Fresh From the Bench: Latest Federal Circuit Court Case

CASE OF THE WEEK

Hunting Titan, Inc. v. DynaEnergetics Europe GMBH, Appeal Nos. 2020-2163, -2191 (Fed. Cir. March 24, 2022)

In a notable review of the USPTO’s new Precedential Opinions Panel, the Federal Circuit discussed the circumstances under which the Patent Trial and Appeal Board should raise a ground of unpatentability against substitute proposed claims in a motion to amend that a petitioner has not advanced or insufficiently developed. The Court ultimately rejected challenger Hunting Titan, Inc.’s argument that the Board had an affirmative duty to sua sponte raise any such grounds for unpatentability, found any argument that the Panel misapplied its own lower standard to have been forfeited on appeal, and left for another day a more thorough exploration of the issues.

Hunting Titan had petitioned for inter partes review of U.S. Patent No. 9,581,422 (the “Patent”), which was directed to a perforating gun used in an oil wellbore to penetrate the well lining and surrounding rock formation, providing a flow path for oil into the wellbore from the surrounding rock formation.

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By Mario Delegato

ALSO THIS WEEK

Dyfan, LLC v. Target Corporation, Appeal No. 2021-1725 (Fed. Cir. March 24, 2022)

The Federal Circuit reversed a district court judgment of indefiniteness, based on the lower court’s determination that certain patent claim limitations were subject to “means-plus-function” construction under 35 U.S.C. § 112 ¶ 6 and because the specification failed to recite sufficiently definite structure to perform the recited functions.  The patents at issue were directed to systems for providing location-based content to mobile devices, and the district court found that “code” and “application,” as well as the term “system,” were means-plus-function terms as used in the claims.  Because the specification did not recite, inter alia, any specific algorithm for the claimed computer-implemented functions, the district court found the claims to be indefinite under § 112 ¶ 2.

The Federal Circuit disagreed, pointing to its recent decision in Zeroclick, LLC v. Apple Inc., 891 F.3d 1003 (Fed. Cir. 2018), as finding that claim terms, like “program” and “user interface code,” reference classes of convention, known to persons of ordinary skill in the pertinent art, that have specific structures partly defined by their functions as recited in the claims (e.g., “configured to…”).  This conclusion was further reinforced in this case by unrebutted expert testimony proffered by patent owner Dyfan.  Similarly, the Court found that the district court had recited structural elements of the claimed “systems” (e.g., a building and communications unit) and that defendant Target had not rebutted by a preponderance of the evidence the presumption that § 112 ¶ 6 does not apply in the absence of the word “means.”  Having concluded that § 112 ¶ 6 in fact did not apply, the Court explained that it need not reach the question of whether the specification recited sufficiently definite structure, reversed the judgment of invalidity, and remanded for further proceedings.

The opinion can be found here.

By Jason Wrubleski

Edited by: Scott D. Eads and Nika Aldrich, Schwabe Williamson & Wyatt

Contributors: Jason Wrubleski and Mario Delegato