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Precedential Patent Cases From the Federal Circuit in ‎the Past Week ‎

June 18, 2015

Overview

Williamson – An en banc Circuit changes the manner in which it determines whether § 112, para. 6 applies: "Our consideration of this case has led us to conclude that … we should abandon characterizing as ‘strong' the presumption that a limitation lacking the word ‘means' is not subject to § 112, para. 6. That characterization is unwarranted, is uncertain in meaning and application, and has the inappropriate practical effect of placing a thumb on what should otherwise be a balanced analytical scale. It has shifted the balance struck by Congress in passing § 112, para. 6 and has resulted in a proliferation of functional claiming untethered to § 112, para. 6 and free of the strictures set forth in the statute. Henceforth, we will apply the presumption … without requiring any heightened evidentiary showing and expressly overrule the characterization of that presumption as ‘strong.'" The standard will hereafter be "whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure." ‎The Circuit also overrules the strict requirement that a challenger show that the ‎limitation essentially is devoid of anything that can be construed as structure.‎

Microsoft – Microsoft appeals the determination in an IPR proceeding that one of the claims was patentable. Proxyconn cross-appeals, challenging the Board's use of the broadest reasonable interpretation standard of claim construction in its determination that all of the other claims of the patent were invalid and its denial of Proxyconn's motion to amend the claims. The panel holds that even the broadest reasonable interpretation must be based on the claims and the specification and, for the first time under the AIA, reverses the Board's broad interpretation of the claim language in an IPR. Based upon the Board's erroneously broad interpretation, the Circuit reverses and remands the Board's determination of invalidity of a number of the claims. However, the panel affirms the Board's refusal to permit amendment because Proxyconn had not adequately demonstrated the patentability of the amended claims. The panel also affirms the Board's construction that was appealed by Microsoft and therefore affirms that the one claim found valid by the Board is in fact patentable.

GTNX –The PTO initiated a post grant review as to covered business method patents but later determined that institution violated the proscription that review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner filed an action challenging the validity of the patent. GTNX appealed based on the fact that INTTRA had not objected in a timely fashion but the Circuit dismisses GTNX's appeal because, like the PTO's refusal to initiate IPR, the decision not to initiate post grant review is not a final written decision with respect to patentability, and is therefore not appealable to the Circuit.


Richard A. Williamson v. Citrix Online, LLC, Fed. Cir Case 2013-1130 (June 16, 2015)

Williamson, trustee for the At Home Corporation Bondholders' Liquidating Trust, owns the '840 patent and appeals from the stipulated final judgment in favor of defendants Citrix, Microsoft, Adobe, Webex and IBM ("Appellees"). The '840 patent describes methods and systems for distributed learning that utilize industry standard computer hardware and software linked by a network to provide a classroom or auditorium-like metaphor—i.e., a "virtual classroom" environment. The objective is to connect one or more presenters with geographically remote audience members. The disclosed inventions purport to provide the benefits of classroom interaction without the detrimental effects of complicated hardware or software, or the costs and inconvenience of convening in a separate place.

Procedural History

Williamson filed suit in the Central District of California, asserting infringement of all 24 claims of the '840 patent. The court issued a claim construction order, construing the following limitations of independent claims 1 and 17: "graphical display representative of a classroom" and "first graphical display comprising . . a classroom region" (collectively, the "graphical display" limitations). The court held that these terms require "a pictorial map illustrating an at least partially virtual space in which participants can interact, and that identifies the presenter(s) and the audience member(s) by their locations on the map."

In its claim construction order, the court also concluded that the limitation "distributed learning control module," was a means-plus-function term under 35 U.S.C. § 112, para. 6. The court then evaluated the specification and concluded that it failed to disclose the necessary algorithms for performing all of the claimed functions. The court thus held claim 8 and its dependent claims invalid as indefinite.

Williamson conceded under these claim constructions that none of Appellees' accused products infringed independent claims 1 and 17 and their dependent claims, and that claims 8-16 were invalid. The parties stipulated to final judgment. Williamson appeals, challenging these claim construction rulings.

A. Standard of Review

Regarding questions of claim construction, including whether claim language invokes 35 U.S.C. § 112, para. 6, the district court's determinations based on evidence intrinsic to the patent as well as its ultimate interpretations of the patent claims are legal questions that we review de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015).

B. The "graphical display" Limitations

Williamson asserts that the court erred in its construction of the graphical display terms by improperly importing an extraneous "pictorial map" limitation into the claim. We agree with Williamson. The district court erred in construing these terms as requiring a "pictorial map." First, the claim language itself contains no such "pictorial map" limitation. While the specification discloses examples and embodiments where the virtual classroom is depicted as a "map" or "seating chart," nowhere does the specification limit the graphical display to those examples and embodiments. This court has repeatedly "cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification."

C. The "distributed learning control module" Limitation

1. Applicability of 35 U.S.C. § 112, para. 6

Means-plus-function claiming occurs when a claim term is drafted in a manner that invokes 35 U.S.C. § 112, para. 6. In enacting this provision, Congress struck a balance in allowing patentees to express a claim limitation by reciting a function to be performed rather than by reciting structure for performing that function, while placing specific constraints on how such a limitation is to be construed, namely, by restricting the scope of coverage to only the structure, materials, or acts described in the specification as corresponding to the claimed function and equivalents thereof.

To determine whether § 112, para. 6 applies to a claim limitation, our precedent has long recognized the importance of the presence or absence of the word "means." In Personalized Media Communications, LLC v. International Trade Commission, building upon a line of cases interpreting § 112, para. 6, we stated that the use of the word "means" in a claim element creates a rebuttable presumption that § 112, para. 6 applies. 161 F.3d 696 (Fed. Cir. 1998). Applying the converse, we stated that the failure to use the word "means" also creates a rebuttable presumption—this time that § 112, para. 6 does not apply.

In making the assessment of whether the limitation in question is a means-plus-function term subject to the strictures of § 112, para. 6, our cases have emphasized that the essential inquiry is not merely the presence or absence of the word "means" but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. When the claim uses the word "means," our cases have been consistent in looking to the meaning of the language of the limitation in assessing whether the presumption is overcome. We have also traditionally held that when a claim term lacks the word "means," the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to "recite sufficiently definite structure" or else recites "function without reciting sufficient structure for performing that function."

In Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004), we applied for the first time a different standard to the presumption flowing from the absence of the word "means" and held that "the presumption flowing from the absence of the term 'means' is a strong one that is not readily overcome" A few years later, we reiterated Lighting World's characterization of the presumption as a "strong one that is not readily overcome" in Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350 (Fed. Cir. 2011). In Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367 (Fed. Cir. 2012), decided just a year after Inventio, we raised the bar even further, declaring that "[w]hen the claim drafter has not signaled his intent to invoke § 112, ¶ 6 by using the term 'means,' we are unwilling to apply that provision without a showing that the limitation essentially is devoid of anything that can be construed as structure." Recently, in Apple Inc. v. Motorola, Inc., 757 F.3d 1286 (Fed. Cir. 2014), we yet again observed that this presumption is "'strong' and 'not readily overcome'" and noted that, as such, we have "'seldom' held that a limitation without recitation of 'means' is a means-plus-function limitation," Our opinions in Lighting World, Inventio, Flo Healthcare and Apple have thus established a heightened bar to overcoming the presumption that a limitation expressed in functional language without using the word "means" is not subject to § 112, para. 6.

Our consideration of this case has led us to conclude that such a heightened burden is unjustified and that we should abandon characterizing as "strong" the presumption that a limitation lacking the word "means" is not subject to § 112, para. 6. That characterization is unwarranted, is uncertain in meaning and application, and has the inappropriate practical effect of placing a thumb on what should otherwise be a balanced analytical scale. It has shifted the balance struck by Congress in passing § 112, para. 6 and has resulted in a proliferation of functional claiming untethered to § 112, para. 6 and free of the strictures set forth in the statute. Henceforth, we will apply the presumption as we have done prior to Lighting World, without requiring any heightened evidentiary showing and expressly overrule the characterization of that presumption as "strong." We also overrule the strict requirement of "a showing that the limitation essentially is devoid of anything that can be construed as structure."

The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. When a claim term lacks the word "means," the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to "recite sufficiently definite structure" or else recites function without reciting sufficient structure for performing that function. The converse presumption remains unaffected: "use of the word 'means' creates a presumption that § 112, ¶ 6 applies." Personalized Media, 161 F.3d at 703.

2. Functional Nature of the Limitation

On appeal, Williamson argued that the district court erred in construing the term "distributed learning control module" as being governed by 35 U.S.C. § 112, para. 6. Appellees respond that the court properly construed "distributed learning control module" as a means-plus-function claim term despite the absence of the word "means." As the court found, 'module' is simply a generic description for software or hardware that performs a specified function." Generic terms such as "mechanism," "element," "device," and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word "means" because they "typically do not connote sufficiently definite structure" and therefore may invoke § 112, para. 6. Here, the word "module" does not provide any indication of structure because it sets forth the same black box recitation of structure for providing the same specified function as if the term "means" had been used. Indeed, Williamson himself acknowledges that "the term 'module,' standing alone is capable of operating as a 'nonce word' substitute for 'means.'"

The prefix "distributed learning control" does not impart structure into the term "module." Although the "distributed learning control module" is described in a certain level of detail in the written description, the written description fails to impart any structural significance to the term. At bottom, we find nothing in the specification or prosecution history that might lead us to construe that expression as the name of a sufficiently definite structure as to take the overall claim limitation out of the ambit of § 112, para. 6.

While portions of the claim do describe certain inputs and outputs at a very high level (e.g., communications between the presenter and audience member computer systems), the claim does not describe how the "distributed learning control module" interacts with other components in the distributed learning control server in a way that might inform the structural character of the limitation in question or otherwise impart structure to the "distributed learning control module" as recited in the claim.

For the foregoing reasons, we conclude that the "distributed learning control module" limitation fails to recite sufficiently definite structure and that the presumption against means-plus-function claiming is rebutted. We therefore agree with the district court that this limitation is subject to the provisions of 35 U.S.C. § 112, para. 6.

3. Disclosure of Corresponding Structure

Having found that the "distributed learning control module" is subject to application of § 112, para. 6, we next determine whether the specification discloses sufficient structure that corresponds to the claimed function. We conclude that it does not.

Construing a means-plus-function claim term is a two-step process. The court must first identify the claimed function. Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302 (Fed. Cir. 2012). Then, the court must determine what structure, if any, disclosed in the specification corresponds to the claimed function. Where there are multiple claimed functions, as we have here, the patentee must disclose adequate corresponding structure to perform all of the claimed functions. If the patentee fails to disclose adequate corresponding structure, the claim is indefinite.

The district court identified three claimed functions associated with the "distributed learning control module" term: (1) receiving communications transmitted between the presenter and the audience member computer systems; (2) relaying the communications to an intended receiving computer system; and (3) coordinating the operation of the streaming data module. The court then found that the specification fails to disclose structure corresponding to the "coordinating" function. On appeal, it is undisputed that the claimed "coordinating" function is associated with the "distributed learning control module." Thus, we must ascertain whether adequate structure corresponding to this function is disclosed in the specification.

Structure disclosed in the specification qualifies as "corresponding structure" if the intrinsic evidence clearly links or associates that structure to the function recited in the claim. Even if the specification discloses corresponding structure, the disclosure must be of "adequate" corresponding structure to achieve the claimed function. Under 35 U.S.C. § 112, paras. 2 and 6, therefore, if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim, a means-plus-function clause is indefinite.

The court was correct that the specification of the '840 patent fails to disclose corresponding structure. The written description makes clear that the distributed learning control module cannot be implemented in a general purpose computer, but instead must be implemented in a special purpose computer—a general purpose computer programmed to perform particular functions pursuant to instructions from program software. A special purpose computer is required because the distributed learning control module has specialized functions as outlined in the written description. In cases such as this, involving a claim limitation that is subject to § 112, para. 6 that must be implemented in a special purpose computer, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor. We require that the specification disclose an algorithm for performing the claimed function. The algorithm may be expressed as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.

Williamson points to certain disclosures in the specification that, it claims, meet the § 112, para. 6 requirements. Williamson argues that the "distributed learning control module" controls communications among the various computer systems and that the "coordinating" function provides a presenter with streaming media selection functionality. These disclosures, however, are merely functions of the "distributed learning control module." The specification does not set forth an algorithm for performing the claimed functions.

Because the '840 patent fails to disclose any structure corresponding to the "coordinating" function of the "distributed learning control module," we affirm the judgment that claims 8-16 are invalid for indefiniteness under 35 U.S.C. § 112, para. 2.

Judge Reyna concurs in part and dissents in part.

This is the second time around for this case. In the first, I dissented from the majority conclusion that the "distributed learning control module" term recites sufficient structure to keep that claim limitation outside of 35 U.S.C. § 112, paragraph 6. In this second time around, the majority reverses itself to conclude that the "distributed learning control module" term does not recite sufficient structure, is governed by 35 U.S.C. § 112, paragraph 6, and is indefinite. Because this conclusion is the correct result, I concur.

The majority, however, continues to ignore critical evidence showing that an image of a visually depicted virtual classroom is required by claim 8 of the '840 patent. I dissent from that portion of this opinion.

In addition, the majority embraces this case as a vehicle to overrule as improper certain adjectives used in prior opinions in describing the § 112, paragraph 6 presumption. I cannot say that I disagree with those statements, but I question whether those statements sidestep fundamental issues involving the development of functional claiming law since 1952 when 35 U.S.C. § 112, paragraph 6 was passed.

Judge Newman's Dissent

I dissent from the en banc ruling that is inserted into this panel opinion at Section C.1. The court en banc changes the law and practice of 35 U.S.C. § 112 paragraph 6, by eliminating the statutory signal of the word "means." The purpose of this change, the benefit, is obscure. The result, however, is clear: additional uncertainty of the patent grant, confusion in its interpretation, invitation to litigation, and disincentive to patent-based innovation.

Curiously, the court acknowledges that it has long recognized the importance of the presence or absence of the word "means." Nonetheless, the court rejects the meaning and usage of "means" to signal means-plus-function claim construction. The court now overrules dozens of cases referring to a "strong presumption" of means-plus-function usage, and goes to the opposite extreme, holding that this court will create such usage from generic terms such as mechanism, element, device, and other nonce words. Thus the court erases the statutory text, and holds that no one will know whether a patentee intended means-plus-function claiming until this court tells us.

I dissent from the majority's reasoning and the majority's holding that "distributed learning control module" falls under paragraph 6. I express no opinion on the ultimate validity of the claim.

Comments: This case provides additional ammunition for those accused of infringing broadly worded claims, particularly those in the software area. Without the "strong" presumption in their favor, it will now be much more difficult for claim drafters and their litigators to use functional language without specifying the way in which the function is performed. Either the claims will be more narrowly construed under § 112, para. 6, or they will be declared invalid as indefinite for failure to describe how the function is performed. This case may also have an effect on pending legislative efforts to rein in patent trolls and other patent owners having broad claims to their inventions.


Microsoft Corp. v. Proxyconn, Inc.,
Fed. Cir. Case 2014-1542, -1543 (June 16, 2015)

The '717 patent relates to a system for increasing the speed of data access in a packet-switched network. The invention makes use of "digital digests" that act as short digital fingerprints for the content of their corresponding documents. By communicating the smaller digital digests in place of the documents themselves, the invention reduces the redundant transmission of data throughout the network.

Microsoft filed two separate IPR petitions on the '717 patent, and the proceedings were consolidated. During the IPR, Proxyconn filed a motion to amend its claims, which was denied, the court concluding that Proxyconn did not meet its burden of establishing that it was entitled to the amended claims, and rejecting Proxyconn's argument that it did not need to establish patentability over a reference that was not part of the original bases of unpatentability for which the IPR was initiated.

Because the intrinsic record fully determines the proper construction, the panel reviews the Board's claim constructions de novo. Teva Pharmaceuticals U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015). To the extent the Board considered extrinsic evidence when construing the claims, the panel notes that it need not consider the Board's findings on that evidence because the intrinsic record is clear.

The Broadest Reasonable Interpretation Standard Should Apply

Proxyconn argues that the PTO exceeded its authority in promulgating 37 C.F.R. § 42.100(b), and that the broadest reasonable interpretation ("BRI") is inappropriate during IPRs in light of the patentee's limited ability to amend its claims. But Proxyconn's argument is foreclosed by the decision in In re Cuozzo Speed Techs., LLC, 778 F.3d 1271 (Fed. Cir. 2015), rendered after the briefing in this case began. In Cuozzo, the Circuit held that the BRI standard in IPRs was properly adopted by PTO regulation. Because the panel is bound by the decision in Cuozzo, it rejects Proxyconn's argument. "That is not to say, however, that the Board may construe claims during IPR so broadly that its constructions are unreasonable under general claim construction principles. As we have explained in other contexts, the protocol of giving claims their broadest reasonable interpretation does not include giving claims a legally incorrect interpretation. Rather, claims should always be read in light of the specification and teachings in the underlying patent."

The Panel's Construction of the Disputed Claim Language

Proxyconn challenges the Board's construction of two of the phrases of the claims. Despite applying the BRI standard, the panel agrees with Proxyconn that the Board's construction was overly broad and inconsistent with the claim language and the specification. Because the Board's determination of invalidity of many of the claims was based on its broad construction of the claim language, the panel reverses and remands the determinations of invalidity of those claims. For its part, Microsoft challenges the Board's construction of another one of the phrases, but the panel agrees with the Board as to those constructions and affirms the Board's determination that claim 24 is patentable over the prior art.

The Board's Refusal to Permit the Amendments was Appropriate

Finally, Proxyconn challenges the Board's denial of its motion to amend claims 1 and 3. Through enactment of the AIA, Congress created the new IPR proceeding for the purpose of providing quick and cost effective alternatives to litigation. The AIA conveys certain authority to the PTO to prescribe regulations governing inter partes review and to set forth standards and procedures for allowing the patent owner to move to amend the patent. 35 U.S.C. § 316(a)(4), (a)(9). With respect to amendments in particular, the statute provides that the patent owner may file one motion to amend the patent and that such amendment may not enlarge the scope of the claims of the patent or introduce new matter. § 316(d)(1), (d)(3). The statute also provides that the Director shall, upon final determination, incorporate in the patent any new or amended claim determined to be patentable. § 318(b).

Relying on the authority granted by the AIA, the PTO has promulgated regulations that are relevant to the presentation of amendments during IPR. In addition to these regulations, a six-member panel of the Board issued a decision called Idle Free Systems, Inc. v. Bergstrom, Inc., 2013 WL 5947697 (PTAB June 11, 2013). Relying on § 42.20(c), the Idle Free decision requires that, in motions to amend during IPRs, the patent owner is to identify the features added to each substitute claim, as compared to the challenged claim it replaces, and come forward with technical facts and reasoning about those feature(s), including construction of new claim terms, sufficient to persuade the Board that the proposed substitute claim is patentable over the prior art of record.

During the IPR, Proxyconn sought to amend the claims. Microsoft argued that the substitute claims were unpatentable for anticipation by DRP, which was not one of the references over which the PTO originally instituted review of claims 1 and 3. It was, however, a reference over which the PTO instituted review of other claims. In its reply, Proxyconn argued that, in so doing, the Board exceeded its authority under § 42.121(a)(2)(i) to deny substitute claims 35 and 36 for failure to respond to a ground of unpatentability involved in the trial.

This appeal presents the question of whether the Board permissibly relied on the requirements of Idle Free and the DRP reference in denying Proxyconn's motion to amend. In the AIA, Congress gave the PTO authority to prescribe regulations governing inter partes review and to set forth standards and procedures for allowing the patent owner to move to amend the patent. § 316(a)(4), (a)(9). Congress also provided that, upon final decision, the Director should incorporate only those amended claims that are determined to be patentable. § 318(b). Given these directives, the PTO promulgated both the general regulation setting forth the patentee's burden to establish it is entitled to its requested relief, § 42.20, as well as the more specific regulation setting forth particular requirements regarding the amendment process. § 42.121. Both regulations are plainly applicable to motions to amend filed during IPRs, and Proxyconn does not argue that the PTO acted outside its statutory authority in promulgating either one. What Proxyconn does challenge is the Board's interpretation of those regulations as permitting it to deny Proxyconn's motion to amend claims 1 and 3 for failure to establish patentability over DRP—a reference that the Board did not rely on when instituting review of those particular claims.

Patentees who wish to make use of the statutorily provided amendment process deserve certainty and clarity in the requirements that they are expected to meet. A fluid, case-based interpretation by the PTO of its own regulations risks leaving interested members of the public in a state of uncertainty, without ascertainable standards and adequate notice to comply. The Director argues that adjudication is appropriate here because the PTO has not had sufficient experience with motions to amend to warrant rigidifying its tentative judgment into a hard and fast rule and that the PTO thus must retain power to deal with such motions on a case-by-case basis if the administrative process is to be effective. Because there is merit to these arguments, we cannot say that the PTO has abused its discretion in choosing adjudication over rulemaking.

Nor can we say that the Board's interpretation of § 42.20(c) in Idle Free—requiring the patentee to show patentable distinction of the substitute claims over the prior art of record, is plainly erroneous or inconsistent with the regulation or governing statutes. The legal framework provides that a patentee must move to amend the patent, § 316(a)(9), that the Director should incorporate only those amended claims that are determined to be patentable, § 318(b), and that the patentee has the burden to establish that it is entitled to the requested relief. § 42.20(c).

The Board has reasonably interpreted these provisions as requiring the patentee to show that its substitute claims are patentable over the prior art of record, at least in the circumstances in this case. During IPRs, once the PTO grants a patentee's motion to amend, the substituted claims are not subject to further examination. If the patentee were not required to establish patentability of substitute claims over the prior art of record, an amended patent could issue despite the PTO having before it prior art that undermines patentability. Such a result would defeat Congress's purpose in creating IPR as part of a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs.

For all of these reasons, we conclude that the Board acted permissibly in requiring Proxyconn to establish the patentability of substitute claims 35 and 36 over the DRP reference. And based on Proxyconn's failure to do so, we affirm the Board's denial of Proxyconn's motion to amend claims 1 and 3.

GTNX, Inc. v. Inttra, Inc., Fed. Cir. Cases 2015-1349, -1350, -1352, -1353 (June 16, 2015)

Title 35 U.S.C. § 325(a)(1) of the AIA provides that post grant review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent. And § 324(e) declares that the determination by the Director whether to institute a post-grant review shall be final and nonappealable. If a post-grant review is instituted and not dismissed under this chapter, the Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 326(d). § 328(a). Section 329 authorizes a party dissatisfied with the Board's final written decision with respect to patentability to appeal to the Circuit under 35 U.S.C. § 141(c).

The Proceedings in this Case

INTTRA owns four patents relating to online methods for coordinating containerized shipping. GTNX's parent company filed a declaratory judgment that INTTRA's shipping methods patents were invalid. Several years later, while the court case was pending, GTNX petitioned the PTO to review the patents as covered business method patents.

The Board instituted review proceedings (four separate proceedings which the Board consolidated), but subsequently granted INTTRA leave to file a motion to dismiss the proceedings on the ground that § 325(a)(1) barred the reviews because of GTNX's previously filed civil action. After INTTRA filed the motion, GTNX argued that INTTRA had waived the § 325(a)(1) objection by not presenting it earlier, either before institution or within the 14 days allowed by the rule giving a right to seek reconsideration.

The Board granted INTTRA's motion, vacating the institution decisions and terminated the proceedings without addressing any issues of patentability. The Board noted that there was no dispute that GTNX's declaratory judgment action fell within the terms of § 325(a)(1), and concluded that § 325(a)(1) is a statutory limit on Board jurisdiction that it could not and would not decline to enforce just because INTTRA had not invoked it earlier. Characterizing the ruling as a final written decision under § 328, GTNX appeals under § 329, which provides for appeals under § 141. INTTRA moves to dismiss.

The Circuit has no Jurisdiction to Hear this Appeal

The panel holds that GTNX's appeal falls outside 35 U.S.C. §§ 141 and 329 and hence outside the Circuit's jurisdiction under 28 U. S. C. § 1295(a)(4)(A). By its terms, § 329 authorizes appeal, under § 141(c), only from a final written decision of the Board under section 328(a). Similarly, § 141(c) authorizes appeal only from a final written decision of the Board under section 328(a). In turn, § 328(a) refers only to a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 326(d ). § 328(a). Here, the Board made no decision with respect to the patentability of any claim. The Board decision at issue, therefore, is outside § 328(a) and, hence, outside §§ 141(c) and 329.

In St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., 749 F.3d 1373 (Fed. Cir. 2014), the Circuit dismissed an appeal from a non-institution inter partes review decision under Chapter 31 of Title 35, which is materially the same as Chapter 32 in the jurisdictional respects relevant here. We explained the structural contrast between a determination whether to institute a proceeding, which is final and nonappealable, 35 U.S.C. § 314(d), and the "final written decision" determining patentability, § 318(a), and we held that the appeal authorization there—§ 319—was limited to the final written decision on patentability. We thus relied on Chapter 31's textually clear and common-sense distinction between a final Board decision that reaches the patentability merits and an earlier decision whether to institute. We concluded that 28 U.S.C. § 1295(a)(4)(A)'s grant of jurisdiction to this court to review decisions of the Board "under title 35" is limited to the Board's decision on the merits of the review, after it conducts the proceeding that the Director has instituted.

The same conclusion applies to this case under Chapter 32. The Board decision GTNX is seeking to appeal was not reached after conduct of the review and did not make a determination with respect to patentability. The decision is therefore outside 35 U.S.C. §§ 141(c), 328(a), 329 and, in turn, outside 28 U.S.C. § 1295(a)(4)(A).

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