Opinions
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This morning the Federal Circuit released one precedential opinion and two nonprecedential opinions. The precedential opinion comes in a patent case appealed from the Eastern District of Texas. In it, the Federal Circuit affirmed the district court’s determination that a patent is unenforceable based on prosecution laches. Notably, Judge Stark filed a dissenting opinion. The two nonprecedential opinions come in separate patent cases appealed from the Patent Trial and Appeal, both involving the same parties. In each opinion, Judge Lourie filed additional views and Judge Stark filed a concurring opinion, both addressing the argument the Supreme Court overruled the Federal Circuit’s approach to obviousness with respect to design patents. Late yesterday and this morning, the Federal Circuit also released six nonprecedential orders dismissing appeals. Here are the introductions to the opinions and links to the dismissals.

Personalized Media Communications, LLC v. Apple Inc. (Precedential)

Personalized Media Communications, LLC appeals the final judgment of the District Court for the Eastern District of Texas that U.S. Patent No. 8,191,091 is unenforceable based on prosecution laches. The district court determined that Personalized Media Communications successfully employed an inequitable scheme to extend its patent rights. Because the district court did not abuse its discretion in finding the patent unenforceable, we affirm.

STARK, Circuit Judge, dissenting.

I agree with the Majority that the district court did not abuse its discretion in finding, based on the totality of the circumstances, that Personalized Media Communications, LLC’s (“PMC”) delay in prosecuting its patent was unreasonable and inexcusable. To prevail on its laches claim, however, Apple also had to show that it suffered prejudice during the period in which PMC was wrongfully delaying prosecution. Apple failed to do so. Accordingly, I would reverse the district court’s judgment that PMC’s U.S. Patent No. 8,191,091 (“’091 patent”) is unenforceable due to prosecution laches.

LKQ Corp. v. GM Global Technology Operations LLC (Nonprecedential)

LKQ Corp. and Keystone Automotive Industries, Inc. (collectively, “LKQ”) appeal from a final written decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) holding that LKQ failed to show by a preponderance of the evidence that U.S. Patent D797,625 (the “’625 patent”) was anticipated or would have been obvious over the cited prior art before the effective filing date. See LKQ Corp. v. GM Glob. Tech. Operations LLC, IPR2020-00534, Paper 28 (P.T.A.B. Aug. 4, 2021) (“Decision”), J.A. 1–60. For the reasons provided below, we affirm.

LOURIE, Circuit Judge, additional views.

The panel resolves this case by determining that substantial evidence supports the Board’s conclusion that the claims of the ’625 patent are not unpatentable as anticipated or obvious. I agree. I write separately to respond to the assertion by appellant that the Board improperly relied on our predecessor court’s Rosen decision for its rationale in deciding its case. Appellant argues that Rosen, whatever its validity at the time it was decided, is inconsistent with, and hence was implicitly overruled, by the Supreme Court in KSR. The panel resolves the case without having to reach this issue, but I comment separately on the argument appellant raises, but which we do not reach.

STARK, Circuit Judge, concurring in part and concurring in judgment.

I agree with the majority’s conclusion that the Board had substantial evidence to conclude LKQ failed to show the ’625 patent was anticipated or would have been obvious. Accordingly, I join the majority’s anticipation analysis as well as its substantive obviousness analysis. Where I part ways is on the issue of forfeiture. The majority concludes that LKQ did not forfeit its argument that KSR overruled our precedent’s requirement that a party claiming a design patent is obvious must, as the first step in its invalidating efforts, identify a single reference providing “basically the same” visual impression as the patented design. Because LKQ did not raise this issue before the Board, I would find it was forfeited. Accordingly, I do not believe we need to address the merits of LKQ’s KSR argument. Therefore, I respectfully decline to join the relevant portions of the majority’s opinion, namely sections III.A and III.B.

LKQ Corp. v. GM Global Technology Operations LLC (Nonprecedential)

LKQ Corp. and Keystone Automotive Industries, Inc. (collectively, “LKQ”) appeal from a final written decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) holding that LKQ failed to show by a preponderance of the evidence that U.S. Patent D855,508 (the “’508 patent”) was anticipated or would have been obvious over the cited prior art before the effective filing date. See LKQ Corp. v. GM Glob. Tech. Operations LLC, PGR2020-00055, Paper 33 (P.T.A.B. Oct. 8, 2021) (“Decision”), J.A. 1–65. For the reasons provided below, we affirm.

LOURIE, Circuit Judge, additional views.

The panel resolves this case by determining that substantial evidence supports the Board’s conclusion that the claims of the ’508 patent are not unpatentable as anticipated or obvious. I agree. I write separately to respond to the assertion by appellant that the Board improperly relied on our predecessor court’s Rosen decision for its rationale in deciding its case. Appellant argues that Rosen, whatever its validity at the time it was decided, is inconsistent with, and hence was implicitly overruled, by the Supreme Court in KSR. The panel resolves the case without having to reach this issue, but I comment separately on the argument appellant raises, but which we do not reach.

STARK, Circuit Judge, concurring in part and concurring in judgment.

I agree with the majority’s conclusion that the Board had substantial evidence to conclude LKQ failed to show that the ’508 patent was anticipated or would have been obvious. Accordingly, I join the majority’s anticipation analysis and most of its obviousness analysis. However, for the reasons I set forth fully in LKQ Corp., Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLC, No. 21-2348 (Fed. Cir. Jan. 20, 2022), I respectfully decline to join parts II.A and II.B of the majority’s opinion.

Dismissals