When “About” Runs A-Fowl of the Definiteness Requirement
In Enviro Tech Chemical Services, Inc., v. Safe Foods Corp., Appeal No. 24-2160 The Federal Circuit held that a range claimed using the term “about” can be indefinite when the intrinsic record fails to provide objective boundaries that allow a skilled artisan to determine the scope of the claimed range with reasonable certainty.
Enviro Tech sued Safe Foods for infringing a patent directed to methods of treating poultry with peracetic acid to increase the weight of the poultry. The district court held the asserted claims invalid as indefinite, finding that the phrase “a pH of about 7.6 to about 10” failed to provide sufficient clarity as to claim scope. On appeal, the Federal Circuit affirmed. The Federal Circuit reiterated that while terms of degree such as “about” and “approximately” are not inherently definite or indefinite, the parameter’s range must be reasonably certain based on the technological facts of the particular case. Here, the claim language did not provide guidance on the permissible deviation from the claimed pH range. The specification likewise failed to resolve the ambiguity because it included some examples where experiments were conducted when the difference between the actual pH and a target pH was less than or equal to 0.3, while other experiments were conducted when the difference was greater than 0.3. The prosecution history also did not provide guidance, as the applicant used the term “about” inconsistently and never defined its scope. Because the intrinsic record did not supply a consistent standard for “about,” the term failed to inform a skilled artisan of the claimed range with reasonable certainty, rendering the asserted claims indefinite.
Real-Party-in-Interest Disputes Tied to Institution Decisions Are Unreviewable
In Federal Express Corporation v. Qualcomm Incorporated, Appeal No. 24-1235, The Federal Circuit held that challenges to the Board’s handling of real-party-in-interest (“RPI”) issues are not subject to appellate review, even where the Board declined to resolve disputed RPI questions before issuing a final decision.
Federal Express Corporation (“FedEx”) sued Roambee Corporation (“Roambee”) for infringement of six patents. On the one‑year IPR filing deadline, Qualcomm Incorporated (“Qualcomm”), which was not a defendant in the district court action, filed IPR petitions challenging FedEx’s patents. Qualcomm did not identify Roambee as an RPI in its petitions.
FedEx opposed institution, arguing that Qualcomm’s failure to disclose Roambee as an RPI in the IPR petitions precluded the Board from considering the petitions. The Board disagreed and instituted review. After additional discovery, FedEx moved to terminate the IPR proceedings. The Board denied the motion, explaining that it was not necessary to determine whether Roambee was an RPI because, even if it were, there would not have been a time-bar or estoppel issue. The Board issued a final decision finding the claims unpatentable.
On appeal, the Federal Circuit held that FedEx’s appeal of the Board’s denial of the motion to terminate was unreviewable under § 314(d), which precludes appellate review of institution-related determinations. The Federal Circuit explained that the RPI requirement is a prerequisite for and integral to an institution decision. Because FedEx’s appeal ultimately boiled down to a challenge over whether there should have been institution at all, the Board’s denial of the motion to terminate was not reviewable.
Access Plus Similarity Starts the Clock for Trade Secret Misappropriation Claims
In Insulet Corp. v. Eoflow, Co. Ltd., Appeal No. 25-1807, The Federal Circuit held that a trade secret misappropriation claim accrues when the plaintiff knew or should have known facts sufficient to plead misappropriation as evidenced by access to the trade secrets and similarities between those secrets and the competing product.
Insulet sued EOFlow for trade secret misappropriation under the Defend Trade Secrets Act (“DTSA”) and for patent infringement after EOFlow hired several former Insulet employees and developed a competing insulin patch pump. The district court bifurcated the DTSA claim from the patent infringement claims. On the DTSA claim, the jury found that EOFlow misappropriated four trade secrets, found that the claim was not time-barred, and awarded compensatory and exemplary damages. The district court denied EOFlow’s JMOL motion and issued a permanent injunction. EOFlow appealed.
On appeal, the Federal Circuit first held that it had jurisdiction because Insulet’s voluntary dismissal of its patent claims, though labeled “without prejudice,” functioned as a dismissal with prejudice for jurisdictional purposes only because the six-year statute of limitations for the earliest alleged act of patent infringement had expired.
Next, the Federal Circuit concluded that EOFlow was entitled to JMOL because the DTSA’s three-year statute of limitations had expired before suit was filed. Applying the access-plus-similarity standard, the court concluded that Insulet knew or should have known of facts sufficient to plead misappropriation well before the critical date. Specifically, Insulet knew of EOFlow’s access to the trade secrets because it knew EOFlow had hired a former Insulet employee with detailed knowledge of the trade secrets and that the employee was working on EOFlow’s competing product. Additionally, similarities between the trade secrets and the competing product were publicly observable before the critical date at trade shows and conferences where EOFlow displayed samples of its product, on EOFlow’s website, and in EOFLow’s prospectus.
The court explained that the DTSA treats “continuing misappropriation” as a single claim of misappropriation, which means that related trade secrets disclosed as part of the same course of alleged misappropriation accrue at the same time. Because Insulet had sufficient knowledge of access and similarity to plead misappropriation as to at least one trade secret before the critical date, the alleged misappropriation of the related trade secrets constituted a single claim of misappropriation and the statute of limitations expired before Insulet filed its complaint.
The Federal Circuit reversed the district court’s judgment and held that Insulet’s DTSA claim was time-barred.
In Law360 Column, Sean Murray and Jeremiah Helm Explore Limits of Retroactivity in IPR Proceedings
In the latest installment of their monthly Law360 column covering recent noteworthy Federal Circuit decisions, Knobbe Martens partners Sean Murray and Jeremiah Helm discussed the court’s opinion on retroactivity in Implicit LLC v. Sonos Inc.
The case addressed Implicit’s attempt to retroactively correct patents that were previously invalidated during the inter partes review process. “The Federal Circuit ruled that, even though the retroactive correction theoretically should have changed the outcome of the IPRs, thereby saving Implicit’s patents from invalidation, Implicit had forfeited the right to rely on the correction,” Murray and Helm explain.
The authors note that the decision is interesting for several reasons, including that “[the Federal Circuit], which many perceive to have become more skeptical of patents, has given more latitude to a U.S. Patent and Trademark Office that has recently become increasingly pro-patent.” Murray and Helm also provide important takeaways for patent practitioners based on the decision, such as the risks of forfeiture when evidence is not provided to the court in a timely manner, which can outweigh even a “very clever” legal argument.
Read the full article here.
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