This morning the Federal Circuit issued four opinions: one precedential opinion in a patent case; one precedential opinion in a takings case; and two nonprecedential opinions in patent cases. The court also issued one Rule 36 judgement. Here are the introductions to the opinions and the Rule 36 judgement.

Cochlear Bone Anchored v. Oticon Medical AB (Precedential)

Cochlear Bone Anchored Solutions AB owns U.S. Patent No. 7,043,040, which describes and claims a bone-anchored hearing aid that transmits soundwaves transcranially from a patient’s deaf side to the patient’s non-deaf ear. Oticon Medical AB, Oticon Medical LLC, and William Demant Holding A/S (together, Oticon) successfully sought from the Patent and Trademark Office (PTO) two inter partes reviews of, collectively, all claims of the ’040 patent under 35 U.S.C. §§ 311–319. In those reviews, the PTO’s Patent Trial and Appeal Board concluded that Oticon proved claims 4–6 and 11–12 unpatentable, but did not prove claims 7–10 unpatentable. (Cochlear disclaimed claims 1–3 and 13.) Cochlear appeals the ruling on claims 4–6 and 11–12, while Oticon cross-appeals the ruling on claims 7–10. We affirm the Board’s conclusions as to all claims except claim 10, as to which we vacate and remand.

NEWMAN, Circuit Judge, concurring in part, dissenting in part.

I concur in the court’s decision concerning claims 7–10. However, the Board erred in its invalidation of claims 4–6, 11, and 12, and my colleagues err in sustaining that ruling.


In sum, the analysis by the Board, and now by my colleagues, is contrary to the laws of obviousness and anticipation. There is no suggestion in the prior art of this new and useful device. See Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cir. 1985) (“[T]here must be some reason for the combination other than the hindsight gleaned from the invention itself.”). Nonetheless, the court here uses the ’040 patent’s teachings to select various aspects from the prior art, and then combines these selections with the template of the ’040 patent, having removed the limitations of the claims’ introductory clause. From this flawed analysis, and its flawed conclusion, I respectfully dissent.

Taylor v. United States (Precedential)

Buddy and Donna Taylor allege that, after they purchased land near a United States Air Force base in New Mexico, the Air Force began flying training missions low over the land. Several years later, the Taylors entered into an agreement with Wind Energy Prototypes, LLC, giving the company an exclusive option to obtain an easement it could use to build and operate structures to collect energy from wind. The Taylors allege that during the term of the option, employees of the Air Force informally advised Wind Energy that the Federal Aviation Administration would not issue a No Hazard designation for such structures on the land. Thereafter, Wind Energy, rather than exercising the option, terminated the contract with the Taylors, a decision that the Taylors acknowledge was permitted by their contract with Wind Energy.

The Taylors sued the federal government in the Court of Federal Claims. The complaint is properly understood as making essentially two claims—that the Air Force’s informal advice to Wind Energy effected a regulatory taking of the Taylors’ property interest in their contract with Wind Energy, and that the Air Force’s flyovers effected a physical taking of their property interest in their land and associated air space. The trial court dismissed the complaint, concluding that it lacked jurisdiction over the regulatory-taking claim and, on the merits, that both taking claims failed to state a claim on which relief could be granted. We reverse the jurisdictional ruling but affirm the dismissal on the merits.

In re Publicover (Nonprecedential)

Appellants Nelson George Publicover, Lewis James Marggraff, Eliot Francis Drake, and Spencer James Connaughton (collectively, Publicover) appeal the determination of the Patent Trial and Appeal Board that claims 43–51 of their patent application, No. 15/131,273 (the ’273 Application), would have been obvious under 35 U.S.C. § 103(a). See Ex Parte Publicover et al., No. 2018–005362, 2019 WL 1453980 (P.T.A.B. Mar. 8, 2019). For the reasons explained below, we affirm the Board’s decision.

Intellectual Ventures II LLC v. Aisin Seiki Co., Ltd. (Nonprecedential)

Patent Owner Intellectual Ventures II LLC (“Intellectual Ventures”) appeals from final written decisions of the United States Patent Trial and Appeal Board (“the Board”) in two inter partes review proceedings, IPR2017-01495 and IPR2017-01538,1 challenging claims 24–27 of U.S. Patent No. 7,928,348 (“the ’348 patent”). Aisin Seiki Co., Ltd., Toyota Motor Corporation, and American Honda Motor Co., Inc. (collectively, “Aisin”) were the petitioners in IPR2017-01538, whereas Aisin Seiki Co., Ltd. and Toyota Motor Corporation initiated IPR2017-01495. The Board found the challenged claims unpatentable as obvious over several combinations of prior art references. For the reasons stated below, we affirm.

Rule 36 Judgement