Federal Circuit Patent Watch: Patent owner’s rights and arguments, like wakesurfing, must be fair and balanced | WilmerHale
Precedential and Key Federal Circuit Opinions
1. VOLVO PENTA v. BRUNSWICK CORP. [OPINION] (2022-1765, 8/24/2023) (Moore, Lourie, and Cunningham)
Moore, Chief J. The Court vacated and remanded the Patent Trial and Appeal Board’s decision “holding all claims” of the patent “unpatentable as obvious.” The Court concluded that (1) “[t]he Board’s finding of a motivation to combine is . . . supported by substantial evidence”; (2) “Volvo Penta demonstrated a nexus between the claims and its evidence of secondary considerations”; and (3) “[t]he Board failed to properly consider the evidence of objective indicia of nonobviousness.” The at-issue patent, assigned to Volvo Penta, was “directed to a tractor-type stern drive for a boat.” The “commercial embodiment of the ’692 patent, the Forward Drive” was launched in 2015. The Forward Drive “became extremely successful once available, particularly for wakesurfing and other water sports.” “In August 2020, Brunswick Corp. (‘Brunswick’) launched its own drive that also embodies the ’692 patent” and it “petitioned for inter partes review of all claims of the ’692 patent” on the day of its product launch asserting that the “challenged claims would have been anticipated or obvious” in view of the prior art references. In response, “Volvo Penta argued that a person of ordinary skill in the art would not have been motivated to combine the references with a reasonable expectation of success and that the objective indicia of nonobviousness overcame any prima facie case of obviousness.” Volvo Penta appealed the Board’s decision that all claims were obvious. On appeal, the Court first emphasized the “Board’s finding of a motivation to combine is . . . supported by substantial evidence. It explained that although “the Board ultimately did not rely on [one of the party’s arguments] as support for its motivation to combine finding, [it] does not mean that they did not consider it.” In other words, the “Board considered and evaluated each of the” parties’ “assertions in view of the record evidence.” Turning to the issue of nexus, the Court explained that Volvo Penta had “expressly argued that the ‘steerable tractor-type drive as recited in each of the challenged claims’ was shown to drive the success of the Forward Drive” and the documents cited in its response “demonstrate[d] the connection between the[ ] claim elements and the objective indicia of nonobviousness.” Finally, the Court agreed with Volvo Penta that “the Board’s analysis of objective indicia of nonobviousness, including its assignments of weight to different considerations, was overly vague and ambiguous” because, for example, “the Board only afforded [evidence of copying and commercial success] ‘some weight.’” Thus, the Court vacated and remanded the Board’s decision.
2. IN RE: CELLECT, LLC [OPINION] (2022-1293, 2022-1294, 2022-1295, 2022-1296, 8/28/2023) (Lourie, Dyk, and Reyna)
Lourie, J. The Court affirmed the Patent Trial and Appeal Board’s decision and concluded that “the expiration date used for an [obviousness-type double patenting (“ODP”)] analysis where a patent has received [patent term adjustment (“PTA”)] is the expiration date after the PTA has been added.” On appeal, Cellect argued (1) “that the Board erred in determining that whether or not a patent is unpatentable for ODP is determined based on the date of expiration of a patent that includes any duly granted PTA pursuant to 35 U.S.C. § 154”; (2) “that the Board erred in failing to consider the equitable concerns underlying the finding of ODP in the ex parte reexamination proceedings”; and (3) “that the Board erred in finding a substantial new question of patentability in the underlying ex parte reexaminations, and thus that the reexamination proceedings were improper.” As to Cellect’s first argument, the Court concluded that “the Board did not err in finding the asserted claims unpatentable under ODP” because “ODP for a patent that has received PTA, regardless whether or not a terminal disclaimer is required or has been filed, must be based on the expiration date of the patent after PTA has been added.” Second, the Court concluded that “[a]n applicant’s ability to show that it did not engage in gamesmanship in obtaining a grant of PTA is not sufficient to overcome a finding that it has received an unjust timewise extension of term.” Third, the Court concluded that “[i]nvalidating only the adjusted term would in effect give Cellect the opportunity to benefit from terminal disclaimers that it never filed.” The Federal Circuit, therefore, rejected Cellect’s arguments and ultimately “conclude[d] that, while the expiration date used for an ODP analysis where a patent has received [patent term extension (“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.” Thus, the Court affirmed the Board’s decision.
WilmerHale issued a client alert with a more detailed analysis of this opinion located here.
3. SISVEL INT’L S.A. V. SIERRA WIRELESS INC., TELIT CINTERION DEUTSCHLAND GMBH [OPINION] (2022-1387, 2022-1492, 9/1/2023) (Prost, Reyna, and Stark)
Stark, J. The Court affirmed the Patent Trial and Appeal Board’s decision (1) that the claim term “connection rejection message” should be given its plain and ordinary meaning of “a message that rejects a connection”; and (2) that the Board did not err in denying patent owner Sisvel International S.A.’s (“Sisvel”) motion to amend the claims of the U.S. Patent No. 7,433,698 (“the ’698 patent”). The at-issue patents relate to “methods and apparatuses that rely on the exchange of frequency information in connection with cell reselection between a mobile station (or user cell phone) and a central mobile switching center.” On the issue of claim construction, the Court determined that “the intrinsic evidence provides no persuasive basis to limit the claims to any particular cellular networks” and, instead, “the claim language itself is not so limited.” On the issue of amending the claims of the ’698 patent, the Court explained that under “35 U.S.C. § 316(d)(3) provides that when a patent owner seeks to amend its claims during an inter partes review, the amended claims ‘may not enlarge the scope of the claims of the patent.’” It similarly reemphasized that “37 C.F.R. § 42.121(a)(2)(ii) explains that ‘[a] motion to amend may be denied where . . . [t]he amendment seeks to enlarge the scope of the claims.’” Applying “the APA standard of review,” the Court explained that “the Board correctly determined that Sisvel failed to meet its burden to show that the scope of its substitute claims is not broader than the scope of its original claims.”
