Recent Case Highlights

Patent Defenses turns 20 in 2024

2024 Q1 Patent Defenses Update

Highlights and Strategies from January–March Fed. Cir. decisions on substantive patent law

This was a busy quarter for the Federal Circuit with precedential decisions on the nature of CRM claims, the section 271(e)(1) safe harbor, the importance of instructing a jury on each individual indicia of non-obviousness, written description of a claimed range in mechanical arts, and reasonable-royalty damages based foreign activities, plus nine more written decisions finding claims directed to an abstract idea, and a pre-argument remand to allow the USPTO to further consider means-plus-function claiming of antibodies.

And the USPTO issued misguided guidance for examiners on section 112(f) step-plus-function claim elements.

CRM Claim Covers a Memory-Device Unit with a Copy of Software as Distinct From the Software Itself

In 2007, interpreting 35 U.S.C. § 271(f), the Supreme Court ruled that intangible software information, or “software in the abstract detached from any medium” as distinct from a physical copy of software, is not a “combinable component” under Sec. 271(f). Microsoft v. AT&T (U.S. 04/30/2007). Last week, the Federal Circuit cited that distinction as support for its narrow description of what constitutes “making” infringement for a CRM claim.

• “The Supreme Court has recognized the important distinction between software and a particular copy of it on a CRM.” Brumfield (Fed. Cir. 03/27/24) (aff’g exclusion of damages expert theory seeking reasonable royalty on foreign sales of software, for infringement of a CRM claim, where expert’s report was “not focused on making an individual memory-device unit, whether freestanding (like a memory stick) or a part of a larger physical unit (like a hard drive in a personal computer or server). They have referred, instead, to the TWS BookTrader software itself—’the instructions themselves detached from any medium’ (rather than a ‘tangible ‘copy’’), ‘software in the abstract,’ software ‘[a]bstracted from a usable copy.’” (citing Microsoft v. AT&T)).

Mooring in the Section 271(e)(1) Safe Harbor

• Edwards Lifesciences (Fed. Cir. 03/25/24) (2-1) (aff’g J. of no infringement under 271(e)(1) safe haven where two (allegedly infringing) sample products were imported into U.S. by employee attending medical conference to recruit doctors to conduct clinical trials that would be needed for FDA approval, which products never left employee’s bag, regardless of why defendant imported the samples).

Continuing Development of Functional Claiming in Antibody Art Post Amgen

In Amgen (U.S. 05/18/2023), the Supreme Court ruled invalid for lack of full-scope enablement claims to an entire class of antibodies defined by their function. Some amici had argued that the claims should have been interpreted under the statute enacted to deal with such purely functional claims, namely 35 U.S.C. § 112(f). The Federal Circuit now has remanded an appeal to allow the USPTO to rethink this topic.

• In re Xencor (Fed. Cir. 01/23/24) (non-precedential) (permitting remand at USPTO request “so that the USPTO’s Appeals Review Panel can be convened to ‘clarify the USPTO’s position on the proper analysis of Jepson-format and means-plus function claims in the field of biotechnology, and particularly in the antibody art’”).

USPTO Missteps on Step Plus Function

The Office just gave its examining corps an easy (and incorrect) way to determine whether a limitation in a method claim triggers interpretation under 35 U.S.C. § 112(f):

• Means-plus-function limitations appear much more frequently than step-plus-function limitations, which are rare. In process claims, if the claim element uses the phrase “step for,” § 112(f) is presumed to apply, but the term “step” alone and the phrase “steps of” tend to show that § 112(f) does not apply. A step limitation must not recite an act to be treated under § 112(f), but most process claims include steps with acts described by a verb ending in “-ing” (such as passing, heating, reacting, transferring, determining, etc.), which will avoid § 112(f).

USPTO Memorandum (“Resources for Examining Means-Plus-Function and Step-Plus-Function Claim Limitations (35 U.S.C. 112(f))”) (03/18/2024) (emphasis added).

So, Patent Office Examiners have been told that any result or function recited as a verb ending in “-ing,” such as “finding a needle in a haystack,” does not trigger interpretation under section 112(f). This is incorrect. The dividing line between a step and an act under this statute is not so simple. See https://klarquist.com/patent-defenses/1126f-claim-language/.

Obviousness: Each Objective Indicia of Non-Obviousness Matters

• Inline Plastics (Fed. Cir. 03/27/24) (granting new trial overturning obviousness verdict where district court committed prejudicial legal error by failing to include in its objective-indicia instructions (limited to long-felt need and commercial success) mention of industry praise, copying, and licensing, despite evidence being presented thereon and defendant preserving request for such instruction).

Written Description of Claimed Range in Mechanical Arts

• RAI Strategic (Fed. Cir. 02/09/24) (rev’g PTAB PGR finding of written description unpatentability where claim recited heating element length of about 75% to about 85% of length of heated substance and Spec. described ranges of 75%–125%, 80%–120%, 85%–115% and 90%–110%, because “no evidence suggesting that the” broader disclosed ranges “disclose a different invention than the claimed range of ‘about 75% to about 85%,’” and noting that mechanical arts are more predictable).

Requirements for Increasing Reasonable-Royalty Damages Based on Foreign Conduct Related to Domestic Infringing Conduct

In 2018, the Supreme Court opined on the availability of lost profits damages based on foreign conduct related to domestic infringing conduct under 35 U.S.C. § 271(f). WesternGeco III (U.S. 06/22/2018). A Federal Circuit panel now has mostly adopted that WesternGeco framework where the damages sought are a reasonable royalty and the infringement is under section 271(a), with particular guidance when the claim is a CRM claim, but expressly leaving open two questions for future development.

• “The hypothetical negotiation must turn on the amount the hypothetical infringer would agree to pay to be permitted to engage in the domestic acts constituting “the infringement.” 35 U.S.C. § 284. If the patentee seeks to increase that amount by pointing to foreign conduct that is not itself infringing, the patentee must, at the least, show why that foreign conduct increases the value of the domestic infringement itself—because, e.g., the domestic infringement enables and is needed to enable otherwise-unavailable profits from conduct abroad—while respecting the apportionment limit that excludes values beyond that of practicing the patent.” Brumfield (Fed. Cir. 03/27/24) (aff’g exclusion of a damages expert’s theory because it was “legally insufficient, even under the WesternGeco framework,” for failing to focus on “the infringement,” namely making a CRM media by copying software thereon as distinct from the software itself. Characterizing this requirement as “a necessary beginning,” and expressly leaving open questions of (1) “whether the ‘reasonable, objective foreseeability’ presumptive standard for lost profits, is applicable where the damages are for a (non-established) reasonable royalty,” and (2) what, if any, consideration is given to the “general avoidance of extraterritorial reach” when applying the “proximate cause” requirement after WesternGeco).

Inexplicable Supreme Court Disregard for Patent Defenses!

The Supreme Court inexplicably denied certiorari despite the cert. petition citing Patent Defenses commentary in support. This slight may dent the Court’s public popularity.

• See Petition in United Therapeutics (01/23/24) (arguing that Fed. Cir. refusal to give preclusive effect to PTAB decision pending appeal is contrary to S. Ct. and other Circuits; citing Patent Defenses commentary on Fed. Cir. decision).

Nine More Opinions Finding Claims Directed to Abstract Idea

• Directed to Abstract Idea:
  

  Abstract Idea Decision	“Abstract Idea” To Which Claims Directed	Ruling
  Bluebonnet (Fed. Cir. 03/29/24) (non-precedential) (Stark, J.)	“customizing a product according to a customer’s likes and dislikes, applied to the somewhat narrower context of computer-based media playlists.”	aff’g R. 12(c) at least 1 claim
  Rady (Fed. Cir. 03/27/24) (non-precedential) (per curiam)	“gathering and storing data about the unique imperfections of a physical object”	aff’g R. 12(b)(6) at least 1 claim
  Brumfield (Fed. Cir. 03/27/24) (Taranto, J.)	“receipt and display of certain market information (bids and offers) in a manner that newly helps users see the information for use in making trades”	aff’g Summ. J. at least 2 claims
  Savvy Dog (Fed. Cir. 03/21/24) (non-precedential) (Stoll, J.)	“displaying the game field before the player commits to play the game”	aff’g Summ. J. at least 1 claim
  Chewy (Fed. Cir. 03/05/24) (Moore, J.)	“identifying advertisements based on search results”	aff’g Summ. J. 4 claims
  In re Zimmerman (Fed. Cir. 02/09/24) (non-precedential) (per curiam)	“matching combinations of financial instruments through steps of receiving data, storing data, processing data, and executing trades”	aff’g ex parte rejection 73 claims
  Eolas (Fed. Cir. 02/01/24) (non-precedential) (Stoll, J.)	“interacting with data objects on the World Wide Web”	aff’g Summ. J. 6 claims
  Plotagraph (Fed. Cir. 01/22/24) (non-precedential) (Dyk, J.)	“changing the position of components in an image to create the appearance of movement, i.e., animation”	aff’g R. 12(b)(6) at least 5 claims
  Int’l Business Machines (Fed. Cir. 01/09/24) (non-precedential) (2-1) (Hughes, J.)	“[i]dentify[], analyz[e], and present[] certain data to a user” “displaying and organizing information”	aff’g R. 12(b)(6) at least 3 claims

2023 Q4 Patent Defenses Update

Highlights and Strategies from October–December Fed. Cir. decisions on substantive patent law

Proportionality in Damages Awards

A fundamental principle running throughout patent law is proportionality. In the damages context, this includes apportioning value between the patented improvement and the remaining aspects of the accused product or method. This mandate has ripped up several large patent-infringement verdicts, including one last month for $1.5 Billion. See https://klarquist.com/patent-defenses/time-limitation-on-damages/#d-apportionment.

• VLSI Tech. (Fed. Cir. 12/04/23) (vacating jury damages award of $1.5 Billion, where expert’s reasonable royalty calculation was based in part on performance of non-infringing functionality).
• See also Finjan (Fed. Cir. 10/13/23) (aff’g exclusion of technical expert testimony which apportioned to certain top-level functions in the defendant’s documentation, where documentation also identified nearly 100 sub-features of those top-level functions, and expert did not analyze whether defendant’s “customers derived value solely from the patented features of the top-level function or whether the top-level functions included non-accused or non-patented functions at all”).

Particularity in Equivalents Infringement

The same VLSI decision illustrates a second fundamental principle throughout patent law: particularity. It reversed a separate $675 Million verdict for failure of proof of equivalents infringement, emphasizing the importance of showing that the accused device performed in substantially the same “way” as the alleged invention. See https://klarquist.com/patent-defenses/equivalents/#a-required-evidence.

• “Such matching requires that each of function, way, and result be ‘substantially the same,’ with the ‘way’ requirement of particular importance, as a practical matter, in keeping the doctrine properly limited.” VLSI Tech. (Fed. Cir. 12/04/23).

One Argument Persuades Examiner? Consider Expressly Abandoning Other Arguments

Unsuccessful arguments patent applicants make in prosecution may later be treated as prosecution disclaimer or prosecution history estoppel. So, if one argument persuades the Examiner, consider expressly abandoning on the record other, unsuccessful arguments. See https://klarquist.com/patent-defenses/how-construed/#drole-of-prosecution-history.

• Malvern (Fed. Cir. 11/01/23) (rejecting narrow construction based on alleged disclaimer, on ground that the applicant implicitly had abandoned its argument: “where an applicant abandons its unsuccessful argument, we conclude that the prosecution history lacks the clarity necessary to establish prosecution disclaimer”).

Are Numbers in Claims Always Subject to Rounding?

There is no blanket rule requiring or foreclosing rounding of numbers in a patent claim. See https://klarquist.com/patent-defenses/how-construed/#jparticular-claim-language.

• Actelion (Fed. Cir. 11/06/23) (remanding for district court to consider extrinsic evidence on whether “pH of 13” includes pH value of 12.5 where intrinsic evidence does not provide clear answer).

“Processor Configured to” Sometimes is a Means-plus-Function Element

“Processor” sounds like particular structure, but don’t assume that it is not a means-plus-function element. See https://klarquist.com/patent-defenses/1126f-claim-language/#a-whether-sec-1126f-treatment-invoked.

• WSOU Investments (Fed. Cir. 10/19/23) (non-precedential) (aff’g that “processor configured to provide a pre-emptive user output when the sub-set of pixels approaches an edge of the set of available pixels” triggers 112(6/f) because Spec. “treats the word ‘processor’ so broadly as to generically be any structure that manipulates data [e.g.] ‘[i]mplementation of the processor 4 can be in hardware alone . . ., have certain aspects in software including firmware alone or can be a combination of hardware and software (including firmware)’”).
• WSOU Investments (Fed. Cir. 10/06/23) (non-precedential) (aff’g that “collaborative application management processor configured to manage collaborative applications” triggers 112(6/f) because there “is no categorical rule that ‘processor’ is or is not structural,” the additional claim-element language is “purely functional,” “the epitome of functional claiming: a black box that captures any and all structures that fulfill the function,” “there is no indication of how the processor manages collaborative applications,” “claims do not describe how this processor interacts with the other claimed components in a way that might inform the structural character of the limitation,” and Spec. doesn’t use term “processor,” instead referring to “means” for this function).

The Role of Extrinsic Evidence in Williamson Step Two

After determining that claim language triggers construction under 35 USC 112(6/f), the second step is to determine whether the specification discloses particular structures, acts and materials that are both sufficient to perform the function and also linked to that function. An October decision surveyed the case law on the role of extrinsic evidence in this second step. See https://klarquist.com/patent-defenses/1126f-claim-language/#b-construction-of-sec-1126f-claim-element.

• Case law is divided into “two distinct groups: First, cases in which the specification discloses no algorithm; and second, cases in which the specification does disclose an algorithm but a [party] contends that disclosure is inadequate.’ Where the specification discloses no algorithm, the knowledge of a skilled artisan is irrelevant. But where the specification discloses some arguable algorithm, even if a party contends that the algorithm is inadequate, the sufficiency of the purportedly-adequate structure disclosed in the specification must be evaluated in light of the knowledge possessed by a skilled artisan.” Sisvel (Fed. Cir. 10/06/23) (vacating PTAB ruling that means-plus-function element lacked corresponding algorithm where PTAB erroneously excluded evidence that POSITA would understand the software protocols (known in the art) identified by name in the Spec.).

Need Clear Statement of the Motivation to Combine

Crafting a solid motivation-to-combine argument is challenging. Many motivation-to-combine arguments are unclear, superficial and/or mere hindsight, to varying degrees. An October decision addressed an extreme example of this. See https://klarquist.com/patent-defenses/obviousness-sec-103/#d-motivation-to-combine-or-modify-art.

• Sisvel (Fed. Cir. 10/06/23) (aff’g PTAB finding of no showing of motivation where Petition “does not explain what reference is the primary versus secondary reference, what elements are missing from the primary reference, what elements should be added from the secondary reference to reach the claimed invention, or why those particular elements would be obvious to add”).

Piercing Litigation-Driven Prosecution Tricks

We’ve all seen patent families that took a sharp turn after a competitor’s product was released. While non-precedential, here’s a refreshing reality-based treatment of such a prosecution tactic. https://klarquist.com/patent-defenses/how-construed/#brole-of-other-claims.

• Barrday (Fed. Cir. 11/16/23) (non-precedential) (2-1) (aff’g construction of “securing yarn” as excluding yarns from upper or bottom layer despite several dependent claims reciting just that, noting that dependent claims were added post filing and likely litigation-driven, being added weeks after letter from defendant explaining non-infringement).

Untruths and Consequences

Congratulations to Amazon.com on winning a $5 Million fees award. See https://klarquist.com/patent-defenses/cases-awarding-fees/.

• In re PersonalWeb (Fed. Cir. 11/03/23) (2-1) (aff’g exceptional case finding and award of $5,187,203.99 in attorney fees and costs to Amazon.com, where “a straightforward application of Kessler barred PersonalWeb’s claims,” the claims were “baseless under well-settled claim preclusion precedents,” plaintiff’s “pattern of flipflopping infringement theories,” “PersonalWeb engaged in unreasonable conduct post-claim construction that prolonged” the case, and plaintiff submitted inaccurate declarations).

2023 Q3 Patent Defenses Update

Highlights and Strategies from July – September appellate decisions on substantive Patent Law.

Each Separate Objective Indicia Adds to Non-Obviousness Case

Patent litigants often think of and argue objective indicia of non-obviousness (copying, commercial success, long-felt but unsolved need, failure of others, etc.) as a single factor, namely the fourth factor after the three primary Graham factors. But patent owners should heed a Federal Circuit panel observation that each separate objective indicia can further tip the scales in favor of non-obviousness:

• Where the patent owner makes a showing on multiple objective indicia, such as copying and commercial success, each entitled to some weight, “it stands to reason that these individual weights would sum to a greater weight” in the non-obviousness determination. Volvo Penta (Fed. Cir. 08/24/23) (vacating PTAB obviousness finding).

Amgen Ruling Applied to Invalidate More (Purely Functional) Antibody Claims

The Federal Circuit has embraced and applied the Supreme Court’s Amgen antibody-non-enablement decision:

• Baxalta II (Fed. Cir. 09/20/23) (aff’g Summ. J. non-enablement of functional antibody claims, finding facts materially indistinguishable from Amgen; even if “skilled artisans will generate at least one claimed antibody each time they follow the disclosed process, this does not take the process out of the realm of the trial-and-error approaches rejected in Amgen”).

In Method-of-Treatment Claim, the Full-Scope Written Description and Enablement Mandates do not Require Possession and Enablement for Each Variation of the Condition Being Treated

The mandate that an application’s disclosure must provide both written description and enablement support for the “full scope” of a claim, e.g., for a claimed genus, has wide acceptance at the Federal Circuit. For method-of-treatment claims, however, a panel has ruled that not every variation of a condition or disease should be analyzed as a separate species for which possession and enablement must be shown:

• “Liquidia essentially asks us to treat Group 2 PH as a claimed species within a larger genus (i.e., all five groups of pulmonary hypertension). But analogizing a subset of patients having a variant of a particular disease to traditional genus and species claims is inapt. It would be incorrect to fractionate a disease or condition that a method of treatment claim is directed to, and to require a separate disclosure in the specification for each individual variant of the condition (here, an individual group of pulmonary hypertension patients) in order to satisfy the enablement and written description provisions of 35 U.S.C. § 112, unless these variants are specified in the claims.” United Therapeutics (Fed. Cir. 07/24/23) (aff’g ruling rejecting written-description defense).

In an Obviousness Double Patenting Analysis, a Patent’s Expiration Date is Affected by Patent Term Adjustment (Section 154(b)) but not by Patent Term Extension (Section 156):

• “While the expiration date used for an ODP analysis where a patent has received PTE is the expiration date before the PTE has been added, the expiration date used for an ODP analysis where a patent has received PTA is the expiration date after the PTA has been added” regardless of whether or not a terminal disclaimer has been filed. In re Cellect (Fed. Cir. 08/28/23) (aff’g obviousness double patenting rejection of “related patents that claim priority from the same application that … claim overlapping subject matter and that have different expiration dates only because of PTA,” using PTA expiration dates to determine which patents expired later).

Five Additions to the “Abstract Ideas” Identified in 149 Federal Circuit Opinions Ruling Claims Patent-Ineligible Under Alice

Patent Defenses has catalogued each “abstract idea” articulated by the Federal Circuit in its 149 post-Alice opinions ruling a claim patent-ineligible under Alice, with five new entries this quarter:

Williamson Strikes Again:

Another claim limitation coupling a function with a nonce term (here, “unit”) triggered Section 112(6/f) (leading to indefiniteness invalidity of the claim):

• WSOU Investments (Fed. Cir. 09/25/23) (non-precedential) (aff’g “alerting unit configured to issue an alert” triggers 112(6/f) because “unit” “could be almost anything” and the surrounding language in the claims, and Spec., is purely functional, and Spec. uses “means for issuing an alert” as indistinguishable from “alerting unit”).

2023 Q2 Patent Defenses Update

Highlights and Strategies from April – June appellate decisions on substantive Patent Law.

Sec. 112(f) is Ready to Do Much More: Both sides in patent litigation under-utilize Sec. 112(f).

1. Patent owners could apply Sec. 112(f) as a statutory (provisional) safe harbor against Alice patent-ineligibility, “full-scope” Sec. 112(a), and “indefiniteness” challenges based on facially functional claiming.
2. Alleged infringers could argue that genuine ambiguity on whether a claim element triggers Sec. 112(f), renders the claim “indefinite” under Nautilus like any other genuine ambiguity about claim scope.
3. Each side could apply Sec. 112(f) to method claims as readily as to non-method claims.
4. Each side could apply Sec. 112(f) much more often in life sciences patent litigation.

Points 1 and 4 are illustrated by what was not argued in Amgen.

Functional Genus Claims at the Supreme Court: Amgen v. Sanofi

Here’s how our post-Argument predictions in our 1^st Quarter update (https://klarquist.com/patent-defenses/recent-updates/) fared:

Enablement at the Supreme Court—Predictions

Amgen v. Sanofi concerns functionally defined genus claims on antibodies.

Based on the March 27^th Argument, the Court’s Opinion likely will: (1) affirm or remand for clarification of the Federal Circuit’s analysis, (2) be narrowly limited to enablement, without discussing written description, indefiniteness, functional claiming, or the statutory provision governing functional claim elements, 35 U.S.C. § 112(f), and (3) endorse with minor clarification existing Federal Circuit enablement principles, including: only reasonable enablement is required, i.e., only “undue” experimentation defeats enablement; a claim’s full scope must be enabled and a broader claim normally requires a broader disclosure; the Wands factors are relevant; and the time needed to identify and make non-disclosed species is relevant but not dispositive.

The Court affirmed that Amgen’s disclosure of a few dozen antibodies did not provide the required “full-scope” enablement of its functional genus claims that might encompass millions of antibodies, but required trial-and-error experiments to determine, one candidate at a time, which had the claimed functionality. Amgen (U.S. 05/18/2023).

As interesting, is what the courts and parties did not say: these functional claims trigger Sec. 112(f) because they recite functions without particular acts, materials, or structures sufficient to perform the function. Amicus briefs by Eli Lilly and High Tech Inventors Alliance made this point.

Sanofi—which of course gets credit for prevailing in the end—could have argued for application of Sec. 112(f) in support of non-infringement (instead of admitting infringement as it did, and then losing non-enablement before the jury). Amgen could have argued that its “composition” claims qualified as “combination” claims and triggered Sec. 112(f), to avoid invalidity under Sec. 112(a) (or Sec. 112(b)) arising from its facially purely functional claims. Then it could have argued that the “acts” performed by Sanofi’s antibodies were equivalent to the “acts” performed by the patent’s disclosed antibodies. (The accused antibody structures were not equivalent.)

More claims failed last week for lack of full-scope enablement:

• Medytox (Fed. Cir. 06/27/23) (aff’g PTAB that substitute claim’s element of “50% or greater” (construed as range of 50% to 100%) effect, lacked full-scope enablement, where Spec. disclosed “at most three examples of responder rates above 50% at 16 weeks: 52%, 61%, and 62%,” citing Amgen).

Narrow Construction of Open-Ended Claim Limitation to Save Claim from Non-Enablement

Patent owners sometimes can save a claim by narrowing its scope without resorting to Sec. 112(f).

• Full-scope of open-ended claim limitation may be enabled “if there is an inherent, albeit not precisely known, upper limit and the specification enables one of skill in the art to approach that limit.” FS.com (Fed. Cir. 04/20/23) (aff’g ITC finding of enablement of limitations “a fiber optic connection density of at least ninety-eight (98) fiber optic connections per U space” and “…at least one hundred forty-four (144) …,” where upper limit established by evidence that as of priority date artisans would have understood densities substantially above 144 “were technologically infeasible” so claims were construed to not encompass densities exceeding that upper limit).

Alice: the Name of the Game is the Claim

Many Fed. Cir. decisions explain that an alleged technical improvement disclosed in the specification but absent from the claims cannot save the claim under Alice. The same is true of an alleged technical problem the patent supposedly solves:

• People.ai (Fed. Cir. 04/07/23) (rejecting argument that claims’ data structure solved technical problem with some CRM systems because claims not limited to CRMs so “there is no evidence of a technological problem with the claimed systems of record”).

Patent Owner Hoist on Own Petard

Not infrequently the publication of an ancestor application in a patent family qualifies as prior art—because the later-drafted claims cannot be backdated to the ancestor’s filing date for lack of Sec. 112(a) support—and anticipates or otherwise contributes to invalidity of the claims over the prior art. See https://klarquist.com/patent-defenses/anticipation-sec-102/#h-relationship-to-written-description-support. Another example this quarter:

• Parus Holdings (Fed. Cir. 06/12/23) (aff’g PTAB finding that continuation patent claims obvious over references including published ancestor application, which ancestor application lacked sufficient written description for those claims).

Class on Inventorship

Two precedential decisions this quarter provide a comprehensive course on co-inventorship and correcting inventorship.

• Blue Gentian (Fed. Cir. 06/09/23) (aff’g correction of inventorship to add co-inventor; in determining whether contribution significant, consider combination of elements contributed not each element individually; good summary of governing law).
• “To qualify as joint inventor, a person must make a significant contribution to the invention as claimed [under three-part Pannu test:] (1) contributed in some significant manner to the conception of the invention; (2) made a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention; and (3) did more than merely explain to the real inventors well-known concepts and/or the current state of the art.” HIP (Fed. Cir. 05/02/23) (rev’g finding of joint inventorship, under second Pannu factor, as heating in infrared oven mentioned only once in Spec. and once in claims in a Markush group, as distinct from focus on microwave ovens).

Scope of Estoppel from Unsuccessful Patentability Challenge in IPR

The Fed. Cir. began to clarify the scope of estoppel in district court against an alleged infringer who has lost a PTAB IPR final written decision on claim unpatentability.

• Sec. “315(e)(2) estops a petitioner as to invalidity grounds a skilled searcher conducting a diligent search reasonably could have been expected to discover, as these are grounds that the petitioner ‘reasonably could have raised’ in its petition.” Ironburg (Fed. Cir. 04/03/23) (remanding for district court to apply this standard; “The inquiry into what a skilled and diligent searcher would reasonably have discovered is ultimately concerned with what the searcher of ordinary skill would find through reasonable diligence and not what an actual researcher in fact did find through whatever level of diligence she exercised.”).