Argument Recap

Earlier this month, the Federal Circuit heard oral argument in In re Cellect, LLC (“Cellect I”), a patent case. In this case, the Federal Circuit reviewed a judgment of the Patent Trial and Appeal Board finding patent claims unpatentable for obviousness-type double patenting. This is our argument recap.

Jonathan Caplan argued for Cellect. He began by arguing “the Board’s decision in this reexamination should be reversed because [it] used the wrong construction for the key term: ‘time select switch.’” He explained “the construction of the time select switch cannot cover a charged coupled device because the specification” makes clear “that this particular invention as claimed excludes that technology.” He also noted that an important factor is that the technology “described in the specification operate differently” than a charged coupled device.

One judge expressed uncertainty over the fact that there are two separate figures in the relevant patent, one illustrating a “time select switch” and another illustrating “circuitry.” Caplan addressed this by highlighting that “the claim construction of the term ‘time select switch’ is not just a time select switch,” rather “it is a time select switch with additional recited functions.” He maintained that “a time select switch is more than just a knob because a knob would not provide the recited function, and that is the source of the Board’s claim construction error.”

Caplan also explained that another problem with the Board’s judgment relates to its finding that the Tomoyasu reference renders the patent obvious. He argued that “Tomoyasu focuses on using automatic gain control, which [involves] adjusting a voltage” as opposed to “a particular integration period.”

Kakoli Caprihan argued for the Patent and Trademark Office. She noted “there is nothing in the claim language or in the specification that limits the time select switch to one that contains particular circuitry . . . or one that specifically requires real-time monitoring or read-out of an image.” She also maintained “there is substantial evidence to find that Tomoyasu teaches a remote gain controlling knob.” She argued that Tomoyasu explains “that the voltage actually changes the integration period.”

In rebuttal, Caplan argued the specification is “absolutely describing that when you want to implement” the time select feature “you need some circuitry in the patent.”

Notably, today the Federal Circuit summarily affirmed the judgment in this case.