This morning the Federal Circuit released two precedential opinions, four nonprecedential opinions, and one nonprecedential order. The first precedential opinion comes in an en banc design patent case. In it, the en banc court overruled the long-standing Rosen-Durling test used to assess the nonobviousness of design patents. Notably, Judge Lourie concurred in the judgment, suggesting it was unnecessary to overrule Rosen and Durling. In the second precedential opinion, a panel vacated and remanded a judgment of Central District Court of California in a patent infringement case over a dissent by Judge Mayer. As for the nonprecedential opinions, the first affirms two separate dismissals by the Merit Systems Protection Board in a pro se case, the second affirms a judgment of the Patent Trial and Appeal Board, the third dismisses an appeal in a veterans case for lack of jurisdiction, and the fourth affirms another dismissal by the Merit Systems Protection Board for lack of jurisdiction. The nonprecedential order is a dismissal. Here are the introductions to the opinions and links to the orders.

LKQ Corporation v. GM Global Technology Operations LLC (Precedential) (En Banc)

Opinion for the court filed by Circuit Judge Stoll, in which Chief Judge Moore and Circuit Judges Dyk, Prost, Reyna, Taranto, Chen, Hughes, and Stark join.

This case involves the standards for assessing nonobviousness of design patents under 35 U.S.C. § 103.

The principal question that this case presents is whether Supreme Court precedent, including KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), should cause us to rethink the long-standing Rosen-Durling test used to assess nonobviousness of design patents. We answer in the affirmative and overrule the Rosen-Durling test requirements that the primary reference must be “basically the same” as the challenged design claim and that any secondary references must be “so related” to the primary reference that features in one would suggest application of those features to the other. We adopt an approach consistent with Congress’s statutory scheme for design patents, which provides that the same conditions for patentability that apply to utility patents apply to design patents, as well as Supreme Court precedent which suggests a more flexible approach than the Rosen-Durling test for determining nonobviousness.

Lourie, Circuit Judge, concurring in judgment.

I concur in the court’s decision to vacate and remand the Board’s decision for it to reevaluate the validity of the claimed design in light of the majority opinion.

I write separately because I do not agree that we need to “overrule” In re Rosen, 673 F.2d 388 (CCPA 1982) and Durling v. Spectrum Furniture Co., 101 F.3d 100 (Fed. Cir. 1996).

Core Optical Technologies, LLC v. Nokia Corp. (Precedential)

Between November 2019 and August 2020, Core Optical Technologies, LLC filed complaints in the U.S. District Court for the Central District of California alleging infringement of U.S. Patent No. 6,782,211 by three groups of defendants led by Nokia Corp., ADVA Optical Networking SE, and Cisco Systems, Inc. (collectively, Nokia). In August 2021, Nokia moved for summary judgment, arguing that Core Optical lacked standing to assert the ’211 patent even though the inventor, Dr. Mark Core, had assigned the patent to Core Optical in 2011. Nokia’s argument was that the 2011 assignment was ineffective because Dr. Core had already assigned the patent rights to TRW Inc., his employer at the time of invention, through an August 1990 employment-associated agreement with TRW. The district court agreed with Nokia and therefore granted Nokia summary judgment. Core Optical Technologies, LLC v. Nokia Corp., No. 19-cv-02190, 2022 WL 4596547 (C.D. Cal. Aug. 4, 2022) (Decision). Core Optical appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1). We vacate the district court’s judgment and remand for further proceedings.

Mayer, Circuit Judge, dissenting.

It is undisputed that TRW Inc. paid for Mark Core to get a Ph.D. while he was working for TRW, J.A. 6774–75, and that Core received a prorated salary and a stipend from TRW, as well as full-time benefits and full-time pension accrual, while he completed his Ph.D. program, J.A. 6771, 6775. There is likewise no dispute that Core’s Ph.D. thesis related to TRW’s business, J.A. 3782, and that Core took the technology he developed for this thesis and patented it, J.A. 6787–88. Indeed, Core acknowledges that his Ph.D. dissertation was “essentially identical” to the provisional patent application that turned into U.S. Patent No. 6,782,211. J.A. 6787 (citation and internal quotation marks omitted). Accordingly, I believe the district court correctly granted TRW’s motion for summary judgment after determining that, as a matter of California law, Core did not develop the patented invention “entirely on [his] own time.” Core Optical Techs., LLC v. Nokia Corp., No. 19-cv-02190, 2022 WL 4596547, at *20 (C.D. Cal. Aug. 4, 2022) (citation and internal quotation marks omitted).

Harris v. Department of Defense (Nonprecedential)

Judalon Harris, appearing pro se, challenges two separate decisions from the U.S. Merit Systems Protection Board, each dismissing her petitions for review for lack of jurisdiction. In MSPB Docket No. CH-3443-16-0593-I-1, the Board dismissed Ms. Harris’s appeal because she did not establish that she was subjected to an appealable adverse action. In MSPB Docket No. CH-0752-17-0303-I-1, the Board dismissed Ms. Harris’s appeal as settled and thus withdrawn. For the following reasons, we affirm both dismissals.

Daedalus Blue LLC v. Vidal (Nonprecedential)

Daedalus Blue LLC (Daedalus Blue) appeals the Patent Trial and Appeal Board’s (Board) final written decision finding the petitioner proved by a preponderance of the evidence that all claims of U.S. Patent No. 8,572,612 (’612 patent) are unpatentable under 35 U.S.C. § 103. Microsoft Corp. v. Daedalus Blue, LLC, No. IPR2021-00830, 2022 WL 16551441, at *1 (P.T.A.B. Oct. 27, 2022) (Final Written Decision). Daedalus Blue alleges the Board misconstrued two limitations of representative independent claim 1: (1) “flagging the instance of a [virtual machine (VM)] for autonomic scaling including termination” (the “flagging” limitation), and (2) “deploying . . . an additional instance of the VM” (the “deploying” limitation). Because we do not believe the Board erred in construing either limitation, we affirm.

Behunin v. McDonough (Nonprecedential)

Gary L. Behunin appeals a decision of the United States Court of Appeals for Veterans Claims (Veterans Court), which affirmed a Board of Veterans’ Appeals (Board) decision that denied an earlier effective date for Mr. Behunin’s bilateral hearing loss and tinnitus. Mr. Behunin contends that he is entitled to an earlier effective date because he was misinformed about his eligibility for benefits. We dismiss this appeal for lack of jurisdiction.

Johnson v. Merit Systems Protection Board (Nonprecedential)

This case returns to us following a remand decision in Johnson v. Merit Systems Protection Board, No. 20-2136 (Fed. Cir. Sept. 26, 2022) (nonprecedential) (Johnson). In that case, we affirmed the Merit Systems Protection Board’s dismissal of Petitioner Mardic Johnson’s whistleblower claims for lack of jurisdiction, but remanded for the Board to further consider Ms. Johnson’s involuntary retirement claim and other alleged wrongdoings by her former employer. For the reasons stated below, we affirm the Board’s dismissal of Ms. Johnson’s involuntary retirement claim for lack of jurisdiction and remand for the Board to address her remaining claims.