Every Word Counts: Specification Naming Conventions Can Limit Claim Scope
In HD Silicon Solutions LLC V. Microchip Technology Inc., Appeal No. 23-1397, the Federal Circuit held that all but one patent claim were invalid as obvious because the claimed material, as properly construed, was disclosed by the asserted prior art reference.
Microchip Technology filed an IPR, arguing all claims of HD Silicon Solutions’ patent were invalid. The challenged patent is directed to a method of forming local circuit interconnects that requires “depositing a second film … comprising tungsten.” The Board construed “comprising tungsten” to mean any form of tungsten, including elemental tungsten and tungsten compounds. Based on that construction, the Board held all but one claim invalid as obvious.
The Federal Circuit disagreed with the Board’s construction of “comprising tungsten” but affirmed the Board’s holding under the proper construction of that term. The court emphasized that patent’s claims and specification consistently used the term “tungsten” alone, and the specification described the material properties of elemental tungsten. The court also noted the specification’s convention of using open-ended modifiers (e.g., chlorine-based etchants) when referencing materials that include both elements and compounds. Based on this naming convention, the court concluded the claimed “tungsten,” without any modifiers, refers to elemental tungsten only. Because Microchip’s asserted prior art reference disclosed elemental tungsten, the court affirmed the Board’s obviousness holding.
Untimely Expert Testimony Excluded on Appeal, New Trial Granted
In Trudell Med. Int’l Inc. v. D R Burton Healthcare, LLC, Appeal No. 23-1777, the Federal Circuit held that the district court erred by allowing untimely noninfringement expert testimony during trial. The district court further erred by refusing to grant a new trial after a jury finding of noninfringement.
Trudell Medical International (“Trudell”) sued D R Burton Healthcare (“Burton”) for patent infringement. Burton disclosed expert noninfringement testimony after the discovery cut-off and less than three weeks before trial. The district court denied Trudell’s motion to exclude Burton’s late expert testimony and the jury found no infringement. Trudell moved for a new trial. The court denied the motion and Trudell appealed.
The Federal Circuit reversed the district court’s decision admitting the untimely expert testimony. The delay was not harmless because Burton’s expert testimony “constituted nearly all” of its noninfringement evidence, and Trudell was unable to depose the expert before trial. Separately, the Federal Circuit found the expert testimony deficient under FRE 702 and Daubert because it disregarded the district court’s claim constructions.
Based on the improper expert testimony, the Federal Circuit reversed the district court’s decision declining to grant a new trial. The Federal Circuit also granted Trudell’s request to reassign the case on remand because the judge made objectionable statements throughout the trial, including complaints about Trudell’s counsel in front of the jury.
Collateral Estoppel Does Not Apply When the Prior Proceeding Applies a Lower Burden of Proof
In Kroy IP Holdings, LLC V. Groupon, Inc., Appeal No. 23-1359, the Federal Circuit held that because there are different burdens of proof in IPR and district court, collateral estoppel does not preclude a patent owner from asserting claims that are immaterially different from claims canceled in an IPR.
Kroy IP Holdings (Kroy) sued Groupon for patent infringement. Groupon filed two IPR petitions against the asserted patent, challenging only some of the claims. The Patent Trial and Appeal Board (the “Board”) found all challenged claims unpatentable, which the Federal Circuit affirmed. However, after the deadline for Groupon to file IPRs had passed, Kroy amended its complaint to include additional claims not challenged in the IPRs. Groupon moved to dismiss, arguing Kroy was collaterally estopped because of the two prior IPR decisions. The district court granted the motion, finding that collateral estoppel prevents a patent owner from asserting immaterially different claims. Kroy appealed.
The Federal Circuit reversed, holding collateral estoppel does not apply when the second action involves a different legal standard, such as a different burden of proof. At the district court, Groupon must prove invalidity by clear and convincing evidence. However, before the Board, Groupon was only required to prove unpatentability by a preponderance of the evidence, a lower standard than at the district court. Accordingly, the Federal Circuit reversed and remanded.
Claims Reciting Material Properties of a Claimed Composition Withstand § 101 Scrutiny
In US Synthetic Corp. v. International Trade Commission, Appeal No. 23-1217, the Federal Circuit found claims reciting magnetic properties of a claimed composition were not directed to an abstract idea where the specification expressly correlated the recited magnetic properties to physical characteristics of the claimed composition.
US Synthetic Corp. (USS) filed a complaint with the U.S. International Trade Commission (Commission) alleging several entities violated § 337 of the Tariff Act by importing products that infringed U.S. Patent No. 10,508,502 (the ’502 patent) and four other USS patents. The ’502 patent claims a composition known as a polycrystalline diamond compact (PDC), which is used in drilling tools and machining equipment. Representative claims recite the claimed PDC’s constituent elements such as diamond, its dimensional information such as grain size, and its magnetic properties. The Commission instituted an investigation. In a final initial determination, an administrative law judge determined the asserted claims of the patent were patent ineligible under 35 U.S.C. § 101 as directed to an abstract idea. The Commission reviewed and affirmed that determination. USS appealed.
The Federal Circuit reversed the Commission’s patent ineligibility ruling and remanded. According to the court, the parties’ dispute centered around the magnetic properties recited in the ’502 patent. It found the patent’s specification expressly correlated the recited magnetic properties to physical characteristics of the claimed PDC composition. The Federal Circuit held the disclosed correlation was “sufficient for § 101, where we are trying to ascertain as a matter of law whether a patent claim is directed to a specific implementation of an idea or merely just the idea itself.” The court explained that “no perfect proxy is required between the recited material properties and the structure of the PDC.” It found the described correlations to be “concrete and meaningful, rather than something that is merely speculative.” The Federal Circuit therefore concluded that the asserted claims of the ’502 patent are not directed to an abstract idea under Alice step one.
