Latest Federal Circuit Court Cases, 11/12/18
Acceleration Bay, LLC v. Activision Blizzard Inc., Appeal Nos. 2017-2084, -2085, -2095, -2096, -2097, -2098, -2099, -2117, 2118 (Fed. Cir. Nov. 6, 2018)
In appeals of six inter partes review final decisions on three challenged patents, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“PTAB”) decision that certain claims of U.S. Patent No. 6,829,634, U.S. Patent No. 6,701,344, and U.S. Patent No. 6,714,966 (the “Patents”) were patentable, while other claims were unpatentable. The Patents relate to “a broadcast technique in which a broadcast channel overlays a point-to-point communications network.”
Patent Owner made three arguments challenging the PTAB’s decision. First, it took issue with the PTAB construing the term “participant” according to its plain meaning. The Court rejected the Patent Owner’s position because the specification or claims did not define the term in the manner sought by the Patent Owner.
Second, the Patent Owner argued that the terms “game environment” and “information delivery service” are limitations notwithstanding the fact they appear in the preambles or alternatively, the terms appear in the body of the claims because there is no transition phrase denoting a preamble. The Court concluded that the terms are part of the preamble and then analyzed whether they are limitations. On this point, the Court agreed with the PTAB that the terms do not provide structure and “simply provide an intended use for what is otherwise a claim for a network.” Consequently, the Court rejected Patent Owner’s argument, finding that the disputed preamble language is non-limiting.
Third, the Patent Owner argued that the claims include a limitation regarding “a broadcast channel overlaying a point-to-point network into the claims” and the PTAB failed to identify this limitation in the prior art. While acknowledging that the specification discusses this concept, the Court disagreed that the claims include the concept as a limitation. Accordingly, the Court found that the Board did not err by failing to identify the broadcast channel limitation in the prior art.
The Petitioner also challenged the PTAB’s decision in three aspects. First, the Petitioner challenged the PTAB’s finding that one of the prior art references relied upon was not a printed publication under § 102(a). The Court rejected petitioner’s argument, concluding that the prior art reference was not publicly accessible before the critical date. Specifically, the Court found that it was “not indexed in a meaningful way and that the website’s advanced search form was deficient.”
Second, the Petitioner challenged the PTAB’s findings that certain claims were patentable over the prior art. Here, the Court agreed with the PTAB’s application of the claims to the prior art, as well as its refusal to consider certain reply evidence because it raised a new argument that should have been made in the petition.
Third, the Petitioner argued that the PTAB erred in determining that various amended claims were patentable over the prior art. Specifically, the Petitioner argued that the PTAB inconsistently and erroneously construed the limitation “participants can join and leave the network using the broadcast channel” in the substitute claims. Again, the Court agreed with the PTAB’s analysis and also noted that the Petition had not provided any construction for this limitation. Therefore, it was proper for the PTAB to focus on the ordinary meaning of the term to determine whether the limitation was disclosed in the prior art or rendered obvious by the prior art.
Having found no errors in the PTAB’s analysis, the Court affirmed its decisions.
The opinion can be found here.
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Arista Networks, Inc. v. Cisco Systems, Inc., Appeal Nos. 2017-1525, -1577 (Fed. Cir. Nov. 9, 2018)
On cross-appeals from an inter partes review upholding some claims and invalidating others in U.S. Patent No. 7,340,597 (“the ’597 patent”), the Federal Circuit reversed and remanded as to Petitioner Arista’s appeal, and affirmed as to Patent Owner Cisco’s cross-appeal. The ’597 patent is generally directed to uses of a logging module in network security applications.
As to Petitioner’s appeal, the Court found that the Patent Trial and Appeal Board (“PTAB”) erred in its construction of the term “broadcast,” which improperly excluded the only disclosed embodiment of “broadcasting” disclosed in the patent. The Court went on to reject both parties’ proposed alternative constructions, construe the disputed term itself, and remand for further proceedings.
In Patent Owner Cisco’s cross-appeal, Cisco argued that the PTAB erred in declining to apply the doctrine of assignor estoppel to bar Arista’s petition. (The named inventor of the ’597 patent had been employed by Cisco at the time of the invention, but had left shortly thereafter to found Arista with a number of other Cisco employees. The doctrine of assignor estoppel often operates to bar such assignors from contesting validity in district court.) The Court first determined that the PTAB’s decision on assignor estoppel is subject to judicial review under Cuozzo Speed Techs. v. Lee, 136 S. Ct. 2131 (2016), but went on to hold that the doctrine of assignor is not applicable in IPR proceedings. Specifically, the Court found that 35 U.S.C. § 311(a), in providing that “a person who is not the owner of a patent may file” an IPR petition, “unambiguously dictates that assignor estoppel has no place in IPR proceedings.” As such, the PTAB’s decision was affirmed as to Cisco’s cross-appeal.
The opinion can be found here.