Federal Circuit Patent Watch: Assignor’s Estoppel Applies to Claims Not “Substantially Greater” Than Claims Originally Assigned | Wilmer Hale

Priority Federal Circuit Opinions

1. Regarding MCDONALD [OPINION] (2021-1697, 2022-08-10) (Newman, Stoll and Cunningham)

Cunningham, J. The court upheld a PTAB decision denying reissuance claims under 35 USC §251 as (1) an improper attempt to recover the item surrendered during prosecution to obtain the original claims and (2) based on a erroneous inventor reissuance declaration, the No error correctable by reissuance could be identified. Regarding the recovery question, the court found: “The Chamber correctly applied the recovery rule to prevent Mr. McDonald’s attempt to recover the scope of the claim which had already been abandoned during the prosecution. Because Mr. McDonald intentionally – not mistakenly or accidentally – added the “processor” limitations while pursuing the original claims to overcome them [35 U.S.C.] § 101 denial, the reclaim rule does not allow him to remove those limitations now to expand his claim.” Regarding the inventor reissuance statement, the court stated that a reissuance statement contains “at least one error under 35 U.S.C. §251, which serves as the basis used for the re-issuance must be specifically identified”. In this case, the alleged error identified in the reissuance statement – namely including “allegedly unnecessary ‘processor’ limitations” – was “uncorrectable by reissuance as it would violate the reentry rule”.

2. HOLOGIC, INC. against MINERVA SURGICAL, INC. [OPINION] (2019-2054, 2019-2081, 08/11/2022) (Stoll, Clevenger and Wallach)

Stoll, J. In Supreme Court custody, the Court upheld a district court’s summary judgment that a patent claim is not invalid under the assignee-estoppel doctrine. The court ruled that Minerva was barred from contesting the validity of the claim because the contested claim is not “substantially broader” than the patent claims previously assigned to Hologic by the inventor (who was admittedly private with Minerva).

3. LSI CORPORATION v UNIVERSITY OF MINNESOTA REGENTS [OPINION] (2021-2057, 2022-08-11) (Dyk, Reyna and Hughes)

Dyk, J. The court upheld the PTAB’s IPR decision that two contested patent claims were not unpatentable in view of two prior art references. In relation to the first prior art reference, the PTAB had found that the petitioner had not timely asserted his invalidity theory and on appeal the petitioner failed to challenge the PTAB’s timeliness decision in his opening statement, thereby waiving his right to challenge the PTAB’s findings based on this reference. With respect to the second prior art reference, the court affirmed the PTAB’s findings that the relevant teachings in the reference are not “made by someone else” and therefore are not prior art under 35 USC §102(e).

4. KAMSTRUP A/S v AXIOMA METERING UAB [OPINION] (2021-1923, 2022-08-12) (Reyna, Mayer and Cunningham)

Reyna, J. The court upheld the PTAB’s IPR decision that the contested claims were not patentable because they were obvious or expected. The patentee argued that the PTAB erroneously interpreted “cast in one piece” as a product-by-process claim element. The court noted that a “product-by-process claim is one in which a product is claimed, at least in part, by the ‘process by which it is made.'” The court upheld the PTAB’s claim construction because “[o]The claim element ostensibly claims a process because it uniquely describes the cast structure.” The court also upheld the PTAB’s finding that this product-by-process claim element does not confer “patentable weight” on the claims, and thus delivered no basis for declaring the claims patentable. The court stated that the patentee “did not identify any functional and structural differences between a ‘cast in one piece’ structure and a structure made by any other method”. The court also upheld the PTAB’s constructions of other claim elements and rejected arguments that the court believed would misread limitations from the non-limiting embodiments in the description into the claims.

5. CLICK-TO-CALL TECHNOLOGIES, LP vs. INGENIO, INC. [OPINION] (2022-1016, 2022-08-17) (Stoll, Schall and Cunningham)

Stoll, J. The court reversed and remanded a summary judgment of invalidity based on intellectual property rights under 35 USC § 315(e)(2). The Court noted that this case “compels us to consider the application of 35 USC § 315(e)(2) under a rather unusual set of facts.” Especially before the Supreme Court ruled the practice of the partial IPR institutions in SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 (2018), the PTAB filed Ingenio’s IPR petition for only some of the reasons given in the petition. Then, following the Supreme Court decision in SAS, Ingenio did not request pre-trial detention on grounds of non-eligibility “when he was given the opportunity.” As a result, the court decided that in this case the IPR estoppel also apply to the unfounded reasons. In addition, the court ruled that the district court did not exercise its discretion by denying Click-to-Call’s motion to amend its list of applicable claims for the trial.

6. PAR PHARMACEUTICAL, INC. against EAGLE PHARMACEUTICALS, INC. [OPINION] (2021-2342, 2022-08-18) (Moore, Prost and Hughes)

Moore, CJ The court affirmed the district court’s ruling of non-infringement. First, the court ruled that the district court did not make a clear error in finding that Eagle’s Abbreviated New Drug Application (ANDA) Pars did not infringe patents claimed under 35 USC §271(e)(2). The court stated that “the district court made no clear error in finding that Eagles ANDA defines a product that falls outside the scope of Par’s claims.” Second, the court affirmed the district court’s denial of the declaratory judgment that Eagle’s proposed sale of a product manufactured pursuant to ANDA would violate 35 USC §271(a) and (b). The court stated that “the district court made no clear error in finding that Par failed to establish that Eagle engaged in or reasonably prepared for infringing activity.”

7. In Re KILLIAN [OPINION] (2021-2113, 08/23/2022) (Taranto, Clevenger and Chen)

Chen, J. Court upheld a PTAB decision dismissing patent claims under 35 USC §101 [SSDI] Benefits of a computer network.’” The court ruled that the contested claims are not patentable under Section 101 because “they address the patentable abstract mental process of a search algorithm for identifying individuals who might be eligible for SSDI benefits that did not receive them.’” The court found that the applicant put forward “innumerable” arguments on appeal, but the court found none of them convincing.

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