Thursday, May 31, 2018

Tinnus Enterprises obtains reversal of PTAB decision at CAFC

In Ericsson v. Intellectual Ventures, decided 29 May 2018, Judge Pauline Newman cited Homeland Housewares:

To contradict a reference, an unsupported opinion is
not substantial evidence. See Homeland Housewares,
LLC v. Whirlpool Corp., 865 F.3d 1372, 1378 (Fed. Cir.
2017) (“[W]e must disregard the testimony of an expert
that is plainly inconsistent with the record, or based on an
incorrect understanding of the claim[s].” (citations and
internal quotation marks omitted) (second alteration in
original)). Although the PTAB adopted the opinion of IV’s
expert and stated on rehearing that it found Ericsson’s
expert lacking in credibility, this is not a matter of credibility
but of technological evidence.

One day later, on 30 May 2018, Judge O'Malley in Tinnus v. Telebrands also cited Homeland Housewares:

Regardless, we need not defer to the Board’s assessment
of Dr. Kamrin’s testimony or of Dr. Kudrowitz’s
testimony when it is inconsistent, as it is here, with the
intrinsic evidence. See Homeland Housewares, LLC v.
Whirlpool Corp., 865 F.3d 1372, 1378 (Fed. Cir. 2017)
(“[W]e must disregard the testimony of an expert that is
plainly inconsistent with the record, or based on an incorrect
understanding of the claim[s]” (citations and internal
quotation marks omitted)). Here, we find that the Board’s
assessment that the expert testimony “highlights a second
level of ambiguity” is inconsistent with the intrinsic
evidence, because the intrinsic evidence sets out the
objective boundaries for the claim term within the context
of expandable containers. Therefore, we need not defer to
the Board’s assessment of the expert testimony.

The Telebrands decision got into the issue of
"substantial evidence":

Telebrands argues that we must review the Board’s
determination that the term “filled” is indefinite for
substantial evidence because it is based on the Board’s
subsidiary factual finding that “the level of water in a
‘substantially filled’ container is not ascertainable or
measurable by reference to any objective standard.”
Appellee Br. at 40 (quoting J.A.32). The Board’s ultimate
determination of indefiniteness, however, is reviewed de
novo. Kinetic Concepts, Inc. v. Blue Sky Med. Grp., Inc.,
554 F.3d 1010, 1022 (Fed. Cir. 2009); cf. Cuozzo, 135 S.
Ct. at 841 (“[t]he district judge, after deciding the factual
dispute, will then interpret the patent claim in light of the
facts as he has found them. This ultimate interpretation
is a legal conclusion.”). Even if we find that substantial
evidence supports the Board’s factual finding as to the
level of water, we need not defer to the Board’s ultimate
legal determination that this finding renders the claim
term indefinite.

Telebrands also addressed the issue of not reading limitations
in the specification into the claims:

As noted above, when read in
the context of the surrounding claim language, “substantially
filled” does not refer to the volume of fluid in the
container, but rather further defines the elastic fastener
limitation. See Hill-Rom Servs., Inc. v. Stryker Corp., 755
F.3d 1367, 1371 (Fed. Cir. 2014) (“While we read claims in
view of the specification, of which they are a part, we do
not read limitations from the embodiments in the specification
into the claims.”).

A significant issue in Telebrands was indefiniteness.

Related to actions by the examiner:

The examiner’s own remarks confirm that the claim
language informs a person of ordinary skill of the objective
boundaries of the claim term. Additionally, we
presume that an examiner would not introduce an indefinite
term into a claim when he/she chooses to amend the
claim for the very purpose of putting the application in a
condition for allowance. See Northern Telecom, Inc. v.
Datapoint Corp., 908 F.2d 931, 939 (“It is presumed that
public officials do their assigned jobs”). Thus, we find
that the ’066 patent is not indefinite under the Nautilus
standard because the claims, viewed in light of the specification
and prosecution history, inform a person of ordinary
skill about the scope of the invention with
reasonable certainty.

Related to Nautilus:

Here, Tinnus argues that the Board erred in applying
Packard to assess the indefiniteness of its issued patent
in the context of a PGR. Telebrands responds that the
Packard standard should apply in this context because
post-grant review proceedings share more similarities
with examinations than with district court litigations.
Neither party points to any binding precedent that directly
addresses this question, and the PTO has not promulgated
a rule addressing which standard should apply.
Importantly, moreover, neither party explains why a
choice between the two standards would affect our review
of the final written decision.

In his motion to withdraw as intervenor, the Director
stated that the “[Board]’s approach to claim construction
and indefiniteness during post-issuance proceedings
under the America Invents Act is something the agency is
actively considering[.]” No. 17-1726, ECF No. 73, slip op.
at 1 –2. This suggests that the PTO may promulgate
rules surrounding this issue in the future. Indeed, the
PTO recently issued a notice of proposed rulemaking for
claim construction that “proposes to replace the broadest
reasonable interpretation (‘BRI’) standard for construing
unexpired patent claims in [post-grant] proceedings with
a standard that is the same as the standard applied in
federal district courts[.]” Changes to Claim Construction
Standard for Interpreting Claims In Trial Proceedings
Before the Patent Trial and Appeal Board, 83 Fed. Reg.
21,221 (proposed May 9, 2018) (to be codified at 37 C.F.R.
pt. 42). While that notice does not address indefiniteness,
it does indicate that the Director is committed to reassessing
questions such as that presented here.

We need not decide which standard governs PGRs
here, because Tinnus concedes that the standard is not
dispositive because we may resolve this case in its favor
under Packard. See Appellant’s Br. 33 n.4 (arguing the
Board incorrectly decided indefiniteness under the Packard
standard “for the same reasons discussed here under
Nautilus[.]”); see also Oral Arg. at 1:56−2:06,
17-1726.mp3 (Q: “If we find this not indefinite, even
under Packard, isn’t that enough for you? A: It would be,
your honor . . . .”).

We, thus, await an appropriate case to resolve any
apparent inconsistency between the two indefiniteness
standards—one where the result actually turns on such a
resolution and any views we express would not be dicta.
At that time, we will consider any rulemaking from the
Director on the matter.

MORGAN CHU, Irell & Manella LLP, Los Angeles, CA,
argued for the appellee Telebrands, who lost.


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