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Catherine (Cheng) Xu is an Associate in the firm and is based in our Boston office. She has an electrical engineering background and focuses on patent litigation–related patent analysis. Before joining Mintz Levin as an attorney, she worked with the firm as a Summer Associate. In addition, as an intern in the Shanghai office of another US law firm, she created infringement analysis charts and conducted case research on US patent litigation involving Chinese LED manufacturers.

In its first en banc decision of 2018, the Federal Circuit held that “judicial review is available for a patent owner to challenge the U.S. Patent and Trademark Office’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review.” Wi-Fi One v. Broadcom (Fed. Cir. 2018) (en banc). The 9-4 decision overruled a contrary conclusion in Achates Reference Publishing v. Apple.

Continue Reading Wi-Fi, One v. Broadcom: En Banc Federal Circuit Held The Time-Bar Determinations (§ 315(b)) Appealable

The Federal Circuit has now reversed the Patent Trial and Appeal Board’s decision in Synopsys, Inc. v. ATopTech, Inc.  finding claims 1 and 32 of U.S. Patent No. 6,567,967 (the “‘967 patent”)  as being “not supported by substantial evidence.”

Synopsys sued ATopTech in 2013 for allegedly infringing the ‘967 patent. ATopTech subsequently filed two inter partes review (IPR) petitions (IPR2014-01150 and IPR2014-01159) challenging the validity of all claims of the ‘967 patent. The ‘967 patent aims to improve circuit performance by splitting large components into small subcomponents and optimizing the connections between subcomponents. Claim 1 requires “flattening each of said plurality of hierarchically arranged branches by eliminating superfluous levels of hierarchy above said atomic blocks.”  Claim 32 requires “determining optimal placement of each of the hard blocks, if any, within the predefined area.”  The Board found both claims either obviousness or anticipated in view of the Fields and/or Su references.

Continue Reading Federal Circuit Rejects Board’s Understanding of Prior Art

Supreme-Court-seal II. jpgThe U.S. Supreme Court ruled on June 20, 2016 in Cuozzo Speed Techs., LLC v. Lee that: (1) the statutory authority of the Patent Trial and Appeal Board (“Board”) in instituting an inter partes review (“IPR”) proceeding is final and non-appealable, thereby not being subject to judicial review, and (2) it is appropriate for the Board to construe claims in an issued patent according to their broadest reasonable interpretation, rather than their plain and ordinary meaning as in district court litigation.

Procedural Background

The Patent Office awarded U.S. Patent No. 6,778,074 to Cuozzo Speed Technologies, LLC, (“Cuozzo”) for a speed limit indicator that, upon receiving signals from a GPS, changes color of a display when the speed of a vehicle exceeds the speed limit at the vehicle’s present location. Garmin petitioned for inter partes review of all claims of the Cuozzo patent, asserting that claim 17 in particular would have been obvious based on three prior art patents – Aumayer, Evans and Wendt – in combination.  The Board instituted trial on claim 17 based on this combination, as well as with respect to claims 10 and 14, even though these claims were not challenged by Garmin on this basis.  Construing the claims according to their broadest reasonable interpretation, the Board deemed claims 10, 14 and 17 unpatentable.  Cuozzo appealed to the Federal Circuit, alleging that: (1) the Board improperly instituted inter partes review of claims 10 and 14 on a ground that Garmin did not assert against such claims, and (2) the Board improperly used the “broadest reasonable construction” to interpret the claims instead of the “plain and ordinary meaning” standard used by district courts.  The Federal Circuit denied both these assertions here.

Continue Reading Supreme Court Decides Two Key Aspects of IPR in Cuozzo Speed Techs., LLC v. Lee

It can be tricky to evaluate written description support under 35 U.S.C. § 112 for negative claim limitations since the support may amount to the shutterstock_178904063absence of a feature from an invention that is described positively with respect to what it includes, as opposed to what it does not.  The Court of Appeals of the Federal Circuit provided some clarity on this issue in Inphi Corp. v. Netlist, Inc., which is discussed below along with some practice tips in view of the decision.

The Federal Circuit held in Inphi Corp. v. Netlist, Inc. that describing alternative features, without identifying the comparative advantages or disadvantages of each feature, could constitute a “reason to exclude” to satisfy the written description requirement under 35 U.S.C. § 112 for a negative claim limitation under the Santarus standard, which states that “[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.”

Continue Reading Inphi v. Netlist: Alternative Features Satisfy the Patent Written Description Requirement for a Negative Claim Limitation