Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
In re Cellect, LLC, Appeal Nos. 2022-1293, -1294, -1295, -1296 (Fed. Cir. Aug. 28, 2023)
In a significant appeal from ex parte reexamination proceedings before the Patent Trial and Appeal Board, the Federal Circuit addressed whether related patents can be invalidated for double patenting when they expire on different dates due to patent office delays. The Federal Circuit held that such related patents can be invalidated, raising the prospect of an increase in such validity challenges going forward.
Appellant Cellect’s four challenged patents at issue are directed to electronic devices with imaging sensors, and each claimed priority from a single application. The challenged patents were granted Patent Term Adjustments (“PTA”) by the U.S. Patent and Trademark Office (“USPTO”) because of delays in prosecution. A PTA lengthens the term of a patent to account for delays on USPTO’s part in the processing of applications. Because each related patent claimed priority from the same application, each would have expired on the same day but for the individual PTA grants.
Sisvel Int’l S.A. v. Sierra Wireless, Inc., Appeal Nos. 2022-1387, -1492 (Fed. Cir. Sept. 1, 2023)
In an appeal from a PTAB final written decision that certain claims of two patents were unpatentable as anticipated and/or obvious, the Federal Circuit affirmed. The patents concern the exchange of frequency information in connection with cell reselection between a mobile station (or user cell phone) and a central mobile switching center. At issue was the claim term “connection rejection message.” The PTAB held that the term had its plain and ordinary meaning: “a message that rejects a connection.” Sisvel, the patent owner, had advocated for a narrower construction limited to Global System for Mobile Communication (“GSM”) or Universal Mobile Telecommunication System (“UMTS”) network messages. The Federal Circuit agreed that the term was not so limited because “the intrinsic evidence provides no persuasive basis to limit the claims to any particular cellular networks.” While the specification expressly disclosed UMTS and GSM networks, it also broadly taught that the invention would be applicable in other networks. It was uncontested that, based on this construction, the claims were invalid. Thus, the Federal Circuit affirmed the invalidity finding.
The Court also affirmed the PTAB’s decision denying a motion to amend the claims. The Board found that Sisvel’s proposed amendments would have impermissibly broadened the claim scope in violation of the applicable regulations. The Court reinforced that claim scope is broader “if it contains within its scope any conceivable apparatus or process which would not have infringed the original patent.” The Court agreed with the Board that Sisvel’s proposed claim was broader in scope than the original claim, and thus affirmed denial of Sisvel’s motion to amend.