on which Microsoft relied, rather than all of the disclosures made throughout Kenoyer.  Biscotti contended that the language could not apply to all prior disclosures in the specification because the specification discussed certain components (e.g., cooling fans and handles to carry equipment) that could not have been implemented in a storage medium.  Biscotti argued that the more natural interpretation of the language was that it applied only to the discussion of FIG. 22 (i.e., the discussion preceding immediately above).

In finding that Microsoft failed to prove that Kenoyer anticipated the “storage medium instructions,” the Board found that “Kenoyer’s program instructions sentence does not make sense as a disclosure blanketing all of the preceding 34 pages, and that the sentence does not refer back specifically to the various other disclosures cited by [Microsoft].”  Thus, the Board ultimately found that Microsoft failed to prove anticipation by Kenoyer.  Microsoft also failed to separately address whether Kenoyer rendered the limitations obvious based on the teachings located in different parts of the specification (so Microsoft also failed to prove obviousness).  Thus, the Board found that Microsoft did not prove unpatentability.  Microsoft appealed.


Did the PTAB err in concluding that Microsoft failed to prove unpatentability?  (continue reading)

Summary by:  John Hocker

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HTC CORP. v. CELLULAR COMMUNICATIONS EQUIP., LLC., Appeal No. 2016-1880 (Fed. Cir. December 18, 2017).  Before Dyk, Reyna and Taranto.  Appealed from Patent Trial and Appeal Board (PTAB).  (Claim Construction)


Cellular owns a patent directed to maintaining a total transmit power difference in mobile devices that prevent the mobile device from routinely transmitting messages at maximum power transmission.  These messages are transmitted over a cellular network in the transmission unit of data frames.  Cellular’s total transmit power difference ensures that an amount of transmission power is available for transmitting messages when radio transmission conditions deteriorate, such that mobile devices are able to increase the transmission power during these deteriorated radio conditions.  This minimizes the occurrence of incomplete message transmissions.

During inter partes review of Cellular’s patent, the PTAB did not expressly construe the claim term “message,” nor did HTC seek a specific claim construction of “message” before the PTAB.  The PTAB subsequently ruled that HTC failed to show that any of Cellular’s challenged claims were unpatentable, which HTC appealed.  Among other issues, HTC argued that the PTAB failed to construe the term “message” according to its broadest reasonable interpretation.


Did the PTAB err in its understanding of the scope of the claim term “message”? (continue reading)

Summary by:  Patrick Gildea


CFRD RESEARCH, INC. v. MATAL, Appeal No. 2016-2198 (Fed. Cir. December 5, 2017) (Newman, Mayer, and O’Malley).  Appealed from the U.S. Patent Trial and Appeal Board.  (Obviousness)


In this case, CFRD Research (“CFRD”) owns the ‘223 patent directed to methods and systems for user-directed transfer of an on-going software-based session from one device to another device.  The ‘223 patent was subject to three inter partes review proceedings (Iron Dome, DISH, and Hulu), which were all appealed and the appeals were consolidated.

In Iron Dome and DISH, the Board found the claims of the ‘223 patent anticipated.  The Board interchanged the steps of the ‘223 patent to read on the steps of the prior art.  The Board held that the claims did not expressly require “specifying a second device” to take place before “discontinuing the session on the first device.”  The Board reasoned that although the ‘223 patent includes two examples in which a user specifies a second device before discontinuing a session, the ‘223 patent’s specification indicates that “the steps of the method may be performed in a different order than illustrated or simultaneously.”

In Hulu, the ‘223 patent was challenged as anticipated by Bates, obvious over Bates, and obvious over Bates in combination with other references.  The Board held that Bates did not anticipate the claims of the ‘223 patent.  However, the Board did not review the ‘223 patent under obviousness over Bates alone, stating that such analysis would be redundant with the analysis under §102.  Instead, the Board reviewed the ‘223 patent over Bates in combination with other references, but did not consider any of the arguments regarding obviousness over Bates alone because the arguments were not asserted in any of the instituted grounds.  Finally, the Board ultimately found that the ‘223 patent would not have been obvious.


Did the Board err in Iron Dome and DISH by holding that the ‘223 patent was anticipated?  (continue reading)

Summary byStephano Salani


TRAVEL SENTRY, INC. v. TROPP, Appeal Nos. 2016-2386, 2016-2387, 2016-2714, 2017-1025 (Fed. Cir. December 19, 2017).  Before Lourie, O’Malley, and Taranto.  Appealed from E.D.N.Y. (Judge Vitaliano).  (Joint Infringement)


Tropp sued Travel Sentry for patent infringement.  The claims are directed to methods of improving airline luggage inspection through the use of dual-access locks, in which the third claim step requires having an identification structure that signals to a luggage screener that the lock may be opened by a master key, and the fourth step requires having the luggage screener look for the identification structure and use the master key to open the lock.  Travel Sentry also administers a lock system that enables a traveler to lock a checked bag while allowing the TSA to open the lock.  Travel Sentry entered into a MOU with the TSA stating that Travel Sentry will supply the TSA with passkeys to open checked baggage secured with its certified locks.

The district court granted summary judgment of noninfringement because there was no evidence that Travel Sentry had any influence on the third and fourth steps of the method carried out by the TSA in view of Akamai’s two-pronged joint infringement test, which states that joint infringement may arise when an alleged infringer (i) conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and (ii) establishes the manner or timing of that performance.  Tropp appealed.


Did the district court err in granting summary judgment of noninfringement in favor of Travel Sentry?  (continue reading)

Summary by:  Bryan Hsu

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IN RE BRUNETTI, Appeal No. 2015-1109 (Fed. Cir. December 15, 2017). Before Moore, Dyk, and Stoll. Appealed from the Trademark Trial and Appeal Board (“Board”).  (Lanham Act §2(a))

Mr. Brunetti owns the clothing brand “fuct,” which was founded in 1990. Two individuals, in 2011, filed an intent-to-use application for the mark FUCT for various items of apparel. The original applicants assigned the application to Mr. Brunetti, who amended it to allege use of the mark. The examining attorney refused to register the mark FUCT under §2(a) of the Lanham Act because the term “fuct” sounds like the past tense verb for “fuck,” a vulgar word.

As a result of the examining attorney’s position, Mr. Brunetti appealed to the Board. The Board affirmed, determining that the mark is vulgar and therefore unregisterable under §2(a) of the Lanham Act.  Mr. Brunetti appealed.


Did the Board err in finding that the mark FUCT is unregisterable under §2(a) of the Lanham Act? (continue reading)

Summary by:  Justine Saxe

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BASF CORP. v. JOHNSON MATTHEY, INC., Appeal No. 2016-1770 (Fed. Cir. November 20, 2017).  Before Lourie, O’Malley, and Taranto.  On appeal from D. Del. (Judge Robinson).  (Indefiniteness)

BASF sued Johnson for patent infringement for a catalytic system for removing nitrogen oxides from a stream of exhaust gas, referred to as a partly-dual-layer arrangement of catalytic coating compositions on a substrate over which exhaust gas passes.

In the claims, the coating compositions employed “composition…effective for catalyzing” and similar language.

In the district court, Johnson argued, with support from its expert witness, that the claims were indefinite under 35 USC 112 because the above-emphasized limitation and similar limitations were functional, without reciting “a minimum level of function needed to meet this ‘effective’ limitation,” or reciting a measurement method for determining effectiveness.  Johnson added that an exhaustive list of applicable catalysts were not disclosed in the specification.

BASF countered that the above-emphasized and similar limitations “have a plain and ordinary meaning” as understood in the art of exhaust systems and, with support from its expert witness, given the examples in the specification of applicable catalysts for the purposes thereof, one skilled in the art would understand that the term “effective for” meant “capable of” and would be reasonably certain of the claim’s scope.

The district court held that the patent was invalid, essentially agreeing with Johnson’s arguments regarding indefiniteness.  BASF appealed to the Federal Circuit.


Did the district court err in holding the patent invalid?  (continue reading)

 Summary by:  Harris Pitlick

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PRESIDIO COMPONENTS, INC. v. AMERICAN TECHNICAL CERAMICS CORP.,  Appeal Nos. 2016-2607, 2016-2650 (Fed. Cir. November 21, 2017).  Before Dyk, Moore, and Taranto.  Appealed from S.D. Cal. (Judge Huff).  (Indefiniteness; Intervening Rights)

Presidio sued American Technical Ceramics Corp. (“ATC”) for infringement of the ‘356 patent, directed to a multilayer integrated network of capacitors.  While the suit was pending, ATC successfully sought ex parte reexamination. During reexamination, Presidio amended claim 1 to recite, in the relevant portion, contacts sufficiently close “in an edge to edge relationship in such proximity as to form a first fringe-effect capacitance… that is capable of being determined by measurement in terms of a standard unit.”  Presidio amended its infringement complaint in view of the amended claims.  The district court granted ATC’s motion for summary judgment on the affirmative defense of absolute intervening rights.  In a subsequent jury trial, the jury found infringement of all asserted claims.  The court rejected ATC’s contention that the claims of the ‘356 patent were invalid for indefiniteness.

  1. Are the claims of the ‘356 patent invalid for indefiniteness?
  2. Did the amendment to claim 1 during reexamination entitle ATC to absolute intervening rights? (continue reading)

Summary by:  Donald Raymond

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