Today, the Federal Circuit released two opinions in patent cases. In the first opinion, which is precedential, the Federal Circuit reverses a decision of the Patent Trial and Appeal Board not to hold any claims unpatentable and remands the case for further consideration. In the second opinion, which is nonprecedential, the Federal Circuit affirms another decision of the Patent Trial and Appeal Board to hold some claims not unpatentable and another claim unpatentable and vacates and remands its decision to hold other claims not unpatentable. Here are the introductions to the opinions.
Sigray, Inc. v. Carl Zeiss X-Ray Microscopy, Inc. (Precedential)
Appellee Carl Zeiss X-Ray Microscopy, Inc. (“Zeiss”) owns U.S. Patent No. 7,400,704 (the “’704 patent”), which claims X-ray imaging systems that incorporate projection magnification. Appellant Sigray, Inc. (“Sigray”) filed a petition with the Patent and Trademark Office requesting inter partes review of all claims of that patent. The Board granted Sigray’s petition, finding that it demonstrated a reasonable likelihood that at least one of the challenged claims was unpatentable. In its final written decision, the Board declined to hold any of the asserted claims unpatentable. Sigray, Inc., v. Carl Zeiss X-Ray Microscopy, Inc., No. IPR2022-00218, 2023 WL 5065239 (P.T.A.B. May 22, 2023) (“Decision”). Sigray appeals the Board’s decision only as to whether claims 1–6 were unpatentable based on the prior art reference Jorgensen. Specifically, Sigray challenges the Board’s determination that claims 1, 3, and 4 were not anticipated by Jorgensen and that claims 1–6 would not have been obvious over Jorgensen, either in combination with other references or under a single reference theory. We reverse as to the lack of anticipation of claims 1, 3, and 4 and remand for the Board to determine if claims 2, 5, and 6 would have been obvious in light of this opinion.
Atos, LLC v. Allstate Insurance Co. (Nonprecedential)
ATOS, LLC appeals from an inter partes review final written decision of the Patent Trial and Appeal Board holding claim 5 of U.S. Patent No. 9,846,174 is unpatentable. Allstate Insurance Company cross-appeals the Board’s holding that claims 1–4 were not shown to be unpatentable. We affirm the Board’s decision as to claims 1, 2, and 5. We vacate and remand the Board’s decision as to claims 3 and 4.