Fresh from the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., Appeal Nos. 2016-2616, -2656 (Fed. Cir. May 16, 2018)
In an appeal from a inter partes review, the Federal Circuit reviewed a PTAB obviousness decision. Importantly, the Court broadly expanded the “printed matter doctrine” to include information that is never printed.
The printed matter doctrine provides that “[c]laim limitations directed to printed matter are not entitled to patentable weight unless the printed matter is functionally related to the substrate on which the printed matter is applied.” The rationale provided by the majority for the doctrine is that such claim limitations are not patent eligible subject matter under 35 U.S.C. § 101. If the printed matter doctrine is held to apply to a claim limitation, then that claim limitation may not be relied upon in any novelty or obviousness analysis to distinguish the prior art.
In re: BigCommerce, Inc., Appeal Nos. 2018-120, -122 (Fed. Cir. May 15, 2018)
The Federal Circuit granted petitions for writ of mandamus and vacated two venue-related district court orders. Though district courts have reached differing conclusions about whether a corporation “resides” in every judicial district within its state of incorporation under 28 U.S.C. § 1400(b), the Federal Circuit held that it does not. In a state having multiple judicial districts, a corporate defendant “resides” only in the single judicial district within that state where it maintains a principal place of business, or, failing that, the judicial district in which its registered office is located.
SAP America, Inc. v. InvestPic, LLC, Appeal No. 2017-2081 (Fed. Cir. May 15, 2018)
In an appeal from a judgement of invalidity based on subject matter ineligibility, the Federal Circuit affirmed. The district court granted SAP’s motion for judgement on the pleadings because mathematical calculations and formulas are not patent eligible, and the claims failed to add any inventive concept to the mathematical calculations and formulas. Under the first step of the Alice inquiry, the Federal Circuit distinguished the Thales case in which mathematics were used to achieve an improvement in a physical tracking system. Under the second step, the Federal Circuit concluded that there were no factual allegations from which one could plausibly infer that the claims are “inventive.” For a recent contrary result regarding the second step as it pertains to a motion for judgement on the pleadings, see our write up of the Berkheimer case, here.
Anacor Pharmaceuticals, Inc. v. Andrei Iancu, Appeal No. 2017-1947 (Fed. Cir. May 14, 2018)
In a Patent Owner’s appeal from an inter partes review, the Court affirmed the PTAB’s obviousness finding as to a rejected dependent claim. Critically, in rejecting a dependent claim, the Board relied on three articles that suggested that a POSITA would have expected certain results. Patent Owner appealed this rejection, arguing that the Board violated due process and the Administrative Procedure Act by failing to give it adequate notice of, and opportunity to respond to, the alleged new grounds of rejection. The Court rejected Patent Owner’s argument that the Board adopted a new theory of obviousness, finding that it relied on the same combination of references on which the IPR was instituted, and that the three articles were properly relied on to document the state of the art. The Court also rejected Patent Owner’s argument that it had not had an opportunity to respond to the evidence, as Patent Owner had discussed two of the three articles in its Response, and that it had extensively discussed the third during oral argument.
M-I Drilling Fluids UK Ltd. v. Dynamic Air Ltda., Appeal No. 2016-1772 (Fed. Cir. May 14, 2018)
In a patent plaintiff’s appeal from a dismissal for lack of personal jurisdiction, the Court reversed the ruling of the district court, finding that Fed. R. Civ. P. 4(k)(2) supported the exercise of personal jurisdiction over a Brazilian company. The plaintiff accused the Brazilian defendant of infringing patents for transportation systems between offshore oil rigs and U.S.-flagged ships, which were considered U.S. territory (an issue defendant waived on appeal). The Federal Circuit held that the defendant had “purposefully directed” its activities to the United States and that the claims arose out of defendant’s activities on the U.S. ships. Judge Reyna filed a concurring opinion with further detail on the territorial reach of U.S. patent laws to U.S. ships in international waters.
In re: ZTE (USA) Inc., Appeal No. 2018-113 (Fed. Cir. May 14, 2018)
In another venue writ of mandamus order, the Federal Circuit considered (1) which body of law governs burden of proof for proper venue; and (2) which party has the burden of establishing whether venue is proper under 35 U.S.C. § 1400(b) in a particular case. The Court first held that Federal Circuit law, and not the law of the regional circuit, applies to the questions of burdens of proof concerning § 1400(b). The Court then established that “upon motion by the Defendant challenging venue in a patent case, the Plaintiff bears the burden of establishing proper venue.”