Mar 20, 2023Legal
Fresh From the Bench: Latest Federal Circuit Court Case


Apple Inc. v. Vidal, Appeal No. 2022-1249 (Fed. Cir. Mar. 13, 2023)

In our Case of the Week, the Federal Circuit allowed Apple’s challenge to the Patent Trial and Appeal Board’s (“PTAB”) Fintiv rules to proceed, at least on limited grounds regarding whether in promulgating the guidelines the USPTO failed to follow notice-and-comment rulemaking requirements under the Administrative Procedures Act. This decision is the latest installment in a long and controversial line of cases, stemming from Apple Inc. v. Fintiv, Inc., IPR2020-00019, 2020 WL 2126495 (P.T.A.B. Mar. 20, 2020). In that case, the PTAB established a six-factor test to determine whether to institute an inter partes review when there was already a parallel patent infringement lawsuit against the petitioner, which the Director of the USPTO subsequently designated as binding precedent on the Board.

IPR proceedings established under the America Invents Act in 2012 have become a common tool for defendants to attempt to defeat or limit infringement lawsuits. The Director has discretion over whether to institute any given IPR proceeding, which in practice is delegated to the Board. Under the IPR provisions of the patent statute, there are two thresholds an IPR petitioner needs to meet for the Board to institute an IPR: first, the merits threshold, whether the petitioner’s filings show a reasonable likelihood that the IPR will invalidate at least one of the challenged claims; and second, the timing threshold, whether the IPR was filed within one year following service of a patent infringement lawsuit against the petitioner. Even if a petitioner meets these threshold requirements, however, the Board (subject to the Director’s discretion) ultimately still has discretion over whether to institute a proceeding, and that decision is by statute, not judicially reviewable.

Read more.

By Tyler Hall


Intel Corporation v. PACT XPP Schweiz AG, Appeal No. 2022-1037 (Fed. Cir. Mar. 13, 2023)

In this case, the Federal Circuit reversed an inter partes review finding that challenged claim 5 of appellee Pact’s U.S. Patent No. 9,250,908 was not shown to be unpatentable over the prior art. The claim was directed to a multiprocessor system that maintains cache coherence (or consistency between copies of locally stored cache memory) through the use of a segmented secondary cache. The Board had found that Intel failed to show a motivation to combine two prior art references, where Intel contended it would have been obvious to replace the discrete secondary caches in one prior art reference (“Kabemoto”) with the segmented cache in another reference (“Bauman”). The Board reasoned that because Kabemoto already purported to address the problem of cache coherence, a person of ordinary skill would not “improve” it by combining it with any element of Bauman, and that Intel had thus failed to show a motivation to combine.

The opinion can be found here.

By Jason A. Wrubleski

Alterwan, Inc. v., Inc., Appeal No. 2022-1349 (Fed. Cir. Mar. 13, 2023)

In an appeal from a stipulated judgment of non-infringement based on district court claim constructions, the Federal Circuit reversed. The patent at issue had multiple claim terms that were disputed. After the district court’s Markman hearing determining the meaning of the disputed terms, the parties entered a stipulation of non-infringement. However, the stipulation did not establish how a reversal on claim construction would impact the stipulation. For example, did the Federal Circuit need to reverse only on one claim term or both? And to what extent would a change in construction have impacted the stipulation? Alterwan appealed. The Federal Circuit reversed, holding that the stipulation was “ambiguous and therefore defective.” The Court did address one of the disputed claim terms, resolving at least one dispute about it, but noted it was unclear whether the clarification in construction was really the source of the parties’ dispute about that term.

The opinion can be found here.

By Nika Aldrich

Edited by Nika Aldrich and Jason A. WrubleskiSchwabe, Williamson & Wyatt

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