This morning the Federal Circuit issued five opinions and one order, all in patent cases. Two of the opinions are precedential, and three are nonprecedential. Here are the introductions to the opinions and the text of the order.
Uniloc USA, Inc. v. LG Electronics USA, Inc. (Precedential)
Uniloc USA, Inc., Uniloc Luxembourg S.A. and Uniloc 2017 LLC (collectively, Uniloc) sued LG Electronics USA, Inc., LG Electronics MobileComm U.S.A., Inc. and LG Electronics, Inc. (collectively, LG) in the United States District Court for the Northern District of California, alleging infringement of claims of U.S. Patent No. 6,993,049. LG moved to dismiss Uniloc’s Second Amended Complaint under Fed. R. Civ. P. 12(b)(6), arguing the claims of the ’049 patent are ineligible under 35 U.S.C. § 101. The district court granted LG’s motion, determining that the asserted claims are directed to an abstract idea and do not recite an inventive concept. Uniloc USA Inc. v. LG Elecs. USA Inc., 379 F. Supp. 3d 974, 1000 (N.D. Cal. 2019). Because we hold the claims are not directed to ineligible subject matter under § 101, we reverse and remand.
Grit Energy Solutions, LLC v. Oren Technologies, LLC (Precedential)
Grit Energy Solutions, LLC (“Grit Energy”) appeals the decision of the Patent Trial and Appeal Board (“Board”) in an inter partes review of claims 1–7 of U.S. Patent No. 8,585,341 (“the ’341 patent), in which the Board found that Grit Energy had not met its burden of showing that the challenged claims were unpatentable as obvious. Grit Energy appealed. For the reasons below, we vacate and remand for further proceedings.
NEWMAN, Circuit Judge, concurring in part, dissenting in part.
I concur with the court’s holding that Grit Energy has standing to pursue this appeal. The district court’s dismissal of the infringement action without prejudice as to this patent and Appellant, provides sufficient continuing interest to support the appeal of this administrative action concerning the patent’s validity.
However, I respectfully dissent from the court’s treatment of the Constantin reference—French Patent Application No. 2,640,598 A1, published June 22, 1990—with agreed upon translation (“Constantin translation”). The Patent Trial and Appeal Board (“PTAB” or “Board”) correctly viewed the Constantin reference.1 It is improper for the reviewing court to change the text of a reference to enlarge its disclosure by removing explicit limitations, and then apply the new enlarged content as prior art.
Cook Group Incorporated v. Boston Scientific Scimed, Inc. (Nonprecedential)
This case arises from the final written decisions of the Patent Trial and Appeal Board (“Board”) in two related inter partes reviews (“IPRs”). Cook Group Inc. and Cook Medical LLC (collectively “Cook”) appeal the Board’s finding that Cook failed to demonstrate by a preponderance of the evidence the unpatentability of claims 4–6, 15, and 20 of U.S. Patent No. 8,709,027 (“’027 patent”). Cook Grp. Inc. v. Bos. Sci. Scimed, Inc., No. IPR2017-00133, 2018 Pat. App. LEXIS 10662 (P.T.A.B. Nov. 3, 2018); Cook Grp. Inc. v. Bos. Sci. Scimed, Inc., No. IPR2017-00134, 2018 Pat. App. LEXIS 10663 (P.T.A.B. Nov. 3, 2018). Boston Scientific Scimed, Inc. (“Boston”) cross-appeals the Board’s finding that claims 1–3, 7–14, and 16–19 of the ’027 patent are unpatentable. Because the Board erred in its analysis of claims 4–6, 15, and 20, we vacate and remand to the Board for further consideration of those claims. On Boston’s cross-appeal, we find no error in the Board’s decision and affirm.
Boston Scientific Scimed, Inc. v. Cook Group Incorporated (Nonprecedential)
Boston Scientific Scimed, Inc. (“Boston”) appeals from the final written decisions of the Patent Trial and Appeal Board (“Board”) in two related inter partes reviews (“IPRs”), Nos. 2017-00435 and -00440, finding that claims 1–4, 6–7, 9–16, 18, and 20 and proposed amended claims 21, 30, and 38 of U.S. Patent No. 9,271,731 (“the ’731 patent”) are unpatentable. Cook Group Inc. and Cook Medical LLC (collectively, “Cook”) cross-appeal from the Board’s finding that Cook failed to demonstrate by a preponderance of the evidence the unpatentability of claims 5, 8, 17, and 19 of the ’731 patent. The Director of the U.S. Patent & Trademark Office (“government”) intervened for the limited purpose of determining “whether the Board, after deciding that the petitioner has prevailed on all its challenged claims, must decide [any] additional grounds [raised in the petition under] 35 U.S.C. § 318(a) and SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).” U.S. Br. 1. Because the Board erred in its analysis of claims 8 and 20, we vacate and remand to the Board for further consideration of those claims. On all other grounds, we find no error in the Board’s decision and affirm.
Cook Group Incorporated v. Boston Scientific Scimed, Inc. (Nonprecedential)
Cook Group Inc. and Cook Medical LLC (collectively “Cook”) petitioned for inter partes review (“IPR”) of several claims of U.S. Patent No. 8,974,371 (“the ’371 patent”). The Patent Trial and Appeal Board (“Board”) delivered a mixed result finding Cook had met its burden of showing that some claims are unpatentable as obvious, but that Cook had not met its burden of showing that other claims are unpatentable as either anticipated or obvious.
Cook appeals the Board’s finding that claims 11–13, 15, and 17 are not unpatentable as either anticipated or obvious over the cited prior art. Boston Scientific Scimed, Inc. (“Boston”) cross-appeals the Board’s finding that claims 1, 3–5, and 10 are unpatentable as obvious over the cited prior art. With respect to Cook’s appeal, we conclude that the Board’s determination as to claims 11, 15, and 17 must be reversed due to an erroneous claim construction, but we affirm the Board’s determination as to claims 12 and 13. On Boston’s cross-appeal, we find no error in the Board’s decision and affirm.
Facebook, Inc. v. Windy City Innovations, LLC (Nonprecedential Order)
We issued our opinion and judgment in these cases on March 18, 2020. See Facebook, Inc. v. Windy City Innovations, LLC, 953 F.3d 1313 (Fed. Cir. 2020). On April 20, 2020, Facebook, Inc. timely filed a combined petition for panel rehearing and rehearing en banc. See ECF 100. This petition is currently pending before the court.
On April 21, 2020, Facebook submitted a citation of supplemental authority pursuant to Federal Rule of Appellate Procedure 28(j) citing the Supreme Court’s recent decision in Thryv, Inc. v. Click-to-Call Technologies, LP, No. 18-916, __ S.Ct. __, 2020 WL 1906544 (Apr. 20, 2020). The court now invites the parties, and the Director of the United States Patent and Trademark Office as an amicus curiae, to file supplemental briefs explaining their views regarding the effect, if any, of the Supreme Court’s decision in Thryv on our decision in this case.
IT IS ORDERED THAT:
1) The parties’ and the Director’s invited supplemental briefs are due no later than 10 days from the date of this order and may not exceed 15 pages.
2) Additional amici curiae may seek leave of the court to submit briefs related to the effect of Thryv on our decision in this case. Each amicus brief and motion must be filed no later than 10 days from the date of this order, and the brief may not exceed 10 pages.