PATENT CASE OF THE WEEK
Telefonaktiebolaget LM Ericsson v. TCL Corporation, Appeal Nos. 2017-2381, -2385 (Fed. Cir. Nov. 7, 2019)
In this week’s Case of the Week, the Federal Circuit reviewed two inter partes review decisions of unpatentability that turned on the availability of a specific, foreign publication as an available prior art reference.
The patent at issue, owned by appellant Ericsson, claimed methods of receiving and processing wireless signals at multiple frequencies, without requiring separate receiver components for different frequencies.
The principal reference relied on by petitioner TCL was an article by Professor Hans-Joachim Jentschel published in the May/June 1996 edition of a German technical journal. It was shown that the article did not reach a library in the United States until October 1996. Ericsson argued that TCL had not shown that the Jentschel article was publicly available more than one year before Ericsson’s earliest asserted filing date of July 1, 1997, and that it was therefore subject to antedating by Ericsson’s invention date.
TCL initially submitted a letter from a German librarian to the effect that the public had access to the article in June 1996, but the statement was withdrawn over Ericsson’s hearsay objection when the librarian declined to provide a sworn statement or testify in the United States. When TCL submitted a sworn declaration of a second German librarian, Ericsson objected to it as untimely, arguing that TCL had not been diligent in presenting sufficient evidence of public accessibility at the petition stage. On this preliminary matter, the Federal Circuit found that PTAB did not abuse its discretion in admitting the second declaration as supplemental information “in the interests of justice.” The Court reasoned that the evidence was reasonably viewed as material, and the Board had ensured that Ericsson had the opportunity to depose the witness and to respond to the substance of the Jentschel reference.
The librarian’s declaration was based on library records showing that the journal issue had been inventoried and shelved in June 1996. However, Ericsson also argued that “precedent requires something more than simply shelving the document in a library” to show that it was publicly accessible, and that the Board improperly placed the burden on Ericsson to prove the Jentschel article’s date of availability. The Federal Circuit disagreed, distinguishing cases in which an uncatalogued copy of a thesis housed in a library had been found not to be publicly accessible. Here, the Court noted that the journal had been published for 30 years, indicating that persons interested in its subject matter would have been aware of the publication. Noting that Ericsson offered no evidence to counter the librarian’s testimony and records, the Court found that substantial evidence supported the Board’s ruling that it was accessible to the public prior to July 1996.
The Court went on to affirm, on the merits, the Board’s finding that the challenged claims were obvious over Jentschel and a Japanese reference from 1993.
The opinion can be found here.
ALSO THIS WEEK
Arthrex/Appointments Clause Update
Bedgear, LLC v. Fredman Bros. Furniture Co., Inc., Appeal Nos. 2018-2082, et al. (Fed. Cir. Nov. 7, 2019) (non-precedential)
Last week we covered the Federal Circuit’s opinion in Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Oct. 31, 2019), holding that PTAB panels violated the Appointments Clause in the U.S. Constitution. We also covered three cases issued the next day concerning rights of parties to make Appointments Clause challenges. See our write-up here.
This week, the Bedgear case came before the Federal Circuit, challenging a final written decision in an IPR. An Appointments Clause challenge had been properly preserved in the opening brief on appeal. In a one-paragraph, non-precedential, per curiam opinion, the Federal Circuit vacated and remanded the case to the PTAB, consistent with its holding in Arthrex.
But in a 10-page concurring opinion filed by Judge Dyk and Judge Newman, those judges pushed back on the remedial measures required by the Arthrex panel. In Arthrex, the Court struck language from the America Invents Act to cure the Appointments Clause defect. But it held that the cure was only effective on a going-forward basis, and thus the case needed to be remanded to a new panel of the PTAB to hear the IPR anew.
Judge Dyk and Judge Newman believe the cure should be held retroactive, thus resulting in all IPR final written decisions that were subject to an Appointments Clause issue being “cured.”
The opinion can be found here.
Airbus S.A.S. v. Firepass Corporation, Appeal No. 2019-1803 (Fed. Cir. Nov. 8, 2019)
In an appeal of an inter partes reexamination decision, the Federal Circuit vacated and reversed the PTAB decision based on the legal standard used to establish whether prior art was “analogous art.” The case involves a patent directed to a fire suppression system using breathable air rather than water, foam, or toxic chemicals. In the context of an inter partes reexamination, the patent owner appealed the Examiner’s rejection of claims on obviousness grounds to the PTAB. The PTAB reversed the Examiner’s rejection on grounds that references relied upon by the Examiner were non-analogous prior art that would not have been considered by the ordinarily skilled artisan. The Federal Circuit first recounted the two-part test for defining the scope of analogous prior art. The first test is whether the art is from the same field of endeavor. If not, the second test asks whether the art is nonetheless reasonably pertinent to the problem with which the inventor is involved. The Federal Circuit agreed with the Board’s decision that the prior art in question was from a different field of endeavor. However, the Court found that the Board erred in applying the “reasonably pertinent” test by refusing to consider record evidence advanced by the challenger concerning the knowledge and skill of the person of ordinary skill at the time of the invention. The Federal Circuit held that, if presented, such evidence must be considered in determining whether a reference is “reasonably pertinent” to the invention, and therefore analogous.
The opinion can be found here.
In re: David Fought, Appeal No. 2019-1127 (Fed. Cir. Nov. 4, 2019)
In this appeal of an ex parte review of a rejected patent application by the PTAB, the Federal Circuit addresses issues relating to claim construction as well as anticipation under 35 U.S.C. § 102(b). First, the Court held that a patent application disclosing a travel trailer with separate compartments, whose claims begin with the phrase, “a travel trailer having …,” contains a preamble phrase that limits the scope of the claim to a specific type of recreational vehicle that includes a living quarters. As such, the Court remanded to the patent office for further proceedings because the references previously found to anticipate the claims cannot do so given the structural limitation. The Court also held that neither the PTAB nor an examiner need to articulate the level of skill in the art if the applicant does not place it into dispute and explain how the dispute would alter the outcome.
The opinion can be found here.
