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Federal Circuit Review - March 2022

| Irfan LateefDaniel Kiang

March 2022 Federal Circuit Newsletter (Japanese)

March 2022 Federal Circuit Newsletter (Chinese)

 

Claim Limitation Not Disclosed by Any Reference but Disclosed by “Proposed Combination” of References Is Obvious

In Hoyt Augustus Fleming v. Cirrus Design Corporation, Appeal No. 21-1561, the Federal Circuit held that a claim is obvious where “the proposed combination of [the references]—rather than one of the individual references—discloses the disputed claim limitations.” A motion to amend under the Administrative Procedure Act may be denied where proposed amended claims lack written description support.

Cirrus petitioned for IPR of Fleming’s patent directed to an autopilot system that, upon receiving a parachute deployment request, positions an aircraft optimally for successful parachute deployment. During the proceeding, Mr. Fleming filed a motion to amend certain claims. The Board found the challenged claims obvious over 1) a Cirrus pilot operating handbook which disclosed that a pilot should (manually) put an aircraft in a certain optimal position before deploying the parachute, and 2) a patent relating to autopilot that initiates certain procedures in an emergency, including deploying a parachute. The Board also denied the motion to amend because the proposed claims lacked written description support. Fleming appealed.

The Federal Circuit affirmed. The Federal Circuit rejected Fleming’s argument that the Board improperly supplied a missing claim limitation. Rather, it held that even though neither prior art reference taught an autopilot that performs flight maneuvers to position the aircraft for effective parachute deployment, the claims were nonetheless obvious because one of ordinary skill would have been motivated to combine 1) manual pre-parachute-deployment flight maneuvers with 2) an autopilot system—to arrive at the claimed invention. The Federal Circuit also affirmed the denial of Fleming’s motion to amend because “Fleming pointed to no passage in the specification that supports the aircraft activation requirements of the proposed amended claims.” 

 

 

Effects of Proximity, Plurals, and Passive Voice for Claim Construction

 In Apple Inc. v. Mph Technologies Oy, Appeal No. 21-1532, the Federal Circuit held that the proximity of concepts in a claim may link the concepts together and affect the plain meaning of the claim.

Apple petitioned for inter partes review of three patents directed to improving secure messaging across networks. The Patent Trial and Appeal Board (the Board) rejected Apple’s claim construction and found that Apple failed to show that the challenged claims would have been obvious. Apple appealed.

The Federal Circuit affirmed the Board’s decisions. The Federal Circuit rejected Apple’s claim construction and emphasized that claim terms should generally be given their plain and ordinary meaning. The Federal Circuit also detailed several rules for interpreting claim language. First, the Federal Circuit explained that the proximity of concepts in a claim can link the concepts together. Based on this principle, the Federal Circuit rejected Apple’s interpretation of “intermediate computer configured to receive from a mobile computer a secure message sent to the first network address.” Apple argued that the phrase did not require the mobile computer to send the message directly to the first address as long as the message was eventually sent to the first address. However, the Federal Circuit held that the proximity of the receiving/sending language linked the concepts together and required the mobile computer to send the message directly to the first address. The Federal Circuit also held that the passive voice did not affect the plain meaning of the challenged claims.

Additionally, the Federal Circuit held that a plural term refers to two or more items, even when “there is nothing in the written description providing any significance to using a plurality.” The Federal Circuit held that the term “information fields” referred to two or more fields. Thus, the Federal Circuit affirmed the Board’s rejection of Apple’s arguments and held found that the challenged claims would not have been obvious.

 

 

Only in Rare Circumstances Should the PTAB Raise a Ground of Unpatentability Sua Sponte

In Hunting Titan, Inc. v. Dynaenergetics Europe GmbH, Appeal No. 20-2163, the Federal Circuit held that, in rare circumstances, the Board should sua sponte raise a ground of unpatentability against substitute claims in a motion to amend, such as where evidence of unpatentability is readily identifiable and persuasive.

Hunting Titan, Inc. requested inter partes review of a patent owned by DynaEnergetics based on theories of anticipation and obviousness. The Board instituted and found all original claims unpatentable as anticipated by the prior art Schacherer reference.  DynaEnergetics moved to amend the patent to add substitute claims.  Hunting Titan opposed the motion to amend, primarily arguing obviousness of the proposed substitute claims over two different prior art references. The Board denied the motion to amend, holding that the substitute claims were anticipated by Schacherer.  The Board did not address Hunting Titan’s obviousness grounds. DynaEnergetics requested rehearing and Precedential Opinion Panel review. The Panel granted review to address under what circumstances that Board may raise a ground of unpatentability that a petitioner did not advance or sufficiently develop in opposing a motion to amend.  

The Panel held that the Board should sua sponte advance a ground of unpatentability only in rare circumstances, such as where evidence of unpatentability is readily identifiable and persuasive.  The Panel specified, as an example of the readily identifiable evidence scenario, circumstances where the record readily and persuasively establishes that substitute claims are unpatentable for the same reasons that corresponding original claims are unpatentable.  Turning to the Board’s decision, the Panel found that the record did not contain the readily identifiable and persuasive evidence of anticipation needed to justify the Board raising the Schacherer ground of unpatentability on its own.  Hunting Titan appealed to the Federal Circuit. 

On appeal, the Federal Circuit affirmed the Panel’s ruling.  The court noted that the Panel’s decision to confine the Board’s discretion to sua sponte raise grounds of unpatentability to rare circumstances was not erroneous, and that the types of circumstances identified by the Panel were not inconsistent with Federal Circuit precedent.   The court took issue, however, with the Panel’s reasoning, finding the Panel’s reliance on the adversarial nature of IPR proceedings to be problematic.  The court also emphasized that its ruling was narrow, noting that Hunting Titan failed to argue on appeal that the Panel had erred in its determination that the readily identifiable evidence circumstance did not apply.  In a concurring opinion, Judge Prost explained why, in her view, Hunting Titan likely would have succeeded if that argument had been preserved.