Federal Circuit Patent Watch - February 2022

Precedential Federal Circuit Opinions

1. KYOCERA SENCO INDUS. TOOLS INC. v. ITC [OPINION] (2020-1046, 2020-2050, 01/21/2022) (MOORE, DYK, and CUNNINGHAM)                

   Moore, C.J.  The Court vacated and remanded an ITC decision finding infringement of a patent directed to “fastener driving tools,” such as “portable tools that drive staples [and] nails.” The court addressed multiple issues on appeal and cross appeal. First, the court held that the ITC ALJ abused his discretion by allowing Kyocera’s expert to testify on issues analyzed through the lens of one of ordinary skill in the art because the expert did not meet the definition of one of ordinary skill in the art. Second, the Court affirmed the ALJ’s construction of “driven position” based on a definition provided in the patent specification. Third, the Court held that the ALJ erred by not interpreting “lifter member” as a means-plus-function term under 35 U.S.C. § 112 ¶ 6. The Court explained: “The ‘lifter member’ limitation does not use the word means, so there is a presumption that § 112 ¶ 6 does not apply. But because that claim term does not recite sufficiently definite structure, that presumption has been overcome… It is a non-structural generic placeholder (member) modified by functional language (lifter).” Fourth, the Court construed the “safety contact element” and “fastener driving mechanism” as “separate components” of the claims. Fifth, the Court held that the ALJ’s invalidity analysis with regard to the “main storage chamber” element of the claims was supported by substantial evidence.

2. NATURE SIMULATION SYSTEMS INC. v. AUTODESK, INC. [OPINION] (2020-2257, 01/27/2022) (NEWMAN, LOURIE, and DYK)      

   Newman, J.  The Court reversed a district court judgment that asserted claims of two patents directed to “methods of packaging computer-aided data for three-dimensional objects” were invalid as indefinite under 35 U.S.C. § 112(b). The Court held that the district court applied the wrong standard for indefiniteness by requiring that the meaning of the claims must be found in the “claim language, standing alone.” The Court explained that the district court had not properly considered the specification and prosecution history, or other extrinsic evidence of terms known in the art.

   Judge Dyk dissented.