The Federal Circuit has recently ruled on two appeals of Section 337 investigations involving findings of patent invalidity.
As we reported in a prior blog, in Certain Beverage Brewing Capsules, Components Thereof, and Products Containing Same, Inv. No. 337-TA-929, the products under investigation were reusable beverage brewing capsules designed to replace the prior art cup-shaped cartridge (such as the Keurig “K-Cup”) with a reusable capsule version. Reversing the initial determination of the ALJ, the Commission held that the claim phrase “a container . . . adapted to hold brewing material” failed for lack of written description under 35 U.S.C. § 112, first paragraph. According to the Commission opinion, the written description for this term was inadequate because the specification only described the invention narrowly as “a pod adaptor assembly” or “brewing chamber” and did not disclose a container that was itself a pod or that contained an integrated filter, which was the salient feature of the allegedly infringing product. In Rivera v. ITC, No. 2016-1841, a Federal Circuit panel of judges (Reyna, Linn, and Chen) agreed: “[T]he question is whether a pod adaptor assembly intended to allow compatibility between distinct brewing systems, also supports an undisclosed configuration that eliminates a fundamental component of one of those systems (i.e., the ‘pod’) through integration. It does not.” The Federal Circuit found the case substantially similar to prior written description cases, such as ICU Medical, Inc. v. Alaris Medical Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009) (holding that a group of later filed claims that eliminated a spike limitation for medical valves were not supported by a specification that only described medical valves with spikes).
In Certain Wireless Headsets, 337-TA-943, we previously reported that Administrative Law Judge (ALJ) Pender granted respondents’ motion for summary determination that all of the asserted claims of the two patents-in-suit are invalid as indefinite under 35 U.S.C. § 112, ¶ 2 in light of the common requirement that audio output be “virtually free from interference” and that the Commission had affirmed the ruling, which resulted in termination of the investigation with a finding of no violation. In One-E-Way, Inc. v. ITC, No. 2016-2105, however, a Federal Circuit panel (Stoll, Wallach, and Prost, dissenting) reversed. According to the panel majority, the specification and prosecution history demonstrated that the applicant “used the term ‘interference’ in a non-technical manner to simply mean that the wireless headphone user is able to listen without eavesdropping.” The dissent opined that there was “simply not enough for a person of ordinary skill to determine the boundaries of the limitation, much less the import of the word ‘virtually’” and that “the disputed limitation falls far short of the level of clarity required by the Supreme Court under [its 2014 decision in] Nautilus.”
The Federal Circuit’s views on Commission determinations involving substantive patent law are always interesting barometers of the ITC’s constantly-developing expertise in navigating those choppy waters.