This morning the Federal Circuit issued a nonprecedential opinion in a patent case appealed from the Patent Trial and Appeal Board. The opinion addresses eligibility for post-grant review based on priority dates. The court also issued a nonprecedential order in another patent case denying a petition for writ of mandamus raising a question regarding the scope of statutory estoppel based on a prior inter partes review proceeding. Here are the introductions to the opinion and order.
Team Worldwide Corp. v. Intex Recreation Corp. (Nonprecedential)
Team Worldwide Corporation (TWW) appeals a post-grant review decision of the Patent Trial and Appeal Board (Board) finding claims 1–5 of U.S. Patent No. 9,989,979 (’979 patent) unpatentable as indefinite under 35 U.S.C. § 112(b).1 The Board construed the claim term “pressure controlling assembly” as a means-plus-function limitation under § 112(f) and determined the patent failed to disclose structure to perform each recited function of the assembly limitation, as claimed. The ’979 patent’s filing date is August 29, 2014, making it subject to the American Invents Act (AIA) unless it can properly claim priority from an earlier-filed, pre-AIA patent application. The Board found the specification, shared with an earlier pre-AIA patent application from which the ’979 patent claims priority, lacks adequate written description to support that the inventor possessed the claimed “pressure controlling assembly” at the filing date of either application. The Board therefore concluded that the challenged claims are eligible for post-grant review as they could not claim priority from the pre-AIA application. We affirm.
In re DMF, Inc. (Nonprecedential Order)
DMF, Inc. petitions for a writ of mandamus challenging the district court’s ruling that AMP Plus, Inc., dba ELCO Lighting (“ELCO”) was not statutorily estopped from raising a particular ground of invalidity. ELCO opposes. DMF replies.
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IT IS ORDERED THAT:
The petition is denied.