Fresh From the Bench: Latest Federal Circuit Court Case

CASE OF THE WEEK

Grace Instrument Industries, LLC v. Chandler Instruments Company, LLC, Appeal No. 2021-2370 (Fed. Cir. Jan. 12, 2023)

In an appeal from the U.S. District Court for the Southern District of Texas, the Federal Circuit vacated the district court’s determination that one of a patent’s claim terms, “enlarged chamber,” is indefinite, and remanded for further proceedings. The Federal Circuit also affirmed the district court’s construction concerning another one of the claim terms.

Grace’s patent at issue relates to a liquid pressured viscometer used to measure drilling fluid’s viscosity in “down-hole” conditions—i.e., temperature and pressure at the drill bit while drilling. The patent is designed to eliminate the measurement errors caused by other measurement methods. Grace sued Chandler in the district court alleging that Chandler’s viscometer infringed multiple claims of the subject patent. The district court issued its claim construction order, holding that the term “enlarged chamber” in claims 1 and 4 was indefinite because “enlarged” was a term of degree that necessarily called for some comparison against some baseline. The district court rejected Grace’s argument that “enlarged chamber” could be defined by its purpose. The district court also adopted Chandler’s proposed construction of the phrase “means for driving said rotor to rotate located in at least one bottom section.” Pursuant to the district court’s construction, the function of the “means for driving” limitation is “driving said rotor to rotate, where the means for driving is located in at least one bottom section,” and the corresponding structure is “(i) magnetic coupling (magnetic mount, gear box or motor, driving magnet, coupling magnet), or (ii) direct drive at bottom of cell body, and known equivalents.” As a result of the district court’s determinations, the parties stipulated that certain claims of the subject patent were invalid as indefinite, and that certain claims were not infringed. Grace appealed.

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By Mario Delegato

ALSO THIS WEEK

In re: Google LLC, Appeal No. 2022-1012 (Fed. Cir. Jan. 9, 2023)

In an appeal from an examiner’s denial of claims, the Federal Circuit reversed. The patent concerned methods for presenting search results. The examiner rejected the claims, relying on a combination of two pieces of prior art. Google appealed to the Board, which agreed with the examiner’s analysis. The Court held that the Board’s determination was not consistent with the examiner’s rationale, and was otherwise unsupported by evidence. The PTO’s attempts to embellish those rationales on appeal were unsuccessful “because they do not reflect the reasoning or findings the Board actually invoked.” “[S]quint as we may, we do not see the justifications invoked by the PTO on appeal reflected in the record below.” The case was remanded for further proceedings.

The opinion can be found here.

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By Nika Aldrich

In re: Stingray IP Solutions, LLC, Appeal No. 2023-102 (Fed. Cir. Jan. 9, 2023)

The Court entered a writ of mandamus, directing this case to be transferred back to the Eastern District of Texas, after Judge Gilstrap had transferred it to the Northern District of California. At issue was whether a post-filing consent to jurisdiction in a forum would be sufficient to require transfer under Fed. R. Civ. P. 4(k)(2). That rule allows a court to have personal jurisdiction only if the case could not have been brought in another forum. After the complaint was filed, the defendant consented to be sued in the Northern District of California, and thus argued that Rule 4(k)(2) precluded jurisdiction in Texas. The Federal Circuit held post-filing consent is insufficient under Rule 4(k)(2). The Court ordered the case to be recalled to the Eastern District of Texas, where that court can make an evaluation in the first instance whether the defendant was subject to jurisdiction in Texas as of the filing of the complaint.

The opinion can be found here.

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By Nika Aldrich

Edited by Nika Aldrich and Jason Wrubleski, Schwabe, Williamson & Wyatt