In one of two precedential opinions this week, the Federal Circuit established new precedent concerning what it takes for a petitioner to have standing to bring an appeal from an IPR. On the merits, the Court elaborated on the "obvious to try" doctrine in engaging in an obviousness analysis.
The case was brought by
This was not the first case between these parties—and not the first case concerning this technology. In 2016,
Against this background, the Federal Circuit held that
In
The three-judge panel involved two of the same judges as the prior panel: Judges Reyna and Hughes, joined by
This time, the Court found that
On the merits, the Court found that the PTAB erred in its "motivation to combine" analysis.
First, the Court found that the first prior art reference did not disparage two-stage designs, as the PTAB had found. Contrary to the PTAB's assessment of that article, the Court found that a single-stage high-pressure turbine is not "critical or enabling" technology. Rather, a one-stage turbine is "a general preference." The Court analyzed the article at length, ultimately finding that it "does not criticize, [dis]credit, or discourage the use of a two-stage high pressure turbine." For that reason, the Court held that the article does not teach away from two-stage designs.
For similar reasons, the Court concluded that the Board lacked substantial evidence concerning its "motivation to combine" analysis. The Court held that "[a]n artisan seeking to improve upon or otherwise modify [that] advanced engine would have tried to implement a two-stage high-pressure turbine because of the known advantages provided by a two-stage design."
Finally, the Court found the Board had erred in its obviousness analysis "as a whole," finding that the Board had misapprehended precedent concerning the requirement that obviousness of a claim be established "as a whole."
The Court's opinion on the "motivation to combine" issues spans 16 pages and is a worthwhile read for the earnest practitioner contending with "motivation to combine" issues. The Court ultimately vacated the Board's decision and remanded, presumably to enter a Final Written Decision of obviousness of the five claims at issue.
Curiously, the opinion was published on
A copy of the opinion can be found here.
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ALSO THIS WEEK
In this case, the Federal Circuit affirmed the Rule 12(b)(6) dismissal of a patent case for patent-ineligibility under 35 U.S.C. § 101. The patent at issue was generally directed to a system for developing object-based simulations on a computer through the use of graphical processes instead of text-based programming, including a limitation directed to an executable process to add a behavior to an instance of an object without changing the object definition, i.e., without affecting objects of the same type.
Based in part on the focus of the patent's specification, the Federal Circuit agreed with the district court that the claims as a whole were directed to "the decades-old computer programming practice of substituting text-based coding with graphical processing," which was an ineligible abstract idea under step one of the
The Federal Circuit also affirmed the district court's denial of patentee Simio's motion for leave to amend its complaint after the dismissal ruling, agreeing with the district court that amendment would be futile. Specifically, Simio's proposed amended allegations highlighted the improved speed and efficiency of the "executable process" limitation. The Court held that simply claiming the speed, efficiency, or improvement in user experience inherent with applying an abstract idea was insufficient to transform it into patent-eligible subject matter, and that allegations that the limitation improved the functioning of the computer itself were conclusory. Finally, although the issue was not reached by the district court, the Federal Circuit also affirmed on the independent ground that Simio had not shown good cause to amend its complaint after the district court's deadline for doing so, which was agreed by the parties and entered after FlexSim had filed its motion to dismiss and before Simio had filed its opposition.
A copy of the opinion can be found here.
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