Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
In re: Riggs, Appeal No. 2022-1945 (Fed. Cir. Mar. 24, 2025)
Our Case of the Week explores the power of an examiner to request a rehearing after the Board has entered a decision on an application. The case also relates to determining when the filing date of a provisional patent application can be used for a non-provisional patent publication as a prior art reference under pre-AIA § 102(e)(1).
The application at the center of the present controversy, US Patent Application No. 11/005,678, with a priority date of July 28, 2000, addresses methods for logistics systems and transportation of goods. Initially, the examiner rejected the application for lack of novelty and obviousness based on the reference “Lettich” applied as prior art under pre-AIA law. Lettich is a printed publication of a U.S. non-provisional patent application with a priority claim to a provisional application filed April 27, 2000. The applicants appealed the examiner’s initial rejections. On the initial appeal, the Board sided with the applicants, but applied an incorrect analysis to determine that Lettich counted as prior art. Upon learning of the Board’s incorrect analysis on the prior art, the examiner requested a rehearing.
ALSO THIS WEEK
Wash World Inc. v. Belanger Inc., Appeal No. 2023-1841 (Fed. Cir. Mar. 24, 2025)
In an appeal from a $9.8 million jury verdict finding infringement by appellant Wash World of an automated car wash patent, the Federal Circuit affirmed in part, vacated in part, and remanded. In its opinion, the panel considered whether Wash World had preserved various arguments presented on appeal, and deferred to substance over form in its findings. The Court found that two of Wash World’s proposed claim constructions on appeal were materially different from the constructions it had pressed in the proceedings below, so those arguments had been forfeited.
However, the Court found a third claim construction dispute had been preserved, notwithstanding it had not been referred to as a “claim construction” issue before the district court. The Federal Circuit also found Wash World had effectively presented its $2.6 million remittitur request in detailed post-trial arguments that the jury’s award was excessive, though Wash World had never directly asked the lower court for a remittitur in that amount. Having reviewed the preserved arguments, the panel affirmed the district court’s implicit claim construction on the merits, but agreed with Wash World that the damages award had improperly included $2.6 million in lost profits for purported “convoyed sales” that did not qualify as such. Accordingly, the Court affirmed the judgment of infringement but vacated and remanded the damages award for remittitur.
The opinion can be found here.
Editors:
Nika Aldrich, IP Litigation Group Leader, Schwabe
Jason A. Wrubleski, Shareholder
Contributors:
Ann Bernert, Of Counsel