invalidity Archives

invalidity

Patent disclosure erases trade secret protection

by Hannah Hurley | Apr 30, 2026 | Patents, Trade Secrets

Addressing the boundary between patent disclosures and trade secret protection, the US Court of Appeals for the Federal Circuit reversed a jury’s findings of trade secret misappropriation, breach of contract, and improper inventorship, concluding that the asserted “trade secrets” were generally known and therefore not protectable under California law. The Court affirmed, however, a $1 million statutory damages award for trademark counterfeiting. International Medical Devices, Inc. v. Cornell, Case Nos. 25 1580; 1605 (Fed. Cir. Apr. 17, 2026) (Dyk, Reyna, Taranto, JJ.)

International Medical Devices, Menova International, and Dr. James Elist (collectively, the plaintiffs) manufacture and sell the Penuma® cosmetic penile implant. The plaintiffs sued Dr. Robert Cornell and associated individuals and entities after Cornell attended a Penuma® surgical training session under a nondisclosure agreement (NDA) and later helped develop a competing implant. The plaintiffs asserted claims for misappropriation of trade secrets, breach of the NDA, trademark counterfeiting based on unauthorized use of the Penuma® mark, and invalidity of two cosmetic implant patents for failure to name Elist as an inventor.

A jury found for the plaintiffs on all claims. After a bench trial on remedies, the district court awarded more than $17 million in trade secret and exemplary damages, entered a permanent injunction, and awarded $1 million in statutory damages for counterfeiting. Cornell appealed.

The Federal Circuit reversed the trade secret verdict in its entirety, concluding that none of the asserted trade secrets were protectable under California law. The Court concluded that the alleged technical trade secrets were disclosed in publicly available patents and thus were “generally known” as a matter of law.

In doing so, the Federal Circuit reaffirmed the long-standing principle that “that which is disclosed in a patent cannot be a trade secret.” Once information enters the public domain through patent disclosures, it cannot later be reclaimed as confidential business information through trade secret law.

The plaintiffs’ remaining alleged trade secret (a list of surgical instruments) fared no better. The Federal Circuit found that the list had been emailed to the defendants without any confidentiality designation or obligation, defeating any claim that reasonable measures were taken to maintain its secrecy.

Because the plaintiffs failed to identify any confidential information beyond the alleged trade secrets, the Federal Circuit also reversed the breach of contract verdict. The NDA expressly excluded information that was “generally available to the public,” and the Court found that an NDA cannot transform public domain information into protected confidential material.

The Federal Circuit reached a different conclusion on trademark counterfeiting, however, and affirmed the jury’s finding and the $1 million statutory damages award. The Court explained that the evidence showed that Cornell had advertised and offered Penuma® implants without authorization. Cornell argued that the Penuma® mark was registered only for goods, not services, and therefore could not support a counterfeiting claim tied to surgical procedures. The Court rejected that argument, concluding there was sufficient evidence that Cornell offered the Penuma® implant itself as a good, not merely a medical service.

Finally, the Federal Circuit [...]

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Unauthorized streaming of foreign TV programming dishes up copyright infringement liability

by Lauren Hong | Apr 23, 2026 | Copyrights

The US Court of Appeals for the Eleventh Circuit affirmed a judgment for an exclusive licensee arising from unauthorized streaming of Arabic language television programming into the United States. The Court’s ruling reinforces both the strength of registered foreign works and the limits on an accused infringer’s ability to challenge ownership and transfer agreements. Dish Network L.L.C. v. Fraifer, Case No. 24-10223 (11th Cir. Apr. 9, 2026) (Branch, Abudu, Kidd, JJ.)

DISH had exclusive US rights to distribute and publicly perform certain Arabic language television channels (protected channels). DISH’s rights derived from agreements with MBC FZ LLC, which provides five of the protected channels. Fraifer operated UlaiTV and AhlaiTV, selling set top boxes and using internet infrastructure to capture live broadcasts abroad and retransmit them to customers in the United States via content delivery networks (CDNs) without DISH’s authorization. After a bench trial, the district court found direct copyright infringement. Fraifer appealed.

Fraifer raised three arguments on appeal, all of which the Eleventh Circuit rejected.

First, Fraifer argued that DISH failed to establish valid ownership of the copyrighted works, which were first published in the United Arab Emirates. The Eleventh Circuit disagreed. The Court concluded that MBC’s US copyright registrations were entitled to the statutory presumption of validity. Because DISH was not the author of the works, the Court examined whether DISH had sufficiently established MBC’s initial ownership. Fraifer argued that the works were “joint works” under UAE law, which would undermine MBC’s sole ownership. But the Court concluded that the television programs were better characterized as “collective works,” since the various creative contributions (writing, music, directing, and other artistic elements) were inseparable in the final audiovisual products.

That classification mattered because under UAE copyright law, the entity directing the creation of a collective work may exercise the relevant rights absent an agreement to the contrary. The Eleventh Circuit also declined to entertain a late-raised challenge to the validity of the registrations, noting that Fraifer had failed to preserve invalidity as an affirmative defense. As a result, MBC was entitled to the statutory presumption of ownership, which DISH could rely on.

Second, Fraifer contended that MBC had not validly transferred exclusive rights to DISH. Even assuming arguable defects in the written conveyances, the Eleventh Circuit concluded that Fraifer lacked standing to raise the issue. Section 204(a) of the Copyright Act is designed to resolve disputes between copyright owners and transferees, not to provide accused third party infringers with a defense where neither the owner nor the transferee disputes the transfer. Because MBC and DISH agreed on the status of the rights, Fraifer could not dispute the transfer.

Finally, Fraifer challenged the sufficiency of the evidence supporting direct infringement. The Eleventh Circuit disagreed, finding that the record supported the finding of direct infringement based on Fraifer’s use of encoders to ingest live broadcasts and push copyrighted programming onto its streaming system for customer viewing. The Eleventh Circuit also upheld the district court’s evidentiary rulings, including the admission of expert testimony, monitoring [...]

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Public use, even without explicit public disclosure, is patent bar under pre-AIA § 102(b)

by Tyler Jackson | Apr 23, 2026 | Patents

The US Court of Appeals for the Federal Circuit affirmed summary judgment of invalidity under the pre-America Invents Act (AIA) on sale bar, holding that a third party sale to the public of a product embodying a patented method and apparatus can trigger invalidity even where details of the invention were not expressly disclosed. Definitive Holdings v. Powerteq, Case No. 24-1761 (Fed. Cir. Apr. 14, 2026) (Moore, Dyk, Cunningham, JJ.)

Definitive Holdings sued Powerteq alleging infringement of a patent directed to methods and systems for reprogramming engine controllers. With a priority date of March 30, 2001, the patent was subject to pre-AIA law. Powerteq moved for summary judgment of invalidity under pre-AIA 35 U.S.C. § 102(b), arguing that a nonparty, Hypertech, had sold a product (the PP3) that embodied all limitations of the asserted claims more than one year before the patent’s priority date.

Rather than disputing the underlying facts, Definitive challenged the admissibility of the evidence on which Powerteq relied. Definitive argued that the deposition testimony of Hypertech’s Rule 30(b)(6) witness, the PP3 source code, and expert testimony relying on that source code were inadmissible. The district court rejected those arguments and granted summary judgment of invalidity, concluding that the third party sales triggered the on sale bar. Definitive appealed.

The Federal Circuit reviewed the summary judgment ruling de novo, applying Tenth Circuit law.

Definitive first argued that the district court improperly relied on testimony from Hypertech’s Rule 30(b)(6) witness, Hypertech CEO and owner Jay Ramsay. The Federal Circuit disagreed, finding that Ramsay’s testimony was based on his personal knowledge and thus was sufficient to authenticate Hypertech’s sales records and establish that Powerteq’s expert analyzed source code from the PP3 product.

The Court explained that a reasonable juror could conclude that Ramsay had personal knowledge of Hypertech’s recordkeeping practices and sales activities. Because those portions of the testimony were sufficient to support summary judgment, the Court declined to address whether other portions of the 30(b)(6) testimony were properly considered and how the Tenth Circuit generally treats Rule 30(b)(6) testimony at summary judgment.

Definitive next argued that the PP3 source code and related expert testimony constituted inadmissible hearsay. The Federal Circuit disagreed. The Court explained that while comments or annotations in source code could, in some circumstances, qualify as hearsay statements, the operative source code itself functions as a set of commands or instructions. As such, it is not offered for the truth of any assertion. The Court therefore found that the district court did not abuse its discretion in considering expert testimony describing the functioning of the source code when granting summary judgment.

Finally, Definitive contended that the on sale bar did not apply because Hypertech’s sales of the PP3 did not publicly disclose how to perform the patented method, even if the PP3 embodied all claim limitations and was sold more than one year before the priority date.

The Federal Circuit rejected Definitive’s argument, emphasizing that Hypertech’s sales directly conveyed to the public the ability to practice the [...]

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Where’s Waldo? Inventorship error fatal when omitted coinventor cannot be found

by Courtney Seams | Apr 16, 2026 | Patents

Addressing the limits of correcting inventorship, the US Court of Appeals for the Federal Circuit affirmed an invalidity determination where an omitted coinventor could not be added because statutory notice requirements could not be satisfied. Fortress Iron, LP v. Digger Specialties, Inc., Case No. 24-2313 (Fed. Cir. Apr. 2, 2026) (Lourie, Hughes, Kleeh, JJ.)

Building products manufacturer Fortress Iron sued competitor Digger Specialties for infringement of two patents directed to pre assembled vertical cable railing panels. The inventions resulted from collaboration among Fortress’ owner and an employee, as well as two employees of its quality control liaison, Hua Ping Huang and Alfonso Lin, who proposed design changes to address cable tensioning issues. The issued patents, however, named only Fortress personnel and omitted Lin and Huang as coinventors.

During the litigation, Fortress acknowledged that Lin and Huang were coinventors. Fortress successfully added Lin under 35 U.S.C. § 256(a) but was unable to locate Huang, who had left the liaison company years earlier without providing contact information. The parties filed cross motions for summary judgment, with Fortress seeking correction of inventorship and Digger seeking invalidity. The district court denied Fortress’ motion and held the patents invalid for incorrect inventorship. Fortress appealed.

Fortress argued that Huang was not a “party concerned” under § 256(b) and therefore was not entitled to notice and a hearing. The Federal Circuit rejected that argument, explaining that an omitted inventor qualifies as a “party concerned” regardless of whether the inventor has a demonstrated economic interest in the patent. The Court explained that inventorship carries legal, financial, and ownership consequences that an inventor has a right to contest, and § 256(b)’s notice and hearing requirements cannot be bypassed. The Court further clarified that standing and “party concerned” status under § 256(b) are distinct legal concepts with different requirements.

The Federal Circuit also rejected Fortress’ characterization of § 256(b) as a broadly permissive “savings provision,” explaining that the statute only operates to save patents once its procedural prerequisites of notice and an opportunity to be heard are satisfied.

Turning to Fortress’ second argument, the Federal Circuit concluded that a patent that incorrectly lists its inventors and cannot be corrected under § 256 has a clear statutory basis for invalidity. Reading § 256(b) together with §§ 101 and 100(f), the Court concluded that when an invention has multiple inventors, all must be named. Allowing a patent to survive with only some inventors listed would render § 256’s corrective framework meaningless.

Practice note: The decision underscores the importance of accurate inventorship determinations and the practical risk that patents may be rendered invalid if an omitted inventor cannot be located and statutory correction requirements cannot be met.

Dim damages methods can doom bright ideas

by Keval Amin | Aug 7, 2025 | Patents

In a mixed ruling on evidentiary exclusions and damages methodology, the US Court of Appeals for the Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded a district court’s decision that excluded patent validity evidence and granted judgment as a matter of law (JMOL). The Federal Circuit found that the district court erred in blocking the defendant’s invalidity case and directed it to reassess the reliability of the damages expert’s testimony under Rule 702. Jiaxing Super Lighting Co., Ltd. v. CH Lighting Technology Co., Ltd., Case No. 23-1715 (Fed. Cir. July 28, 2025) (Dyk, Chen, Hughes, JJ.)

Jiaxing Super Lighting and its affiliate Obert (collectively, Super Lighting) sued CH Lighting over three patents related to LED tube lamps – two covering structural designs and one addressing electrical safety. CH Lighting admitted infringement but argued that the structural patents were invalid under the America Invents Act’s (AIA) on-sale bar. The district court excluded key evidence, found the remaining expert testimony insufficient, and granted JMOL in Super Lighting’s favor. A jury later found CH Lighting liable and awarded damages, which the district court doubled. CH Lighting’s motions for a new trial and renewed JMOL were denied. CH appealed.

CH Lighting contended that certain 2014 LED tubes met all claim limitations and triggered the on-sale bar. The Federal Circuit disagreed, affirming the district court’s finding that CH Lighting’s expert lacked a proper foundation, having offered no concrete evidence or personal knowledge of the alleged sales. However, the Court found error in the exclusion of two key evidentiary items: testimony authenticating sales documents and an internal presentation showing competitor products predating the patents. The district court excluded the documents for lack of authentication and barred the presentation because of its connection to a dropped inequitable conduct claim, later reasoning that the products shown differed in wattage. The Federal Circuit rejected both rationales, explaining that the relevant inquiry focused on whether the products disclosed patented features, not their wattage. The Federal Circuit deemed these exclusions an abuse of discretion, warranting a retrial on validity.

The Federal Circuit separately upheld the jury’s findings on a different patent where the jury found the patent not invalid for anticipation and infringed. CH Lighting had argued that a prior art reference anticipated the asserted claims and that the accused chips could not infringe if the reference did not. The Court found, based on the conflicting testimony of the parties’ expert witnesses, that the jury was free to credit one expert over the other and therefore had substantial evidence supporting the jury’s no invalidity verdict. Similarly, the parties’ experts presented conflicting evidence on infringement and that Jiaxing’s expert’s theory was not necessarily inconsistent with the validity ruling. The Court thus affirmed the findings of validity and infringement.

Turning to damages, the Federal Circuit emphasized that expert testimony must be based on reliable methodology and sufficient factual grounding, reinforcing standards articulated in the recent EcoFactor, Inc. v. Google en banc decision. Because the jury [...]

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Collateral Estoppel Doesn’t Apply to Unchallenged IPR Claims

by Jodi Benassi | Feb 20, 2025 | Patents

The US Court Appeals for the Federal Circuit found that despite a Patent Trial & Appeal Board determination that certain challenged patent claims were unpatentable based on a preponderance of the evidence standard, the patent owner is not collaterally estopped from asserting other, unreviewed claims of that patent in district court litigation. Kroy IP Holdings, LLC v. Groupon, Inc., Case No. 23-1359 (Fed. Cir. Feb. 10, 2025) (Prost, Reyna, Taranto JJ.)

Kroy sued Groupon for patent infringement. In response, Groupon filed two inter partes review (IPR) petitions challenging 21 claims of the patent at issue. After Groupon’s IPR deadline passed, Kroy amended its complaint to add additional claims from the challenged patent. The Board found all 21 challenged claims unpatentable. Kroy amended its complaint again, this time removing the 21 unpatentable claims and including only claims that were not at issue in the IPR proceedings.

In response, Groupon moved to dismiss the complaint, arguing that the Board’s prior IPR rulings on the unpatentable claims collaterally estopped Kroy from asserting the new claims. The district court agreed, finding that if the Board issues final judgment that a patent claim is unpatentable and another claim is immaterially different, then collateral estoppel applies to that other claim for purposes of invalidity. Applying that standard, the district court determined that the new claims were not materially different from the unpatentable claims in terms of invalidity and granted Groupon’s motion to dismiss with prejudice. Kroy appealed.

Kroy argued that collateral estoppel should not apply because the burden of proof for invalidity in an IPR proceeding (preponderance of the evidence) is lower than in the district court (clear and convincing). The Federal Circuit noted that this case presents a distinct question of collateral estoppel law; that is, whether a prior final written decision of the Board that certain patent claims are unpatentable precludes a patentee from asserting other claims from the same patent, even assuming the asserted claims are immaterially different from the unpatentable claims for purposes of invalidity.

Referring to its recent 2024 decision in ParkerVision v. Qualcomm, the Federal Circuit clarified that collateral estoppel does not apply to new claims that have not yet been adjudicated. The Court explained that Groupon must prove the invalidity of these new claims in the district court by clear and convincing evidence. The Court dismissed Groupon’s reliance on the 2013 Ohio Willow Wood decision, noting that this case addressed whether a prior district court’s invalidity ruling estopped the patentee from asserting claims in the district court that are immaterially different for purposes of invalidity. On the other hand, the Ohio Willow Wood estoppel scenario occurred in district courts involving the same burden of proof. Because the Board determined unpatentability on separate patent claims based on a preponderance of the evidence standard, courts cannot collaterally estop a patentee from asserting other, unadjudicated patent claims in district court litigation.

Beware Equitable Doctrine of Issue Preclusion in Multiparty, Multivenue Patent Campaigns

by Sydney E. McDermott | Aug 1, 2024 | Patents

Addressing for the first time whether an invalidity order merges with a voluntary dismissal for purposes of finality, the US Court of Appeals for the Federal Circuit held that an interlocutory order merges with the final dismissal, rendering the interlocutory order final for purposes of issue preclusion. Koss Corp. v. Bose Corp., Case No. 22-2090 (Fed. Cir. July 19, 2024) (Hughes, Stoll, Cunningham, JJ.). As a consequence, the Federal Circuit found that the patent owner’s appeal from an adverse decision in an inter partes review (IPR) was moot under the doctrine of nonmutual collateral estoppel.

In July 2020, Koss filed a patent infringement lawsuit against Bose in the Western District of Texas, asserting three patents whose common specification discloses a “wireless earphone that communicates with a digital-audio source, such as an iPod, over an ad hoc wireless network like Bluetooth.” The same day, Koss asserted the same patents against Plantronics. Bose filed a motion challenging venue and also petitioned for inter partes review (IPR) of the three patents. Later in 2020, Bose filed a declaratory judgment action seeking a declaration of noninfringement in the District of Massachusetts on the three patents Koss asserted against Bose in the Texas litigation. The Massachusetts litigation was stayed pending the resolution of the venue motions in the Texas case.

In 2021, the Texas court dismissed Koss’s complaint against Bose for improper venue. Koss then asserted a counterclaim of infringement of the same three patents in the Massachusetts litigation. The Massachusetts court again stayed the litigation pending the resolution of the IPRs, which (by that time) the Patent Trial & Appeal Board had instituted. Meanwhile, Koss’s case against Plantronics was transferred to the Northern District of California, and Plantronics moved to dismiss the complaint on the ground that all the asserted claims (which included all the claims asserted against Bose) were invalid under 35 U.S.C. § 101. The California court granted Plantronics’s motion, rendering all the asserted claims invalid. However, that order did not finally dispose of the case.

Koss then moved for leave to amend its complaint, which the California district court granted. In the amended complaint, Koss asserted two additional patents. Plantronics moved to dismiss the asserted claims in those patents as invalid under § 101. The parties fully briefed Plantronics’s motion, but before the district court issued a decision on the merits of that motion, Koss voluntarily stipulated to dismissal with prejudice, disposing of the lawsuit in its entirety. Koss did not ask the district court to vacate its earlier order finding certain claims invalid under § 101. The California district court then issued an order dismissing the case with prejudice. The deadline for Koss to appeal the judgment came and went – Koss did not appeal.

Arguing that the patents had been finally adjudicated invalid in the Plantronics litigation, Bose moved to dismiss Koss’s appeal from the Board in the IPR proceedings as moot. Koss opposed the motion, arguing that its amended complaint rendered the invalidity decision on the prior complaint non-final because the [...]

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Patenting Web Advertising? Ask Alice, I Think She’ll Know

by Daniel Sternberg | Mar 14, 2024 | Patents

In a wide-ranging opinion, the US Court of Appeals for the Federal Circuit affirmed the district court’s grant of summary judgment of invalidity for lack of patent eligible subject matter under 35 U.S.C. § 101 with respect to claims directed to web-based advertising. Chewy, Inc. v. International Business Machines, Corp., Case No. 22-1756 (Fed. Cir. March 5, 2024) (Moore, Stoll, Cunningham, JJ.)

Chewy filed suit against International Business Machines (IBM) seeking a declaration that Chewy’s website did not infringe multiple patents related to web-based advertising. IBM responded by filing infringement counterclaims. After claim construction and discovery, the district court granted Chewy’s motions for summary judgment of invalidity for lack of patent eligible subject matter with regard to the asserted claims of one patent and noninfringement of the asserted claims of a second patent.

The claims of the first patent relate to providing a targeted advertisement from an “information repository” to a user based on the user’s internet search. In affirming the district court, the Federal Circuit first determined that, under Alice step 1, “[t]he claims broadly recite correlating advertisements with search results using a generic process.” The Court noted that the claims “merely recite the concept of identifying advertisements based on search results, without any specificity as to how this is accomplished,” and are directed to “the abstract idea of identifying advertisements based on search results.”

Turning to Alice step 2, the Federal Circuit found that the claims used a generic database and conventional processing steps, and “claimed use of a conventional repository for storing advertisements and associated search results in a well-known way.” Because “the claims recite the generic process for obtaining search results from a search query and using the search results to identify advertisements,” they failed under Alice step 2 and did not claim patent eligible subject matter under § 101.

Regarding the second asserted patent, the district court construed the claim term “selectively storing advertising objects at a store established at the reception system” as requiring the “advertising objects” to be “pre-fetched” and retrieved before the user requested a page on a website. Because it was undisputed that “Chewy retrieves advertisements in response to a user requesting a page” and not before, the district court ruled that Chewy’s website did not meet this claim limitation. Looking to the intrinsic claim construction evidence, the Federal Circuit held that the district court’s claim construction was amply supported by the specification and prosecution history and affirmed the district court’s grant of summary judgment of noninfringement. Of note, the Court explained that the specification made multiple references to pre-fetching as being part “of the present invention” and therefore limited the scope of the claims.

With respect to one asserted claim of the second patent, which did not include the limitation at issue, the district court found that Chewy’s website did not practice the limitation of “establishing characterizations for respective users based on the compiled data” because “the record undisputedly showed they deliver advertisements based on the page the user is currently viewing, [...]

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District Court Finding Doesn’t Preclude PTAB Proceeding

by Mike Baldwin | Jun 15, 2023 | America Invents Act, Patents

The Patent Trial & Appeal Board refused to terminate an inter partes review (IPR) proceeding, finding that collateral estoppel and claim preclusion do not apply to previous findings from a district court proceeding. Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229, Paper No. 128 (PTAB June 3, 2023) (Melvin, Giannetti, McNamara, APJs).

Patent Quality Assurance filed a petition for IPR on July 7, 2021, against a patent owned by VLSI. The Board granted institution. The Board later instituted on a substantively identical petition filed by Intel and granted Intel’s motion for joinder to add Intel to the Patent Quality Assurance IPR proceeding. Prior to the July 7, 2021, petition, litigation between VLSI and Intel resulted in a jury verdict that Intel infringed certain claims of the challenged patent. Invalidity was not presented to the jury. On May 10, 2022, the district court entered final judgment, including a finding that Intel had not proven invalidity. Based on the district court’s judgment, VLSI asserted that claim preclusion barred Intel from challenging validity of the asserted patent in IPR and sought termination of the IPR as to Intel.

VLSI argued that the elements of claim preclusion were met because both VLSI and Intel were parties to both cases, the district court entered a final judgment for infringement and no finding of invalidity, and the effect of Intel’s IPR was to collaterally attack the final judgment in the first case. Intel responded, arguing that claim preclusion does not apply to IPRs from the district court under the America Invents Act (AIA).

The Board agreed with Intel that estoppel did not apply. Intel argued that if Congress had intended for IPRs to be precluded by claims in a parallel district court, it would have identified that as one of the estoppel circumstances in the AIA. VLSI argued that the Supreme Court’s 1991 decision in Astoria Federal sav. & Loan Ass’n v. Solimino applies only when an agency decision precludes a later court decision and, therefore, common-law claim preclusion would apply to the IPR proceeding barring a plain statement from Congress showing intent to overcome preclusion.

The Board disagreed, noting that the cited case law related to statutes where a later statute superseded the earlier one and required a clear and manifest intent to repeal the earlier statute. The Board found that there was no express intent to repeal the earlier statute regarding estoppel, and the jurisprudence constantly counsels against repeal “by implication.” The Board also crucially noted that there was no statutory conflict between the earlier and later statutes, and the question, therefore, was whether (under Astoria) the AIA showed congressional intent that common-law claim preclusion should apply to IPRs.

Reading 35 U.S.C. § 315(e), the codification of the AIA’s estoppel provision, the Board noted that the statute clearly imposes estoppel on future agency and district proceedings but says nothing about applying adjudications in district court proceedings at the Board. As the Board explained, there would be no reason for § 315(e) to spell [...]

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No Extra Life: Harmless Claim Construction Error Does Not Restart Invalidity Challenge

by Christian Tatum | May 18, 2023 | America Invents Act, Patents

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board decision, finding that under the harmless error rule, the challenged claims were invalid as obvious even if the Board erred in claim construction. Bot M8 LLC v. Sony Interactive Entertainment LLC, Case Nos. 22-1291 (Fed. Cir. May 9, 2023) (Prost, Reyna, Cunningham, JJ.).

Bot M8 owns a patent related to a gaming machine that authenticates certain data and includes both a board and a motherboard. The independent claims require that a “game program” is stored in memory on the board and written to the motherboard only after the game program has been authenticated by a central processing unit (CPU) on the motherboard (the Write Limitation). Sony Interactive Entertainment petitioned for inter partes review (IPR). Ultimately, the Board determined that the challenged claims were unpatentable as obvious. Bot M8 appealed.

The issue presented to the Federal Circuit was what data the Write Limitation precludes from being written to the motherboard prior to authentication: (1) the entire game program, (2) any portion of the game program and/or (3) any data (including data not related to the game program). It was undisputed that the claims at minimum preclude writing the entire game program to the motherboard before authentication (option 1). Both the Board and the Court rejected Bot M8’s argument that would preclude writing any data whatsoever before authentication (option 3). The question thus resolved into whether the Write Limitation also precluded writing any portion of the game program prior to authentication (option 2). Bot M8 argued that it did.

Bot M8 focused on a statement made by the Board as indicative that the Board applied an erroneous claim construction that would allow a portion of the game program to be written prior to authentication (rejecting option 2): “[Bot M8] seeks to read into claim 1 a requirement that nothing related to, or any portion of, the gaming information be read into [the motherboard’s] RAM … prior to authenticating the game program.”

The Federal Circuit rejected Bot M8’s argument, finding that even if the Board erred in construing the claim, Bot M8 failed to demonstrate that the alleged error was harmful. Specifically, the Court found that any such error was harmless because the Board never needed to apply an improper construction since it found the prior art disclosed writing only non-game program data prior to authentication, a protocol that both the Board and the Court found was not precluded by the Write Limitation. Deeming the Board’s potential claim construction error harmless, the Court affirmed the Board’s invalidity determination.

Practice Note: Parties seeking to appeal a Board decision based on an improper claim construction theory should demonstrate how the Board’s error resulted in harm.

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