Here is an update on recent en banc activity at the Federal Circuit in patent cases. The court received three new petitions raising questions related to means-plus-function limitations and transfers. The court also denied five petitions for rehearing raising issues including the standard for granting a motion to seal court records, choice of law, estoppel arising from inter partes review, and claim construction. Here are the details.
New Petitions
In Dyfan, LLC v. Target Corp., Target Corp. asked the en banc court to review the following questions:
“For claims that recite computer software for performing functions, what are the criteria for determining whether software-implemented functional claim language is subject to 112(6)?”
a. “Can the Court ignore parts of the recited software-implemented function, or ignore such function entirely, in making the determination as to whether the claim recites sufficiently definite structure?”
b. “If no, and if the software-implemented function cannot be performed by a general-purpose computer without special programming:
i. “[C]an 112(6) be avoided by claiming a general-purpose computer term (such as code or program or processor) and a software-implemented result, if a person of ordinary skill in the art would understand how to write a program to achieve this result; or
ii. “[I]s the claim required to recite an algorithm to achieve the software-implemented result to avoid the application of 112(6)?”
In VDPP LLC v. VIZIO, Inc., VIZIO asked the en banc court to review the following questions:
- “The en banc portion of Williamson held, in part, that ‘[w]hen a claim term lacks the word “means,” the presumption’ against means-plus-function treatment ‘can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to “recite sufficiently definite structure” or else recites “function without reciting sufficient structure for performing that function.”’ 792 F.3d at 1349 (emphasis added) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). Under that standard:
- “May a claim term that connotes structure to one of skill in the art nonetheless require means-plus-function treatment because the structure it connotes is not sufficient for performing the functions the structure is recited as performing?”
- “Must the proponent of means-plus-function treatment of a claim term that does not include the word ‘means’ adduce extrinsic or other evidence beyond the language of the claim itself, in order to meet its burden of production in rebutting the Williamson presumption—or may the proponent satisfy its burden by showing that on its face, the claim does not recite sufficient structure?”
- “May the algorithmic-disclosure requirement that this Court has erected as a bulwark against purely functional claiming for computer-implemented inventions be evaded by reciting in a claim, rather than the specification, a generic ‘processor adapted to’ perform claimed functions?”
In In re Apple Inc., CPC Patent Technologies asked the en banc court to review the following question:
- Whether “the Panel erred when it misapplied controlling Fifth Circuit law, opting rather to issue mandamus relief based upon mere ‘errors of judgment’ by the district court in applying the § 1404(a) factors.”
New Denials
Since our last update, the Federal Circuit has denied the petitions in the following cases:
- Uniloc USA, Inc. v. Apple Inc. (standard for granting a motion to seal court records)
- Nippon Shinyaku Co., Ltd. v. Sarepta Therapeutics, Inc. (choice of law)
- Jump Rope Systems, LLC v. Coulter Ventures, LLC (application of collateral estoppel doctrine)
- Adapt Pharma Operations v. Teva Pharmaceuticals USA, Inc. (motivation to combine prior art references)
- The California Institute of Technology v. Broadcom Ltd. (estoppel arising from inter partes review, the legal standard for overruling prior precedential decisions, and claim construction)