Fresh From the Bench: Latest Federal Circuit Court Cases

CASE OF THE WEEK

Game and Technology Co., Ltd. v. Wargaming Group Ltd. et al., Appeal No. 2019-1171 (Fed. Cir. Nov. 19, 2019)

This week’s Case of the Week involves a patent for an online video game mechanic that, in inter partes review proceedings, was found obvious over the Dungeons & Dragons Player Handbook (v. 3.5), in combination with a patent application concerning massively multiplayer online games. At issue on appeal were the obviousness decision on the merits and Appellant-Patent Owner Game and Technology Co.’s (“GAT”) contention that the petition was time-barred under 35 U.S.C. § 315(b).

ALSO THIS WEEK

In re: IPR Licensing, Inc., Appeal No. 2018-1805 (Fed. Cir. Nov. 22, 2019)

In an appeal from an inter partes review proceeding finding a claim unpatentable, the Federal Circuit reversed. In a prior appeal, the Federal Circuit had found there was insufficient evidence of a motivation to combine the art. However, because it was unable to determine that the record was completely “devoid of any possible motivation to combine,” it remanded for further consideration by the PTAB. On remand, the parties agreed that the issues were limited to the one claim at issue, and a single ground upon which the PTAB instituted review. PTAB found the claim unpatentable again, relying on a particular piece of prior art. But that piece of prior art was not part of the instituted ground. Accordingly, the Court reversed rather than remanded for further proceedings.

The opinion can be found here.

TQ Delta, LLC v. Cisco Systems, Inc., Appeal Nos. 2018-1766 et al. (Fed. Cir. Nov. 22, 2019)

In this case, the Federal Circuit reversed a pair of inter partes review decisions invalidating patents of TQ Delta, finding that the Patent Trial and Appeal Board’s obviousness determinations were not supported by substantial evidence. The Court re-iterated the obligation of a reviewing court not to simply “rubber-stamp” factfinding by administrative agencies, and found that the Board’s factfinding regarding motivation to combine was based on conclusory expert testimony. After reviewing its precedent concerning conclusory expert testimony in the context of obviousness determinations, the Court determined that Petitioners’ expert’s unsupported and conclusory statements asserting that an ordinarily skilled artisan would have been motivated to combine the two asserted references was insufficient to support the Board’s obviousness determination.

The opinion can be found here.

Pharma Tech Sols., Inc. v. LifeScan, Inc., Appeal No. 2019-1163 (Fed. Cir. Nov. 22, 2019)

In this appeal from the United States District Court for the District of Nevada, the Federal Circuit affirmed the district court’s grant of summary judgment of non-infringement under the doctrine of equivalents based on prosecution history estoppel. The Federal Circuit agreed with the district court that argument-based estoppel applied because the distinguishing features of the narrowed invention, i.e., converting and then comparing two different analyte measurements, features which were continuously used by the inventors to overcome the prior art, are the exact features that the accused equivalent lacks. The Court also agreed that amendment-based estoppel applied because the equivalent product at issue falls into the territory that the inventors surrendered via a narrowing amendment that was made to achieve patentability, and said amendment was made for reasons more than tangentially related to the equivalent at issue. Moreover, the fact that the inventors may have ceded more claim scope than necessary did not make their new limitations merely tangential to the equivalent.

The opinion can be found here.

Written by: Scott D. Eads and Nika Aldrich, Schwabe Williamson & Wyatt

Contributors: Jason Wrubleski and Erin Forbes