ABS Global, Inc. v. Cytonome/ST, LLC

Court: US Court of Appeals for the Federal Circuit

Docket: 22-1761

Opinion Date: October 19, 2023

Judge: Richard Gary Taranto

Areas of Law: Intellectual Property, Patents

Cytonome/ST’s 439 patent, titled “Hydrodynamic Focusing Apparatus and Methods,” describes and claims a microfluidic device for use in processing particles of interest contained in a sample fluid. ABS petitioned the Patent and Trademark Office (PTO) for an inter partes review, 35 U.S.C. 311–19, of the patentability of five claims of the patent. The PTO’s Patent Trial and Appeal Board determined that ABS had not shown any of the challenged claims to be unpatentable.

The Federal Circuit reversed in part and vacated in part. The Board erred in its claim construction of a limitation common to all challenged claims: “a fluid focusing region configured to focus the sample stream.” The “sample stream” is not limited to a singular-only sample stream. Under the correct claim construction, at least two claims are invalid as anticipated.

Corephotonics, Ltd. v. Apple, Inc.

Court: US Court of Appeals for the Federal Circuit

Docket: 22-1340

Opinion Date: October 16, 2023

Judge: Stark

Areas of Law: Intellectual Property, Patents

Corephonics’s Challenged Patents relate to dual-aperture camera systems and disclose techniques for using the images from both lenses when zooming while capturing video. The Patent Trial and Appeal Board found claims of the Challenged Patents unpatentable as obvious (35 U.S.C. 103) in inter partes reviews initiated by Apple.

The Federal Circuit vacated, finding no procedural error in the Board’s handling of whether two prior references are analogous art. The Board’s handling of the analogous art issue neither markedly departed from the evidence and theories presented by the petition or institution decision nor unfairly surprised” Corephotonics. The Board’s determination that one of the references is analogous art is supported by substantial evidence; the reference is in the same field of endeavor as the Challenged Patents . The court remanded for the Board to explain why the other reference is (or is not) analogous art and how this finding affects its overall conclusion as to obviousness. The Board must decide whether it should consider Apple’s contention that, regardless of whether the reference is pertinent to the problem faced by the inventors, it is in the same field of endeavor as the Challenged Patents.

Cyntec Company, Ltd. v. Chilisin Electronics Corp.

Court: US Court of Appeals for the Federal Circuit

Docket: 22-1873

Opinion Date: October 16, 2023

Judge: Stoll

Areas of Law: Intellectual Property, Patents

Cyntecsued Chilisin, alleging infringement of certain claims of patents directed to molded chokes and a method of manufacturing molded chokes. A choke is a type of inductor used to eliminate undesirable signals in a circuit. Chokes are found in most modern electronics that use batteries or a power supply. Before closing arguments, the district court granted judgment as a matter of law that the asserted claims were not invalid as obvious. The jury then found that Chilisin infringed the asserted claims and awarded the full amount of damages requested by Cyntec.

The Federal Circuit affirmed the judgment of infringement as supported by substantial evidence, given the court’s construction of the “by means of” limitation and its jury instruction regarding that limitation. The court reversed the judgment of nonobviousness; given the evidence, a reasonable jury could have found the asserted claims obvious in view of prior art. The court vacated the award of lost profits; the expert’s importation calculations, were unreliable and speculative and his lost profits calculation stemmed from those calculations.

Finjan LLC v. SonicWall, Inc.

Court: US Court of Appeals for the Federal Circuit

Docket: 22-1048

Opinion Date: October 13, 2023

Judge: Cunningham

Areas of Law: Intellectual Property, Patents

Finjan asserted the “Downloadable Patents” and the “ARB Patent,” among others in a patent infringement complaint as to SonicWall’s Gateways, Email Security products, and Capture Advanced Threat Protection, among other products. The Downloadable Patents relate to ways to protect network-connectable devices from undesirable downloadable operations.

The district court agreed with SonicWall’s interpretation of the claims, concluding that the recited claim limitations “must be performed by the same computer.” Capture ATP and Gateways and Capture ATP and ES products involve separate, remote computers. The court granted summary judgment of noninfringement. Finjan unsuccessfully argued that there remained a factual dispute as to whether Capture ATP and its Gateway and Capture ATP and its ES products each work together to act as a unified computer system to form the steps as Finjan alleged. The district court excluded the apportionment opinions of Finjan’s technical expert and of Finjan’s damages expert based on that apportionment analysis.

The Federal Circuit vacated in part. The district court based its judgment of invalidity on a collateral estoppel decision that has since been vacated. The court affirmed the summary judgment of noninfringement and the exclusion of Finjan’s expert analysis.

Great Concepts, LLC v. Chutter, Inc.

Court: US Court of Appeals for the Federal Circuit

Docket: 22-1212

Opinion Date: October 18, 2023

Judge: Stark

Areas of Law: Intellectual Property, Trademark

Great Concepts applied to register “DANTANNA’S” as a mark for a “steak and seafood restaurant.” Its 764 Registration issued in 2005. Chutter’s predecessor-in-interest, Dan Tana, subsequently petitioned the Trademark Trial and Appeal Board to cancel the Registration, based on an alleged likelihood of confusion with Tana’s common law “DAN TANA” mark for restaurant services. The cancellation proceeding was suspended during a trademark infringement civil suit. In 2009, the district court granted Great Concepts summary judgment; the Eleventh Circuit affirmed. In December 2010, the Board dismissed Tana’s cancellation proceeding. Meanwhile, in March 2010, Great Concepts’ then-attorney, Taylor, filed with the Patent and Trademark Office (PTO) a combined declaration of use and declaration of incontestability, under the Lanham Act, 15 U.S.C. 1058, 1065, declaring “there is no proceeding involving said rights pending and not disposed of either in the U.S. Patent and Trademark Office or in the courts.” At the time, both the PTO cancellation proceeding and the Eleventh Circuit appeal were pending.

In 2015, Chutter successfully petitioned the PTO for cancellation of Great Concepts’ “DANTANNA’S” mark based on Taylor’s 2010 false affidavit. The Federal Circuit reversed. The statute limits the Board’s authority to cancel registration of a mark to circumstances in which the “registration was obtained fraudulently,” but does not authorize cancellation of a registration when the incontestability status of that mark is “obtained fraudulently.”