CAFC patent case, 6/3 / 21-6 / 15/21 – Intellectual property

Previous Federal Circuit Opinions

1. HYATT v. HIRSCHFELD [OPINION] (2018-2390, 2018-2391, 2018-2392, 2019-1038, 2019-1039, 2019-1049, 2019-1070, 01/06/2021) (Reyna, Wallach, Hughes)
   Reyna, J. The Court addressed the issue of “underwater patents” and held that “prosecution is a defense available to the Patent and Trademark Office in an action to obtain a patent under 35 USC § 145 ”. The Court noted that underwater patents are those which result from a patent applicant who repeatedly files applications, abandons them and files continuation applications in their stead so that the patentee “can obtain a patent. at a financially desirable time when the market for the offending product had developed appropriately. . “The Court noted that underwater patents can upset the expectations of product manufacturers and drain the resources of the Patent Office.” During the negotiations of the Agreement on Trade-Related Aspects of Intellectual Property (‘ TRIPS Agreement ‘) during the Uruguay Round of the General Agreement on Tariffs and Trade (‘ GATT ‘), the United States sought to resolve the submarine patent problem by agreeing to pass the duration of US patents from 17 years from the date of grant to 20 years from the date of filing of the application or of an earlier non-provisional application over which the application in question claims priority. ”In that case, the court considered several claims claiming priority from claims that the plaintiff, Hyatt, filed in the 1970s and 1980s. The court ruled that lawsuits could be brought by the patent office against Mr. Hyatt. The court explained than “[a]n The claimant must not only comply with legal requirements and PTO regulations, but must also pursue his claims in a fair manner that avoids unreasonable and unexplained delays that cause harm to others. – intentionally or not – in a clear abuse of the PTO patent examination system which contributed to delaying the four applications at issue. Unless there is significant evidence to the contrary from Hyatt, the PTO has therefore demonstrated material harm. The court returned for further proceedings.
2. SPEEDTRACK, INC. against AMAZON.COM, INC. [OPINION] (2020-1573, 2020-1660, 03/06/2021) (Prost, Bryson, Reyna)
   Prost, J. The Court upheld a final non-infringement judgment which depended on the interpretation of the district court’s claim. The patent in question relates to a “computer filing system allowing access to files and data according to criteria defined by the user”. The Court found that the interpretation of the district court’s request correctly applied a disclaimer based on the changes and arguments made by the petitioner during the prosecution. In particular, the Court agreed with the District Court that “[t]The prosecution history demonstrates a clear and unambiguous disavowal of category descriptions based on hierarchical field and value systems “and upheld the construction of the district court claim.
3. Chandler v. PHOENIX SERVICES LLC [ORDER] (2020-1848, 10/06/2021) (Chen, Wallach, Hughes)
   Hughes, J. The Court held that it did not have jurisdiction over the appeal of an “action of monopolization of the Walker process under § 2 of the Sherman Act” because the case did not “arise. under the patent laws of the United States “. To be successful on a Walker process claim, a claimant must prove (1) that the antitrust defendant obtained the patent by willful and willful fraud of the patent office and upheld and enforced that patent with knowledge of fraudulent purchase, and (2) that the plaintiff can meet all other elements necessary to establish a monopolization claim under the Sherman Act “(quotation marks and citation omitted). on the appeal, the court explained: “While the Walker process antitrust claims may relate to patents in the colloquial use of the term, our jurisdiction extends only to cases in which a well-argued complaint establishes either that the government federal patent law creates the cause of action or that the plaintiff’s right to remedy necessarily depends on the resolution of an important question of federal patent law, in that sense q ue patent law is a necessary part of one of the well argued claims … here, because Chandler’s cause of action arises out of Sherman law rather than patent law, and because the claims do not depend not the resolution of an important question of patent law, we have no jurisdiction in the matter. ” The Court therefore transferred the appeal to the United States Court of Appeals for the Fifth Circuit, which has appellate jurisdiction over the District Court for the North District of Texas.
4. YU v. APPLE INC. [OPINION] (2020-1760, 2020-1803, 06/11/2021) (Newman, Prost, Taranto)
   Prost, J. The Court upheld the decision of a district court granting a motion to dismiss two patent infringement actions on the grounds that the claimed patent is invalid under Section 35 USC § 101. The patent in case generally concerns “digital cameras using multiple sensors with multiple lenses.” The court agreed with the district court that the claims are “directed towards the abstract idea of ​​taking two photos (which may be at different exposures) and to use one image to improve the other in some way. “The Court also recognized that the claims did not” have a sufficient inventive concept to transform the abstract idea claimed into an invention capable of the subject of a patent. ”The Court concluded that“[t]he asserted that the configuration does not add enough substance to the underlying abstract idea of ​​improvement – the generic hardware limitations of claim 1 simply serve as a conduit for the abstract idea. Justice Newman dissented.

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