Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
Bearbox LLC v. Lancium LLC, Appeal No. 2023-1922 (Fed. Cir. Jan. 13, 2025)
In this week’s Case of the Week, the Federal Circuit affirmed a district court’s determination that appellants Bearbox and Austin Storms—Bearbox’s founder and sole employee—had not shown that Mr. Storms should be added as an inventor to Lancium’s U.S. Patent No. 10,608,433. The ’433 patent is directed to the operation of cryptocurrency mining centers which are situated adjacent to a power supply like a wind farm, and which utilize an agreement with the power provider to selectively operate “miner” computers on behind-the-meter energy based on the price of electricity, relevant cryptocurrency exchange rates, and other inputs. In addition to the district court’s ultimate denial of Mr. Storms’ inventorship claim, the Court also affirmed its finding that appellants’ Louisiana state law conversion claim was pre-empted by federal patent law.
ALSO THIS WEEK
Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., Appeal No. 2023-2346 (Fed. Cir. Jan. 14, 2025)
The Federal Circuit addressed an issue of first impression concerning prior art that can be used in an inter partes review proceeding. Specifically, Section 311(b), adopted as part of the APA, states that an IPR may be brought “only on the basis of prior art consisting of patents or printed publications.” In this case, a patent application had been asserted as prior art that was not published until after the critical date. Lynk Labs asserted the patent application, although undisputedly prior art under 102(e), did not qualify as a “prior art . . . printed publication” for purposes of Section 311 until after it was published. The Board disagreed and, accepting the patent application as prior art, found the patent in question invalid as obvious. On appeal, the Federal Circuit affirmed, holding that a patent application is a “prior art . . . printed publication” for purposes of Section 311(b) as of the date it is filed, not the date it is published. The Federal Circuit performed an extensive statutory analysis including the legislative history behind post-grant review procedures, and analyzed case law dating back to the 1800s. After resolving that issue, the Court addressed claim construction and the Board’s obviousness analysis, ultimately affirming the Board’s finding that the patent was obvious.
The full opinion can be found here.
Editors:
Nika Aldrich, IP Litigation Group Leader, Schwabe
Jason A. Wrubleski, Shareholder