Fresh From the Bench: Latest Federal Circuit Court Cases
In re Power Integrations, Inc., Appeal No. 17-1304 (Fed. Cir. 2018)
In In re: Power Integrations, Inc., the Federal Circuit reversed the Patent Trial and Appeal Board’s (PTAB) rejection of a patent as anticipated. Fairchild Semiconductor sought reexamination of Power Integration’s patent, which relates to “a technique for reducing electromagnetic interference (‘EMI’) noise.” The patent had been the subject of numerous district court, appellate, and PTAB proceedings. This appeal turned on the proper construction of a key claim term, where the district court and the board interpreted the claim language differently.
DSS Technology Management v. Apple Inc., Appeal No. 16-2523 (Fed. Cir. 2018)
In an appeal from a inter partes review, the Federal Circuit addressed whether a sufficient motivation to combine had been identified to support an obviousness finding. Specifically, the Federal Circuit addressed the standard for when obviousness can be found from a single prior art reference, the standard for using “common sense” or “ordinary creativity” as a basis for a motivation to combine, and the extent of analysis that the Board is required to provide in finding a patent invalid. The Court also applied the Chenery doctrine, concerning the extent to which the Court is limited to the PTAB’s analysis in providing its opinion. The Court reversed the PTAB and found the patent at issue not invalid, over a dissent by Judge Newman. Judge Newman opined that the proper action would be a remand to the PTAB.
Dell Inc. v. Acceleron, LLC, Appeal No. 17-1101 (Fed. Cir. 2018)
In an appeal from a remand determination of the PTAB in an inter partes review, the Court addressed whether the PTAB erred in declining to consider certain evidence presented by Dell. The evidence was presented by Dell for the first time in oral argument at the initial hearing. On appeal from the initial hearing, the Court found that it was error for the PTAB to consider evidence first introduced at oral argument. On remand, the PTAB chose not to consider Dell’s new evidence. The Court reviewed the PTAB’s decision in accordance with the Administrative Procedures Act and concluded that the PTAB was not required to consider Dell’s new evidence. The Court also affirmed the PTAB’s finding that the disputed claim was not anticipated.