Peter Heuser
Mar 31, 2017

Fresh from the Bench: Precedential Patent Cases from the Federal Circuit

Written by Peter Heuser, Schwabe Williamson & Wyatt

In Chudik the Circuit rules that no substantial evidence supports the Board’s determination of ‎anticipation since the ruling is based on a significant and impermissible modification of the prior ‎art apparatus. We somehow missed Thales, a precedential Alice decision of a couple of weeks ‎ago, finding that claims asserted against a helmet-mounted display system in the F-35 fighter do ‎in fact recite patentable subject matter. Any precedential Circuit cases decided Friday will be ‎included in next week’s report.‎

Thanks to my colleague Mike Cofield for his help with this week’s report.‎


                               In re Chudik, Fed. Cir. Case 2016-1817 (March 27, 2017)

The Circuit rules that substantial evidence does not support the Board’s determination that the ‎claims at issue, directed to an implant used in rotator cuff surgery, are anticipated by two ‎separate references. Specifically, the panel holds that prior art that must be distorted from its ‎obvious design does not anticipate.‎

The surgery described in Chudik’s application involves two main steps. First, the surgeon ‎removes “a minimal amount of bone from the peripheral surface of the glenoid.” Second, the ‎surgeon places an implant in the formed cavity. The first reference (Rambert) discloses a glenoid ‎implant with a so-called shell element 27b in contact with an anchoring element 27a, which in ‎turn contacts the glenoid cavity 6.

Rambert’s Fig. 2

The second reference (Bouttens) shows a protruding surface 11 facing away from the glenoid ‎cavity and toward the humerus, with screws on the opposite side of the protruding surface ‎attaching the implant to the glenoid region. ‎

Bouttens’s Fig. 1

According to the Board, claim 1 requires only that the recited surfaces be “arranged” for ‎engagement, not that they actually do engage. As Rambert’s surfaces can be arranged to engage ‎the specified glenoid regions, claim 1 is anticipated. As for claim 40, Bouttens’s surface 11 is ‎structurally capable of engaging a glenoid cavity.‎

The panel disagrees, noting that the “arranged to engage” language could imply that the ‎protruding surface on the flat side need not always actually engage the glenoid cavity surface. ‎However, it must be at least capable of doing so. Here, Rambert’s element 27b cannot be ‎‎“arranged to engage” the glenoid cavity surface without “tearing the invention apart” by ‎removing element 27a. Prior art that “must be distorted from its obvious design” does not ‎anticipate a new invention. Therefore, substantial evidence does not support the Board’s finding ‎of anticipation of claim 1 based on Rambert.‎

Claim 40 requires “a protruding surface on a first side arranged to engage the surface of a cavity ‎formed in a glenoid extending between peripheral glenoid surfaces.” Mr. Chudik asks: “If the ‎Bouttens implant’s ‘protruding surface’ is faced about, turned 180 degrees, where does the ‎Board propose to fasten it in a person’s shoulder?” The Board’s reasoning only makes sense if ‎the user rotates Bouttens 180 degrees, thereby rendering the protruding surface 11 capable of ‎engaging the glenoid cavity. Rotating Bouttens so that the protruding surface faces the glenoid ‎cavity would require relocating the screws for Bouttens to remain operable. This endeavor would ‎constitute a significant and impermissible modification. ‎

This ruling, in combination with its decision‎ two weeks ago in Nidec Motor v. Zhongshan Broad ‎Ocean Motor, shows that the Circuit is not reluctant to reverse Board determinations of ‎anticipation, even under the deferential “substantial evidence to support” standard of review. ‎

Read the full opinion

                     Thales Visionix Inc. v. U.S., Fed. Cir. Case 2015-5150 (March 8, 2017)

The Circuit reverses a Court of Federal Claims holding that all claims of Thales’ patent are ‎directed to the abstract idea of mathematical equations. Specifically, the Circuit finds that the ‎claims utilize the mathematical equations for the determination, but are not directed to these ‎mathematical equations. Because the claims survive Alice step one, there is no need to proceed to ‎Alice step two.‎

The ’159 patent discloses an internal tracking system for tracking the motion of an object relative ‎to a moving reference frame. Inertial sensors (e.g., accelerometers and gyroscopes) measure the ‎specific forces associated with changes in a sensor’s position and orientation relative to a known ‎starting position. The ’159 patent recognized that systems using these inertial sensors to measure ‎changes with respect to the earth produced inconsistent position information between inertial ‎sensors of the object (e.g., the helmet) and inertial sensors of the platform (e.g., the vehicle) when ‎the moving platform accelerated or turned. In the disclosed system, the platform inertial sensors ‎directly measure the gravitational field in the platform frame, and the object inertial sensors then ‎calculate position information relative to the frame of the moving platform. The two claims at ‎issue recite:‎

‎1. A system for tracking the motion of an object relative to a moving ‎reference frame, comprising:‎

a first inertial sensor mounted on the tracked object;‎

a second inertial sensor mounted on the moving reference frame; and

an element adapted to receive signals from said first and second inertial ‎sensors and configured to determine an orientation of the object relative to ‎the moving reference frame based on the signals received from the first ‎and second inertial sensors.‎

‎22. A method comprising determining an orientation of an object relative ‎to a moving reference frame based on signals from two inertial sensors ‎mounted respectively on the object and on the moving reference frame.‎

In summarizing the critical question to be answered in step one, the panel cites to Mayo, stating: ‎‎“all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural ‎phenomena, or abstract ideas.” The Circuit disagrees with the Claims Court, which held that the ‎claims are directed to the abstract idea of using “mathematical equations for determining the ‎relative position of a moving object to a moving reference frame.” ‎

Regarding step one, the opinion quotes the 2016 Rapid Litigation case: “it is not enough to ‎merely identify a patent-ineligible concept underlying the claim: we must determine whether that ‎patent-ineligible concept is what the claim is ‘directed to.’” While the claims utilize mathematical ‎equations to determine the orientation of a tracked object, the equations serve only to tabulate ‎the position and orientation information in this configuration. The claims are directed to methods ‎that use inertial sensors in a non-conventional manner to reduce errors in measuring the relative ‎position and orientation of a moving object on a moving reference frame, which is not an abstract ‎idea.‎

This ruling emphasizes the distinction made by the Supreme Court in Diamond v. Diehr and Alice ‎between, on the one hand, claims that merely involve an abstract concept, and claims that are ‎directed to the abstract concept, on the other. ‎

Read the full opinion

This article was originally published on Schwabe, Williamson & Wyatt's Ideas Fuel Industries Section