Specify the Steps of Information Manipulation or Lose under § 101
In Mobile Acuity Ltd. v. Blippar Ltd. Appeal No. 22-2216, the Federal Circuit held that patent claims that merely recite result-orientated, functional language without specifying the steps of information manipulation are invalid under 35 U.S.C. § 101.
Mobile Acuity sued Blippar for infringement of two patents directed to systems and methods for associating user uploaded images and information to real world locations. Blippar filed a motion to dismiss arguing that certain claims were representative of the entire claim set of each patent and that the claims were invalid under 35 U.S.C. § 101. The district court granted Blippar’s motion to dismiss, finding the challenged claims to be representative of all claims of the asserted patents and further finding those claims to be directed to nonpatentable subject matter. Mobile Acuity then appealed to the Federal Circuit.
On appeal, the Federal Circuit affirmed the district court. First, the Federal Circuit held that the district court correctly treated certain claims as being representative of all claims of the asserted patents. The Federal Circuit found that Blippar had shown that all claims of the asserted patents were “substantially similar and linked to the same ineligible concept” and that Mobile Acuity had failed to identify any limitations in any of its claims that were materially different from the claims the district court treated as representative.
Second, the Federal Circuit found that the asserted claims were directed to the abstract idea of “receiving information, associating information with images, comparing the images, and presenting information based on that comparison.” Under step one of the two-step Alice/Mayo test, the Federal Circuit determined that the asserted claims consisted solely of result-orientated, functional language and omitted any specific requirements as to how the steps of the claim were to be performed. Specifically, the Federal Circuit found that claim language requiring one image be “corresponding” to another image failed to claim a specific method for comparing the images. Under step two of the Alice/Mayo test, the Federal Circuit concluded that Mobile Acuity’s purported inventive concept was part of the abstract idea itself.
The On-Sale Bar Still Applies to the Products of Secret Processes
In Celanese International Corporation v. Itc, Appeal No. 22-1827, the Federal Circuit held that process patent claims are invalid under the on-sale bar (35 U.S.C. § 102(a)(1)) when products of a secret process are sold before the critical date.
Celanese filed a petition in the International Trade Commission, accusing Jinhe of importing a product made using Celanese’s patented process. Jinhe moved for summary determination that the asserted claims were invalid under the on-sale bar, because Celanese made sales in the United States of a product made using its patented process prior to the critical date. Celanese argued that the America Invents Act (“AIA”) changed pre-AIA on-sale bar law such that the on-sale bar did not apply. The ALJ granted Jinhe’s motion, ruling that the AIA did not change the meaning of “on sale” and that the asserted claims were therefore invalid. The Commission denied review, and Celanese appealed to the Federal Circuit.
The Federal Circuit noted that it “has long held that sales of products made using secret processes before the critical date would bar the patentability of that process.” It explained that, in Helsinn Healthcare S.A. v. Teva Pharms. USA, 586 U.S. 123 (2019), the Supreme Court determined that the enactment of the AIA did not change the substantial body of law regarding confidential sales under the “on sale” language in Section 102. Accordingly, the Supreme Court held that the sale of a patented compound that did not publicly disclose the compound’s composition nevertheless triggered the post-AIA on-sale bar. Applying the same reasoning, the Federal Circuit held that Congress did not intend “to abrogate the settled construction of the term” with respect to sales of products made using secret, patented processes. The Federal Circuit ruled any textual changes in pre-AIA and post-AIA Section 102 were to “reflect[] no more than a clerical refinement of terminology for the same meaning in substance.” The court also determined that changes in Sections 102(b), 271(g), and 273(a) did not indicate that Congress intended to change the scope of the on-sale bar. Accordingly, it affirmed the ITC’s determination of invalidity.
Parent Trap: Clarifying the Limits of Obviousness-Type Double Patenting in Parent-Child Patent Relationships
In Allergan USA, Inc. v. Msn Laboratories Private Ltd. Appeal No. 24-1061 the Federal Circuit held that a first-filed, first-issued, later-expiring patent claim cannot be invalidated for obvious-type double patenting based on a later-filed, later-issued, earlier-expiring child patent when the patents share a common priority date.
In 2019, Sun Pharmaceutical Industries (Sun) submitted an Abbreviated New Drug Application (ANDA) seeking FDA approval to market and sell a generic version of Viberzi®. Allergan then sued Sun, alleging that the filing of Sun’s ANDA directly infringed one of Allergan’s patents, which had over 1,000 days of patent term adjustment. While the litigation was pending, continuations of the patent issued (child patents). Sun argued that the later-expiring parent patent was invalid for obviousness-type double patenting over the child patents. The district court found the parent patent invalid for obviousness-type double patenting (ODP). The district court concluded that the later expiration date from the patent term adjustment led to an unjust extension of patent term, violating the principles of ODP.
The Federal Circuit reversed, holding that a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date. In this case, the parent patent was the first to be filed and issued and defined the initial scope of exclusivity for the invention. The child patents derived from the same original application but were filed later. The Federal Circuit explained that the parent patent cannot be invalidated by the child patents merely because the parent patent had a longer term due to patent term adjustment. Invalidating earlier-filed patents in this scenario would undermine the purpose of patent term adjustment, which is to compensate for delays in patent prosecution, and would create an unjust scenario where a patent owner would lose the benefit of a duly awarded extension.
Platinum Cannot Stand on Speculation
In Platinum Optics Technology Inc. v. Viavi Solutions Inc., Appeal No. 23-1227, the Federal Circuit held that standing based on potential infringement liability requires concrete plans for future activity which will create a substantial risk of future infringement or will likely lead to a patentee claiming infringement.
Viavi sued Platinum Optics Technology (“PTOT”) for patent infringement in two civil actions that were dismissed with prejudice. While the district court cases were still pending, PTOT filed an inter partes review petition challenging the patent asserted in the civil actions. After the district court cases were dismissed, the Board issued a final written decision holding that PTOT failed to show the patent claims were unpatentable. PTOT appealed the Board’s findings.
Although a party does not need Article III standing to appear before an administrative agency, it must have standing to seek review of an agency’s final action in federal court. Here, the Federal Circuit determined that PTOT lacked standing and dismissed the appeal. PTOT claimed it had standing because it had a substantial risk of facing future infringement claims by Viavi. In support of its argument, PTOT first pointed to a letter from Viavi which stated that Viavi believed PTOT would be required to infringe Viavi’s patent to fulfill their supply agreements. However, the Federal Circuit noted that it was sent before the civil actions were dismissed with prejudice and concluded that PTOT’s speculation about future suits based on the letter was insufficient to establish standing. Next, PTOT submitted a declaration stating that it was developing new models of its products and anticipated that Viavi would again assert the patent-in-suit. The Federal Circuit found the declaration unpersuasive, noting that the declaration did not provide development plans or the particulars of the models, and did not describe how the new models might relate to the patent-in-suit. The Federal Circuit concluded that PTOT failed to establish it had concrete plans for future activity that would create a substantial risk of infringement or likely motivate Viavi to assert a claim of infringement. PTOT therefore lacked standing to appeal the Board’s decision.
Are Literal Infringement and the Doctrine of Equivalents the Same Issue?
In Wisconsin Alumni Research Foundation V. Apple Inc., Appeal No. 22-1884, the Federal Circuit held that literal infringement and infringement under the doctrine of equivalents are treated as the same issue for issue preclusion.
Wisconsin Alumni Research Foundation (“WARF”) appealed final judgments in two related litigations against Apple. In the first litigation (“WARF I”), WARF alleged that Apple’s A7 and A8 processors infringe WARF’s ’752 patent. In the second litigation (“WARF II”), WARF alleged that Apple’s A9 and A10 processors infringed the same patent. In WARF I, a jury found that Apple literally infringed WARF’s patent. Apple appealed the jury verdict and the Federal Circuit reversed. WARF II was stayed pending the outcome of the WARF I appeal. WARF then requested a new trial in WARF I on infringement under the doctrine of equivalents. WARF also sought to continue in WARF II under a doctrine of equivalents theory. The district court denied both requests. In WARF I, the district court denied WARF’s motion for a new trial under a doctrine of equivalents theory because WARF had waived that theory. In WARF II, the district court found that the noninfringement decision in WARF I precluded a finding that the A9 and A10 processors infringed the ’752 patent. WARF appealed both decisions.
The Federal Circuit first affirmed that WARF waived its doctrine-of-equivalents theory in WARF I in part because WARF had affirmatively abandoned that theory for strategic reasons. Next, the Federal Circuit affirmed that WARF’s doctrine of equivalents theory was barred by the earlier finding of no literal infringement. The Federal Circuit held that the A7/A8 processors in WARF I were “essentially the same” as the A9/A10 processors in WARF II and that literal infringement and the doctrine of equivalents are the same “issue” for the purpose of issue preclusion—they share the same statutory basis, were historically treated as the same issue, and the evidence and pretrial preparation would be the same under both theories. Finally, the Federal Circuit held that WARF II was also barred by the Kessler doctrine, which bars infringement claims against essentially the same products after an earlier finding of noninfringement.
