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Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

November 21, 2016

Overview

The Circuit determines, in Perfect Surgical, ‎that the Board had been “too exacting” in deciding whether the inventor had exercised diligence to constructively reduce an invention to practice as to a pre-AIA patent. Unwired Planet discusses the issue of analogous art and obviousness. (This is not the case ‎decided today in which the Circuit told the Board it was using an overly broad ‎definition of ‎CBM patents.) ‎In Mann Foundation, the Circuit considers indefiniteness of means-plus-function claims directed to computer-related inventions, and remands a willfulness determination for reevaluation under Halo. Finally, the Circuit declines to entertain mandamus relief in Rearden as to a discovery dispute over allegedly privileged communications.

Thanks to my colleague Tim Danskin for his help with this week’s report.

Perfect Surgical v. Olympus – Perfect Surgical reviews whether an inventor and his patent attorney showed diligence between the submission of a disclosure to the attorney and the filing of an application three months later. While the AIA changed the priority determination to a first-to-file, the courts will be dealing with pre-AIA patents for many years to come, so the case is still pertinent.

A divided panel reverses and remands an IPR determination that a Perfect Surgical Techniques (“PST”) patent is invalid based on the Board’s finding that the inventor had not been diligent in constructively reducing his invention to practice with the filing of his application three months after submission of his disclosure to his patent attorney. The remand is necessary, according to the majority, so the Board can reevaluate diligence under the proper standards, and evaluate whether the intervening prior art in fact renders the claims invalid.

In its opinion, the majority provides a detailed review of the evidence of diligence provided by PST, and finds that the Board’s review was far too exacting and in conflict with Circuit precedent. The evidence showed that Dr. Nezhat, the inventor, submitted his invention to his patent attorney, who filed the patent application three months later. Dr. Nezhat and the attorney provided declarations of how they exchanged drafts and questions and met during the period in question. During this period they noted that Dr. Nezhat was working 80 hour weeks, performing 4-5 surgeries per week, and the attorney was working 50 hours per week.

The Board went so far as to find that a gap between a Thursday and Monday was evidence of lack of diligence. The majority points out that a question was asked by the attorney on the Thursday that was answered when the two met on Monday. The majority reviews similar cases, and holds that the Board’s exacting analysis was not consistent with Circuit precedents. In dissent, Judge Schall notes that under the “substantial evidence” standard, the panel should affirm the determination of invalidity.

This case was decided under pre-AIA law, applying first-to-invent priority. The case presents a somewhat troubling analysis if AIA first-to-file is being applied, as many attorneys might think that a filing three months after receipt of a disclosure is reasonable. Putting this case in the context of a malpractice action filed based on an attorney taking three months to file an application, the case presents a premonition of what the proofs might look like for an attorney to demonstrate her diligence in working with an inventor to perfect and file an application.

Unwired Planet v. Google The Circuit affirms a determination of obviousness in an IPR and dismisses a CBM appeal as moot. The claim of the Unwired ’205 patent at issue includes language relating to ordering mobile device location-based search results such that some service providers located farther away from the mobile device are given priority over service providers located nearer to the mobile device due to preferred provider status or a subscriber information profile, termed farther-over-nearer ordering in the decision. Unwired argued that one of the secondary references, Galitz, is not analogous prior art, the prior art does not teach farther-over-nearer ordering, and that a person of skill in the art would not have been motivated to combine the references.

The panel states that the field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or a particular focus within a given field.  Both Galitz and the ’205 patent are in the field of interface design and the Board correctly applied Galitz as analogous art based on substantial evidence that Galitz is both from the same field of endeavor as the ’205 patent and is reasonably pertinent to the problem of displaying address information.

The prioritization information used in the proposed combination of the prior art is alphabetical ordering. The panel states that alphabetical prioritization will often result in locations that are farther away being given a higher priority than locations that are nearer and that it is enough that the combination would sometimes perform all the method steps, including farther-over-nearer ordering, stating that it does not matter that the use of alphabetical order would not always result in farther-over-nearer ordering. The panel holds that Galitz teaches the benefits of various ordering techniques and suggests using them in combination. Irrespective of whether a person of skill in the art would have recognized specific use of the primary reference, Brohoff, substantial evidence exists if she could have seen the advantages of applying the teachings of Galitz to improve Brohoff, and this is sufficient to render the combination obvious.

Mann Foundation v. Cochlear – The Mann Foundation sued Cochlear for infringing patents covering implantable cochlear stimulators. After conducting a jury trial and a bench trial on separate issues, the district court entered judgment finding claim 10 of the ’616 patent infringed and claim 1 of the ’616 patent and claims 6–7 of the ’691 patent invalid for indefiniteness. The court also granted Cochlear’s JMOL of no willful infringement and its motion for a new trial on damages. The entire panel agrees with the district court as to its infringement determination. As to the indefiniteness determination, the majority affirms in part and reverses in part. The full panel vacates the grant of JMOL of no willful infringement, and the majority rules that it has no jurisdiction to hear an appeal as to the grant of a motion for new trial on damages.

The indefiniteness rulings are the first issues of interest in the appeal. The majority first determines that the limitation “means for generating data indicative of the audio signal” is a means-plus-function limitation. The majority agrees with the district court that claims 6 and 7 are indefinite because the ’691 patent does not disclose where the logarithmic conversion function takes place and because the logarithmic conversion function could be implemented through multiple logarithmic algorithms. The majority also rules these claims indefinite because the logarithmic conversion may be implemented through various unspecified algorithms, and the ’691 patent does not disclose an algorithm, or even a small set of algorithms for performing the claimed logarithmic conversion function.

As to claim 1 of the ’616 patent, the full panel construes the claim limitation “external processor means … for processing the status-indicating signals to derive information therefrom” as a means-plus-function limitation, and that the structure is the microprocessor. The court found claim 1 indefinite because the patent does not explicitly identify Ohm’s law and there are multiple ways of calculating impedance.

The full panel disagrees, noting that the specification discloses that both voltage and current are measured, and that these values are associated with the resulting “status-indicating signal.” Both parties’ experts testified that a person of ordinary skill would know to apply Ohm’s law to voltage and current to yield impedance values. The specification also discloses that impedance is calculated based on voltage and current. Because this was adequate to render the bounds of the claim understandable to one of ordinary skill, the full panel reverses the indefiniteness finding as to claim 1 of the ’616 patent.

The district court set the verdict of willful infringement, granting JMOL to Cochlear. Relying on Seagate (since Halo had not yet been decided), the court concluded that a reasonable jury could not find that the objective prong of the Seagate inquiry was ‎established by clear and convincing evidence, and that Cochlear had presented several reasonable ‎noninfringement defenses. The full panel reverses and remands, noting that the district court should be mindful of Halo’s preponderance of the evidence ‎standard, and consider whether Cochlear’s infringement constituted an “egregious case of ‎misconduct beyond typical infringement” meriting enhanced damages under § 284 and, if so, the ‎appropriate extent of the enhancement.‎

Lastly, the majority rules that the Circuit does not have jurisdiction to hear an appeal as to the court-ordered new trial on damages for claim 10 of the ’616, because that does not constitute a final order as to damages.

Judge Newman dissents, arguing that claims 6 and 7 of the ‘691 patent are not invalid for indefiniteness, and does not agree that the order for a new trial is immune from appellate review under Rule 54(b).

Rearden – The panel rules that the petitioners in a mandamus action fall short of meeting the particularly ‎deferential standard that is applied to mandamus actions. The underlying dispute relates to ownership of ‎various intellectual property involving so-called “MOVA” technology used to capture an actor’s facial ‎performance for use in motion picture special effects ‎and video games. ‎

During discovery, respondents moved to compel production of documents exchanged between one of ‎the companies and its attorney. The magistrate granted the motion, concluding that petitioners had ‎not shown they could assert attorney-client privilege on behalf of original entity and that the privilege had ‎been waived because the documents had been shared with other entities. The district court denied ‎petitioners’ objections to the ruling and declined to consider additional evidence that was not presented to ‎the magistrate. ‎

The first issue for the panel to decide is whether it has jurisdiction to hear this petition. Because the ‎discovery at issue has to do with counterclaims filed in the case, the issue is whether the Circuit has ‎jurisdiction to hear disputes as to these counterclaims and thus as to a petition for mandamus relating to the ‎counterclaims. The panel notes that Congress broadened the Circuit’s jurisdiction to include ‎compulsory ‎counterclaims “arising under” patent law. Previously, the Supreme Court’s decision in Holmes ‎Group v. ‎Vornado had limited ‎jurisdiction to patent law claims asserted in a well-pleaded complaint. But while ‎Congress extended jurisdiction to ensure uniformity in patent law, ‎that extension did not reach ‎permissive counterclaims. Therefore, the panel needed to decide whether the counterclaims in this case ‎were “compulsory.” ‎

To determine whether a particular counterclaim is compulsory, the panel looks to Rule ‎‎13(a), which ‎provides that a compulsory counterclaim “arises out of the transaction or occurrence that is the ‎subject ‎matter of the opposing party’s claim.” Here, the claims and counterclaims involve the same patents, they ‎share overlapping legal and factual ‎issues, and substantially the same evidence could refute both the ‎claims of ownership and the ‎counterclaims of infringement. Therefore, the panel concludes that it has ‎jurisdiction over the counterclaims and thus this petition.‎

Turning to the merits, the panel first determines that there was no abuse of discretion on the part of the magistrate or the district court in not ‎accepting a supplemental declaration and in not holding an evidentiary hearing on the issue. Petitioners’ remaining arguments largely challenge the district court’s conclusion that they could not ‎assert the privilege on behalf of original MO2. The panel declines to entertain mandamus relief on these arguments because petitioners rely heavily on ‎an extra-record declaration and petitioners have alternative avenues to obtain meaningful review ‎of these arguments after trial.

   
 

Perfect Surgical Techniques, Inc. v. Olympus America, Inc., Fed. Cir. 2015-2043 (November 15, 2016)

The Board Determined that PST Failed to Demonstrate Diligence for the Entire Critical Period

Pre-AIA section 102(g) allows a patent owner to antedate a reference by proving earlier conception and reasonable diligence in reducing to practice. Reasonable diligence must be shown throughout the entire critical period, which begins just prior to the competing reference’s effective date and ends on the date of the invention’s reduction to practice.

Dr. Nezhat, the inventor of the ’384 patent, hired James Heslin to draft and file the application that would issue as the ’384 patent. On January 28, 1998, Mr. Heslin sent an initial draft of the application to Dr. Nezhat. Mr. Heslin later filed the application with the PTO on May 1, 1998. During this 93-day lapse of time—and only thirteen days after Dr. Nezhat received the initial draft application— JP ’551 published. To show diligence in reduction to practice, PST must prove that Dr. Nezhat was reasonably diligent during the critical period, which began on February 9, 1998, one day prior to JP ’551’s publication date, and ended on May 1, 1998, the date the invention was constructively reduced to practice by filing the application that resulted in the ’384 patent with the PTO.

Dr. Nezhat testified that he was reasonably diligent in reducing his invention to practice from February 9 to May 1, 1998. He testified that, although he did not recall all of his daily activities, he “diligently worked with Mr. Heslin between February 1, 1998 and May 1, 1998, within the reasonable limits of my busy medical practice and teaching schedule.” He testified that throughout these months, his medical practice required him to work roughly 80 hours per week, during which he would perform approximately four to six surgeries. He testified that he submitted comments on the initial draft application on March 2, received questions from Mr. Heslin on or around March 4 and 12, participated in a conference with Mr. Heslin on March 16, and received a second draft application from Mr. Heslin on April 13. He testified that he “again carefully reviewed the second draft” before it was finalized and filed on May 1.

To corroborate Dr. Nezhat’s testimony, PST introduced a declaration from Mr. Heslin, letters between Dr. Nezhat and Mr. Heslin, and Mr. Heslin’s billing records. Mr. Heslin recounted the same dates of activity as Dr. Nezhat and characterized Dr. Nezhat as a “careful and serious client” who “communicated with me, in writing and in person, to finalize the application.” He testified that he and Dr. Nezhat “put in a significant amount of effort and work into revising and finalizing the patent application between February 1 and May 1.” He testified that during the relevant time period, he “maintained a very active practice” and typically worked 50 hours or more a week.

The Board accepted Dr. Nezhat’s testimony and corroborating evidence but determined that PST was not “sufficiently specific as to facts and dates” of Dr. Nezhat’s diligence during three portions of the critical period: (1) February 10 to March 1; (2) March 12 to March 15; and (3) April 13 to May 1. The Board therefore concluded that PST failed to demonstrate Dr. Nezhat’s “continuous exercise of reasonable diligence for the entire critical period.”

The Standard Demanded by the Board Was Too Exacting

The standard demanded by the Board is too exacting and in conflict with our precedent. A patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period; it must show there was reasonably continuous diligence. Under this standard, an inventor is not required to work on reducing his invention to practice every day during the critical period. And periods of inactivity within the critical period do not automatically vanquish a patent owner’s claim of reasonable diligence. In determining whether an invention antedates another, the point of the diligence analysis is not to scour the patent owner’s corroborating evidence in search of intervals of time where the patent owner has failed to substantiate some sort of activity. It is to assure that, in light of the evidence as a whole, the invention was not abandoned or unreasonably delayed. That an inventor overseeing a study did not record its progress on a daily, weekly, or even monthly basis does not mean the inventor necessarily abandoned his invention or unreasonably delayed it. The same logic applies to the preparation of a patent application: the absence of evidence that an inventor and his attorney revised or discussed the application on a daily basis is alone insufficient to determine that the invention was abandoned or unreasonably delayed. One must weigh the collection of evidence over the entire critical period to make such a determination.

The Board cites In re Mulder, 716 F.2d 1542 (Fed. Cir. 1983) for the proposition that “even a short period of unexplained inactivity may be sufficient to defeat a claim of diligence.” In Mulder, a competing reference was published just days before the patent at issue was constructively reduced to practice. The patent owner was tasked with showing reasonable diligence during a critical period lasting only two days. But the patent owner did not produce any evidence of diligence during the critical period. Nor could it point to any activity during the months between the drafting of the application and the start of the critical period. Although the critical period spanned just two days, we declined to excuse the patent owner’s complete lack of evidence. In re Mulder does not hold that an inventor’s inactivity during a portion of the critical period can, without more, destroy a patent owner’s claim of diligence.

Here, the Board’s erroneously heightened burden of proof infected its analysis. First, the Board did not properly weigh PST’s evidence under a rule of reason. Rather than evaluating PST’s evidence as a whole, the Board fixated on the portions of the critical period where PST did not provide evidence of Dr. Nezhat’s specific activities to conclude Dr. Nezhat’s exercise of diligence was not “continuous.” In doing so, the Board repeatedly condemned PST for not being “sufficiently specific as to facts and dates for the entire critical period during which diligence is required.” The Board similarly dismissed Dr. Nezhat’s testimony that he “performed approximately four to six surgeries per week” and worked “roughly 80 hours” per week, criticizing that Dr. Nezhat was “unable to identify any single date . . . on which he was scheduled for a surgery or had another specific conflict that would have prevented him from working on preparing the application for filing.”

The Board Should Not Have Dismissed the Corroboration Provided by Dr. Nezhat’s Attorney

Under a rule of reason analysis, PST was not required to corroborate every day the application was worked on, every surgery Dr. Nezhat performed, or specify precisely what work was done. Such corroboration is particularly unnecessary when, as here, the record indisputably shows that activities must have occurred within the relevant timeframe. The Board compounded its error by summarily dismissing the activities of Dr. Nezhat’s attorney, Mr. Heslin, after determining that PST’s evidence of Dr. Nezhat’s activities did not alone establish reasonable diligence. By preparing and filing the application that would issue as the ’384 patent on behalf of Dr. Nezhat, Mr. Heslin was acting as Dr. Nezhat’s agent. The Board was required to weigh Mr. Heslin’s testimony and evidence of activity as an extension of Dr. Nezhat’s. And it was required to weigh this evidence by application of a rule of reason over the course of the entire critical period.

By failing to consider Mr. Heslin’s activities, the Board erroneously found that PST failed to show diligence during periods when Mr. Heslin was working to constructively reduce the invention to practice. Between the March 16 conference and Dr. Nezhat’s receipt of the second draft application on April 13, the Board criticized that “Dr. Nezhat does not identify any specific activities undertaken or the dates of those activities.” In addition to the work that undoubtedly must have occurred in order to result in a new draft application, the record indicates that during this time, Mr. Heslin at least reviewed and revised the application on April 7. The Board also flagged PST’s lack of evidence for actions Dr. Nezhat took after receiving the second draft until Mr. Heslin filed the application with the PTO, but during this time, Mr. Heslin prepared the application and accompanying disclosure statement and filed these documents on May 1. And Mr. Heslin testified that it was his usual practice to dictate the text of the application and allow time, around eight days, for word processing to transcribe his edits. Evidence of this sort, where the record indisputably shows an attorney was working to constructively reduce an invention to practice, highlights the importance of considering an attorney’s prosecuting activities as part of the inventor’s diligence.

The Board’s focus on gaps of inactivity also led it to make fact findings unsupported by substantial evidence. The most egregious of these concerns the Board’s finding of inactivity between March 12 and March 15. The record indicates that on March 12, in response to comments received on March 2, Mr. Heslin requested that they “meet to discuss finalizing the draft.” March 12, 1998 was a Thursday. Mr. Heslin’s billing records confirm that he met with Dr. Nezhat the following Monday, March 16. The Board determined that the period from Thursday to Sunday constituted a gap of inactivity, finding in support that “[n]o evidence is presented as to the nature of the comments” Dr. Nezhat sent on March 2 and “no evidence is presented as to the nature of the March 16 conference.” However, the evidence shows that Mr. Heslin posed a question regarding the invention, that the two met on March 16, and that the question was answered when the two met. The Board’s finding that this long weekend amounted to a period of inactivity is unreasonable on its face.

The Case Is Remanded for the Board to Consider the Record as a Whole

The Board concluded that the three gaps collectively demonstrated a lack of diligence during the entire critical period. The dissent agrees that the Board’s fact findings regarding two of the three gaps are not supported by substantial evidence. Thus, even under the dissent’s analysis, this case should be remanded for the Board to make the fact finding about whether the evidence presented regarding what it calls Gap 1 would be sufficient alone to find a lack of diligence. The Board’s erroneous finding of inactivity between the periods March 12 to March 15 and April 13 to May 1 requires remand. It is for the Board to reconsider the whole record and make a fact finding on diligence in the first instance.

For these reasons, the Board’s decision that PST failed to antedate JP ’551 is vacated and remanded for proceedings consistent with this opinion.

Judge Schall’s Dissent in Part

I believe the Board applied the correct legal standard in finding that PST failed to establish that Dr. Nezhat exercised reasonably continuous diligence during the critical period. I also believe the Board’s finding on diligence is supported by substantial evidence.

The events leading to this appeal are not in dispute. In the Board’s view, the evidence revealed several unexplained “periods of inactivity” during the critical period. For example, the Board found Dr. Nezhat unable to identify any date on which he worked on the application from January 28, 1998, to March 1, 1998—the period during which the initial application was in his hands. The Board also found that Dr. Nezhat could not pinpoint any particular conflict during this time preventing him from such work. Thus, the Board explained, Dr. Nezhat could not adequately account for roughly the first three weeks of the critical period—i.e., from February 10, 1998, to March 1, 1998.

Significantly, the Board found only two dates in the entire critical period on which Dr. Nezhat took specific actions towards preparing his application. The first date was on March 2, 1998, when he submitted comments to Mr. Heslin on the initial draft. The second date was on March 16, when he conferred with Mr. Heslin on questions about the application. The Board found no evidence, however, with respect to the nature of Dr. Nezhat’s comments on the initial draft or with respect to the conference.  As for Mr. Heslin’s testimony, the Board determined that it was not specific as to facts and dates and that it therefore could not establish Dr. Nezhat’s diligence during periods of inactivity during the critical period.

Having considered the evidence, the Board found “at least” three unexplained intervals of time during the critical period with respect to which the evidence did not establish diligence on Dr. Nezhat’s part. Consequently, the Board concluded that PST had offered insufficient evidence to establish Dr. Nezhat’s diligence during the entire critical period. 

PST is correct that the “rule of reason” required the Board to evaluate all the pertinent evidence as a ‎whole. But this rule does not dispense with the twin requirements that (1) the ‎evidence must still reasonably justify gaps in the inventor’s activity and (2) the justification must be ‎corroborated with independent evidence. By shifting its focus to the entire critical period generally, rather ‎than pockets of inactivity in particular, PST overlooks that it still must provide an evidenced, satisfactory ‎explanation for the First Gap. PST’s briefing does not include a detailed ‎explanation for the First Gap, and its vague allusion to Dr. Nezhat’s hectic schedule and “careful review” ‎of the draft is uncorroborated with independent evidence.‎

To conclude, I believe substantial evidence supports the Board’s finding that Dr. Nezhat failed to ‎demonstrate reasonable diligence during the entire critical period.

   
 

Unwired Planet, LLC v. Google, Inc., Fed. Cir. 2015-1810, -1811 (November 15, 2016)

Unwired appeals from final IPR and CBM decisions. For the reasons stated below, we affirm the Board’s decision that the challenged claims of the ’205 patent are invalid as obvious in the IPR appeal and dismiss the CBM appeal as moot.

The ’205 patent describes a system and method for providing wireless network subscribers with prioritized search results based on the location of their mobile device. Prioritization based on subscriber information and preferred provider status is independent of a subscriber’s location. The results returned to the subscriber can order preferred providers and other service providers that are farther away higher than nearer service providers. The parties and the Board refer to this result as “farther-over-nearer ordering.”

The sole independent claim of the ’205 patent, claim 1, claims farther-over-nearer ordering in the context of wireless location-based services through a series of method steps. We treat claim 1 of the ’205 patent as representative and dispositive.

The primary reference, Brohoff, describes a system that provides information about nearby consumer services in response to search requests. To do so, the system determines the location of the mobile device sending the search request and provides information about nearby, relevant consumer services from its database. Brohoff teaches using a database where the consumer services are grouped by geographic zones and returning location-based search results grouped by these geographic zones.

One secondary reference is a book by Wilbert O. Galitz, which discusses principles for interface design, including an explanation of the advantages of various techniques for ordering text information and menus. It also discusses the benefits and applications of several ordering techniques, including alphabetic order.

Unwired argues (1) that Galitz is not analogous prior art, (2) that the prior art does not teach farther-over-nearer ordering, and (3) that a person of skill in the art would not have been motivated to combine Brohoff with Galitz. We find substantial evidence supports the Board’s factual findings and these facts lead to the conclusion that claims 1–6 of the ’205 patent were obvious.

The Relevant Prior Art Includes Galitz

Unwired argues that Galitz “has nothing to do with mobile telephony or location-based services, but instead is a manual for designers of graphic user interfaces—a thoroughly different concept.” We disagree.

Prior art is analogous and can be applied in an obviousness combination if it either (1) “is from the same field of endeavor, regardless of the problem addressed” or (2) “is reasonably pertinent to the particular problem with which the inventor is involved.” To determine if art is analogous, we look to “the purposes of both the invention and the prior art.” If a reference disclosure and the claimed invention have a same purpose, the reference relates to the same problem, which supports an obviousness rejection.

The field of endeavor of the ’205 patent is not limited to technical issues related to the wireless network system; it also teaches methods for ordering and displaying information from the network on users’ mobile devices. One particular problem the ’205 patent addresses is how to display and order information on a mobile device. When a menu is displayed on a mobile device, it “may be ordered based on any of various criteria such as the preferences expressed in the subscriber profile, nearest to farthest, preferred service providers defined by the network administrator, etc.”

The Galitz reference deals generally with graphical user interface design and includes a chapter devoted to menu design with specific suggestions for how to order menu items. One example that Galitz uses is address text, which it urges should be ordered “in the customary way” and sequenced to accord with user expectations, i.e., “street, city, state, and zip code.”

The Board also relied on the testimony of Dr. Donald Cox. He discussed the Yellow Pages as a “customary and conventional use of sequential or alphabetical ordering for location-based services.” The Yellow Pages list businesses in a “specific geographic area,” sort “the businesses into similar types,” and then alphabetically order the listings in each category.

Taken together, this evidence establishes that Galitz is analogous prior art to the ’205 patent. The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field. Here, both Galitz and the ’205 patent are in the field of interface design, with Galitz focusing on graphical user interfaces and the ’205 patent focusing on interfaces for location based services. These two areas of focus overlap within the broader field of interface design because the teachings in graphical user interface design, including design principles for displaying text and ordering menus, have relevance in interfaces for location-based applications. Likewise, a skilled artisan seeking to apply interface design principles to display addresses—one of the particular problems dealt with by the inventor of the ’205 patent—would reasonably look to Galitz, which teaches solutions to this same problem. As the Board found, Dr. Cox’s testimony shows a skilled artisan would have understood the applicability of Galitz’s teachings to this problem by providing an example of conventional address text and ordering in the location-based context. The Board correctly applied Galitz as analogous art based on substantial evidence that Galitz is both from the same field of endeavor as the ’205 patent and is reasonably pertinent to the problem of displaying address information.

The Prior Art Teaches Prioritization that Results in Farther-Over-Nearer Ordering

The claims only require using prioritization information that results in a farther-over-nearer order. The claimed result, where a farther first location is given priority over a nearer second location, could result from many prioritization schemes that do not depend on location.

The prioritization information used in the proposed combination of the prior art is alphabetical ordering. Alphabetical prioritization will often result in locations that are farther away being given a higher priority than locations that are nearer. Alphabetical order, thus, will result in instances of farther-over-nearer ordering. It does not matter that the use of alphabetical order for locations would not always result in farther-over-nearer ordering. It is enough that the combination would sometimes perform all the method steps, including farther-over-nearer ordering.

A Skilled Artisan Would Be Motivated to Combine

The Court in KSR stated that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” For the technique’s use to be obvious, the skilled artisan need only be able to recognize, based on her background knowledge, its potential to improve the device and be able to apply the technique.

The device to be improved is Brohoff. The Board explained that Brohoff teaches a system that allows users to search for information and be provided results based on their location. In the provided search results, “the identified service providers are grouped by their respective locations within a zone.” While the zones in Brohoff are ordered nearer-first, Brohoff does not explain how the service providers are prioritized within their zone groups.

The improvement is provided by using the technique of combining ordering methods found in Galitz. As the Board recognized, Galitz teaches benefits of various ordering techniques and suggests using them in combination. Using ordering techniques in combination is, thus, a technique that a person of ordinary skill in the art would recognize could be used to improve information display.

The Board’s determination that a person of skill in the art would have been motivated to apply the techniques of Galitz to Brohoff is supported by substantial evidence. The Board found that testimony of Dr. Cox was entitled to “substantial weight because [it] is consistent with the teachings of Brohoff and Galitz.” He explained that “Galitz recognized that information may be ordered by category—such as Brohoff’s geographic zones—and, within each category, information may be ordered by other prioritization information.”

Galitz’s teaching of the advantages of combining ordering techniques shows “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Irrespective of whether a person of skill in the art would have recognized specific use of Brohoff, substantial evidence exists if she could have seen the advantages of applying the teachings of Galitz to improve Brohoff. This is sufficient to render the combination obvious.

We affirm the Board’s determination that claims 1–6 of the ’205 patent were obvious. We dismiss as moot the CBM appeal.

   
 

Alfred E. Mann Foundation for Scientific Research v. Cochlear Corporation, Fed. Cir. 2015-1580, -1606, -1607 (November 17, 2016)

The patents are directed to an ear implant with telemetry functionality for testing purposes, and generally describe a two-part system comprising an external wearable system with a wearable processor (WP) and headpiece, and an internal implantable cochlear stimulator (ICS). The jury found that Cochlear willfully infringed claims 1 and 10 of the ’616 patent and claims 6–7 of the ’691 patent. The jury also found that all of the asserted claims were not invalid under §§ 102 or 103. The jury awarded approximately $131 million in damages. The court then conducted a bench trial on equitable estoppel, laches, inequitable conduct, prosecution history, and indefiniteness, and determined that all of the asserted claims except for claim 10 of the ’616 patent were invalid for indefiniteness. The court denied Cochlear’s JMOL of noninfringement as to claim 10 of the ’616 patent, granted Cochlear’s JMOL of no willful infringement, and granted Cochlear’s motion for a new trial on damages.

Substantial Evidence Supports the Verdict of Infringement as to Claim 10

Cochlear argues that even under the district court’s construction, its accused system does not infringe. Cochlear asserts that even though its system may display the impedance value, the voltage value is not “made known” as required by part (j) of claim 10. The relationship between voltage, impedance, and current is defined by Ohm’s Law, where voltage = current x impedance. Because there is sufficient evidence that the accused system sets forth the current level associated with each measurement, and voltage may be measured by multiplying the current level by the accused system’s displayed impedance value, there is substantial evidence that Cochlear’s accused system infringes claim 10.

The Indefiniteness of Claims 6-7 of the 691 Patent Is Affirmed

We next turn to Cross-Appellants’ cross-appeal on the court’s indefiniteness determinations. To satisfy the definiteness requirement, a means-plus-function claim requires sufficient disclosure of the underlying structure. In cases involving a computer-implemented invention, we have held that the structure must be more than a general purpose computer or a microprocessor, unless, in the rare circumstance, any general purpose computer without any special programming can perform the function. Where the structure is a general purpose computer or microprocessor, requiring disclosure of an algorithm properly defines the scope of the claim and prevents pure functional claiming. Claim definiteness depends on the skill level of a person of ordinary skill in the art. In software cases, therefore, algorithms in the specification need only disclose adequate defining structure to render the bounds of the claim understandable to one of ordinary skill in the art.

A

Claim 6 of the ’691 patent reads, in relevant part:

A cochlea stimulation system, comprising:

[a] audio signal receiving means;

[b] an externally wearable signal processor (WP) for receiving and processing the audio signals received by the audio signal receiving means and including means for generating data indicative of the audio signal; . . . .

The limitation “means for generating data indicative of the audio signal” is a means-plus-function limitation. The district court found claims 6–7 indefinite because the specification of the ’691 patent fails to disclose the requisite algorithmic structure to perform the “means for generating data indicative of the audio signal” function. The district court found the claims indefinite because the ’691 patent does not disclose where the logarithmic conversion function takes place and because the logarithmic conversion function could be implemented through multiple logarithmic algorithms, none of which the specification describes. We agree that the claims are indefinite for these reasons.

These claims are indefinite for another reason: the logarithmic conversion may be implemented through various unspecified algorithms. The ’691 patent does not disclose an algorithm, or even a small set of algorithms for performing the claimed logarithmic conversion function. Disclosing the broad class of logarithmic conversion does not limit the scope of the claim to the “corresponding structure, material, or acts” that perform the function, as required by Section 112. Although Cross-Appellants argue that a person of ordinary skill in the art would know of potential logarithmic conversion functions to implement, this does not create structure in the patent where there was none to begin with.

The Ruling as to Indefiniteness of Claim 1 of the 616 Patent Is Reversed

Claim 1 of the ’616 patent reads, in relevant part:

A physician’s testing system for testing a multichannel cochlear stimulating system, comprising a physician’s tester, an external headpiece/transmitter, and an implanted cochlear stimulator (ICS), . . .

[c] the physician’s tester comprising:

[1] external processor means coupled to the transmitting means of the external headpiece/transmitter for receiving and processing the status-indicating signals to derive information therefrom regarding the operation of the implanted stimulator and its plurality of tissue stimulating electrodes; . . . .

The limitation “external processor means . . . for . . . processing the status-indicating signals to derive information therefrom” is a means-plus-function limitation. It is undisputed that the structure is the microprocessor. The district court rejected Cross-Appellants’ argument that the patent discloses a two-step algorithm, where first, the microprocessor accepts signals representative of voltage, and second, the microprocessor applies Ohm’s law to convert the voltage into an impedance value. The court found claim 1 indefinite because the patent does not explicitly identify Ohm’s law and there are multiple ways of calculating impedance. We disagree.

The specification discloses that both voltage and current are measured, and that these values are associated with the resulting “status-indicating signal.” Both parties’ experts testified that a person of ordinary skill would know to apply Ohm’s law to voltage and current to yield impedance values. The specification also discloses that impedance is calculated based on voltage and current. Because there is adequate defining structure to render the bounds of the claim understandable to one of ordinary skill in the art, we reverse the district court’s indefiniteness finding as to claim 1 of the ’616 patent.

The JMOL of No Willful Infringement Is Vacated So the District Court Can Apply Halo Instead of Seagate

The jury found that Cochlear willfully infringed claims 1 and 10 of the ’616 patent and claims 6–7 of the ’691 patent. The court set this verdict aside in granting Cochlear’s JMOL of no willful infringement. The court concluded that a reasonable jury could not find that the objective prong of the Seagate inquiry was established by clear and convincing evidence, and that Cochlear had presented several reasonable noninfringement defenses. In Halo, the Supreme Court rejected the Seagate test for willful infringement as “unduly rigid” and “impermissibly encumbering the statutory grant of discretion to district courts.” 136 S. Ct. at 1932. The Court rejected the Seagate test’s clear-and-convincing standard of proof, as well as the tripartite framework for appellate review. The Court also rejected Seagate’s requirement of “a finding of objective recklessness in every case before district courts may award enhanced damages.” “Such a threshold requirement excludes from discretionary punishment many of the most culpable offenders, such as the ‘wanton and malicious pirate’ who intentionally infringes another’s patent—with no doubts about its validity or any notion of a defense—for no purpose other than to steal the patentee’s business.” The Court described “[t]he sort of conduct warranting enhanced damages. . . .as willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, [or] flagrant . . . .”

Cross-Appellants argue that, at a minimum, we should vacate and remand the court’s grant of JMOL on willfulness in light of Halo. We agree. On remand, mindful of Halo’s preponderance of the evidence standard, the court must consider whether Cochlear’s infringement constituted an “egregious case[] of misconduct beyond typical infringement” meriting enhanced damages under § 284 and, if so, the appropriate extent of the enhancement.

The Damage Judgment Is Not Final, So the Circuit Has No Jurisdiction to Hear that Portion of the Appeal

Lastly, the court ordered a new trial on damages for claim 10 of the ’616 patent and vacated the jury’s damages award. Cross-Appellants argue that the court abused its discretion in granting Cochlear’s motion. We lack jurisdiction to consider this issue.

By statute, this court has jurisdiction over an appeal of a decision of a district court if it is “final” under 28 U.S.C. § 1295(a)(1) or if it is an interlocutory order as specified in 28 U.S.C. § 1292. One exception to the foregoing is when the judgment is final except for an “accounting.” 28 U.S.C. § 1292(c)(2); see Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d 1305 (Fed. Cir. 2013) (en banc) (holding that an “accounting” may include a trial on damages).

There has not been a final decision on the damages issue. We are not persuaded by Cross-Appellants’ argument that the § 1292(c)(2) exception to the rule of finality applies here. Under Bosch, the exception allows us to consider the liability issues in this case, but does not go so far as to permit us to consider the non-final order itself. Clearly, if the parties were only appealing the damages issue, we would not have jurisdiction under § 1295(a)(1). The addition of the liability issues in this case does not change our jurisdictional reach.

Cross-Appellants also argue that we have jurisdiction because of the district court’s certification of judgment under Fed. R. Civ. P. 54(b). The Rule provides in relevant part: “when an action presents more than one claim for relief . . . or when multiple parties are involved, the court may direct entry of a final judgment as to one or more, but fewer than all, claims or parties only if the court expressly determines that there is no just reason for delay.” Rule 54(b) was implemented to specifically avoid the possible injustice of delaying judgment on a distinctly separate claim pending adjudication of the entire case.

There are three prerequisites for invoking Rule 54(b): (1) multiple claims for relief or multiple parties must be involved; (2) at least one claim or the rights and liabilities of at least one party must be finally decided; and (3) the district court must find that there is no just reason for delaying an appeal. The issue of the propriety of the damages award was not properly certified for appeal under Rule 54(b) because the district court ordered a new trial on damages. A new trial is not a final order that falls within Rule 54(b).

Judge Newman’s Dissent

I do not share the court’s view that claims 6 and 7 of the ’691 patent are invalid for indefiniteness. The district court’s finding of indefiniteness was contrary to the testimony of the experts for both sides. As for the district court’s vacatur of the jury’s damages verdict and order for a retrial of damages, I do not agree that the order is immune from the appellate review requested by the district court under Rule 54(b). Thus I respectfully dissent from these parts of the court’s decision.

   
 

In re Rearden LLC, Fed. Cir. 2016-125 (November 17, 2016)

The underlying dispute in this case is one of ownership. Both sides claim ownership of visual effects technology known as “MOVA Contour Reality Capture” or “MOVA.” MOVA technology can capture an actor’s facial performance for use in motion picture special effects and video games. The technology is secured by trademarks, copyrights, trade secrets, and patents, including the ’272, ’293, ’861 and ’668 patents. The technology is reflected in hardware, source code, and other physical assets, all of which we will refer to collectively as the “MOVA assets.”

SHST filed a complaint in the Northern District of California, alleging that petitioners had made “false or misleading representations of fact concerning the ownership of the MOVA Assets in a campaign to mislead the public and actual and prospective users and licensees of those assets,” including forming a second “MO2 LLC” named entity, falsely recording assignments of the MOVA patents from original MO2 to Rearden MOVA LLC, and making statements that they owned the assets. SHST sought a declaration that it owned the MOVA assets and that petitioners’ patent assignments were invalid.

Petitioners answered that the claims were waived because SHST “knew that authority from at least one of the Defendants was required for the proper transfer of the MOVA Assets.” Petitioners also counterclaimed, seeking a declaration that they owned the MOVA assets, and seeking damages against SHST for infringement of the ’272, ’293, ’861, and ’668 patents. SHST soon thereafter purportedly sold the assets to respondent VGHL. With SHST stipulating that it would remain in the case as a counterclaim defendant, the district court granted a motion to substitute in March 2016, and VGHL filed an amended complaint raising the same charges as raised in SHST’s complaint. Petitioners responded to the amended complaint by filing the same answers and counterclaims against SHST.

During discovery, respondent moved to compel petitioners to produce documents exchanged between original MO2 and its attorney. The magistrate granted the request, concluding that Petitioners had not shown they could assert attorney-client privilege on behalf of original MO2 and that the privilege had been waived when the documents had been shared with others. The court determined that Petitioners’ objections to the ruling did not establish that the findings and conclusions were clearly erroneous or contrary to law. In denying the objections, the court also declined to consider an additional declaration because it was not before the magistrate.

The Circuit Has Jurisdiction Over This Petition

We turn first to Respondent’s threshold argument, namely, that issuing mandamus here would not be “in aid of” our “jurisdiction” but instead that of the Ninth Circuit. 28 U.S.C. § 1651(a). Our jurisdiction over cases from federal district courts is governed by 28 U.S.C. § 1295(a), which states that the Federal Circuit has appellate jurisdiction “in any civil action arising under, or in any civil action in which a party has asserted a compulsory counterclaim arising under, any Act of Congress relating to patents.” § 1295(a)(1). Because the concept of what constitutes a “compulsory counterclaim” now directly impacts our jurisdiction, it is governed by Federal Circuit law, rather than by that of the regional circuits.

Congress amended our jurisdictional statute through the AIA to broaden our jurisdiction to include compulsory counterclaims “arising under” patent law. Previously, the Supreme Court’s decision in Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., 535 U.S. 826 (2002), had effectively limited our jurisdiction to patent law claims asserted in a well-pleaded complaint. The amendment was “intended to provide federal courts, and this court specifically, with a broader range of jurisdiction; that is, with jurisdiction over claims arising under the patent laws even when asserted in counterclaims, rather than in an original complaint.” But while Congress extended our jurisdiction to ensure uniformity in patent law, that extension did not reach permissive counterclaims. Expressing the concern about the “possibility that a defendant could raise unrelated and unnecessary patent counterclaims simply in order to manipulate appellate jurisdiction,” it has been argued that Congress limited our appellate jurisdiction to compulsory counterclaims relating to patent law.

To determine whether a particular counterclaim is compulsory, we look to Rule 13(a). It provides that a compulsory counterclaim “arises out of the transaction or occurrence that is the subject matter of the opposing party’s claim.” Fed. R. Civ. P. 13(a)(1)(A). Courts interpreting the scope of Rule 13(a)’s “transaction or occurrence” test “generally have agreed that these words should be interpreted liberally in order to further the general policies of the federal rules and carry out the philosophy of Rule 13(a).”

Our court has utilized three tests to determine whether the “transaction or occurrence” test of Rule 13(a) is met: (1) whether the legal and factual issues raised by the claim and counterclaim are largely the same; (2) whether substantially the same evidence supports or refutes both the claim and the counterclaim; and (3) whether there is a logical relationship between the claim and the counterclaim. Here, the claims and counterclaims involve the same patents, they share overlapping legal and factual issues, and substantially the same evidence could refute both the claims of ownership and the counterclaims of infringement. The patent infringement counterclaims share a critical factual dispute with plaintiff’s state law claims: whether SHST obtained ownership of the MOVA assets. To make a case for patent infringement, counterclaimants will need to show that they, not Respondent, own the MOVA assets. The success of plaintiff’s state law claims will similarly depend on how these factual issues are resolved. Moreover, the infringement claims rely in part on SHST’s unauthorized use of the disputed MOVA assets, including physical assets, whose ownership is in dispute. So the claims and counterclaims share a close, logical relation: the ownership and rightful use of the technology claimed and disclosed in the MOVA patents. And plaintiff’s claims and Petitioners’ counterclaims share substantial evidentiary overlap. Petitioners’ counterclaims thus arise from the same transaction or occurrence as plaintiff’s claims. Finally, we note that concerns about not allowing defendants to manipulate jurisdiction through the addition of permissive counterclaims are not implicated here. Rather, the counterclaims arise out of, and are indeed contingent upon, the very dispute and the same patent rights asserted in the complaint. We thus find petitioners’ patent infringement counterclaims to be compulsory. As such, we have jurisdiction over any appeal of these claims and, hence, jurisdiction over this petition.

Petitioners Fall Short of the Particularly-Deferential Standard the Circuit Applies in Mandamus Actions

Petitioners first argue that the district court erred on review of the magistrate’s order in not accepting a supplemental declaration and not holding an evidentiary hearing on the issue. Petitioners, however, have not shown any error in these regards that is mandamus-worthy. While a district court may accept additional evidence and hold an evidentiary hearing, no case, including those cited by petitioners, holds that such a hearing or supplementation is a requirement.

Petitioners, moreover, have not shown a clear abuse of discretion on the part of the district court in refusing their requests. The magistrate granted Petitioners’ request to consider Perlman’s first declaration that was submitted to address the central issue in this discovery dispute—the ownership of the MOVA assets and control of original MO2 prior to when LaSalle entered into an agreement to sell the MOVA assets to SHST. Petitioners failed to explain why they could not have submitted any added information to the magistrate or explain why a hearing in addition to the one held by the magistrate was necessary.

Petitioners also suggest that the magistrate and district court erred in not deferring a ruling on the privilege issue until after conclusively resolving who controlled the original MO2, and thus who had the right to assert the privilege. Yet Petitioners cite no case that suggests that the magistrate and district court had no legal authority to enter their orders and render preliminary factual determinations on the ownership issue in order to resolve the privilege issue.

Petitioners’ remaining arguments largely challenge the district court’s conclusion that they could not assert the privilege on behalf of original MO2. Those arguments, at bottom, are attacks on the district court’s preliminary factual findings regarding whether Rearden MOVA acquired the MOVA assets from original MO2 before LaSalle entered an agreement with SHST and whether Perlman and Rearden LLC controlled and managed original MO2 such that they could assert the privilege. We decline to entertain mandamus relief on these arguments because Petitioners rely heavily on Perlman’s extra-record declaration and Petitioners have alternative avenues to obtain meaningful review of these arguments after trial. 

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