Federal Circuit Review | February 2024

| Irfan LateefDaniel Kiang

February 2024 Federal Circuit Newsletter (Japanese)

February 2024 Federal Circuit Newsletter (Chinese)

The Outcome of the PTAB’s Analysis May Determine Whether the PTAB Engaged in Claim Construction

In Google LLC v. Ecofactor, Inc., Appeal No. 22-1750, the Federal Circuit held that the outcome of the PTAB’s analysis of patent claims determines whether the PTAB engaged in claim construction.

EcoFactor is the assignee of U.S. Patent No. 8,498,753 (the “’753 patent”), directed towards climate control systems (“HVAC” systems).  The ’753 patent discloses a thermostat that takes into consideration several factors to achieve a balance between comfort and energy savings.  Google filed an IPR petition on the ground that the ‘753 patent is obvious in view of the prior art.  The PTAB instituted.  After institution, the parties disputed whether the prior art disclosed a portion of the claim limitation that recited five inputs.  In particular, the parties disputed whether each input needed to be distinct or could be intertwined.  The PTAB determined that claim construction was unnecessary and that based on the claim language, the claim limitations required separate and distinct inputs.  Therefore, the PTAB found that Google had not demonstrated that the challenged claims of the ’753 patent were unpatentable. 

On appeal, Google argued that the PTAB engaged in claim construction and that the PTAB’s implicit claim construction was erroneous because it violates the Administrative Procedure Act (“APA”) and because the limitations imposed by the PTAB were not supported by the intrinsic record or case law.

The Federal Circuit held that the PTAB did, in fact, engage in claim construction when it determined that inputs [i] through [v] of Claim 1 were distinct inputs that must all be present.  As an initial matter, the PTAB’s statement that it was not engaging in claim construction was “not dispositive as to whether claim construction occurred.”  Instead, the Federal Circuit looked to the outcome of the analysis.  There was nothing on the face of the claim to determine the scope and boundaries of those inputs.  By determining the scope of the limitation, the PTAB implicitly engaged in engaged in claim construction. 

The Federal Circuit then addressed Google’s arguments that the claim construction was erroneous.  The Federal Circuit held that the PTAB’s claim construction did not violate the APA.  The Federal Circuit noted that the PTAB “may adopt a claim construction of a disputed term that neither party proposes without running afoul of the APA.”  However, the PTAB “cannot, without notice and opportunity for the parties to respond, change theories midstream by adopting a claim construction in its final written decision that neither party requested nor anticipated.”  Here, because both parties disputed the meaning and scope of the limitation during the IPR proceeding under the same framework now on appeal, Google had notice and an opportunity to be heard on the issue.   Thus, the PTAB’s construction did not violate the ABA.  However, it was not supported by the intrinsic evidence or the case law, which both supported a broader construction than adopted by the PTAB.  Therefore, the PTAB’s construction was erroneous.

Thus, the Federal Circuit reversed the PTAB’s claim construction, vacated the Final Written Decision, and remanded.


Federal Circuit Instructs PTAB How to Operate Public Accessibility Standard

In Weber, Inc. v. Provisur Technologies, Inc., Appeal No. 22-1751, the Federal Circuit held that copyright notices in product manuals, which prohibited their reproduction and transfer, did not remove the manuals from the prior art.

Provisur Technologies, Inc. sued Weber, Inc. for infringement of two patents related to food slicers.  Weber petitioned for inter partes review of the patents based on Weber food slicer operating manuals combined with other references.  The Board instituted IPR of the patents.  However, the Board ultimately decided that the manuals were not printed publications because the manuals’ copyright notices and Weber’s terms and conditions for food slicer sales made the manuals confidential.  The Board then held that Weber failed to establish the patents’ invalidity.

The Federal Circuit, inter alia, reversed the Board’s decision on the manuals’ prior art status.  The Federal Circuit explained that public accessibility, necessary for a reference to be a printed publication, depends on “whether interested members of the relevant public could locate the reference by reasonable diligence.”  The Federal Circuit recognized that Weber made the manuals available upon purchase of a food slicer or upon request, as well as at trade shows and Weber’s showrooms.  The Federal Circuit criticized the Board’s “inordinate emphasis” on the manuals’ copyright notice and Weber’s terms and conditions.  The Federal Circuit held that “Weber’s assertion of copyright ownership does not negate its own ability to make the reference publicly accessible” and “the intellectual property rights clause . . . has no dispositive bearing on Weber’s public dissemination of operating manuals.”


Consider The Relevant Technology Carefully Before Claiming Ranges in Patent Applications

In Rai Strategic Holdings, Inc. v. Philip Morris Products S.A, Appeal No. 22-1862, the Federal Circuit held that claimed ranges can be narrower than alternative, broader ranges disclosed in the specification if one of ordinary skill in the art can adequately determine that the broader range does not result in a different invention than the narrower range.

Phillip Morris Products, S.A. (“Phillip Morris”) petitioned for post-grant review (“PGR”) of an RAI Strategic Holdings, Inc. (“RAI”) patent directed to an electrically powered smoking device with various electro-mechanical components. Phillip Morris argued that the claims were invalid for obviousness and for lacking written description support because the claimed range of the length of a heating element in the device was substantially narrower than the ranges disclosed in the written description. In particular, the claimed range was stated as being between “about 75% to about 85%” and the specification disclosed ranges such as “75% to 125%” and “85% to 115%.” The Board agreed with Phillip Morris and stated that the claims were unpatentable. RAI appealed.

The Federal Circuit vacated the Board’s finding that the claims lack written description support. The Federal Circuit stated that determining whether a narrower range than disclosed in the specification is supported by the written description is a highly factual determination and is dependent on the nature of the invention and the amount of knowledge imparted to those skilled in the art. In this case, the predictability and lack of complexity of the combination of the elements in the device supports claims with a narrower range than disclosed in the written description. Because there was no evidence that the claimed range would lead to changes in the invention, operability, or effectiveness when compared to the ranges disclosed in the written description, the claims were supported under 35 U.S.C. § 112. 


(Limited) Claim Construction: Federal Circuit Reiterates the Scope of Claim Construction 

In Promptu Systems Corp. v. Comcast Corp., Appeal No. 22-1939, the Federal Circuit held that claim construction should be limited to terms that need to be construed, and only to the extent needed to resolve the controversy. 

Promptu Systems sued Comcast for infringement of three patents related to voice-recognition systems for controlling media delivery and television sets. After the district court largely adopted Comcast’s proposed claim constructions, the parties stipulated to the dismissal with prejudice of one of Promptu’s patent infringement claims (U.S. Pat. No. RE44,326). For the remaining two patent infringement claims (U.S. Patent Nos. 7,047,196 and 7,260,538), Promptu stipulated to and moved for entry of a final judgment of no infringement by Comcast. The district court granted Promptu’s request and entered final judgement. Promptu then appealed the district court’s construction of four claim limitations.

The Federal Circuit reversed-in-part and affirmed-in-part the district court’s constructions. For the first two limitations (“back channel” and “multiplicity or received identified speech channels”), the Federal Circuit explained that neither the claim language nor the specification supported the district court’s construction. The Federal Circuit found that the district court narrowly construed “back channel” as limited to a “fixed band of frequencies or time slot(s) for transmitting signals to a speech processing system or engine.” The Federal Circuit also reiterated the proposition from O2 Micro that courts “are not (and should not be) required to construe every limitation present in a patent’s asserted claims.” Accordingly, the Federal Circuit declined to address whether the term “back channel” referred to a route or a stream because Promptu’s counsel acknowledged that deciding this aspect of claim construction may be unnecessary.  For the third limitation (“speech recognition system coupled to a wireline node”), the Federal Circuit found that the district court’s construction of “speech recognition system” (a system whose function is speech recognition) merely assumed that speech recognition was the “exclusive” function of the speech recognition system. The Federal Circuit found that the district court also erred by adding a proximity requirement (“in or near”) to “coupled to” and adopting the specification’s definition of “centralized wireless node” when construing the broader claim term “wireline node.” For the fourth limitation (“centralized processing station”), the district’s court’s construction was affirmed-in-part.  In view of the above, the Federal Circuit vacated the district court’s entry of final judgment for the ’196 and ’538 Patents and remanded to the district court for further proceedings.