Federal Circuit Patent Watch: Assignor estoppel applies to claims that are not "materially broader" than the originally assigned claims

Precedential Federal Circuit Opinions

1.In Re MCDONALD [OPINION](2021-1697, 8/10/2022) (Newman, Stoll, and Cunningham)

Cunningham, J. The Court affirmed a PTAB decision rejecting reissue claims under 35 U.S.C. § 251 as being (1) an improper attempt to recapture subject matter surrendered during prosecution to obtain the original claims and (2) based on a defective inventor reissue declaration that failed to identify an error correctable through reissue. Regarding the recapture issue, the Court found: “The Board properly applied the recapture rule to bar Mr. McDonald’s attempt to reclaim claim scope already surrendered during prosecution. Because Mr. McDonald deliberately—not erroneously or inadvertently—added the ‘processor’ limitations during prosecution of the original claims to overcome the [35 U.S.C.] § 101 rejection, the recapture rule does not permit him to now remove those limitations to broaden his claim.” Regarding the inventor reissue declaration, the Court explained that a reissue declaration must “specifically identify at least one error pursuant to 35 U.S.C. § 251 being relied upon as the basis for reissue.” In this case, the alleged error identified in the reissue declaration—namely, including “allegedly unnecessary ‘processor’ limitations”—was “uncorrectable by reissue because doing so would violate the recapture rule.”

2.HOLOGIC, INC. v. MINERVA SURGICAL, INC. [OPINION](2019-2054, 2019-2081, 08/11/2022) (Stoll, Clevenger, and Wallach)

Stoll, J. On remand from the Supreme Court, the Court affirmed a district court’s summary judgment that a patent claim is not invalid under the doctrine of assignor estoppel. The Court held that because the challenged patent claim is not ‘materially broader’ than the patent claims previously assigned to Hologic by the inventor (who was admittedly in privity with Minerva), Minerva was estopped from challenging the claim’s validity.

3.LSI CORPORATION v. REGENTS OF THE UNIVERSITY OF MINNESOTA [OPINION](2021-2057, 08/11/2022) (Dyk, Reyna, and Hughes)

Dyk, J. The Court affirmed the PTAB’s IPR decision that two challenged patent claims were not unpatentable in view of two prior art references. With respect to the first prior art reference, the PTAB had found that the petitioner failed to timely raise its invalidity theory, and on appeal the petitioner failed to challenge the PTAB’s timeliness ruling in its opening brief, thereby waiving its right to challenge the PTAB’s findings on that reference. With respect to the second prior art reference, the Court affirmed the PTAB’s findings that the relevant teachings in the reference were not “by another” and thus did not qualify as prior art under 35 U.S.C. § 102(e).

4.KAMSTRUP A/S v. AXIOMA METERING UAB [OPINION](2021-1923, 8/12/2022) (Reyna, Mayer, and Cunningham)

Reyna, J. The Court affirmed the PTAB’s IPR decision that the challenged patent claims were unpatentable as obvious or anticipated. The patent owner argued that the PTAB erred in construing “cast in one piece” as a product-by-process claim element. The Court noted that a “product-by-process claim is one in which a product is claimed, at least in part, by the ‘process by which it is made.’” The Court affirmed the PTAB’s claim construction because “[o]n its face, the claim element claims a process because it describes the structure ‘being’ cast in a particular way.” The Court also affirmed the PTAB’s determination that this product-by-process claim element does not impart “patentable weight” to the claims, and thus did not provide a basis for finding the claims patentable. The Court explained that the patent owner “has not identified functional and structural differences between a structure ‘cast in one piece’ and a structure manufactured using another method.” The Court also affirmed the PTAB’s constructions of other claim elements, rejecting arguments that the Court held would improperly read limitations into the claims from the non-limiting embodiments in the specification.

5.CLICK-TO-CALL TECHNOLOGIES, LP v. INGENIO, INC. [OPINION](2022-1016, 08/17/2022) (Stoll, Schall, and Cunningham)

Stoll, J. The Court reversed and remanded a summary judgment of invalidity based on IPR estoppel under 35 U.S.C. § 315(e)(2). The Court noted that this case “requires us to consider the application of 35 U.S.C. § 315(e)(2) under a rather unusual set of facts.” Specifically, before the Supreme Court overruled the practice of partial IPR institutions in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), the PTAB had instituted Ingenio’s IPR petition on only some of the grounds in the petition. Then, after the Supreme Court’s decision in SAS, Ingenio did not seek remand for institution on the non-instituted grounds “when given the opportunity to do so.” As a result, the Court held that, in this case, IPR estoppel also applied to the non-instituted grounds. In addition, the Court held that the district court did not abuse its discretion in denying Click-to-Call’s request to amend its list of asserted patent claims for trial.

6.PAR PHARMACEUTICAL, INC. v. EAGLE PHARMACEUTICALS, INC. [OPINION](2021-2342, 08/18/2022) (Moore, Prost, and Hughes)

Moore, C.J. The Court affirmed the district court’s judgment of non-infringement. First, the Court held that the district court did not clearly err in finding that Eagle’s abbreviated new drug application (ANDA) did not infringe Par’s asserted patents under 35 U.S.C. § 271(e)(2). The Court explained that the “district court did not clearly err in finding that Eagle’s ANDA defines a product outside the scope of Par’s claims.” Second, the Court affirmed the district court’s denial of declaratory judgment that Eagle’s planned sale of a product produced in accordance with its ANDA would infringe under 35 U.S.C. § 271(a) and (b). The Court explained that “the district court did not clearly err in finding that Par failed to establish that Eagle was engaged in, or making meaningful preparation for, infringing activity.”

7.In Re KILLIAN [OPINION](2021-2113, 08/23/2022) (Taranto, Clevenger, and Chen)

Chen, J. The Court affirmed a PTAB decision rejecting patent claims under 35 U.S.C. § 101. The patent application at issue “relates to a system and method ‘for determining eligibility for Social Security Disability Insurance [SSDI] benefits through a computer network.’” The Court held that the challenged patent claims are ineligible for patenting under Section 101 because “they are directed to the patent-ineligible abstract mental process of ‘a search algorithm for identifying people who may be eligible for SSDI benefits they are not receiving.’” The Court noted that the appellant raised “myriad” arguments on appeal, but the Court found none of them persuasive.