This morning, the Federal Circuit released two precedential opinions, one nonprecedential opinion, and one order dismissing an appeal. One precedential opinion addresses an appeal from a decision of the Patent Trial and Appeal Board finding claims unpatentable as obvious. This first opinion ultimately concludes that the decision violated the Administrative Procedure Act. The other precedential opinion also addresses an appeal of a decision of the PTAB, this one concluding that the PTAB abused its discretion in determining that a party failed to identify a field of endeavor and thus failed to establish analogous art for purposes of an obviousness analysis. Finally, the nonprecedential opinion affirms a dismissal by the United States Court of Federal Claims for lack of subject matter jurisdiction. Here are the introductions to the opinions and a link to the dismissal.
Apple Inc. v. Corephotonics, Ltd. (Precedential)
Apple Inc. appeals two final written decisions of the Patent Trial and Appeal Board determining that Apple had not shown the challenged claims of Corephotonics, Ltd.’s U.S. Patent No. 10,225,479 were unpatentable as obvious. Because the intrinsic evidence supports a different construction than that adopted by the Board in its first decision, and because the Board based its second decision on a ground not raised by any party in violation of the Administrative Procedure Act (APA), we vacate and remand both final written decisions.
Netflix, Inc. v. DivX, LLC (Precedential)
Netflix, Inc. appeals the Patent Trial and Appeal Board’s final written decision in an inter partes review of U.S. Patent No. 8,472,792. Netflix challenges the Board’s finding that an asserted prior art reference fails to qualify as analogous art. We hold that the Board abused its discretion in determining that Netflix failed to identify the field of endeavor for either the ’792 patent or the prior art and thus failed to establish analogous art under the field of endeavor test. The Board’s directive that Netflix more precisely articulate the relevant field of endeavor to meet its burden was unduly strict. We therefore vacate the Board’s field of endeavor finding and remand for the Board to reconsider that factual question consistent with this opinion.
Jennette v. United States (Nonprecedential)
Randall Jennette appeals from a decision of the United States Court of Federal Claims (the “Claims Court”) dismissing his complaint for lack of subject matter jurisdiction. See Jennette v. United States, No. 22-230T, 2022 WL 4078553 (Fed. Cl. Sept. 6, 2022) (“Decision”). For the reasons detailed below, we affirm the Claims Court’s decision.