Nika Aldrich
Jul 17, 2023

Fresh From the Bench: Latest Precedential Patent Cases

Created at Jul 17, 2023, 4:08pm PDT


SNIPR Technologies Limited v. Rockefeller University, Appeal No. 2022-1260 (Fed. Cir. July 14, 2023)

Our case of the week addresses a wrinkle in the law concerning disputes between parties that filed patent applications covering the same invention on either side of the effective date of the America Invents Act (the AIA).

Prior to Congress’ adoption of the AIA, an administrative proceeding called an “interference” was used when two patents claimed the same invention, to determine which of two patents/applications was entitled to priority—and, thus, the patent.  The AIA abolished that proceeding for patents issued from applications filed after the AIA went into effect.  That raised an interesting question, not encountered until this case: if a pending patent application, filed prior to the AIA’s effective date, had a claim identical to a post-AIA patent, what happens?  The pre-AIA patent application would be, by statute, subject to an interference proceeding.  However, the post-AIA patent would not.  The Patent Office, relying on language that an interference could be initiated against “any unexpired patent,” held that post-AIA patents could be drawn into interference proceeding.  Read on to find out what the Federal Circuit decided.



Trinity Info Media, LLC v. Covalent, Inc., Appeal No. 2022-1308 (Fed. Cir. July 14, 2023)

In an appeal from the U.S. District Court for the Central District of California, the Federal Circuit addressed whether the district court erred in granting Covalent’s motion to dismiss Trinity’s infringement claims relating to a poll-based networking system because the asserted patents did not claim patentable subject matter.  The Federal Circuit affirmed the district court’s ruling.  First, the Federal Circuit found that the asserted claims were directed to the abstract idea of matching based on questioning.  Second, the Court found the asserted claims lacked an inventive concept sufficient to transform the abstract idea into a patent-eligible application.

The opinion can be found here.

In re: Float‘N’Grill LLC, Appeal No. 2022-1438 (Fed. Cir. July 12, 2023)

In an appeal from the Board’s decision affirming the Examiner’s rejections of reissue claims under 35 USC § 251 (the original patent requirement, for reissue applications), the Court reviewed whether the Board erred in affirming the Examiner.  The Court affirmed the Board on invalidity under the original patent requirement because the independent claims of the reissue application omitted a critical limitation—a plurality of magnets.  Regarding Applicant’s arguments that the specification did not include any express statement of criticality of an element, the Court pointed out that this is not a prerequisite for a determination that the element is essential to the invention claimed in the original patent.  Regarding Applicant’s arguments that the original specification supports a broad alternative limitation (“removably secured”), the Court pointed out that the original patent requirement is an independent basis for unpatentability of reissue claims.  For these reasons, the Court affirmed the Board’s decision to uphold the rejection of the claims under the original patent requirement.

The opinion can be found here.

Axonics, Inc. v. Medtronic, Inc., Appeal Nos. 2022-1451, -1452 (Fed. Cir. July 10, 2023)

In this case, the Federal Circuit vacated and remanded inter partes review findings by the Patent Trial and Appeal Board, which had upheld Medtronic’s patent claims concerning an implantable neurostimulation lead.  The challenged patents described the invention largely in terms of electrical stimulation of sacral nerves, although the claims were not limited to sacral neurostimulation and the specification also discussed electrostimulation devices for other parts of the body.  The Board’s non-obviousness findings had turned on the fact that one of Axonics’ asserted references was directed to stimulation of the trigeminal nerve root to treat chronic facial pain.  Based on expert testimony that anatomical constraints would prevent use of the proposed combination in the trigeminal nerve region, as opposed to sacral nerves, the Board had found that a skilled artisan would not have been motivated to combine the references.

In vacating the Board’s decision, the Federal Circuit held that the Board “committed a fundamental legal error” in confining the motivation-to-combine inquiry to the trigeminal nerve context.  The Court emphasized that the appropriate inquiry is whether an artisan would have been motivated to combine the teachings of the prior art to achieve the claimed invention, not to meet the requirements of the prior art references themselves.  The Court explained that to hold otherwise would risk confining the prior art analysis to narrower grounds than were implicated by the patent monopoly for the invention.  Because the challenged claims were not limited to any particular nerve application, the Court found that the Board erred both in its rationale for why an artisan would not have been motivated to combine the references, and also in its determination that relevant prior art was limited to leads for sacral neuromodulation.  Because these errors were not harmless, the Court vacated the IPR decisions and remanded for further proceedings.

The opinion can be found here.


Nika Aldrich, IP Litigation Group Leader, Schwabe, Williamson & Wyatt, P.C.

Jason A. Wrubleski, Shareholder


Michael A. Cofield, Shareholder

Mario A. Delegato