This morning the Federal Circuit issued a precedential opinion in a patent case appealed from the Western District of Texas. The opinion reversed a finding of invalidity. The court also issued four nonprecedential opinions in patent cases appealed from the Patent Trial and Appeal Board. Notably, in the fourth case, Judge Prost wrote a concurring opinion to explain that had a patentability challenge been preserved it likely would have succeeded. Finally, the court issued three nonprecedential orders concerning, respectively, a dismissal for failure to prosecute and two voluntary dismissals. Here are the introductions to the opinions and orders.
Dyfan, LLC v. Target Corp. (Precedential)
Dyfan, LLC appeals from the United States District Court for the Western District of Texas’s final judgment of invalidity of the asserted patent claims. The district court held the claims invalid as indefinite under 35 U.S.C. § 112 ¶ 2 based on its view that certain claim limitations are in means-plus-function format under § 112 ¶ 6 and that the specification does not disclose sufficient structure corresponding to the recited functions. Because we conclude that the disputed claim limitations are not drafted in means-plus-function format, we reverse the district court’s judgment of invalidity and remand for further proceedings.
Intel Corp. v. Qualcomm Inc. (Nonprecedential)
Appellant Intel Corporation appeals two final written decisions by the Patent Trial and Appeal Board finding that Intel failed to show that certain claims of U.S. Patent No. 9,154,356 are unpatentable as anticipated or obvious. Intel contends that the Board misconstrued the claim term “carrier aggregation” and that it committed legal and factual error in finding no motivation to combine the asserted prior art. We hold that the Board’s final written decisions are contrary to law and unsupported by substantial evidence. The decisions of the Board are therefore reversed.
Intel Corp. v. Qualcomm Inc. (Nonprecedential)
Appellant Intel Corporation appeals two final written decisions by the Patent Trial and Appeal Board concluding that Intel did not meet its burden to show certain claims of U.S. Patent No. 9,154,356 are unpatentable as anticipated or obvious. Initially, Intel filed five petitions for inter partes review challenging the same claims of the ’356 Patent on different grounds. See Appellee’s Br. 11–12. The Board concluded in each inter partes review that Intel failed to show unpatentability of the challenged claims. See id. The above-captioned appeals stem from two of those final written decisions. J.A. 1–64.
In the above-captioned appeals, Intel contends that claims 1–8, 10–11, and 17–18 of the ’356 Patent are unpatentable. Appellant’s Br. 15. Notably, in another of Intel’s appeals, we determined that claims 1–8, 10–11, and 17–18 of the ’356 Patent are unpatentable as obvious. Intel Corp. v. Qualcomm Inc., No. 20-2092 (Fed. Cir. 2022). Accordingly, the present appeals are moot. See BTG Int’l Ltd. v. Amneal Pharms. LLC, 923 F.3d 1063, 1076–77 (Fed. Cir. 2019) (concluding the claims at issue were unpatentable as obvious and consequently dismissing other appeals challenging the same claims). Intel’s appeals of IPR2019-00048 and IPR2019-00049, and Qualcomm’s cross-appeals, are hereby dismissed as moot.
Intel Corp. v. Qualcomm Inc. (Nonprecedential)
Appellant Intel Corporation appeals a final written decision by the Patent Trial and Appeal Board concluding that Intel did not meet its burden to show certain claims of U.S. Patent No. 9,154,356 are unpatentable as anticipated or obvious. Initially, Intel filed five petitions for inter partes review challenging the same claims of the ’356 Patent on different grounds. See Appellee’s Br. 11–12. The Board concluded in each inter partes review that Intel failed to show unpatentability of the challenged claims. See id. The above-captioned appeals stem from one of those final written decisions. J.A. 1–46.
In the above-captioned appeals, Intel contends that claims 1, 7–8, 10–11, and 17 of the ’356 Patent are unpatentable. Appellant’s Br. 15. Notably, in another of Intel’s appeals, we determined that claims 1–8, 10–11, and 17–18 of the ’356 Patent are unpatentable as obvious. Intel Corp. v. Qualcomm Inc., No. 20-2092 (Fed. Cir. 2022). Accordingly, the present appeals are moot. See BTG Int’l Ltd. v. Amneal Pharms. LLC, 923 F.3d 1063, 1076–77 (Fed. Cir. 2019) (concluding the claims at issue were unpatentable as obvious and consequently dismissing other appeals challenging the same claims). Intel’s appeal of IPR2019-00047, and Qualcomm’s cross-appeal, are hereby dismissed as moot.
Hunting Titan, Inc. v. DynaEnergetics (Nonprecedential)
Hunting Titan, Inc. petitioned for inter partes review of claims 1–15 of U.S. Patent No. 9,581,422, asserting 16 grounds of unpatentability based on theories of anticipation and obviousness, including allegations that the claims were anticipated by Schacherer, U.S. Patent No. 9,689,223. The Board instituted trial on all grounds and ultimately agreed with Hunting Titan, finding all of the original claims unpatentable.
After the petition was instituted, DynaEnergetics Europe GmbH, the patent owner, moved to amend the ’422 patent to add proposed substitute claims 16–22. Hunting Titan opposed the motion to amend, advancing only obviousness grounds. Although Hunting Titan did not assert that Schacherer anticipated the proposed substitute claims, the Board determined that the original and proposed substitute claims alike were unpatentable as anticipated by Schacherer. DynaEnergetics requested rehearing and Precedential Opinion Panel review of the Board’s denial of the motion to amend. The Panel granted DynaEnergetics’s request for rehearing, vacated the Board’s decision denying DynaEnergetics’s motion to amend, and then—after concluding that Hunting Titan had not proven by a preponderance of the evidence that proposed substitute claims 16–22 are unpatentable— granted the motion to amend the ’422 patent to add the proposed substitute claims.
Hunting Titan appeals the Precedential Opinion Panel’s vacatur of the Board’s decision denying the motion to amend, and DynaEnergetics cross-appeals the Board’s decision finding the original claims of the ’422 patent anticipated by Schacherer. We affirm on both grounds.
PROST, Circuit Judge, concurring.
I join the majority’s opinion, agreeing that Hunting Titan didn’t preserve a challenge to the Precedential Opinion Panel’s (“POP”) application of its standard for when it is (and isn’t) appropriate for the Board to sua sponte raise patentability issues as to new claims. I write separately to explain why, had that challenge been preserved, it likely would have succeeded—and why I’m troubled by how the PTO is handling this issue, including with a recently enacted regulation.
Reid v. Department of Transportation (Nonprecedential Order)
The petitioner having failed to file the required Statement Concerning Discrimination, and to file the brief required by Federal Circuit Rule 31 (a) within the time permitted by the rules, it is
ORDERED that the petition for review be, and the same hereby is, DISMISSED, for failure to prosecute in accordance with the rules.
Altair Global Credit v. United States (Nonprecedential Order)
Upon consideration of the parties’ joint motion to voluntarily dismiss this appeal pursuant to Federal Rule of Appellate Procedure 42(b),
IT IS ORDERED THAT:
(1) The motion is granted to the extent that the appeal is withdrawn.
(2) The parties shall bear their own costs
Little Giant Ladder Systems, LLC v. Tricam Industries, Inc. (Nonprecedential Order)
The parties having so agreed, it is ordered that:
(1) The proceeding is DISMISSED under Fed. R. App. P. 42 (b).
(2) Each side shall bear their own costs.