ESIP Series 2, LLC v. Puzhen Life USA, LLC, Appeal No. 2019-1659 (Fed. Cir. May 19, 2020)

In this week’s Case of the Week, the Federal Circuit affirmed an inter partes review decision finding challenged claims obvious, extending recent Supreme Court precedent immunizing many IPR institution decisions from appellate review.

On appeal, the appellant patent owner argued that the Patent Trial and Appeal Board should not have instituted inter partes review because the petitioner failed to identify all real parties-in-interest as required by 35 U.S.C. § 312(a)(2). The Federal Circuit held that because the Board’s decision raised an ordinary dispute about the application of an institution-related statute, appellate review was barred by § 314(d). In so holding, the Court applied and extended the Supreme Court’s decisions in Cuozzo Speed Techs. v. Lee, 136 S. Ct. 2131 (2016) (§ 314(d) precluded judicial review of Board decisions concerning the “particularity” requirement of § 312(a)(3)) and Thryv, Inc. v. Click-To-Call Techs., LP, 140 S. Ct. 1367 (2020) (§ 314(d) precluded review of decisions concerning the one-year time bar of § 315(b)). In light of this precedent, the Federal Circuit explained that it could find no principled reason why preclusion of judicial review should not extend to real party-in-interest determinations under § 312(a)(2).

The Federal Circuit also affirmed the Board’s obviousness determination on the merits, finding the Board’s factual determinations to be supported by substantial evidence where it credited the expert testimony of one party’s expert over the other’s. The Court also rejected appellant’s arguments that the Board erred by failing to expressly define the level of ordinary skill in the art and relied on an erroneous claim construction, noting that appellant failed to explain how the outcome would have been different if its proposed definition or construction had been adopted.

The opinion can be found here.


Odyssey Logistics and Technology Corp. v. Andrei Iancu, Appeal No. 2019-1066 (Fed. Cir. May 22, 2020)

These appeals concern a lawsuit filed in the Eastern District of Virginia to challenge three issues: procedural rules promulgated by the PTO concerning ex parte appeals, and also actions taken by the PTO during the prosecution of two patents. The district court found that it did not have subject matter jurisdiction over the issues concerning the prosecution of the two patents, because those prosecutions were not “final”; issues in those prosecutions remained pending. With respect to the attack on the PTO’s procedural rules, the district court held that the statute of limitations had expired, because the legal challenge was made more than six years after the regulations were published, even though they were within six years of the effective date. Thus, the district court dismissed the action. The Federal Circuit affirmed, adopting the same positions as the district court.

The opinion can be found here 

McRO, Inc. v. Bandai Namco Games Am. Inc., Appeal No. 2019-1557 (Fed. Cir. May 20, 2020).

In this appeal from the U.S. District Court for the Central District of California, the Federal Circuit overturned the district court’s ruling that a patent claiming a method for automatically generating 3-D animations depicting certain facial movements and expressions is not enabled under 35 USC § 112. The Court found that the district court’s reasoning was too abstract and conclusory to support summary judgment of non-enablement because the two potentially infringing processes at issue—which the Court ultimately found non-infringing—were not available as claim-covered techniques. A non-enablement determination could not be supported, the Court held, because defendants and the district court failed to identify with particularity any method of animation that falls within the scope of the asserted claims

The opinion can be found here.

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