PTAB May Revisit Issues Left Unresolved by Prior Appeal
In Intellectual Pixels Limited v. Sony Interactive Entertainment LLC, Appeal No. 24-2174, The Board did not exceed the Federal Circuit’s mandate on remand by considering a limitation that was not addressed in the Board’s original decision or the appeal of that decision.
Sony petitioned for inter partes review of Intellectual Pixels Ltd.’s (“IPL”) patent covering methods for hosting interactive software on an external server, whereby a client device receives and transmits user input to the server, and the server generates updated images, compresses the images, and transmits the images to the client device for display. In its original decision, the Board concluded that Sony had not shown that the prior art, Wiltshire, disclosed generating updated images. Sony appealed and the Federal Circuit vacated the Board’s decision because Wiltshire disclosed using its system with a video game, which required generating new images. On remand, the Board issued a second decision finding that Wiltshire disclosed the generating limitation and also that it disclosed the other limitation of compressing and transmitting the generated image. Thus, the Board held the challenged claims unpatentable as obvious.
IPL appealed, arguing the Board exceeded the scope of the Federal Circuit’s mandate by making two findings that were not set aside in the prior appeal. First, the Board found on remand that Wiltshire applied its system to video games which required “generating” images, whereas the Board originally found that Wiltshire did not disclose the use of video games. But the Federal Circuit held that this finding was compelled by the Federal Circuit’s mandate, not foreclosed by it. Second, the Board found that Wiltshire disclosed the compressing limitation, whereas the Board originally stated that the “updated image” required in both the generating and compressing limitations was not present in Wiltshire. The Federal Circuit rejected IPL’s argument, explaining that the Board’s original decision was based on the generating limitation, and therefore any findings of fact relating to the compressing limitation were not subject to appeal, not decided by the Federal Circuit, and not part of the mandate. Thus, the Board was free to consider on remand whether Wiltshire disclosed the compressing limitation. And because the Board’s findings on remand were supported by substantial evidence, the Federal Circuit affirmed.
Preliminary Injunction Vacated Due to Claim Construction Errors
In Socket Solutions, LLC v. Import Global, LLC, Appeal No. , the Federal Circuit held that a preliminary injunction cannot stand when the likelihood-of-success analysis relies on erroneous claim constructions.
Socket Solutions, LLC (“Socket Solutions”) sued Import Global, LLC (“Import Global”), alleging that Import Global’s Neat Socket® product infringed Socket Solutions’ U.S. Patent No. 9,509,080 (the “’080 patent”), which relates to electrical outlet covers. The district court granted Socket Solutions a preliminary injunction barring Import Global from manufacturing, using, selling, offering to sell, or importing into the United States its Neat Socket® product. Import Global appealed, arguing that the district court incorrectly construed the claim terms “backplate” and “pin” when evaluating likelihood of success on the merits.
The Federal Circuit agreed. First, it held that the district court improperly construed “backplate” to require a spatial relationship to the claimed “frontplate.” The Federal Circuit construed “backplate” with a focus on “cover” thickness to align with the specification and the principle articulated in Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005), that “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.”
Second, the Federal Circuit held that the district court incorrectly construed “pin” as a means-plus-function term under 35 U.S.C. § 112(f). The claim term “pin” does not use the word “means,” so there is a rebuttable presumption that § 112(f) does not apply. Socket Solutions argued that § 112(f) should apply, despite “pin” being a structure, because it is a structural element that is best defined by its function. The Federal Circuit disagreed, noting that “[n]ot everything that ‘physically and electrically connects the electrical wires to the corresponding electrical prongs’ is a ‘pin,’” so a purely functional definition would be overly broad. Socket Solutions did not overcome that presumption because “pin” is a structural term understood by skilled artisans and described structurally in the specification. The Federal Circuit held that § 112(f) does not apply and that “pin” should be given its plain and ordinary meaning.
Because the district court’s likelihood-of-success analysis depended on these erroneous claim constructions, the Federal Circuit vacated the preliminary injunction and remanded for further proceedings.
Cracking the “Code”: Software Means-Plus-Function Analysis Needs a Redo
In Tracktime, LLC v. Amazon.Com Services LLC, Appeal No. 24-1102, the Federal Circuit held that case remanded for full consideration of proffered evidence to determine if §112(f) applies and, if so, whether the claims satisfy §112(f).
TrackTime sued Amazon for infringement of two patents, the ’978 patent and the ’638 patent, related to navigating within a multimedia file on a mobile device with a time-correlated transcript. Amazon argued that two “executable program code” limitations in the ’978 patent were means-plus-function claim terms under 35 U.S.C. § 112(f) that lacked corresponding structure in the specification, rendering the claims indefinite. The district court agreed and held the asserted claims invalid for indefiniteness. For the ’638 patent, a jury found that the asserted claim was not infringed and was invalid over a prior transcription software called LiveNote.
On appeal, the Federal Circuit vacated and remanded the district court’s decision on indefiniteness for the ’978 patent. The court explained that its intervening decision in Dyfan, LLC v. Target Corp. required an analysis that went beyond the district court’s limited look at the intrinsic evidence. The Federal Circuit held that the limitations should be read in full and in context of the claim language. The Federal Circuit also emphasized the importance of considering extrinsic evidence, such as how a relevant artisan would understand the claim terms, or whether off-the-shelf code was available to perform the recited functions.
The Federal Circuit affirmed the judgment on the ’638 patent. The court held that sufficient evidence supported the jury’s finding that LiveNote anticipated the claim. The Federal Circuit found that the evidence amounted to a “run-of-the-mill contest between experts” that the jury was well suited to resolve.
Jeremiah Helm and Sean Murray Analyze Federal Circuit Ruling on “About” and Patent Claim Indefiniteness in Law360
In their latest Law360 column on recent notable Federal Circuit decisions, Knobbe Martens partners Jeremiah Helm and Sean Murray analyze the Federal Circuit’s decision in Enviro Tech Chemical Services, Inc. v. Safe Foods Corp., a case that hinged on the word “about”, and its implications for patent claim indefiniteness under 35 U.S.C. § 112. The court’s ruling in the patent dispute between two chemical processing companies, Enviro Tech Chemical Services and Safe Foods Corporation, “illustrates the danger in attempting to expand claim scope with words of approximation,” they write.
Helm and Murray explain how Enviro Tech’s patent at issue, directed to methods of processing poultry in a chemical bath, used the term “about” to define the required pH range for the claimed process. While it can be beneficial to use this type of approximation language in a patent claim, the authors note that it can also render the claim invalid for lack of definiteness, as was the case in Enviro Tech.
The authors offer several key takeaways for practitioners and patent holders regarding the use of approximation terms in patent claim drafting. “A patentee must temper the desire to expand claim scope using language of approximation with the requirement that claims must have defined boundaries,” they suggest. Further, in instances where terms like “about” or “approximately” are included in the patent claim, the authors recommend drafting specifications defining these terms. Finally, they write, “practitioners may want to sidestep indefiniteness problems entirely by avoiding words of approximation during claim drafting.”
Read the full Law360 article, “Being Precise About ‘About’”, here.
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