Fresh From the Bench: Latest Precedential Patent Case
CASE OF THE WEEK
Ironburg Inventions Ltd. v. Valve Corp., Appeal Nos. 2021-2296, 2021-2297, 2022-1070 (Fed. Cir. April 3, 2023)
In this week’s Case of the Week, the Federal Circuit provided new guidance in applying the estoppel provisions of 35 U.S.C. § 315(e)(2), which provide that a petitioner in a completed inter partes review may not later assert in a civil action any invalidity grounds “that the petitioner raised or reasonably could have raised during that inter partes review.” The Court held for the first time that the burden of proof is on the patent owner to show that a challenger’s invalidity grounds are estopped, and that the standard to be applied is whether “a skilled searcher conducting a diligent search reasonably could have been expected to discover” the grounds. The opinion also provided a detailed discussion of indefiniteness that split the panel on the claims at issue, and further addressed issues pertaining to infringement, witness testimony exclusions, willfulness, and enhanced damages. The Court affirmed on all appealed grounds, except that it remanded the case to the district court to determine whether certain asserted invalidity grounds were estopped under its adopted standard.
The case involved Valve Corporation’s appeal from a more than $4 million jury verdict that Valve’s Steam Controller for PC gaming willfully infringed claims of Ironburg’s U.S. Patent No. 8,641,525, which is directed to a video game controller with “elongate member” controls on the back of the casing. Ironburg cross-appealed the district court’s denial of its motion for enhanced damages notwithstanding the jury’s finding of willfulness.
ALSO THIS WEEK
SAS Institute, Inc. v. World Programming Ltd., Appeal No. 2021-1542 (Fed. Cir. Apr. 6, 2023)
In a high-profile appeal concerning computer software, the Federal Circuit waded into copyright territory. The case is the latest in a number of disputes across multiple continents between SAS and WPL concerning protections for SAS software. Of particular note here, a prior version of SAS software was in the public domain, so there was an issue concerning which elements of the software were subject to copyright protection. The district court ended up holding a “copyrightability hearing” to assess whether the software elements claimed by SAS were copyrightable. Judge Gilstrap from the Eastern District of Texas applied the abstraction-filtration-comparison test that had been adopted by the Fifth Circuit to evaluate the copyrightability of elements of SAS’s software. Ultimately, Judge Gilstrap found that SAS had failed to provide evidence concerning the filtration step, and held that the software elements at issue were not subject to copyrightability. SAS appealed and the Federal Circuit affirmed. A large number of amici filed briefs in the case, showing the level of interest in the case by the software industry. Judge Newman issued a 15-page dissent.
The opinion can be found here.
By: Nika Aldrich
Joe A. Salazar v. AT&T Mobility LLC, Appeal Nos. 2021-2320, -2376 (Fed. Cir. Apr. 5, 2023)
In an appeal from the U.S. District Court for the Eastern District of Texas, the Federal Circuit addressed whether the district court erred in construing “a microprocessor” and “said microprocessor” to mean one microprocessor that is capable of performing all the generating, creating, and retrieving functions recited in the patent claims describing technology for wireless and wired communications. After summarizing its previous holdings on the proper construction of the articles “a” and “said,” the Federal Court held that the district court properly interpreted “a microprocessor for generating,” “said microprocessor creating,” “a plurality of parameter sets retrieved by said microprocessor,” and “said microprocessor generating” to mean “one or more microprocessors, at least one of which is configured to perform the generating, creating, retrieving, and generating functions.” The court reasoned that, while the claim term “a microprocessor” does not require there be only one microprocessor, the subsequent limitations referring back to “said microprocessor” require that at least one microprocessor be capable of performing each of the claimed functions.
The opinion can be found here.
Editors: Nika Aldrich and Jason A. Wrubleski, Schwabe, Williamson & Wyatt, P.C.
Contributor: Mario E. Delegato