Precedential Federal Circuit Opinions

  1. SECURITY PEOPLE, INC. v. IANCU [OPINION] (2019-2118, 8/20/2020) (LOURIE, WALLACH, and HUGHES)Hughes, J. Affirming the district court’s dismissal of an Administrative Procedure Act action challenging the constitutionality of an inter partes review proceeding. Patentee filed suit against the United States Patent and Trademark Office and its Director, seeking a declaratory judgment that the retroactive application of an inter partes review proceeding to cancel claims of its patent violated its constitutional rights, namely its Fifth Amendment due process right. But Congress foreclosed the possibility of collateral APA review of inter partes review decisions by district courts. Patentee could not “bring an APA challenge when the statutory scheme separately establishes an adequate remedy in a court for its constitutional challenge.” The agency action here—the final written decision of an IPR—was reviewable by statute, but in the Federal Circuit, not in an APA-based collateral attack in a district court.

  2. Newman, J. Affirming the district court’s dismissal of a patent infringement suit on the ground of res judicata. In a prior suit, plaintiff failed to respond to motions to dismiss and that failure was treated as a judgment on the merits. In the present suit, plaintiff alleged no different conduct or acts, and the defendant was the same. The district court properly held that the prior dismissal is res judicata, because the defendant was charged with the same acts of infringement of the same patent.

  3. Hughes, J. Affirming the Court of Federal Claims’s dismissal on the ground that the cancellation of a patent in an inter partes review does not grant the patentee any compensable claim against the United States. Patentee filed a class-action suit in the Court of Federal Claims, asserting Fifth Amendment takings and illegal exaction claims for compensation from the government based on the PTAB’s cancellation of certain claims in its patent. The Federal Circuit’s recent decision in Golden v. United States confirmed that the cancellation of patentee’s claims in an inter partes review was not a Fifth Amendment taking. With respect to patentee’s illegal exaction claim, payment of standard issuance and maintenance fees—and the PTO’s refusal to refund the fees after certain claims in the relevant patent were canceled—did not stem from any mistake or impropriety by the PTO, but followed the requirements of the law. The PTO did not collect fees in excess of its statutory authority, and therefore did not illegally exact those fees.

  4. Chen, J. Affirming district court’s grant of summary judgment that certain accused products were not infringing. The district court correctly held that, read in light of the specification, the phrase “substantially flat surface disposed perpendicular to the centerline of the tubular pile” does not refer to any interior-facing surface. The district court also correctly held that the plain meaning of the claim, which requires that the “protrusion” is “extending outwardly” from the “end plate,” does not extend to a structure in which the alleged “end plate” is an indistinguishable part of the alleged “protrusion”; an object cannot protrude from itself.

  5. Moore, J. Vacating judgment of non-infringement, because the district court erred in construing the terms “antibody” and “antibody fragment.” Plaintiff argued “antibody” should be construed as “[a] molecule having a specific amino acid sequence comprising two heavy chains (H chains) and two light chains (L chains).” Defendant argued “antibody” should instead be construed as “[a]n immunoglobulin molecule, having a specific amino acid sequence that only binds to the antigen that induced its synthesis or very similar antigens, consisting of two identical heavy chains (H chains) and two identical light chains (L chains).” The district court determined that “the term antibody standing alone without other structural terms can have different meanings to those skilled in the art,” and that both parties’ proposed constructions were acceptable definitions. However, the district court incorrectly determined that the patentee “chose [defendant’s] narrower definition” by expressly defining antibodies in the patent specification. However, when considered in the context of the remainder of the written description and the claims, that excerpt was a generalized introduction to antibodies rather than a definitional statement. The written description provided specific disclosures regarding bispecific, chimeric, and humanized antibodies and methods of production thereof, all of which did not comport with the district court’s construction. The district court erred in selecting the narrower construction, which was inconsistent with the written description and the plain language of the claim.

  6. Prost, C.J. Affirming the district court’s claim construction but vacating the invalidity judgment based on judicial estoppel. At issue was the construction of the limitation “logic to modify,” which the district court correctly construed as a means-plus-function element. Patentee did “not explain how its ‘logic’—even assuming it connotes some possible structure in the general sense of software, firmware, or circuitry—amounts to ‘sufficient structure for performing [the modification] function.’” With respect to the invalidity judgment, Patentee had petitioned the PTO--prior to the litigation--to remove one of the named inventors as a listed inventor. The PTO had granted patentee’s petition and removed the relevant inventor’s name. The district court subsequently conducted a three-day bench trial on inventorship and found, in defendant’s favor, that the originally named inventor had conceived of the relevant invention. The district court also found, incorrectly, that patentee was judicially estopped from invoking § 256 to restore the relevant inventor’s name, thereby holding the asserted patent invalid. Under § 256, “error” is simply the incorrect listing of inventors and does not exclude “considered acts” or even “deceptive intention.” Thus, patentee could correct inventorship, absent judicial estoppel. In this case, the criteria for judicial estoppel were not met. Even though judicial estoppel can occur in an administrative tribunal, a § 256 petition, without more, did not count as “persuasion” of a “court” for judicial-estoppel purposes.

  7. Prost, C.J. Modifying and reissuing March 18, 2020, opinion, following a combined petition for panel rehearing and rehearing en banc filed by Appellant-Petitioner. Appellee-Patent Owner had argued that the Board’s decisions granting joinder were improper. Appellant-Petitioner and the PTO argued that the Federal Circuit did not “have jurisdiction to review the Board’s joinder decisions in this case,” under 35 U.S.C. § 314(d), which provides that “[t]he determination by the Director to institute an inter partes review under this section shall be final and nonappealable.” To join a party to an instituted IPR, the plain language of § 315(c) requires two different decisions. First, the statute requires that the Director (or the Board acting through a delegation of authority) determine whether the joinder applicant’s petition for IPR “warrants” institution under § 314. The Federal Circuit may not review this decision, whether for timeliness or to consider whether the petitioner is likely to succeed on the merits. Second, to effect joinder, § 315(c) requires the Director to exercise discretion to decide whether to “join as a party” the joinder applicant. That is, the statute requires the Director (or the Board on behalf of the Director) to make a “joinder decision.” The statute makes clear that the joinder decision is made after a determination that a petition warrants institution, thereby affecting the manner in which an IPR will proceed. Thus, the joinder decision is separate and subsequent to the intuition decision. Nothing in § 314(d), nor any other statute, overcomes the strong presumption of jurisdiction to review that joinder decision. Patent Owner’s appeal of the Board's joinder decisions was more like the reviewable challenge in SAS, which concerned whether the PTO had exceeded its statutory authority as to the manner in which the already-instituted IPR proceeded.