Spotlight On Upcoming Oral Arguments – July 2022 – Patent


The following telephone arguments will be available to the public live. Access information will be available by 9 AM ET each day of argument at: https://cafc.uscourts.gov/home/oral-argument/listen-to-oral-arguments/.

Tuesday, July 5, 2022

Polaris Innovations Ltd. v. Advanced Micro Devices, Inc. No. 1917-21

Advanced Micro Devices (“AMD”) filed a petition for
inter partes review (“IPR”) of US Patent No. 8,117,526. At Final Written Decision, the Patent Trial and Appeal Board (the “Board”) held claim 9 of the ‘526 patent was unpatentable based on the Board’s construction of the term “checksum.” In support of its construction, the Board relied on a prior art reference, Maxino, that neither party had relied on for claim construction. AMD’s petition cited Maxino to support how a skilled artisan would have understood the teaching of a prior art reference used in its grounds, and Polaris did not address Maxino. Polaris appeals.

On appeal, Polaris argues the Board violated the Administrative Procedure Act (“APA”) when it construed “checksum” using a reference that neither party had relied on for claim construction. Polaris argues that, under the APA, a patent owner is entitled to notice and a fair opportunity to respond to the grounds of rejection, but Polaris had no notice that the Board would rely on Maxino for claiming construction and no opportunity to respond. Polaris likens the Board’s reliance on Maxino to EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc.where the Federal Circuit held the Board violated the APA by relying on an unasserted reference as disclosing a limitation of a challenged claim.

AMD responds that the Board did not violate the APA. According to AMD, the Board barely relied on Maxino, merely mentioning it in a “see alsocitation in its lengthy construction of “checksum.” AMD distinguishes
EmeraChempointing out that the EmeraChem Board relied on an unasserted reference to supply a claim limitation, while here the Board merely relied on Maxino in passing.

Tuesday, July 5, 2022

SawStop Holding LLC v. Vidal, No. 21-1537

During prosecution of SawStop’s US Patent No. 9,522,476, SawStop appealed a rejection of claim 11 to the Board. While the Board found the examiner had not made a prima facie A case of obviousness, the rejection was nonetheless sustained by the Board under a “new ground of rejection” that “relie[d] upon facts and reasoning that the Examiner did not use.” SawStop overcame the new ground of rejection through amendments and the ‘476 patent ultimately issued.

Similarly, during prosecution of SawStop’s US Patent No. 9,927,796, claim 1 was rejected both as anticipated and for obviousness-type double patenting. SawStop appealed to the Board and, ultimately, the District Court for the District of Columbia (“DDC”). While DDC reversed the examiner’s anticipation-based rejection, DDC affirmed the double patenting rejection. SawStop overcame the double-patenting rejection through amendments and the ‘796 patent issued.

Upon issuing, patent neither the ‘476 nor the ‘796 was granted patent term adjustment (“PTA”) for so-called “C delay” under 35 USC § 154(b)(1)(C)(iii), which extends a patent term for delay due to appellate review where “the patent was issued under a decision in the review reversing an adverse determination of patentability.” SawStop sought C delay PTA for both patents, which the US Patent and Trademark Office (“USPTO”) denied. SawStop appealed to the Eastern District of Virginia (“EDVA”), arguing that the denial of C delay was arbitrary and capricious, thus violating the APA. EDVA granted summary judgment for the USPTO, agreeing with the agency’s interpretation of § 154(b)(1)(C)(iii) and the calculated PTA. SawStop appeals.

On appeal, SawStop argues it is entitled to delay for the time the patents were on appeal. It argues claim 11 of the ‘476 Patent was eventually allowed over the new ground of rejection, and the subject matter of claim 1 of the ‘796 patent was allowed once incorporated into another claim. According to SawStop, the text of § 154(b)(1)(C)(iii) is unambiguous, so the USPTO’s interpretation is not entitled to either Chevron or
Skidmore reference. SawStop also argues that deference is not appropriate because Congress has not vested the USPTO with any substantive rulemaking authority.

The USPTO responds that neither the ‘476 Patent nor the ‘796 Patent “was issued under a decision in the review reversing an adverse determination of patentability,” as § 154(b)(1)(C)(iii) requires. For the ‘476 Patent, it argues, the examiner’s rejection of claim 11 was affirmed, even if the Board relied on a new ground of rejection. For the ‘796 Patent, the USPTO highlights that the examiner’s double-patenting rejection remained. According to the USPTO, regulations promulgated by the USPTO under its rulemaking authority are entitled to deference under both Chevron and
Skidmore so long as they are valid and consistent with the USPTO’s earlier pronouncements, citing Cathedral Candle Co. v. US International Trade Commission.

Tuesday, July 5, 2022

In re Zahner Design Group Ltd., No. 1026-22

Zahner’s US Design Patent No. D746,078 covers a shower curtain ring. After ZDG accused Kartri Sales Company, Inc., of infringing the ‘078 Patent, Kartri filed an ex partereexamination, alleging that the ‘078 Patent was not entitled to the priority of its parent utility application, US Patent Application No. 09/617,402. ZDG overcame the same priority challenge during prosecution of the ‘078 Patent.

During reexamination, the examiner indicated during an interview that the ‘078 Patent was entitled the priority date of its parent utility application but, ultimately, found in an office action that it was not and was, therefore, obvious based on an intervening prior art reference . ZDG appealed to the Board, which affirmed, finding the “right angled edge of the inner aperture” was not disclosed in the parent utility application. ZDG appeals.

On appeal, ZDG argues that the ‘078 Patent is entitled to the priority date of its parent utility application. to ZDG, a skilled artisan would have recognized the “right-angled edge” feature from the manufacturing specifications incorporated by reference in the parent utility application. ZDG argues the examiner during prosecution and, initially, the examiner during reexamination found the feature was present in the parent utility application, but the examiner during reexamination reversed both findings without any explanation.

The USPTO responds that what little description there is of the “edge” feature in the parent utility application states the “edge” is preferably rounded, not “right-angled.” The USPTO further argues that the manufacturing specifications should be given little weight because ZDG never raised them with the examiner during reexamination and only did so in a footnote before the Board. Finally, the USPTO argues that the examiner during reexamination did not “reverse” himself because the examiner only indicated that the ‘078 Patent was entitled the priority date during an interview and never made such a finding in an office action.

Wednesday, July 6, 2022

Cooperative Entertainment, Inc. v. Collective Technology, Inc., No. 21-2167

Cooperative Entertainment, Inc. (“CEI”) sued Kollective in the Northern District of California for infringement of its US Patent No. 9,432,452 relating to peer-to-peer (“P2P”) network content distribution. Kollective moved to dismiss under Rule 12(b)(6), arguing all claims of the ‘452 Patent are inligible under 35 USC §101. The district court granted Kollective’s motion, and CEI appeals.

On appeal, CEI argues that the district court incorrectly applied the Alice framework by using “broad generalizations” instead of focusing on the claims in light of the specification. According to CEI, Alice step one requires the court to determine what the claims are directed to, but the district court broadly asserted what the patent “may be about.” CEI contends the district court’s paraphrasing failed to capture the specificity of the claim language. At
Alice Step two, CEI argues, the district court failed to recognize the claimed inventive concept of “segmenting and distributing the content based on [a] trace route.” CEI highlights that, during prosecution, the examiner found this feature novel and cited it as the reason for allowing the claims.

Kollective responses that the district court correctly applied
Alice. According to Collective, the district court correctly determined at Alice step one that the focus of the claims is “not on any specific improvement in computer functionality,” but “rather on a process that qualifies as an abstract idea for which computers are . . . merely a tool,” citing Enfish, LLC v. Microsoft Corporation.At Alice step two, Kollective argues that CEI’s alleged inventive concept is not reflected in the claims, because the claims are not limited to segmentation “based on a trace route.” Even if the claimed segmentation was novel, Kollective argues, novelty cannot transform an abstract idea into an eligible one, citing SAP America, Inc. v. InvestPic, LLC. Finally, Kollective argues that the district court properly found the ‘452 Patent itself belies CEI’s assertion that the claimed segmentation is new and, moreover, fails to explain how the segmentation is done.

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