Once You’re In, You’re In: Amending Claims Addressing an Instituted Ground Allows for More Unrelated Amendments.
In American National v. Sleep Number Corporation, Appeal No. 21-1321, the Federal Circuit held that once a patent owner includes at least one amendment that is responsive to an instituted unpatentability ground, the patent owner may include more amendments to address other non-instituted grounds, such as potential § 101 and § 112 issues.
American filed IPRs challenging certain Sleep Number patent claims. The Board found claims that included a limitation requiring a “multiplicative pressure adjustment factor” patentable, while finding claims that did not include such limitation unpatentable. In response, Sleep Number amended the unpatentable claims by adding the multiplicative pressure adjustment factor limitation to them. Sleep Number also included additional amendments addressing other non-instituted grounds that were intended to “correct potential § 112 errors.” Sleep Number alleged that its proposed amendments were made “to achieve consistency and accuracy in terminology and phrasing” and the Board allowed the amendments.
American argued that the Board erred in allowing these amendments because they would invite due process and Administrative Procedure Act violations by unilaterally addressing issues that are: (1) better handled in examinations or reexaminations, and (2) could not be raised as an IPR ground (i.e. § 112 issues). The Federal Circuit disagreed, and held that the Board did not err. It held that “once a proposed claim includes amendments to address a prior art ground in the trial, a patent owner also may include additional limitations to address potential § 101 or § 112 issues, if necessary.” The Federal Circuit recognized that although IPR petitions cannot challenge claims under § 112, it is well-established that the petitioner can challenge any amendments that are made to address § 112 issues, and American actually made such a challenge.
American also argued that one of Sleep Number’s proposed amendments did not fix an enablement issue due to an unchanged typographical error in the patent specification. American argued that the proposed amended claim was still unpatentable due to a lack of enablement in part because the error was not obvious as it went unnoticed during the original examination process. The Federal Circuit affirmed the Board’s decision against American and held that the error was obvious, regardless of whether the error was brought up in any prior examination.
American further argued that one of Sleep Number’s proposed amendments adding a “valve enclosure” limitation created an inventorship issue that made the proposed claim facially invalid. American specifically argued that because another Sleep Number patent involved “valve enclosures” and had different named inventors, the different named inventors should be the named inventors to the amended claims. The Federal Circuit also rejected this argument, recognizing that the patents at issue clearly incorporate the prior patent and indicate that valve enclosures are well-known structures.
Expert Testimony Inconsistent with Agreed-Upon Claim Construction is Properly Stricken
In Treehouse Avatar LLC v. Valve Corporation, Appeal No. 22-1171, the Federal Circuit held that the district court did not abuse its discretion in striking expert testimony inconsistent with the court’s claim construction. Nor did the district court err in granting summary judgment of noninfringement after striking the expert testimony.
Treehouse sued Valve for infringement of patent claims that required “character enabled (CE) network sites.” The parties agreed upon a specific construction of the CE limitation, and the district court adopted the same construction. However, Treehouse’s infringement expert report relied upon the plain and ordinary meaning of the CE limitation rather than the agreed-upon construction. Valve moved to strike portions of the expert testimony that relied on the plain and ordinary meaning, and for summary judgment of non-infringement based on the CE limitation. The district court granted both motions, and Treehouse appealed.
The Federal Circuit held that the plain and ordinary meaning used in the expert opinion was inconsistent with the agreed-upon construction. The Federal Circuit explained that “the grant of a motion to strike expert testimony is not improper when such testimony is based on a claim construction that is materially different from the construction adopted by the parties and the court.” With the expert opinion stricken, Treehouse failed to offer any admissible evidence that the accused products satisfied the CE limitation. Accordingly, the Federal Circuit affirmed the district court’s summary judgment of noninfringement.
Avoiding § 101 Eligibility Issues in Internet-Centric Method Claims
In Weisner v. Google LLC, Appeal No. 21-2228, the Federal Circuit held that the specific implementation of an abstract idea, such as improving Internet functionality, can be a patent-eligible concept.
Google moved to dismiss patent infringement claims brought by Sholem Weisner as claiming patent-ineligible subject matter. All four asserted patents shared a specification. Two patents claimed methods for logging a mobile device user’s location data for use in optimizing a search (the “travel log patents”), while the two other patents claimed methods for using travel histories to improve search results (the “search optimization patents”). Although the district court only analyzed the travel log patents under Alice’s two-part test, it dismissed both the travel log patents and the search optimization patents as patent-ineligible.
On appeal, the Federal Circuit affirmed the district court’s findings regarding the travel log patents. However, the Federal Circuit reversed the district court’s determination of patent ineligibility regarding the search optimization patents. The Federal Circuit determined that the claims of the search optimization patents were directed to an abstract idea. However, the specific implementation of this abstract idea to solve a problem unique to the Internet transformed the claimed subject matter into patent-eligible subject matter. Specifically, the implementation of physical-travel-history data from a “reference person” to prioritize search results, when conventional search ordering methodologies defaulted to using virtual visitation data to order search results, solved the Internet-specific problem of searches providing impersonal search results. The Federal Circuit likened the search optimization’s claims to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), which similarly solved an Internet-specific problem by overriding conventional Internet sequences with patented methodology.
Judge Hughes dissented, arguing that the claims recited routine and conventional algorithms for search engine optimization, thus leaving only the abstract idea of using location data to improve search results. Judge Hughes also argued the problem of search engine optimization is not particular to the Internet, since people in the past have used a reference person’s physical-travel data for recommendations before, like asking friends which restaurants they have visited before.