University of Florida Research Foundation, Inc. v. General Electric Co., No. 18-1284, Courtroom 201

The University of Florida Research Foundation (UFRF) appeals from a Northern District of Florida decision granting GE’s motion to dismiss after finding that the claims of U.S. Patent No. 7,062,251 (“the ’251 patent”) were directed to a patent ineligible abstract idea. On appeal, UFRF argues that the district court lacked jurisdiction to invalidate the ’251 patent because UFRF enjoys sovereign immunity as an arm of the State of Florida, and thus a private party cannot seek to extinguish the State’s property rights in the ’251 patent absent a waiver of immunity. UFRF further argues that filing an infringement suit constitutes a waiver only as to compulsory counterclaims, not affirmative defenses. GE argues that waiver prevents a state from selectively using its immunity to gain a litigation advantage. Thus, GE argues that any immunity that UFRF might have enjoyed was waived when UFRF filed suit, and that GE is entitled to defend itself, including by asserting patent invalidity as an affirmative defense.

Rapid Completions LLC v. Baker Hughes Inc., No. 18-1125, Courtroom 203

This appeal arises from a PTAB decision invalidating the claims of U.S. Patent Nos. 8,657,009 and 9,074,451 as anticipated by their parent application. The PTAB held that the parent application did not provide sufficient written description support for later filed claims. Rapid Completions argues that the PTAB did not apply the correct legal test for written description in reaching its decision. Specifically, according to Rapid Completions, the PTAB failed to follow the general rule that “disclosure of a species provides sufficient written description support for a later filed claim directed to the genus.” Bilstad v. Wakalopulos, 386 F.3d 1116, 1125 (Fed. Cir. 2004). Rapid Completions contends that the parent application provided sufficient disclosure for the claimed port opening mechanism in light of the detailed description of a preferred embodiment and the knowledge of a person of ordinary skill in the art. Baker Hughes argues that there is no general rule, and that the written description requirement is not satisfied for the genus claim merely by showing that one skilled in the art would have been able to envision a species other than the single species disclosed in the parent specification.

Gaelco S.A. v. Arachnid 360, LLC, No. 18-1469, Courtroom 201

Gaelco appeals from a Northern District of Illinois decision granting Arachnid’s motion to dismiss after finding that U.S. Patent No. 7,361,083 was invalid under 35 U.S.C. § 101. The district court found that the patent, was directed towards a multimedia system and method to allow remote monitoring and refereeing in dart machines, was directed to patent ineligible subject matter because it merely “recite[d] the use of conventional components for their conventional purpose.” Gaelco argues that the district court erred in granting a 12(b)(6) motion when there were disputed questions of fact regarding what would have been well-understood, routine, or convention to a person of ordinary skill in the art. See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). Arachnid, also relying on Berkheimer, argues that the motion to dismiss was properly granted because there are no genuine disputes over the underlying facts that are material to the § 101 inquiry.

Duncan Parking Technologies v. IPS Group, Inc., No. 18-1205, Courtroom 402

This appeal arises from a PTAB decision finding that certain claims of U.S. Patent No. 7,854,310 were not invalid under 35 U.S.C. § 102(e). In this appeal, the Federal Circuit has been asked to consider the application of the inventorship-entity doctrine to determine whether the invention was described “by another” in an earlier-filed application. The inventorship-entity doctrine provides that an invention by joint inventors constitutes prior art to the later work of any single inventor or the later work of a different combination of joint inventors. Under 35 U.S.C. § 102(e), joint inventors are considered a separate inventive entity from each inventor individually as well as from a different combination of inventors.

In this case, the earlier-filed U.S. Patent No. 8,595,054 (“the ’054 patent”) names King and Schwartz as joint inventors. The later-filed ’310 patent names King as a joint inventor, but does not name Schwartz.

On appeal, Duncan Parking Technologies (DPT) argues that the challenged claims of the ’310 patent are invalid because they were conceived by a different inventorship entity. Specifically, DPT argues that the challenged claims incorporate certain elements from Figure 8, and the accompanying disclosure, of the ’054 patent. DPT argues that the “inventive entity” for those elements of the challenged claims in the ’310 patent is King and Schwartz. Because Schwartz was not named as an inventor on the ’310 patent, DPT contends that the ’054 patent constitutes prior art to these claims.

IPS counters that the relevant aspects of the invention depicted and described in the ’054 patent were conceived by King. Thus, IPS argues that King is the “inventive entity” for those elements of the challenged claims. Therefore, IPS contends that the elements incorporated into the challenged claims of the ’310 patent do not constitute work “by another” under § 102(e).