Fresh From the Bench: Latest Federal Circuit Court Case
CASE OF THE WEEK
Pavo Solutions LLC v. Kingston Technology Company, Inc., Appeal No. 2021-1834 (Fed. Cir. June 3, 2022)
In our Case of the Week, the Court of Appeals for the Federal Circuit affirmed a $7M compensatory damages award and, in doing so, dealt with questions of when a district court can correct errors in patent claims, whether a defendant can willfully infringe a patent that has been judicially corrected, when to exclude expert testimony, and when an issue has been preserved for appeal.
ClearOne Inc. v. Shure Acquisition Holdings, Inc., Appeal No. 2021-1517 (Fed. Cir. 2022)
In an inter partes review appeal, the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision that a proposed substitute claim was not indefinite and affirmed the Board’s denial of appellant/petitioner ClearOne’s request to file a motion for sanctions. The patent at issue concerned arrays of microphones for fitting into drop ceiling grids, and ClearOne argued that the term “arranged in a self-similar configuration” was indefinite. The Court agreed with the Board that the intrinsic evidence informed skilled artisans about the scope of the invention with reasonable certainty, and that its finding that the term had a well-understood meaning was supported by substantial extrinsic evidence. The Court found that disclosures in the written description like “self-similar or fractal-like” and “self-similar or repeating” equated self-similar configurations with fractal-like or repeating configurations, rather than juxtaposing them and creating ambiguity. The Court also criticized ClearOne’s arguments as essentially listing possible alternative interpretations of the term in isolation, which was insufficient to show indefiniteness.
ClearOne had also requested leave to file a motion for sanctions, arguing that patentee Shure had asserted material prior art in its own petition for post-grant review of another patent, and that Shure had violated its duty of candor by failing to disclose that art in the IPR. Observing that “[t]he Board’s regulations do not obligate it to allow the filing of a sanctions motion, let alone sanction a party,” the Federal Circuit found that the Board’s decision was not an abuse of discretion. While the Board had found that the prior art was cumulative of references already asserted by ClearOne, the Court found that it need not reach that issue, because the Board’s rationale that ClearOne’s motion was a “thinly veiled attempt at a second bite at the apple” that would result in inefficient duplicate proceedings was sufficient to establish that the Board had not abused its discretion. Accordingly, the Court affirmed the Board’s final written decision.