IP UPDATE
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Exploring the latest in intellectual property law
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Stay in the Know: Informational Message Is Not a Source Identifier

by | Feb 1, 2024 |

Addressing whether the mark EVERYBODY VS. RACISM was registrable, the US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s final refusal to register the mark because it failed to function as a source identifier. In re: GO & Assoc., LLC, Case No. 22-1961 (Fed. Cir. Nov. 13, 2023) (nonprecedential) (Fed. Cir. Jan. 22, 2024) (precedential) (Lourie, Reyna, Hughes, JJ.)

On June 2, 2020, GO & Associates filed a trademark application seeking registration on the principal register of EVERYBODY VS. RACISM, identifying the goods and services as various apparel “promoting public interest and awareness of the need for racial reconciliation and encouraging people to know their neighbor and then affect change in their own sphere of influence.”

In a non-final office action, the examining attorney refused to register the mark, asserting that it “failed to function as a source identifier for GO’s goods and services.” The examiner noted that the mark “merely convey[ed] support of, admiration for, or affiliation with the ideals conveyed by the message.” The examiner presented examples of the mark being used in informational settings, such as by referees in the National Basketball Association; in YouTube videos; on clothing; and in titles of rap songs, podcasts and church sermons. Although GO presented evidence that the mark had hardly been used or searched prior to its use in May 2020, the examining attorney continued to reject the application. The examiner found that “the ornamental uses of the mark only reinforced the fact that consumers would likely view the mark as a sentiment rather than a source.” The examiner also noted that the applicant’s first use of the mark coincided with the “general timeline of the heated anti-racism protests throughout the nation in the wake of the George Floyd killing.”

GO appealed to the Board. The Board found “that the record as a whole show[ed] wide use of the proposed mark in a non-trademark manner to consistently convey an informational, anti-racist message to the public, as opposed to a source identifier of GO’s goods and services,” and affirmed the examiner’s refusal to register the mark. GO appealed to the Federal Circuit.

Affirming the Board’s decision, the Federal Circuit emphasized that the threshold requirement for the issuance of a mark is whether it is source identifying: “what makes a trademark a trademark under the Lanham Act is its source-identifying function.” The mark must identify the source for the public and distinguish that source from others.

The Federal Circuit noted that whether a mark is source identifying depends on “how the mark is used in the marketplace and how consumers perceive it.” In particular, the US Patent & Trademark Office prohibits registering marks that it calls “informational matter” (i.e., “slogans, terms, and phrases used by the public to convey familiar sentiments, because consumers are unlikely to perceive the matter as a trademark or service mark for any goods and services”). Reviewing the Board’s findings for substantial evidence, the Court found that the Board properly weighed the [...]

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Scattered Disclosures May Not Lead to Inference of Fraud in FCA Claim

by | Feb 1, 2024 |

The US Court of Appeals for the Ninth Circuit denied a petition for panel rehearing and rehearing en banc and issued an amended opinion that reversed a district court’s decision regarding the False Claims Act’s (FCA) public disclosure bar. Silbersher v. Valeant Pharm. Int’l, Inc., Case No. 20-16176 (9th Cir. Aug. 3, 2023; amended Jan. 5, 2024) (Schroeder, Sanchez, Antoon, JJ.)

The FCA imposes civil liability on those who knowingly present a fraudulent claim for payment to the federal government and allows “relators” to bring fraud claims on behalf of the government.

Valeant owns a set of patents that cover a delayed-release formula for a medication prescribed to treat ulcerative colitis. In 2015, a generic drug manufacturer, GeneriCo, challenged one of Valeant’s patents in an inter partes review (IPR) proceeding. Ultimately, the Patent Trial & Appeal Board found Valeant’s patent unpatentable based on two articles co-authored by Valeant’s head of research.

Silbersher was GeneriCo’s lawyer in the IPR proceeding. He discovered that three years before applying for the challenged patent, Valeant had applied for another patent that disclosed the exact opposite of what Valeant would claim in the challenged patent. Silbersher brought an FCA action alleging that Valeant failed to disclose this information in the IPR proceeding. In response, Valeant argued that the public disclosure bar applied. The district court decided that an IPR qualified as an “other Federal hearing” under channel (ii) of the public disclosure bar and dismissed Silbersher’s action. Silbersher appealed.

On appeal, the Ninth Circuit reversed the district court. Valeant filed a petition for panel rehearing and rehearing en banc. The Court issued an amended decision that refocused on its analysis under its 2016 decision in Mateski v. Raytheon. Under Mateski, the public disclosure bar applies when “the disclosure at issue occurred through one of the channels specified in the statute; the disclosure was ‘public;’ and the relator’s actions are ‘based upon’ the allegations or transactions publicly disclosed.”

The Ninth Circuit discussed whether Valeant’s disclosures revealed “substantially the same allegations or transactions” as Silbersher’s qui tam action. As discussed in the original decision, this was a first for this court, which had not yet “interpreted substantially the same prong of the public disclosure bar” under the 2010 Congress amendments. Mateski explained that to disclose a public fraudulent transaction according to the formulation X+Y=Z (where Z is the fraud allegation and X and Y are the essential elements), “the combination of X and Y must be revealed from which readers or listeners may infer Z, the conclusion that fraud has been committed.”

The Ninth Circuit then applied the Mateski framework to conclude that the qualifying public disclosures here did not collectively disclose a combination of facts sufficient to permit a reasonable inference of fraud. It explained that although “scattered disclosures when viewed together possibly reveal some of these true and misrepresented facts,” fraud could not reasonably be inferred from the combinations. Neither Valeant’s patent prosecutions nor disclosures revealed the critical information necessary to support [...]

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R&D Expenditures Need Only Relate to Subset of Domestic Industry Product

by | Feb 1, 2024 |

Addressing a decision by the US International Trade Commission finding a violation of Section 337 based on importation of certain TV products, the US Court of Appeals for the Federal Circuit agreed that the patent holder had established a domestic industry based on research and development (R&D) relating to only a subset of the domestic industry products. Roku, Inc. v. ITC, Case No. 22-1386 (Fed. Cir. Jan. 19, 2024) (Dyk, Hughes, Stoll, JJ.)

In 2020, Universal Electronics filed a complaint at the Commission seeking a Section 337 investigation of certain streaming devices, TVs, set top boxes and remote controls sold by Roku and others that allegedly infringed six of Universal Electronics’ patents. During the investigation, the administrative law judge (ALJ) granted Roku’s summary determination motion that Universal Electronics lacked ownership of one of the patents, but the Commission promptly reversed that decision. Prior to the hearing, Universal Electronics terminated the investigation as to the three other patents and all respondents other than Roku. The ALJ subsequently issued an initial determination finding infringement and domestic industry for all three patents but held that two of the patents were invalid. The Commission agreed and issued a limited exclusion order barring Roku’s importation. Roku appealed.

Roku raised three challenges to the Commission’s decision on appeal. Roku renewed its ownership argument, disputed the domestic industry finding, and contested the holding of nonobviousness. The Federal Circuit affirmed on all issues.

On ownership, the Federal Circuit faced the question of whether an inventor had executed an automatic assignment or merely a promise to assign. The Court noted that Roku only addressed a 2004 agreement cited by the ALJ and disregarded a later 2012 agreement relied on by the Commission where the inventor agreed to “hereby sell and assign” the patent.

The Federal Circuit rebuffed Roku’s argument that the domestic industry prong was not satisfied on the basis that Universal Electronics failed to allocate expenses to specific domestic industry products. Instead, the Court noted that Section 337 requires investment in the exploitation of the intellectual property and explained that the expenditures can relate to only a subset of a product if the patent only involves that subset.

Finally, regarding obviousness, the Federal Circuit noted that Roku’s arguments regarding secondary considerations ignored the Commission’s finding that the prior art combination failed to satisfy the key claim limitation. As to secondary considerations, the Court dismissed Roku’s lack of nexus argument by finding that it did not matter that the news articles showing a long-felt but unmet need also discussed features other than what was claimed by the patent.



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Keep Calm and Party On: New Issue Prohibition Doesn’t Apply to Motions to Amend

by | Jan 25, 2024 |

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board obviousness determination, explaining that inter partes review (IPR) statutory provisions that prohibit an otherwise time-barred party from introducing new issues into the proceeding do not apply to motions to amend. CyWee Group Ltd. v. ZTE (USA), Inc. et al., Case No. 21-1855 (Fed. Cir. Jan. 18, 2024) (Prost, Hughes, Stoll JJ.)

CyWee owns a patent directed to a “three-dimensional (3D) pointing device capable of accurately outputting a deviation including yaw, pitch and roll angles in a 3D reference frame and preferably in an absolute manner.” ZTE filed a petition for IPR of the patent asserting that certain claims were unpatentable. The Board instituted the IPR. LG later filed an IPR petition challenging the patent and moved to join ZTE’s ongoing IPR, stating that it would “act as a passive ‘understudy’ and [would] not assume an active role unless [ZTE] ceases to participate in the instituted IPR.”

While LG’s motion was pending, CyWee moved to amend its patent claims, contingent on cancellation of the original claims. ZTE opposed the motion to amend. The Board gave preliminary guidance that the proposed claims lacked written description support and introduced new matter, and also that one of the proposed claims was invalid over the asserted prior art.

The Board granted LG’s motion to join ZTE’s IPR proceeding but placed restrictions on LG’s participation that required LG to consolidate filings with ZTE, rely on ZTE to take and defend depositions, refrain from requesting or reserving additional deposition or oral hearing time, and agree to other procedural concessions to minimize delay to the IPR proceeding.

After LG’s joinder, CyWee filed a revised motion to amend. ZTE indicated that it did not oppose the motion. LG, arguing that ZTE was no longer actively participating in the IPR, moved for leave to oppose CyWee’s motion to amend. Ultimately, the Board permitted LG to present argument and evidence independent from ZTE. LG filed an opposition arguing that CyWee’s proposed revised claims were obvious over Withanawasam, Bachmann and Bachmann2. Notably, ZTE had not cited Withanawasam in its opposition to CyWee’s initial motion to amend.

After the Board issued its final decision finding that the proposed revised claims were obvious over Withanawasam, Bachmann and Bachmann2, CyWee appealed.

CyWee argued that the Board erred by allowing LG to oppose CyWee’s motion to amend in a manner that violated the terms of LG’s joinder and by allowing LG to raise Withanawasam in opposition to the motion to amend. The Federal Circuit rejected both arguments. The Court explained that the Board concluded that although ZTE still participated in the IPR, the proceeding “no longer appear[ed] to be meaningfully adversarial” as to the revised motion to amend. The Court found no error in the Board’s conclusion that ZTE was no longer an active participant in the IPR proceeding, and thus there was no violation of the joinder terms.

The Federal Circuit also concluded that the Board did not err [...]

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PTO Continues to Wave Wands in Assessing Enablement

by | Jan 18, 2024 |

In light of the 2023 Supreme Court of the United States decision in Amgen Inc. v. Sanofi, the US Patent & Trademark Office (PTO) published guidelines for PTO employees to use, regardless of technology, to ascertain compliance with the enablement requirement under 35 U.S.C. § 112. (89 Fed. Reg. 1563 (Jan. 10, 2024).) Unsurprising to those familiar with the Amgen decision, the PTO hewed closely to existing practice.

The PTO collected the Supreme Court’s clarifications regarding the relationship between the enablement requirement and an amount of experimentation, namely that although particular disclosure of all embodiments is not required, claims are not enabled if they require more than reasonable experimentation. Regarding the “reasonable experimentation” requirement, the PTO explained that consistent with several post-Amgen US Court of Appeals for the Federal Circuit opinions, it would continue to apply the factors that the Federal Circuit announced in its 1988 In re Wands decision.

Although the PTO intends to continue to rely on pre-Amgen Federal Circuit Wands analyses as instructive, it found particular persuasive force since the Federal Circuit’s decision was affirmed by the Supreme Court in Amgen. There, according to the guidance, the Federal Circuit concluded that the genus claims were not enabled because of the amount of experimentation required to test whether antibodies satisfied certain functional limitations. Thus, because “the scope of the claims was far broader in functional diversity than the disclosed examples, … [and] the invention was in an unpredictable field of science with respect to satisfying the full scope of the functional limitations, … there was not adequate guidance in the specification.”

The PTO also noted that the Federal Circuit’s 2023 Baxalta v. Genentech decision, like Amgen, found claims directed to antibodies that contained certain functional limitations to be invalid. There, the Court, like the PTO, detected no appreciable difference between the reasonable experimentation standard as articulated in Wands and the standard as set forth in Amgen. The guidance canvassed other post-Amgen enablement decisions, all of which the PTO read to support continued reliance on Wands.

Practice Note: Although the PTO says that it will continue to apply the Wands factors as it has before, the Amgen decision may, as a practical matter, make establishing enablement of functional limitations more difficult. Whether examiners—especially those in life sciences technology areas—change the course of their review post-Amgen remains to be seen.



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Ordinary Meaning: “Identifying” Doesn’t Mean Detecting; It Means Identifying

by | Jan 18, 2024 |

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s decisions finding one set of challenged claims patentable and another set of challenged claims in the same patent unpatentable. The Court determined that the Board properly construed a disputed claim term and made factual findings regarding prior art that were supported by substantial evidence. Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., Case Nos. 22-1410; -1554 (Fed. Cir. Jan. 9, 2024) (Prost, Taranto, Hughes, JJ.)

Pacific Biosciences of California (PacBio) filed two petitions seeking inter partes review (IPR) of different claim groups in a patent owned by Personal Genomics Taiwan (PGI). The challenged patent is directed to an apparatus for “identifying a single biomolecule” and methods of using or making that apparatus. The petitions overlapped in terms of the challenged claims but differed in terms of the invoked prior art. PacBio’s challenge (on both anticipation and obviousness) was based principally on the Hassibi reference in one IPR and on the Choumane reference in the other.

The Board rejected PacBio’s challenge to certain claims of the patent in its decision on the first IPR, but it agreed with PacBio’s challenge to certain claims of the patent in its decision in the other. In reaching its decisions, the Board construed the term “identifying a single biomolecule” as requiring an apparatus capable of ascertaining the identity of one single individual biomolecule by examining only that biomolecule. In the first decision, the Board found that this limitation was not taught by the Hassibi reference. In contrast, in the other IPR, the Board found that this limitation was taught by the Choumane reference. Both parties appealed.

The Federal Circuit affirmed both Board decisions. First, the Court agreed with the Board’s construction that the disputed claim term (“single biomolecule”) was the ordinary meaning of the phrase in context, namely that there was no apparent reason for the inclusion of the word “single” in the claim term unless to indicate that the capability required was identification of a molecule with just that one molecule in view. The Court explained that the specification supported this understanding by repeatedly stressing that this “single biomolecule” capability was critical to the invention and by differentiating the examination of individual biomolecules from examination of an ensemble of copied biomolecules. The Court also pointed to dependent claims of the patent to provide support for the Board’s construction (in terms of claim differentiation), noting that those claims recited using the claimed apparatus for expressly described multiple-molecule examinations.

Regarding the prior issues on appeal, the Federal Circuit concluded that the Board’s factual findings were supported by substantial evidence. Turning to the Hassibi reference, the Court stated that the Board reasonably credited the testimony of PGI’s expert and the Hassibi reference itself in finding that Hassibi only disclosed the capability to ascertain the identity of a single biomolecule using a BRC assay or different assay. With respect to the Choumane reference, the Court found that the Board reasonably [...]

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Don’t Assume Sweet Success: Forum Selection Clause Doesn’t Preclude IPR

by | Jan 11, 2024 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s denial of a preliminary injunction seeking to bar a petitioner from challenging certain patents at the US Patent & Trademark Office (PTO) because of a forum selection clause in a settlement agreement. The Court found that the patent owner was unlikely to succeed on the merits based on the likelihood of success factor. DexCom, Inc. v. Abbott Diabetes Care, Inc., Case No. 23-1795 (Fed. Cir. Jan. 3, 2024) (Dyk, Hughes, Stoll, JJ.)

DexCom and Abbott are competing manufacturers of continuous glucose monitoring systems. In 2014, the parties entered into a settlement agreement that included a cross-license to certain patents, covenants not to sue or challenge the patents for a “Covenant Period,” and a forum selection clause identifying the US District Court for the District of Delaware as the exclusive jurisdiction “over any dispute arising from or under or relating to [the] Agreement, to the extent permitted by law.” After expiration of the Covenant Period, DexCom sued Abbott in the Western District of Texas. Abbott moved to transfer the case to the District of Delaware and added a breach of contract counterclaim, citing the settlement agreement’s forum selection clause. The case was transferred to Delaware, after which Abbott filed eight petitions for inter partes review (IPR) at the PTO. DexCom responded to the breach of contract counterclaim by alleging that Abbott had breached the forum selection clause by filing the IPR petitions. Until this point, DexCom had consistently taken the position that the asserted claims were not subject to the cross-license, rendering the forum selection clause inapplicable.

Six months after Abbott filed the IPR petitions, DexCom moved for a preliminary injunction prohibiting the IPRs from proceeding. The district court denied the preliminary injunction. In evaluating the four injunctive relief factors (i.e., likelihood of success on the merits, irreparable harm, balance of hardships and public interest), the district court simply assumed the likelihood of success in favor of DexCom. It nevertheless denied the injunction because DexCom waited six months to file the motion (suggesting there was no irreparable harm) and because DexCom had taken inconsistent legal positions with respect to whether the challenged patents were licensed, thus weighing against DexCom in the balance of hardships factor. DexCom sought interlocutory appeal of the district court’s order.

The Federal Circuit focused on the first factor, likelihood of success on the merits. While the district court assumed that this factor favored DexCom, the Federal Circuit disagreed. The Court noted that the agreement required that DexCom and Abbott “shall not Challenge” each other’s patents during the Covenant Period, with the exception that “each Party reserves its rights and is permitted to Challenge any of the patents of the other Party if there is a statute, regulation, or rule that sets a deadline to make the Challenge,” assuming certain conditions were met. The Court first explained that “challenge” includes IPRs of the patents and that nothing in the forum selection clause differentiated between the [...]

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Espresso Yourself: When Prosecution History as a Whole Doesn’t Demonstrate Clear, Unmistakable Disclaimer

by | Jan 4, 2024 |

The US Court of Appeals for the Federal Circuit reversed and remanded a district court’s claim construction and related summary judgment rulings after determining that the district court erred in construing a claim term by improperly limiting the plain and ordinary meaning of the term. K-fee System GmbH v. Nespresso USA, Inc., Case No. 22-2042 (Fed. Cir. Dec. 26, 2023) (Taranto, Clevenger, Stoll, JJ.)

K-fee filed a lawsuit against Nespresso alleging infringement of three K-fee patents directed toward coffee machine portion capsules that use a barcode. The district court issued a claim construction order construing the term “barcode,” which was present in every asserted claim. In the claim construction order, the district court characterized the dispute as “whether statements made by K-fee System GmbH . . . before the EPO [European Patent Office] concerning the meaning of ‘barcode’ should influence the plain and ordinary meaning of that limitation in these proceedings.”

In the EPO, Nespresso’s foreign affiliate had challenged the validity of K-fee’s related European patent, and K-fee had responded seeking to distinguish a particular piece of prior art (Jarisch/D1). Because the statements made to the EPO were submitted to the US Patent & Trademark Office during prosecution of the asserted patents, the district court analyzed the statements as part of the intrinsic record. The district court concluded that K-fee had “argued strenuously before the EPO for a particular ‘plain and ordinary meaning,’ which excluded ‘bit codes’—codes made up of two binary symbols.” Based on the EPO submissions, the district court construed the claim term “barcode” to:

its plain and ordinary meaning (i.e., a code having bars of variable width, which includes the lines and gaps), the scope of which is understood by the clear and unequivocal statements K-fee made to the EPO (i.e., the scope of barcode does not include the type of bit code disclosed in Jarisch/D1).

Based on that construction of “barcode,” Nespresso moved for summary judgment of noninfringement. It argued that its accused products operated identically to Jarisch capsules, which K-fee distinguished before the EPO, since both use a machine-readable code with only two binary symbols. The district court agreed. When applying its construction at summary judgment, the district court clarified that using “the type of bit code disclosed in Jarisch” … means “a binary code containing only ‘0s’ and ‘1s.’” Thus, the district court read K-fee’s EPO statements “to mean that a barcode must ‘contain more than only two binary symbols’ and, by extension, that any code that contains only two binary symbols could not be a barcode.” Because the court found that “there was no dispute that Nespresso’s accused products used a code having only two symbols,” it granted Nespresso’s motion for summary judgment of noninfringement. K-fee appealed.

Considering the issue de novo, the Federal Circuit reviewed K-fee’s statements to the EPO in context and disagreed “that the ordinary meaning of ‘barcode’ excludes ‘bit codes’ (in some sense, two-value codes) or even bit codes of ‘the type . . . disclosed in Jarisch’ to [...]

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TikTok: Federal Circuit Follows Fifth Circuit, Transfers Case for Witness Convenience

by | Dec 21, 2023 |

In the first mandamus decision applying the US Court of Appeals for the Fifth Circuit’s new transfer motion guidelines under 28 U.S.C. 1404(a), the Federal Circuit followed suit and transferred a case for witness convenience. In re Samsung Elecs. Co., Ltd., Case No. 2023-146 (Fed. Cir. Dec. 14, 2023) (nonprecedential) (Prost, Hughes, Stoll, JJ.) (per curiam).

DoDots Licensing sued Samsung in the US District Court for the Western District of Texas (WDTX), alleging that Samsung phones and tablets infringed three DoDots patents. Samsung moved to transfer the case to the Northern District of California (NDCA). The applicable Fifth Circuit law allows for transfer only when the movant shows that the transferee forum is “clearly more convenient” than the transferor forum, which is determined by assessing a series of private and public interest factors. Echoing three of those factors, Samsung argued the following:

  • The teams that developed the allegedly infringing functionalities resided in NDCA and Korea.
  • Important third-party witnesses could be compelled to testify in NDCA but not in WDTX.
  • There was no meaningful connection between WDTX and the events giving rise to the suit.

Judge Albright denied the motion to transfer. He found that two factors weighed in favor of transfer: the ability to compel witness testimony and NDCA’s local interest in the case. However, Judge Albright also found that two factors weighed against transfer: WDTX was more convenient for certain witnesses, and DoDots’ co-pending and related lawsuits in WDTX meant that practical problems would arise if this case was transferred. The district court further determined that any remaining factors were neutral. Weighing all factors, the district court denied Samsung’s transfer motion, finding that Samsung had not shown that NDCA would be “clearly more convenient.”

Samsung filed a petition for writ of mandamus to the Federal Circuit, seeking to have the Court direct WDTX to transfer the case to NDCA. The sole question presented was whether, under Fifth Circuit law, the district court erred in refusing to transfer the case.

The Federal Circuit determined that the district court had clearly abused its discretion and that failing to transfer the case to NDCA had led to a “patently erroneous result.” The Federal Circuit found that the two factors that the district court determined weighed against transfer instead weighed in favor of transfer.

First, the Federal Circuit explained that the district court erred in finding that the “willing witness” factor weighed against transfer. Various Samsung entities had 10 relevant employees in NDCA and 20 in Korea. DoDots, in contrast, pointed to no potential technical or key witnesses in WDTX, although there were some Samsung marketing employees in Eastern Texas. The district court found that this weighed against transfer because any added travel from California to Texas for these technical witnesses was only a “slight” inconvenience. This argument echoed the argument that the Fifth Circuit rejected in its recent ruling in In re TikTok. In that case, the Fifth Circuit found on very similar facts that it was [...]

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Store This Element: Lexicography Controls Claim Term Definition Over Plain and Ordinary Meaning

by | Dec 21, 2023 |

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board obviousness finding, determining that the Board properly applied the patentee’s lexicography in construing a disputed claim term and properly treated arguments raised by the parties in the reply and sur-reply briefings. ParkerVision, Inc. v. Vidal, Case No. 22-1548 (Fed. Cir. Dec. 15, 2023) (Prost, Wallach, Chen, JJ.)

Intel filed a petition for inter partes review of a patent owned by ParkerVision. The challenged patent is directed to wireless local area networks (WLANs) that use frequency translation technology and incorporate another patent that describes down-conversion utilizing down-converter modules. The challenged claim is directed to apparatuses for down-converting electromagnetic (EM) signals. Among other things, the claim recites “wherein said first and said second frequency down-conversion modules each comprise a switch and a storage element.” The Board found the challenged claim unpatentable and in doing so, construed the term “storage element” to mean “an element of a system that stores non-negligible energy from an input signal.” The Board based its construction on the description of “storage modules” in a patent incorporated by reference into the challenged patent. ParkerVision appealed.

The Federal Circuit affirmed the Board’s construction, finding that ParkerVision had acted as its own lexicographer when it defined the term “storage element” in the incorporated-by-reference patent. The Court relied on a “critical” paragraph from the incorporated-by-reference patent that states: “[s]torage modules and storage capacitances, on the other hand, refer to systems that store a non-negligible amount of energy from an input EM signal.” The Court reasoned that the term “refer to,” together with the “as used herein” language from a preceding sentence, conveyed an intent for the sentence to be definitional and applicable to the whole patent rather than to a specific embodiment. To that end, the Court reiterated that a patentee may act as its own lexicographer by crafting a definition for a claim term rather than relying on the plain and ordinary meaning of that term, and that when a patentee does so, the definition may act as a disavowal of the full scope of the plain and ordinary meaning of the term.

ParkerVision also argued that the Board impermissibly relied on arguments allegedly raised for the first time in Intel’s reply brief, and that it erred in excluding certain arguments made by ParkerVision on sur-reply. The Federal Circuit rejected both arguments. The Court reasoned that because ParkerVision proposed a new claim construction in its patent owner response, Intel was permitted to argue and present evidence of obviousness under that new construction as long as such evidence relied on the same embodiments for each invalidity ground as were relied on in the petition.

The Federal Circuit also noted that ParkerVision’s arguments on sur-reply exceeded the scope of its patent owner response. While ParkerVision’s patent owner response proposed that the “storage element” be an element of the energy transfer system and store non-negligible amounts of energy from an input EM signal, ParkerVision only argued that the [...]

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