The following arguments will be available to the public live, both in-person and through online audio streaming. Access information will be available by 9 AM ET each day of argument at: https://cafc.uscourts.gov/home/oral-argument/listen-to-oral-arguments/.
Wednesday, April 5, 2023
Philips North America, LLC v. Fitbit LLC, No. 22-1223, -1224, -1279, Courtroom 402
Fitbit filed a petition for an inter partes review asserting that certain claims of Philips's patent would have been obvious over the combination of two prior-art references, Jacobsen and Say, along with an additional reference. In its final written decision, however, the Board found that Jacobsen anticipated the independent claim and explicitly did not consider the Jacobsen-Say combination when evaluating whether the dependent claims would have been obvious. The Board instead relied only on Jacobsen and the additional reference to support a finding of obviousness for the dependent claims.
On appeal, Philips argues that the Board should have limited its analysis to the grounds of unpatentability Fitbit outlined in its petition. Philips contends that, by basing its unpatentability findings on combinations not outlined in the petition, the Board exceeded its own authority and effectively turned into an advocate. Philips relies on SAS to argue that the burden of establishing grounds for unpatentability rests firmly with the petitioner and that Fitbit failed to suggest the combination on which the Board relied. Philips contends that it responded to the specific grounds that Fitbit raised in its petition, that Fitbit failed to meet its burden that a skilled artisan would combine Jacobsen and Say, and that the Board's reliance only on Jacobsen relieved Fitbit of its burden.
Fitbit argues in response that it had relied on the Jacobsen-Say combination to show that the claims would have been obvious only to the extent that Jacobsen alone did not anticipate the claims. Fitbit also asserts that because the Board found that Jacobsen anticipated claim 1, it was proper for the Board not to consider the Jacobsen-Say system in combination with the additional reference for obviousness and instead rely on only Jacobsen in combination with the additional reference.
Thursday, April 6, 2023
Blue Gentian, LLC v. Tristar Products, Inc., No. 21-2316, -2317, Courtroom 201
This appeal involves a challenge to the District of New Jersey's decision to add an inventor to six patents owned by Blue Gentian that claim an expandable and retractable garden hose. Four years after Blue Gentian accused Tristar of infringing all six patents, the district court granted Tristar leave to amend its answer to bring counterclaims for correction of inventorship under 35 U.S.C. §256. After a hearing on the inventorship issue, the district court determined that Tristar's alleged co-inventor, who was not a party to the case, contributed to the conception of the claimed inventions and entered judgment in Tristar's favor on its correction of inventorship counterclaim. Because adding the alleged co-inventor resulted in Blue Gentian not encompassing the entire "patentee" per 35 U.S.C. §281, the inventorship determination resolved all claims and counterclaims and served as a final judgment. Blue Gentian appealed.
On appeal, Blue Gentian argues that Tristar failed to show evidence corroborating the alleged co-inventor's testimony regarding inventorship. In particular, Blue Gentian argues that Tristar was required to provide corroborating evidence of the alleged co-inventor's (1) conception of the claimed subject matter and (2) communication of that subject matter to the named inventor. According to Blue Gentian, corroborating the conception of key features of the claimed invention is insufficient where the only evidence of communication to the named inventors is the alleged-inventor's own testimony.
In response, Tristar argues that (1) while evidence corroborating a co-inventor's own testimony regarding conception is required, (2) evidence corroborating communication of the claimed subject matter to the named inventor is not required. Tristar also asserts that, even if corroborating evidence of these communications were required, that evidence may be circumstantial evidence and that the district court found that Tristar's circumstantial evidence showing that the co-inventor conveyed key elements of the claimed invention to the named inventor was sufficient.
Longhorn HD LLC. v. Unified Patents, LLC, No. 22-1361, Courtroom 402
The sole question on appeal asks whether prior art asserted under 35 U.S.C. §102(e) (pre-AIA) must meet the requirements for patent-eligibility and Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015). Unified Patents filed a petition for an inter partes review, asserting that Longhorn HD's patent would have been obvious over a primary reference that claims priority to a provisional application that qualifies as prior art under §102(e). Relying on Dynamic Drinkware, Longhorn HD argued before the Board that the provisional application is not prior art under §102(e) because the asserted reference and provisional application are directed to patent-ineligible subject matter under 35 U.S.C. §101. In its final written decision, the Board found that there is no patent-eligibility requirement for prior art by statute or under Dynamic Drinkware. According to the Board, a non-provisional application is entitled to its priority date if the provisional application's written description supports the non-provisional application's claims.
On appeal, Longhorn HD relies on Dynamic Drinkware to argue that entitlement under §102(e) requires that (1) the provisional application describes the subject matter relied on, and (2) the written description of the provisional application provides written description support for at least one of the issued claims. Longhorn HD argues that compliance with the written description requirement entails showing possession of an invention, not merely disclosing an idea. Therefore, Longhorn asserts that the claims of the alleged reference must be directed to patent-eligible subject matter under §101.
Unified Patents counters that neither §102(e) nor the relevant case law mentions a patent-eligibility requirement and instead necessitates only the disclosure of an invention or discovery. In particular, Unified Patents asserts that §102(e) imposes only a publication requirement and does not refer to patent eligibility.
Friday, April 7, 2023
Ficep Corporation v. Peddinghaus Corporation, No. 22-1590, Courtroom 201
This appeal challenges the District of Delaware's decision that a patent was directed to ineligible subject matter under the Alice/Mayo patent-eligibility inquiry, particularly at Alice step 1. The preamble of the representative claim recites an apparatus for the automatic manufacture of an object. At Alice step 1, the court began its analysis by determining that the patent does not recite a technological improvement to manufacturing. The court noted that though the patent aims to increase efficiency in manufacturing, the representative claim is directed to the abstract idea of identifying, extracting, and transferring data to manufacture an object.
On appeal, Ficep argues that the district court's analysis at Alice step 1 improperly began by first looking for the idea of the invention and then asking if the idea was abstract-rather than initially determining what the claim is directed to. Ficep alleges that the invention is directed to manufacturing technology and that every element of the claim relates to manufacturing an actual component. Ficep argues that the district court improperly started from a level of abstraction that inevitably resulted in finding the claim was directed to an abstract idea.
Peddinghaus responds that the patent provides a solution to potential human error, but the claims do not add anything to that manual process. It argues that the claims do nothing more than require a generic computing device to carry out a known process. Peddinghaus argues that the district court correctly determined that the only components recited in the claims are generic, and manufacturing those components is a post-solution activity tacked onto the claims. In reply, Ficep argues that the claims do not just recite post-solution activity but are directed to that activity.
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