Fresh From the Bench: Latest Federal Circuit Court Case
CASE OF THE WEEK
Provisur Technologies, Inc. v. Weber, Inc., Appeal Nos. 2021-1942, -1975 (Fed. Cir. Sept. 27, 2022)
In this week’s Case of the Week, the Federal Circuit reviewed an IPR decision and addressed the Patent Trial and Appeal Board’s consideration of certain evidence submitted to supplement a prior art disclosure. The Court also found that the Board violated the Administrative Procedures Act (APA) by failing to sufficiently explain its rationale concerning its obviousness determinations. Ultimately, the Court vacated the Board’s decision and reversed for further consideration.
The patent at issue (’089 patent) “describes a method and system for ‘classifying slices or a portion cut from a food product according to an optical image of the slice.’” Weber petitioned for inter partes review of claims 1-14 of the ’089 patent, on the ground that it was unpatentable as obvious. In doing so, Weber cited four prior patents: Whitehouse, Antonissen, Hardy, and Wyslotsky. In its final written decision, the Board concluded that Weber “had proved unpatentable as obvious claims 1-10, 13, and 14, but not claims 11 or 12.” Each party appealed aspects of the decision.
Read more.
By Annie White
ALSO THIS WEEK
In re: Monolithic Power Systems, Inc., Appeal No. 2022-153 (Fed. Cir. Sept. 30, 2022)
On petition for a writ of mandamus directing the U.S. District Court for the Western District of Texas to dismiss or transfer this case to the Northern District of California, the Federal Circuit addressed whether mandamus was appropriate relief where the district court imputed employee homes to a defendant for purposes of venue. The Federal Circuit held that, ordinarily, mandamus relief is not available for rulings on improper venue motions because post-judgment appeal is adequate, and that immediate intervention was not necessary here to assure proper judicial administration (i.e., the legal question at issue was not one over which there is considerable litigation producing disparate results). The Federal Circuit also held that the district court’s ruling was not a clear abuse of discretion resulting in a patently erroneous result. Judge Lourie dissented, reasoning that the district court’s ruling was in error and that it threatens to bring confusion to the law relating to where a suit can properly be brought based on the location of employee homes. The case is notable because it is a rare departure from the Court’s string of opinions granting mandamus to transfer cases out of Judge Albright’s Western District of Texas court. For more, see here.
The opinion can be found here.
Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp., Appeal No. 2021-2121 (Fed. Cir. Sept. 29, 2022)
In an appeal from a Patent Trial and Appeal Board decision upholding the claims of a patent directed to compounds useful in the treatment of Type 2 diabetes, the Federal Circuit affirmed. The Court found that substantial evidence supported the Board’s findings that the claims of the patent were not anticipated or obvious over the prior art. The opinion contains a discussion of when prior art disclosures of a genus of chemical compounds may anticipate a specific compound, as well as antedating issues concerning Merck’s own prior art patents and applications.
The opinion can be found here.
Cooperative Entertainment, Inc. v. Kollective Technology, Inc., Appeal No. 2021-2167 (Fed. Cir. Sept. 28, 2022)
In an appeal from a district court dismissal of a case grounded in an opinion that the patent at issue was invalid under Section 101, the Federal Circuit reversed. The Federal Circuit did not address the first step of the Alice analysis, regarding whether Cooperative Entertainment’s ’452 patent focused on an abstract idea. Instead, it found that in the second step of the Alice analysis, even assuming that Cooperative Entertainment’s ’452 patent focused on an abstract idea, the amended complaint plausibly pled an inventive concept, sufficient to survive a Rule 12 motion. The Federal Circuit found that the amended complaint adequately pled that claim 1 of the ’452 patent contained at least two inventive concepts, inventive concepts that were specific improvements over the prior art, and was therefore sufficient to overcome a Rule 12 motion.
The opinion can be found here.
By Tyler Hall
Edited by Nika Aldrich and Scott D. Eads, Schwabe, Williamson & Wyatt