Case: Apple Inc. v. Int’l Trade Comm’n, No. 2012-1338 (Fed. Cir. Aug. 7, 2013) (precedential). On appeal from U.S. International Trade Commission (“ITC”). Before Moore, Linn, and Reyna.
Procedural Posture: Complainant appealed ITC’s claim construction and final determinations of anticipation, obviousness, and non-infringement. CAFC affirmed-in-part, reversed-in-part, vacated-in-part, and remanded.
- Written Description: The ITC correctly determined that a provisional patent application provided adequate written description support to allow a later non-provisional patent application to claim priority to the earlier application.
- Anticipation: The ITC erroneously determined that a prior art patent application was anticipatory, where part of the anticipatory disclosure was incorporated by reference to another application. The host application failed to incorporate the source application by reference because rather than “identify[ing] with detailed particularity what specific material it incorporates and clearly indicat[ing] where that material is found in [the source application],” the host application merely “makes a passing reference to [the source application].” Thus, the host application by itself anticipated only some, but not all, of the asserted claims.
- Anticipation (printed publications): The ITC correctly determined that a particular printed publication did not anticipate the asserted claims, where the alleged anticipatory disclosure was limited to a brief discussion of “future ‘research directions’” and “[t]here [was] no disclosure that the authors had achieved [the patented invention] and the record [did] not indicate that it would have been routine to do so.”
- Obviousness: The ITC failed to follow established precedent requiring evaluation of secondary considerations before determining whether the claimed invention would have been obvious to one of skill in the art. The complainant had provided evidence of: industry praise for its products; copying of its products; and a high degree of commercial success of its products, including a nexus between the success and the patented features. The ITC erroneously based its obviousness determination on solely the disclosure of the prior art references, and never mentioned, as part of its obviousness analysis, the secondary considerations.
- Claim Construction: The ITC erroneously construed “mathematically fitting an ellipse” to require actually fitting an ellipse to the data, and then in a separate step, calculating the mathematical parameters that define an ellipse. The plain meaning of the term requires only calculating the parameters that define an ellipse.
Reyna, concurring-in-part and dissenting-in-part:
- Written Description: The majority misapplied the requirement that, for an application to claim priority back to an earlier application, the disclosure in an earlier application must comply with 35 U.S.C. § 112, ¶ 1. Given the critical differences between the two disclosures, the later application is not entitled to the earlier priority date.
- Obviousness: The majority correctly held that the ITC erred in making an obviousness determination without fully considering evidence pertaining to industry praise, copying, and commercial success. The complainant’s evidence of secondary considerations is dispositive that the asserted claims were innovative and non-obvious.
- Anticipation: The majority correctly held that the various prior art references were not anticipatory.
- Claim Construction: The majority correctly construed “mathematically fitting an ellipse.”