Federal Circuit Review | March 2015
Patent Office’s Decision To Institute IPR Not Reviewable
In IN RE CUOZZO SPEED TECHNOLOGIES, LLC, the Federal Circuit held it lacks jurisdiction to review the Patent Office’s decision to institute inter partes review.
Garmin petitioned the Patent Office for inter partes review of three claims from Cuozzo’s patent. After granting the petition, the PTAB issued a final decision finding all three claims obvious and denied Cuozzo’s motion to amend the claims. On appeal, Cuozzo argued the PTAB should not have used the broadest reasonable interpretation standard for claim construction in AIA review proceedings, as the patentee’s ability to amend claims is limited.
The Federal Circuit held it lacked jurisdiction to review the decision to institute inter partes review, even after the PTAB issued a final decision. The Federal Circuit pointed to language in the AIA stating the decision to institute review “shall be final and nonappealable.” The Federal Circuit also affirmed the PTAB’s claim construction findings under the broadest reasonable interpretation standard. The Federal Circuit found that, while the AIA does not provide a claim construction standard, Congress intended the use of the broadest-reasonable-construction standard used in other Patent Office proceedings. Judge Newman dissented, arguing both that patent owners should be able to appeal decisions to institute reviews after a final decision and that the PTAB should be required to use the same claim construction standard as district courts when deciding inter partes reviews.
Patent Exhaustion Not Applicable
In HELFERICH PATENT LICENSING, LLC v. THE NEW YORK TIMES CO., the Federal Circuit declined to expand the doctrine of patent exhaustion such that a license to an entity practicing a first set of patent claims exhausts the patentee’s rights to enforce a second set of distinct, though related, patent claims against a different entity.
Helferich sued several media providers for infringing patents related to wireless devices. The district court granted summary judgment of noninfringement based on patent exhaustion and held that, by granting handset manufacturers patent licenses to sell the handsets, Helferich had exhausted its ability to enforce its patents against the media providers interacting with the already-licensed handsets. Helferich appealed.
The Federal Circuit reversed. The handset-manufacturer licenses distinguished claims that would be infringed by handset manufacturers from claims that would be infringed by media providers and disclaimed any grant of rights to such media providers. Therefore, the media providers could rely only on the legal doctrine of patent exhaustion, and not on a factually implied license. The Federal Circuit explained that patent exhaustion applies when an authorized acquirer uses the claimed invention. The doctrine does not apply where, as here, the alleged infringement involves distinct, though related, patented inventions.
Preamble Limits Claim
In PACING TECHNOLOGIES, LLC v. GARMIN INTERNATIONAL, INC., Appeal No. 2014-1396, the Federal Circuit held that a term in an independent claim’s preamble can limit the scope of the independent claim when the preamble term provides antecedent basis for that term in a dependent claim.
Pacing sued Garmin for patent infringement. The asserted independent claim’s preamble recites a “repetitive motion pacing system for pacing a user.” The district court construed the preamble to mean “a system for providing a sensible output for setting the pace or rate of movement of a user in performing a repetitive motion activity.” This construction limited the scope of the independent claim: the parties agreed this construction implicitly requires the system to play the pace information as a metronomic tempo, as described in the preferred embodiment. The district court granted summary judgment of noninfringement to Garmin, reasoning that the accused devices do not play the target tempo or pace information. Pacing appealed.
The Federal Circuit affirmed. The Federal Circuit held the preamble limits the scope of the claims because the term “repetitive motion pacing system” appeared in the body of a dependent claim. The Federal Circuit further determined this term requires the system to produce a tempo because of a clear and unmistakable statement of disavowal or disclaimer. Immediately following the enumeration of different objects of the invention, the specification states: “those [listed objects] and other objects and features of the present invention are accomplished, as embodied and fully described herein, by a repetitive motion pacing system that includes . . . a data storage and playback device adapted to producing the sensible tempo.” The Federal Circuit held there is no genuine dispute of material fact as to whether Garmin devices produce a sensible tempo.
