Monday, March 20, 2023

Hantz software; claims not asserted are not part of judgment

The conclusion:

Because, in view of the foregoing, we agree that the operative complaint asserted infringement of only claims 1 and 31–33 of each asserted patent, and because Sage did not file any counterclaim of its own (instead, it simply moved to dismiss Hantz’s complaint), we conclude that the ineligibility judgment should apply to only claims 1 and 31–33 of the asserted patents. We therefore vacate the district court’s judgment insofar as it held any claim other than claims 1 and 31–33 of each asserted patent ineligible and affirm in all other respects.

Monday, March 13, 2023

Stipulation vacated in Amazon case

The outcome:

In this patent infringement action, the parties entered into a stipulation of non-infringement based on two of the district court’s claim construction rulings. Because the stipulation is ambiguous and therefore defective, we vacate and remand for further proceedings.

In past cases, we have held that stipulated judgments are defective if they are ambiguous in material respects. See Jang v. Bos. Sci. Corp., 532 F.3d 1330, 1335–36 (Fed. Cir. 2008). The stipulated judgment here provides that Amazon does not infringe under the district court’s constructions of “cooperating service provider” and “non-blocking bandwidth.” Under the circumstances of this case, the stipulation does not provide sufficient detail to allow us to resolve the claim construction issues presented on appeal. First, the stipulation does not identify which claims of the ’471 patent remain at issue in this appeal. We have vacated judgments that fail to identify which claims are implicated by the judgment. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1342 (Fed. Cir. 2002) (vacating a judgment in part “[b]ecause the district court did not . . . identify the specific claims it held to be infringed under the doctrine of equivalents.”). More importantly, it is unclear whether the judgment requires the affirmance of both “cooperating service provider” and “non-blocking bandwidth,” where the interpretation of cooperating service provider includes the term “non-blocking bandwidth.”4 It is also unclear whether affirmance requires the approval of all aspects of the construction of “cooperating service provider.”

It is unclear whether, under the stipulation, Amazon prevails on infringement if either construction is correct or only if both are correct. At oral argument, it became apparent that the parties have significant disagreements as to the effect of the stipulation—disagreements that render it impossible for this court to review the judgment. AlterWAN asserts that the judgment of non-infringement rests solely on the district court’s construction of “non-blocking bandwidth,” a term which appears both independently and in the district court’s construction of “cooperating service provider.” AlterWAN argues that the district court’s construction requires bandwidth to be available to the customer at all times, even when the Internet is inoperable. Because no system can provide such a service, Amazon cannot infringe. At oral argument, AlterWAN took the position that the “sole reason” Amazon does not infringe under the claim constructions at issue is because of the exclusion of the caveat they had sought at claim construction (“while the network is operational”). This is so because “if the internet goes down, it doesn’t provide service.” Oral Arg. at 0:30–1:14; see also Oral Arg. at 31:02– 19 (“Q: Let’s adopt your construction of non-blocking bandwidth, which doesn’t have that limitation, it only requires that . . . available when the internet is operable, okay? Is your view that they infringe under that claim construction? A: Yes, Your Honor.”). In AlterWAN’s view, the core issue on appeal is whether the district court erred by failing to add the qualifier “while the network is operational” to its construction of “non-blocking bandwidth.”

Appellant Apple scores partial victory

The outcome:

We affirm in part and reverse in part. We affirm the unreviewability dismissal of plaintiffs’ challenges to the instructions as being contrary to statute and arbitrary and capricious. No constitutional challenges are presented. But we reverse the unreviewability dismissal of plaintiffs’ challenge to the instructions as having been improperly issued because they had to be, but were not, promulgated through notice-and-comment rulemaking under 5 U.S.C. § 553. That challenge, we also hold, at least Apple had standing to present. We remand for further proceedings on the lone surviving challenge. Like the district court, we do not reach the merits of that challenge.

Of note

We then address the remaining challenge (concerning the absence of notice-and-comment rulemaking). We hold that neither § 701(a)(1) nor § 701(a)(2) bars review of the third challenge and that at least Apple has standing to press it. We therefore reverse the dismissal as to the third challenge and remand

Appellant Intel wins at the CAFC

Appellant Intel prevails:

The Patent Trial and Appeal Board (“Board”) determined that Intel Corp. (“Intel”) failed to show that claim 5 of U.S. Patent No. 9,250,908 (“the ’908 patent”) was unpatentable as obvious in light of prior art references Kabemoto and Bauman.1 Intel Corp. v. PACT XPP Schweiz AG, No. IPR2020-00518, Paper 34, 2021 WL 3503434 (P.T.A.B. Aug. 9, 2021) (“Final Written Decision”). We reverse and remand.


PACT XPP Schweiz AG (“PACT”) owns the ’908 patent, which relates to multiprocessor systems and how processors in those systems access data. Multiprocessor systems typically store data in several places: there’s a main memory, where all of a system’s data is stored, as well as various cache memories, where smaller pieces of that same data are stored. Cache memories are closer to the processors, allowing the processors quicker access to the data available in a given cache. And a system can use multiple cache levels, where a primary cache is closer to the processer but can store less data than a further-away secondary cache. The use of multiple cache memories can pose problems for cache coherency, though. Different caches can have local copies of the same data, so inconsistencies may arise if one processor changes its local copy of the data and that change isn’t propagated to the other copies of that data. That’s why multiprocessor systems often require a mechanism to monitor and maintain cache coherency. One way to maintain cache coherency is by “snooping” along a shared “bus.” See J.A. 1911; Kabemoto Fig. 3. Another way to maintain cache coherency is by using a global, segmented secondary cache. See Bauman Fig. 6. Both of these mechanisms use a shared entity between processors to detect changes between, and ultimately make changes to, local data copies. See Kabemoto col. 17 l. 27–col. 18 l. 6; Bauman col. 5 l. 55–col. 6 l. 40.

Intel's argument

What the prior art discloses and whether a person of ordinary skill would have been motivated to combine prior art references are both fact questions that we review for substantial evidence. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). “Substantial evidence is such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1324 (Fed. Cir. 2017) (cleaned up). Intel argues that two of the Board’s conclusions about underlying independent claim 4 lack substantial evidence. First, Intel asserts that substantial evidence does not support the Board’s determination that the prior art fails to disclose the segment-to-segment limitation. And second, Intel contends that substantial evidence does not support the Board’s determination that there was no motivation to combine Kabemoto and Bauman. We agree on both counts.

Of the second argument

Intel also argues that the Board’s rejection of its “known-technique” rationale for a motivation to combine lacks substantial evidence.3 Appellant’s Br. 57–63 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797 (Fed. Cir. 2021) (determining that the Board’s reasons for finding a lack of motivation to combine were not supported by substantial evidence “[u]nder applicable legal principles”). We agree and reverse the Board’s contrary finding.


Additionally, “universal” motivations known in a particular field to improve technology provide “a motivation to combine prior art references even absent any hint of suggestion in the references themselves.” Intel, 21 F.4th at 797–99 (cleaned up) (emphasis in original) (determining that the Board’s rejection of “increasing energy efficiency,” a “generic concern” in electronics, as a motivation to combine lacked substantial evidence (cleaned up)). Similarly, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. This is the so-called “known-technique” rationale. And if there’s a known technique to address a known problem using “prior art elements according to their established functions,” then there is a motivation to combine. Intel, 21 F.4th at 799–800. And we specify address a known problem because “[i]t’s not necessary to show that a combination is the best option, only that it be a suitable option.” Id. at 800 (cleaned up) (emphasis in original).

Wednesday, March 08, 2023

UMinnesota loses at CAFC. "Blaze marks" interpreted.

The outcome was appellant lost:

The Regents of the University of Minnesota (“Minnesota”) appeal from a final written decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) holding that claims 1−9, 11−21, and 23−28 of U.S. Patent 8,815,830 are unpatentable as anticipated by the asserted prior art. Gilead Scis., Inc. v. Regents of the Univ. of Minn., No. IPR2017-01712, 2021 WL 2035126 (P.T.A.B. May 21, 2021) (“Decision”). For the following reasons, we affirm.

Subject matter

This appeal pertains to an inter partes review (“IPR”) in which Gilead Sciences, Inc. (“Gilead”) filed a petition challenging claims of the ’830 patent directed to phosphoramidate prodrugs of nucleoside derivatives that prevent viruses from reproducing or cancerous tumors from growing.

"Blaze marks" again

The written description requirement of 35 U.S.C. § 112 reflects the basic premise of the patent system, viz., that one discloses an invention and, if it also fulfills the other requirements of the statute, one obtains a patent. Quid pro quo. Judicial gloss in the case law reflects the need that the disclosure show that one actually made the invention that one is claiming, i.e., that it possessed the invention as claimed. “The purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003). Written description of an invention claimed as a genus of chemical compounds, as here, raises particular issues because, as we have held, written description of a broad genus requires description not only of the outer limits of the genus but also of either a representative number of members of the genus or structural features common to the members of the genus, in either case with enough precision that a relevant artisan can visualize or recognize the members of the genus. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1350−52 (Fed. Cir. 2010) (en banc). A broad outline of a genus’s perimeter is insufficient. See id. But Minnesota is not arguing in this case that it described a sufficient number of species to constitute a written description of the claimed subgenus. Rather, Minnesota asserts that its earlier NP2-P1 applications literally described, or provided blaze marks to, the subgenus of the ’830 claims in its broad outlines. The Board held that they did not, and we agree.


Evaluating whether the written description requirement is satisfied involves “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., 598 F.3d at 1351. For genus claims, which are present here, we have looked for blaze marks within the disclosure that guide attention to the claimed species or subgenus. In re Ruschig, 379 F.2d 990, 994–95 (CCPA 1967); Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996); see also Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1326–27 (Fed. Cir. 2000). (Here, the parties use language such as genus and subgenus to refer to the various disclosures involved in this inquiry. The disclosure of NP2-P1, being broader than claim 1 of the ’830 patent, has a relationship of genus to the narrower subgenus of the ’830 patent claims. We will use this language of the parties.) The primary considerations in a written description analysis are factual and must be assessed on a case-by-case basis. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir. 1991). We thus review the Board’s decision regarding written description for substantial evidence. Gartside, 203 F.3d at 1316.

And "laundry list"

The same is true here. The claims of P1 recite a compendium of common organic chemical functional groups, yielding a laundry list disclosure of different moieties for every possible side chain or functional group. Indeed, the listings of possibilities are so long, and so interwoven, that it is quite unclear how many compounds actually fall within the described genera and subgenera. Thus, we affirm the Board’s decision that there is no ipsis verbis written description disclosure provided by P1 claim 47 sufficient to support the ’830 patent’s claims.

Ariad again

Minnesota further argues that the Board erred in failing to consider the holdings in Ariad. In so doing, Minnesota mischaracterizes Ariad as holding that merely “disclosing ‘structural features common to the members of [a] genus’ demonstrates possession of, and thereby supports, the claimed genus.” Appellant’s Br. at 5. That is not what Ariad held. As the Board recognized, sufficiently describing a genus under Ariad requires a description of a claimed genus disclosing either (1) “a representative number of species falling within the scope of the genus,” which the parties do not dispute is lacking here, or (2) “structural features common to the members of the genus,” either of which must enable “one of skill in the art [to] ‘visualize or recognize’ the members of the genus.” Decision at *4; Ariad, 598 F.3d at 1350 (emphasis added). As indicated, the first requirement is not at issue here. As for the second, the Board addressed the question whether one of skill in the art would have been able to visualize or recognize the members of the claimed genus by “search[ing] for blaze marks that guide a skilled artisan to the claimed subgenera.” Decision at *10. That was not error. Regarding whether common structural features must exist between a claim and a putative priority disclosure, those features must constitute the near-entirety of the structures being compared. But the structures here are so extensive and varied that the structures of P1 claim 47, which, through its multiple dependencies, encompasses a significantly larger genus than that claimed in the ’830 patent, are not sufficiently common to that of claim 1 of the ’830 patent to provide written description support. Finding no adequate blaze marks, the Board concluded that NP2-P1 do not provide sufficient written description to support the ’830 patent claims.