- Hunter’S Manufacturing Company, Inc. D/B/A Tenpoint Crossbow Technologies v. Ravin Crossbows, LLCInstitutedPTAB · Jul 10, 2023 · IPR2023-00407 · APJ Robert J Silverman · IPR · Institution
The Board instituted IPR on claim 1 on all asserted grounds because Grounds 7 and 8 met the reasonable-likelihood threshold.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/ default/files/documents/interim_proc_discretionary_denials_aia_parallel_dis trict_court_litigation_memo_20220621_.pdf (“Interim Procedure”). The Interim Procedure explains that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”)). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. In this proceeding, Petitioner offers a stipulation employing language nearly identical to that prescribed in the Interim Procedure: “Petitioner hereby stipulates that it will not pursue in the parallel district court proceeding the same grounds as in this Petition or any grounds that could have reasonably been raised as to claim 1 in this Petition.” Pet. 6–7.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Interpretation In an inter partes review, we construe claims using the same standard applied in a district court. See 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“’015 Patent pertains “would be a technical person who has at least some experience working in the field of archery, reviewing crossbows or engineering related to bows and/or crossbows, and is generally familiar with prior art crossbows” and “would likely have at least a bachelor’s degree in mechanical engineering or, alternatively, would have several years of experience in the field of archery or engineering related to bows and/or crossbows.” Pet. 28 (citing Ex. 1016 ¶ 17). Patent Owner states: “Solely for purposes of this Preliminary Response, Patent Owner does not dispute Petitioner’s proposed qualifications of a person of ordinary skill in the art (‘POSA’).” Prelim. Resp. 2. For the purposes of the present Decision, we adopt Petitioner’s description of a person of ordinary skill in the art pertinent to the ’015 Patent. E.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“The Federal Circuit has explained that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden, Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner relies upon a portion of KSR in which the Supreme Court stated: When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR, 550 U.S. at 421. Yet, in the analysis of Ground 2, Petitioner does not address the predicate factual determinations that the Supreme Court identifies — e.g., that there would have been “a design need or market pressure,” that there were “identified” and “predictable” solutions. Id. Therefore, based upon the present record, and for the purposes of the present Decision, Petitioner does not provide a sufficient reason for modifying Stanziale ’302, in order satisfy the identified limitation of claim 1. F.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,354,015 - Ecobee Technologies Ulc v. Ollnova Technologies Ltd.Institution deniedPTAB · May 8, 2023 · IPR2023-00082 · APJ Robert J Silverman · IPR · Institution
The Board denied institution on all challenged claims because the petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to Pasternak, we are not persuaded that the Petitioner adequately establishes that Pasternak teaches or suggests claim 1’s limitation: “the first [lower-level] wireless network is operable to control, free of communications with the second [higher-level] wireless network, building components in response to sensors operable within the first [lower-level] wireless network.”” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“to Pasternak, we are not persuaded that the Petitioner adequately establishes that Pasternak teaches or suggests claim 1’s limitation: “the first [lower-level] wireless network is operable to control, free of communications with the second [higher-level] wireless network, building components in response to sensors operable within the first [lower-level] wireless network.”” slip op. at 12
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,860,495 - Volvo Penta Of The Americas, LLC v. Brunswick CorporationInstitution deniedPTAB · Feb 16, 2023 · IPR2022-01424 · APJ Robert J Silverman · IPR · Institution
The Board denied institution on all challenged claims, finding it lacked authority to review claim 1 after its final invalidity judgment and exercising § 314(a) discretion to avoid conflict and inefficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Nonetheless, several considerations underlying Fintiv are beneficial to our analysis. For instance, the Director’s Interim Procedure recognized “the potential for inefficiency and gamesmanship in AIA proceedings, given the existence of parallel proceedings between the Office and district courts” and noted that Fintiv was designated precedential “[t]o minimize potential conflict” between such proceedings. Interim Procedure at 1; see also id. at 5 (“competing concerns of conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable”); 6 (“avoid duplicative efforts between the PTAB and federal district courts”). We keep these considerations in mind in determining whether to exercise our discretion to deny institution under § 314(a).” slip op. at 15
- Other 314aInstitution denied discretionary otherInstitution denied
“Nonetheless, several considerations underlying Fintiv are beneficial to our analysis. For instance, the Director’s Interim Procedure recognized “the potential for inefficiency and gamesmanship in AIA proceedings, given the existence of parallel proceedings between the Office and district courts” and noted that Fintiv was designated precedential “[t]o minimize potential conflict” between such proceedings. Interim Procedure at 1; see also id. at 5 (“competing concerns of conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable”); 6 (“avoid duplicative efforts between the PTAB and federal district courts”). We keep these considerations in mind in determining whether to exercise our discretion to deny institution under § 314(a).” slip op. at 15
- BurdenNot reached
“partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After reviewing the record, including the district court’s decision, we determine that the Board lacks authority to institute inter partes review of challenged claim 1, as it has already been determined to be invalid under 35 U.S.C. § 101 in a federal district court action. Also, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review of all the challenged claims so as to avoid potential conflict, inefficiency, and gamesmanship, and in order to maintain consistency with our decisions in related cases.” slip op. at 2
Discretionary denialcites MayoPatents in suitUS 10,671,073 - Volvo Penta Of The Americas, LLC v. Brunswick CorporationInstitution deniedPTAB · Feb 8, 2023 · IPR2022-01367 · APJ Carl M Defranco · IPR · Institution
The Board denied institution on claims 1–19 under § 314(a), citing potential conflict, inefficiency, and gamesmanship after the district court held claim 1 invalid under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Nonetheless, several considerations underlying Fintiv are beneficial to our analysis. For instance, the Director’s Interim Procedure recognized “the potential for inefficiency and gamesmanship in AIA proceedings, given the existence of parallel proceedings between the Office and district courts” and noted that Fintiv was designated precedential “[t]o minimize potential conflict” between such proceedings. Interim Procedure at 1; see also id. at 5 (“competing concerns of conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable”); 6 (“avoid duplicative efforts between the PTAB and federal district courts”). We keep these considerations in mind in determining whether to exercise our discretion to deny institution under § 314(a).” slip op. at 13
- Other 314aInstitution denied discretionary otherInstitution denied
“Nonetheless, several considerations underlying Fintiv are beneficial to our analysis. For instance, the Director’s Interim Procedure recognized “the potential for inefficiency and gamesmanship in AIA proceedings, given the existence of parallel proceedings between the Office and district courts” and noted that Fintiv was designated precedential “[t]o minimize potential conflict” between such proceedings. Interim Procedure at 1; see also id. at 5 (“competing concerns of conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable”); 6 (“avoid duplicative efforts between the PTAB and federal district courts”). We keep these considerations in mind in determining whether to exercise our discretion to deny institution under § 314(a).” slip op. at 13
Discretionary denialcites Alice · MayoPatents in suitUS 10,324,468 - Volvo Penta Of The Americas, LLC v. Brunswick CorporationInstitution deniedPTAB · Feb 8, 2023 · IPR2022-01368 · APJ Robert J Silverman · IPR · Institution
The Board denied institution on all challenged claims, finding it lacked authority to review claim 1 and exercising § 314(a) discretion to avoid potential conflict, inefficiency, and gamesmanship.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After reviewing the record, including the district court’s decision, we determine that the Board lacks authority to institute inter partes review of challenged claim 1, as it has already been determined to be invalid under 35 U.S.C. § 101 in a federal district court action. Also, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review of all the challenged claims so as to avoid potential conflict, inefficiency, and gamesmanship.” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“the ’928 patent constitutes ineligible subject matter under § 101. The district court addressed patent eligibility in a Rule 12(b)(6) motion to dismiss, prior to Volvo answering the Complaint, an approach that holds the promise of efficiently ending the infringement action and avoiding many of the expenses and burdens of district court litigation. The district court received briefing, heard oral argument, ordered and received supplemental briefing, heard supplemental oral argument, and issued a detailed decision granting Volvo’s motion to dismiss. See Brunswick v. Volvo (E.D. Va.) Dkt. Nos. 16, 17, 20, 22, 29, 30, 31, 35, 39, 41, 42, 45, 46. In other words, Volvo’s strategy succeeded. Now that Volvo has moved the district court litigation down this path, we confront the propriety of instituting an IPR, in view of the further burdens that doing so would impose on Brunswick (while the district court’s invalidity decision is on appeal to the Federal Circuit) and the impact of an IPR on the overall process of evaluating the ’928 patent across multiple tribunals. See Interim Procedure at 5 (recognizing that exercise of § 314(a) discretion “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable”). Although the parallel district court litigation may have terminated at an objectively early stage (i.e., at the motion to dismiss stage), the district court nonetheless decided a substantive issue relating to the invalidity of the ’928 patent — and which the Federal Circuit is now poised to review on appeal. We recognize that the issue before the district court was patent ineligibility under § 101, whereas the issue presented by the IPR petition is unpatentability under § 103. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating novelty.”) However, although the district court ruled on a § 101 theory, it nonetheless made findings reflecting on the novelty of the claimed invention, stating, for example, “Claim 1 of the ’928 Patent . . . makes no claim to any novel device, instrumentality, or apparatus and instead claims only a method that incorporates prior-art devices, instrumentalities, and apparatuses for the purpose or goal of maintaining the position and heading of a marine vessel.” Ex. 3001 at 2. Also, according to the district court, “Claim 1 of the ’928 Patent does not develop a new algorithm for keeping a vessel stationary or offer a new arrangement of sensors. Instead, Claim 1 contains only conventional, generic rules.” Id. at 16. These findings by the district court reflecting on the novelty of claim 1 directly impact a determination of unpatentability under § 103, as does the district court’s determination that claim 1 of the ’928 patent is unpatentable under § 101. See Mayo Collab. Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 90 (2012) (“We recognize that, in evaluating the significance of additional steps, the § 101 patent-eligibility inquiry and, say, the § 102 novelty inquiry might sometimes overlap.”); Bilski v. Kappos, 561 U.S. 593, 602 (2010) (describing the § 101 patent-eligibility inquiry as a “threshold test”). Thus, were we to analyze Volvo’s challenge on its merits, the possibility looms that we may make findings that could be viewed as inconsistent with the district court’s findings and/or their evaluation by the Federal Circuit. And, given our express objective of “strengthening the patent system by eliminating patents that are not robust and reliable” (Interim Procedure at 5), it seems odd to entertain the possibility of breathing life into a patent claim that a federal district court has already declared dead, i.e., neither robust nor reliable. Were we to institute under these circumstances, we would be inviting potential conflicts with the district court’s prior § 101 invalidity ruling, not to mention inefficiency and gamesmanship, which the Director expressly wishes to avoid. Interim Procedure at 1, 5, 7.” slip op. at 17
Discretionary denialcites MayoPatents in suitUS 7,305,928 - Volvo Penta Of The Americas, LLC v. Brunswick CorporationInstitution deniedPTAB · Feb 8, 2023 · IPR2022-01369 · APJ Kara L Szpondowski · IPR · Institution
The Board denied institution on claims 1–20, finding it lacked authority over claim 1 after its § 101 invalidation and exercising § 314(a) discretion to avoid conflict, inefficiency, and gamesmanship.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To begin, we lack statutory authority to entertain Volvo’s request to cancel claim 1, for the simple reason that it is no longer a valid claim that may be canceled. The plain language of the statute makes that point clear. In particular, § 311(b) provides that a petitioner in an IPR “may request to cancel as unpatentable 1 or more claims of a patent.” 35 U.S.C. § 311(b) (emphases added). Our reviewing court7 has explained that “[s]ection 311 is confined to the review of existing patent claims.” Uniloc 2017 LLC v. Hulu, LLC, 966 F.3d 1295, 1304 (Fed. Cir. 2020) (emphasis added). That is because “[t]o ‘cancel’ carries the ordinary meaning to ‘annul or destroy,’” which, in the context of § 311(b), presupposes that the claim being canceled “is already in effect.” Id. (citing Mac’s Shell Serv., Inc. v. Shell Oil Prods. Co., 559 U.S. 175, 183 (2010); Webster’s Third New International Dictionary (1961) (defining “cancel” as the “destr[uction] [of] the force, effectiveness, or validity”)). Thus “[w]hen given its ordinary meaning,” slip op. at 9
- Other 314aInstitution denied discretionary otherInstitution denied
“These findings by the district court reflecting on the novelty of claim 1 directly impact a determination of unpatentability under § 103, as does the district court’s determination that claim 1 of the ’232 patent is unpatentable under § 101. See Mayo Collab. Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 90 (2012) (“We recognize that, in evaluating the significance of additional steps, the § 101 patent-eligibility inquiry and, say, the § 102 novelty inquiry might sometimes overlap.”); Bilski v. Kappos, 561 U.S. 593, 602 (2010) (describing the § 101 patent-eligibility inquiry as a “threshold test”). Thus, were we to analyze Volvo’s challenge on its merits, the possibility looms that we may make findings that could be viewed as inconsistent with the district court’s findings and/or their evaluation by the Federal Circuit. And, given our express objective of “strengthening the patent system by eliminating patents that are not robust and reliable” (Interim Procedure at 5), it seems odd to entertain the possibility of breathing life into a patent claim that a federal district court has already declared dead, i.e., neither robust nor reliable. Were we to institute under these circumstances, we would be inviting potential conflicts with the district court’s prior § 101 invalidity ruling, not to mention inefficiency and gamesmanship, which the Director expressly wishes to avoid. Interim Procedure at 1, 5, 7.” slip op. at 18
Discretionary denialcites BilskiPatents in suitUS 10,095,232 - Volvo Penta Of The Americas, LLC v. Brunswick CorporationInstitution deniedPTAB · Feb 8, 2023 · IPR2022-01366 · APJ Carl M Defranco · IPR · Institution
The Board denied institution on claims 1–17, citing lack of authority to review claim 1 after its final invalidity judgment and exercising § 314(a) discretion to avoid conflict, inefficiency, and gamesmanship.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherDenied
“Although the parallel district court litigation may have terminated at an objectively early stage (i.e., at the motion to dismiss stage), the district court nonetheless decided a substantive issue relating to the invalidity of the ’036 patent—and which the Federal Circuit is now poised to review on appeal. We recognize that the issue before the district court was patent ineligibility under § 101, whereas the issue presented by the IPR petition is unpatentability under §§ 102 and 103. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating novelty.”). However, although the district court ruled on a § 101 theory, it nonetheless made findings reflecting on the novelty of the claimed invention, stating, for example, “[c]laim 1 of the ’036 Patent does not claim any novel device, sensor, or controller to achieve its purpose of damping unwanted movements of the marine vessel,” and, instead, claims a system that “uses prior art technology—controllers, sensors, and a joystick-like device—to carry out steps previously performed by humans.” Ex. 3001, at 5, 20, respectively. Also, according to the district court, “the difference between Claim 1 of the ’036 patent and the way vessels have been controlled for millenia is simply that a computer rather than a mate is controlling movement of the vessel,” but “autopilot systems already exist in the prior art which allow a vessel captain to release a joystick and relinquish control to a computer.” Id. at 22– 23. These findings by the district court reflecting on the novelty of claim 1 directly impact a determination of unpatentability under §§ 102 and 103, as does the district court’s determination that claim 1 of the ’036 patent is unpatentable under § 101. See Mayo Collab. Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 90 (2012) (“We recognize that, in evaluating the significance of additional steps, the § 101 patent-eligibility inquiry and, say, the § 102 novelty inquiry might sometimes overlap.”); Bilski v. Kappos, 561 U.S. 593, 602 (2010) (describing the § 101 patent-eligibility inquiry as a “threshold test”). Thus, were we to analyze Volvo’s challenge on its merits, the possibility looms that we may make findings that could be viewed as inconsistent with the district court’s findings and/or their evaluation by the Federal Circuit. And, given our express objective of “strengthening the patent system by eliminating patents that are not robust and reliable” (Interim Procedure at 5), it seems odd to entertain the possibility of breathing life into a patent claim that a federal district court has already declared dead, i.e., neither robust nor reliable. Were we to institute under these circumstances, we would be inviting potential conflicts with the district court’s prior § 101 invalidity ruling, not to mention inefficiency and gamesmanship, which the Director expressly wishes to avoid. Interim Procedure at 1, 5, 7.” slip op. at 15
- Other 314aInstitution denied discretionary otherDenied
“Although the parallel district court litigation may have terminated at an objectively early stage (i.e., at the motion to dismiss stage), the district court nonetheless decided a substantive issue relating to the invalidity of the ’036 patent—and which the Federal Circuit is now poised to review on appeal. We recognize that the issue before the district court was patent ineligibility under § 101, whereas the issue presented by the IPR petition is unpatentability under §§ 102 and 103. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating novelty.”). However, although the district court ruled on a § 101 theory, it nonetheless made findings reflecting on the novelty of the claimed invention, stating, for example, “[c]laim 1 of the ’036 Patent does not claim any novel device, sensor, or controller to achieve its purpose of damping unwanted movements of the marine vessel,” and, instead, claims a system that “uses prior art technology—controllers, sensors, and a joystick-like device—to carry out steps previously performed by humans.” Ex. 3001, at 5, 20, respectively. Also, according to the district court, “the difference between Claim 1 of the ’036 patent and the way vessels have been controlled for millenia is simply that a computer rather than a mate is controlling movement of the vessel,” but “autopilot systems already exist in the prior art which allow a vessel captain to release a joystick and relinquish control to a computer.” Id. at 22– 23. These findings by the district court reflecting on the novelty of claim 1 directly impact a determination of unpatentability under §§ 102 and 103, as does the district court’s determination that claim 1 of the ’036 patent is unpatentable under § 101. See Mayo Collab. Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 90 (2012) (“We recognize that, in evaluating the significance of additional steps, the § 101 patent-eligibility inquiry and, say, the § 102 novelty inquiry might sometimes overlap.”); Bilski v. Kappos, 561 U.S. 593, 602 (2010) (describing the § 101 patent-eligibility inquiry as a “threshold test”). Thus, were we to analyze Volvo’s challenge on its merits, the possibility looms that we may make findings that could be viewed as inconsistent with the district court’s findings and/or their evaluation by the Federal Circuit. And, given our express objective of “strengthening the patent system by eliminating patents that are not robust and reliable” (Interim Procedure at 5), it seems odd to entertain the possibility of breathing life into a patent claim that a federal district court has already declared dead, i.e., neither robust nor reliable. Were we to institute under these circumstances, we would be inviting potential conflicts with the district court’s prior § 101 invalidity ruling, not to mention inefficiency and gamesmanship, which the Director expressly wishes to avoid. Interim Procedure at 1, 5, 7.” slip op. at 15
- BurdenNot reached
“an objectively early stage (i.e., at the motion to dismiss stage), the district court nonetheless decided a substantive issue relating to the invalidity of the ’036 patent—and which the Federal Circuit is now poised to review on appeal. We recognize that the issue before the district court was patent ineligibility under § 101, whereas the issue presented by the IPR petition is unpatentability under §§ 102 and 103. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating novelty.”). However, although the district court ruled on a § 101 theory, it nonetheless made findings reflecting on the novelty of the claimed invention, stating, for example, “[c]laim 1 of the ’036 Patent does not claim any novel device, sensor, or controller to achieve its purpose of damping unwanted movements of the marine vessel,” and, instead, claims a system that “uses prior art technology—controllers, sensors, and a joystick-like device—to carry out steps previously performed by humans.” Ex. 3001, at 5, 20, respectively. Also, according to the district court, “the difference between Claim 1 of the ’036 patent and the way vessels have been controlled for millenia is simply that a computer rather than a mate is controlling movement of the vessel,” but “autopilot systems already exist in the prior art which allow a vessel captain to release a joystick and relinquish control to a computer.” Id. at 22– 23. These findings by the district court reflecting on the novelty of claim 1 directly impact a determination of unpatentability under §§ 102 and 103, as does the district court’s determination that claim 1 of the ’036 patent is unpatentable under § 101. See Mayo Collab. Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 90 (2012) (“We recognize that, in evaluating the significance of additional steps, the § 101 patent-eligibility inquiry and, say, the § 102 novelty inquiry might sometimes overlap.”); Bilski v. Kappos, 561 U.S. 593, 602 (2010) (describing the § 101 patent-eligibility inquiry as a “threshold test”). Thus, were we to analyze Volvo’s challenge on its merits, the possibility looms that we may make findings that could be viewed as inconsistent with the district court’s findings and/or their evaluation by the Federal Circuit. And, given our express objective of “strengthening the patent system by eliminating patents that are not robust and reliable” (Interim Procedure at 5), it seems odd to entertain the possibility of breathing life into a patent claim that a federal district court has already declared dead, i.e., neither robust nor reliable. Were we to institute under these circumstances, we would be inviting potential conflicts with the district court’s prior § 101 invalidity ruling, not to mention inefficiency and gamesmanship, which the Director expressly wishes to avoid. Interim Procedure at 1, 5, 7.” slip op. at 15
Discretionary denialcites MayoPatents in suitUS 7,727,036
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.