Patent Case Summaries – April 2023 #1 | Alston & Bird
A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Roku, Inc. v. Universal Electronics, Inc., No. 2022-1058 (Fed. Cir. (PTAB) Mar. 31, 2023). Opinion by Stoll, joined by Reyna. Dissenting opinion by Newman.
Roku filed an IPR petition challenging certain claims of a UEI patent directed to universal remotes and, more specifically, a universal control engine that facilitates communication between a controlling device and a target appliance. The Patent Trial and Appeal Board issued a final written decision finding that Roku did not prove that the challenged claims would have been obvious in view of a published patent application (“Chardon”).
The Board’s ruling turned on “a single, narrow issue: whether Chardon discloses ‘a listing comprised of at least a first communication method and a second communication method different than the first communication method’ as recited in each challenged claim.” Chardon describes a process for creating a database of command codes, and those command codes are formatted for transmission according to certain communication methods. Roku’s petition did not, however, explain how a list of command codes is a list of communication methods. The Board found that although Roku equated communication methods with the command codes listed in Chardon, Roku failed to show that one of ordinary skill would have understood that these were the same things. Roku appealed.
The question on appeal was “whether Chardon’s list of command codes formatted to be transmitted via different communication methods is, itself, a list of different communication methods as recited in the claims.” The Federal Circuit ruled that substantial evidence supported the Board’s finding. For example, the Federal Circuit noted that “the patent specification itself distinguishes a list of communication methods from a separate list of command codes.” Also, UEI’s expert had testified that a skilled artisan would not have understood a “command code” to be a communication method.
The Federal Circuit emphasized that its role was “to review the Board’s findings for substantial evidence, not to step into its place and make those findings anew.” The court continued: “Indeed, although this court could well have decided the factual dispute at hand differently than the Board did, it is not the province of this court to do so.” Thus, the Federal Circuit affirmed.
Judge Newman dissented because obviousness is a question of law, reviewed de novo, based on underlying questions of fact, reviewed for substantial evidence. Here, she explained, the majority “decline[d] to review the ultimate legal question” of obviousness and “instead review[ed] solely the Board’s specific fact-finding.” Judge Newman expressed concern with “the majority’s implicit holding that if the underlying findings of fact are supported by substantial evidence, then we do not review the ultimate legal question of non-obviousness.” In her view, the claims at issue would have been obvious in view of Chardon “because the methods described in the claims and the prior art are substantially identical and serve the same purpose and use.”
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Philip Morris Products S.A., et al. v. ITC, No. 2022-1227 (Fed. Cir. (ITC) Mar. 31, 2023). Opinion by Stoll, joined by Reyna and Prost.
Reynolds filed a complaint at the ITC alleging that Philip Morris violated 19 U.S.C. § 1337 by importing and selling electronic tobacco products that infringed two patents owned by Reynolds. The patents are directed to electrically powered “smoking articles” that heat tobacco instead of burning it, providing an inhalable substance in vapor or aerosol form. The ALJ found that Philip Morris violated Section 337. The Commission affirmed and entered cease and desist orders and a limited exclusion order.
On appeal, Philip Morris raised numerous issues, but the Federal Circuit affirmed the Commission’s decision in full.
First, Philip Morris asserted that the Commission failed to comply with its statutory duty to consult with the Department of Health and Human Services (HHS), and specifically the FDA, which is the HHS agency that exclusively oversees the regulation of tobacco products in the United States. The Federal Circuit ruled that Philip Morris had forfeited this argument: “Philip Morris had numerous opportunities to raise and preserve this issue but failed to do so.”
The Federal Circuit also concluded that, even in the absence of forfeiture, the Commission satisfied its duty to consult with HHS and the FDA. When the Commission instituted the investigation, it published a Notice of Investigation in the Federal Register and served letters enclosing the Notice to representatives of HHS. Also, the Commission “had input from the FDA on the public interest issue.” Moreover, after the ALJ issued the Final Initial Determination, the Commission published an additional notice in the Federal Register soliciting input from interested government agencies.
Second, Philip Morris asserted that the Commission abused its discretion by granting injunctive relief notwithstanding the evidence Philip Morris provided on public interest. The Federal Circuit disagreed, holding that “the ALJ and the Commission properly considered and weighed the public interest evidence put forth by the parties, including expert testimony, scientific evidence, and, importantly, over 30 FDA documents” regarding the accused products.
Third, Philip Morris argued that Reynolds had not satisfied the domestic-industry requirement. Philip Morris stated that Reynolds’ products had not yet received FDA authorization at the time of the complaint and thus “were illegal and could not form the basis for a domestic industry.” The Federal Circuit held that the argument “has no merit,” as “nothing in the plain language of the statute requires that protected articles have regulatory approval.”
Finally, with respect to the remaining issues raised by Philip Morris, each of which involved patent-specific issues of validity and infringement, the Federal Circuit again affirmed. Philip Morris failed to show that one of the patents was obvious or that the accused products infringed either patent. Also, Philip Morris failed to establish that a prior art product was in public use before the priority date of one of the patents.
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