This morning, the Federal Circuit released one precedential opinion, four nonprecedential opinions, and two nonprecedential orders. The precedential opinion addresses an appeal involving two inter partes review proceedings, affirming decisions on claim construction and prior art challenges related to biomolecule identification. One nonprecedential opinion affirms Patent Trial and Appeal Board findings on obviousness and its decisions regarding evidence and discovery. Two nonprecedential opinions address appeals from the Merit Systems Protection Board, with one affirming the Board’s decision sustaining the removal of an employee and the other affirming the Board’s determination that it lacked jurisdiction. The final nonprecedential opinion affirms a district court’s conclusion that certain patent claims are ineligible, with a partial dissent related to claim construction and analysis of inventive concept. The nonprecedential orders are dismissals. Here are the introductions to the opinions and links to the dismissals.

Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc. (Precedential Opinion)

Pacific Biosciences of California, Inc. (PacBio) filed two petitions with the Patent and Trademark Office under 35 U.S.C. §§ 311–19, each one seeking an inter partes review of a group of claims of U.S. Patent No. 7,767,441, which is owned by Personal Genomics Taiwan, Inc. (PGI).  The Patent Trial and Appeal Board, acting for the PTO’s Director, instituted both IPRs, which overlapped in the claims challenged but differed in the prior art invoked.  The Board eventually issued final written decisions in the IPRs.  In one of the IPRs, the Board rejected PacBio’s challenge to claims 1–2, 6–7, 10–22, 24, and 27–36.  Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., No. IPR2020-01200, 2022 WL 214042 (P.T.A.B. Jan. 18, 2022) (’1200 Decision).  In the other IPR, the Board agreed with PacBio’s challenge to claims 1–6, 9, and 43–58.  Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., No. IPR2020-01163, 2022 WL 212276 (P.T.A.B. Jan. 18, 2022) (’1163 Decision).  Under those two decisions, claims 7, 10–22, 24, and 27–36 survive; claims 1–6, 9, and 43–58 do not.

Both parties appeal.  Appellant PacBio principally challenges the Board’s construction of the claim phrase “identifying a single biomolecule,” while also briefly challenging the Board’s finding that the prior art PacBio invoked in the ’1200 IPR to meet this limitation does not teach it under the Board’s construction.  Cross-appellant PGI, besides defending the Board’s construction of the disputed claim phrase, challenges the Board’s factual findings that the PacBio-invoked prior art in the ’1163 IPR teaches the disputed claim phrase.  We affirm both decisions.

Wildcat Licensing WI LLC v. Atlas Copco Tools and Assembly Systems LLC (Nonprecedential Opinion)

Appellant Wildcat Licensing WI LLC appeals two final written decisions issued in related inter partes review proceedings.  In those proceedings, the United States Patent Trial and Appeal Board concluded that the challenged claims were unpatentable as obvious.  Wildcat contends that the Board erred by considering arguments and evidence not included in the initial inter partes review petitions, and by finding that the prior art disclosed all of the challenged claim limitations.  Wildcat also contends that the Board improperly precluded it from entering certain evidence when it denied a set of Wildcat’s discovery motions.  We affirm.

Brooks v. Department of the Treasury (Nonprecedential Opinion)

Pamela Brooks was removed from her position as a Tax Compliance Officer with the Department of the Treasury following the agency’s determination that she had willfully understated her federal tax liability for tax years 2005 through 2007.  Ms. Brooks appealed the agency’s removal decision to the Merit Systems Protection Board.  The assigned administrative judge issued an initial decision sustaining her removal, and the Board affirmed the initial decision.  See Brooks v. Department of the Treasury, No. SF0752-16-0430-I-1, 2023 WL 2436649 (M.S.P.B. Mar. 9, 2023).  We affirm.

Manning v. Merit Systems Protection Board (Nonprecedential Opinion)

Eileen L. Manning, a former employee of the Social Security Administration (“the SSA”), appeals from a Merit Systems Protection Board (“the Board”) decision finding that it lacked jurisdiction to consider her claim.  Manning v. Off. of Pers. Mgmt., Dkt. No. PH-0831-17-0200-I-1 (M.S.P.B. Mar. 22. 2023), S.A. 1–6 (“Decision”).  For the reasons below, we affirm

IBM v. Zillow Group, Inc. (Nonprecedential Opinion)

International Business Machines Corp. (IBM) appeals a decision from the Western District of Washington concluding that all patent claims asserted against Zillow Group, Inc. are directed to ineligible subject matter under 35 U.S.C. § 101. Because we agree that all asserted claims are ineligible and the pleadings thus fail to state a claim upon which relief can be granted, we affirm the district court’s grant of Zillow’s motion to dismiss under Federal Rule of Civil Procedure 12(b)(6). 

STOLL, Circuit Judge, concurring-in-part, dissenting-in part.

I respectfully dissent-in-part.  Like the majority, I would affirm the district court’s holding of ineligibility of the claims of the ’193 patent.  But I would vacate the district court’s holding of ineligibility of the claims of the ’676 patent.  The ’676 patent claims are directed to a method for annotating computer search results, including mapping a user context vector on the search results to generate an ordered list of search results based on characteristics relating to the user and the user’s prior interaction with prior search results.  According to IBM, the method improves the relevance of search results based on the user’s interactions with prior search results.  The specification explains that “[o]ver time, the system will improve in its ability to serve individual needs and evolve to an ability to suggest preferred answers to groups of users.”  ’676 patent col. 19 ll. 21–23.  The majority views the claims as having a different scope.  But the majority, like the district court, does not meaningfully address IBM’s proposed construction of “user context vector.”  In opposing Zillow’s motion to dismiss under Rule 12(b)(6), IBM asserted that the term “user context vector,” which is recited in each independent claim, should be construed as “an n-dimensional vector derived from the combination of user context and previous interaction with the system.”  J.A. 4063.  Contrary to the majority’s suggestion, Zillow’s reply brief in support of its motion to dismiss only addressed part of IBM’s proposed construction and did not address the implications of such construction in the § 101 analysis.  Our caselaw holds that the district court must either resolve the claim construction dispute to the extent necessary or adopt the non-movant’s claim construction when analyzing § 101 eligibility in the context of a motion to dismiss under Rule 12(b)(6).  See Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1125 (Fed. Cir. 2018).  The district court erred by not analyzing or adopting IBM’s proposed construction.  Moreover, the court’s error was prejudicial because IBM has demonstrated that its claims plausibly recite an inventive concept under its proposed construction.  Accordingly, I dissent-in-part.