Apple Inc., et al. v. Gesture Technology Partners, LLC, Nos. 2023-1475, -1533 (Fed. Cir. (PTAB) Mar. 4, 2025). Opinion by Prost, joined by Moore and Stoll.
Apple, LG, and Google filed three IPR petitions challenging the claims in a patent owned by Gesture related to camera-based sensing in computer electronics. The Patent Trial and Appeal Board joined the petitions and issued a final written decision finding all claims unpatentable except for claims 11 and 13.
In another IPR, Unified Patents challenged some of the same claims, and the Board held some of those claims unpatentable and others not unpatentable. Unified Patents is a multi-member organization, and Apple is one of its members. The Board’s decision in the Unified Patents IPR preceded the decision in the Apple IPR by nine days.
Apple appealed the Board’s decision as to claims 11 and 13, and Gesture cross-appealed as to the claims found unpatentable.
The Federal Circuit first addressed Gesture’s argument that Apple lacked standing. Gesture argued that the estoppel provision of 35 U.S.C. § 315(e)(1) bars Apple’s appeal because Apple is a member of Unified Patents and once the Board issued its decision in that IPR, Apple could not “maintain a proceeding” before the Board because Apple is a real party in interest or privy of Unified Patents. Apple countered by asserting that Gesture forfeited the argument, and that Apple is not a real party in interest or privy of Unified Patents.
The Federal Circuit agreed with Apple that Gesture forfeited the argument. Gesture was aware of the relationship between Apple and Unified Patents many months before the final written decision issued, and Gesture “failed to present [its] arguments before the Board.”
Turning to the merits, Apple argued that claims 11 and 13 are unpatentable as obvious in view of “Numazaki” and the knowledge of persons of ordinary skill in the art. According to Apple, the Board misapplied the legal standard for obviousness by looking only to the explicit disclosures of Numazaki instead of Numazaki in view of the knowledge of persons of ordinary skill in the art.
The Federal Circuit disagreed. As to claim 11, the Board had relied on the petition’s lack of analysis. And as to claim 13, “the Board simply found the evidence did not support Apple’s argument.” The Federal Circuit thus affirmed, ruling that the Board’s approach “is not a misapplication of the obviousness standard.” The court explained that the Board “applied a reasoned analysis for rejecting [Apple’s] arguments,” and the court emphasized that “there is no requirement that the Board expressly discuss each and every negative and positive piece of evidence lurking in the record to evaluate a cursory argument.”
In the cross-appeal, Gesture argued that substantial evidence does not support the Board’s findings of unpatentability for the independent claims, and by extension the dependent claims as well. In a lengthy analysis, the Federal Circuit disagreed and thus affirmed the Board’s unpatentability determinations.
Gesture also challenged the Board’s finding that Numazaki taught the structure associated with a claim limitation written in means-plus-function format. The Federal Circuit again concluded that substantial evidence supported the Board’s decision. In fact, “Gesture admitted before the Board that Numazaki discloses th[e] structure,” and “this admission was supported by Numazaki and expert testimony.”
Restem, LLC v. Jadi Cell, LLC, No. 2023-2054 (Fed. Cir. (PTAB) Mar. 4, 2025). Opinion by Moore, joined by Schall and Taranto.
Restem filed an IPR petition challenging the claims of a patent owned by Jadi Cell directed to stem cells with specific cell markers obtained through a particular two-step process. Restem argued that the claims were inherently anticipated or, in the alternative, obvious in view of various combinations of references.
The Patent Trial and Appeal Board issued a final written decision holding that the claims were not shown to be unpatentable. Restem appealed.
Restem argued that the Board legally erred by implicitly construing the claims to require steps beyond the claimed two-step process. The Federal Circuit disagreed. Instead of an implicit claim construction, “the Board made factual findings that supported its anticipation analysis,” and the court saw “no error in the Board’s construction.”
Next, Restem argued that the Board legally erred by implicitly construing “isolated cell” contrary to the patent’s express definition. The Federal Circuit agreed that “the Board implicitly construed ‘isolated cell’ as ‘a cell population,’” but the court saw no error in the construction. The claims, specification, and prosecution all supported it. Also, the Federal Circuit disagreed with Restem’s proposed construction because “throughout prosecution, it was clear that the examiner only allowed the patentee to claim a cell population.” Thus, while the specification provided a different statement about the meaning of “isolated cell,” “the claim scope was narrowed during prosecution to a ‘cell population.’”
Next, the Federal Circuit affirmed the Board’s finding that the claims were not unpatentable as inherently anticipated. The court rejected Restem’s argument that “inherency is automatic for product-by-process claims.” The Federal Circuit explained that the argument “conflates the anticipation and infringement analyses for product-by-process claims by improperly shifting the analysis from whether the prior art discloses the claimed product to whether the prior art discloses the claimed process.”
Lastly, the Federal Circuit affirmed the Board’s finding that the claims were not unpatentable as obvious. The Board provided “two independent reasons” for its obviousness determination, but on appeal “Restem challenges only the Board’s alternative basis regarding the record evidence.” Because Restem did not challenge the Board’s original basis, the Federal Circuit affirmed without reaching the alternative basis.
Lashify, Inc. v. ITC, et al., No. 2023-1245 (Fed. Cir. (ITC) Mar. 5, 2025). Opinion by Taranto, joined by Prost and Chen.
Lashify distributes, markets, and sells eyelash extensions (and cases and applicators for the eyelash extensions) in the United States that it arranges to have manufactured abroad. Lashify filed a complaint before the ITC alleging that certain importers infringe claims of three Lashify patents: a utility patent and two design patents.
The Commission denied relief, ruling that Lashify failed to satisfy the economic-prong requirement under clause (B) of 19 U.S.C. § 1337(a)(3) because “it is well settled that sales and marketing activities alone cannot satisfy the domestic industry requirement.” The Commission drew the same conclusion about expenses related to warehousing, quality control, and distribution, explaining that these expenses are like those incurred by mere importers.
The Commission also ruled that Lashify failed to satisfy the technical-prong requirement for the utility patent. The Commission construed the claim term “heat fused” to mean “joined by applying heat to form a single entity,” and the Commission found that Lashify’s heat extensions did not satisfy the “heat fused” claim limitations under the adopted construction. Lashify appealed.
Addressing the economic prong, the Federal Circuit recounted how clauses (A), (B), and (C) of 19 U.S.C. § 1337(a)(3) set forth “three potentially overlapping but independently sufficient bases for considering the required industry to exist.” Lashify challenged the Commission’s interpretation of the clause here at issue—clause (B)—and the Federal Circuit agreed.
The court ruled that the Commission’s interpretation of clause (B) “is contrary to the provision’s language.” The court explained: “The provision covers significant use of ‘labor’ and ‘capital’ without any limitation on the use within an enterprise to which those items are put, i.e., the enterprise function they serve. In particular, there is no carveout of employment of labor or capital for sales, marketing, warehousing, quality control, or distribution. Nor is there a suggestion that such uses, to count, must be accompanied by significant employment for other functions, such as manufacturing. The Commission’s holdings attribute limitations to clause (B) not found there.”
The Federal Circuit reinforced its interpretation by relying on “the immediate context, i.e., the neighboring clauses” in the statute. The court also relied on the ordinary meanings of “labor” and “capital” as discussed in the court’s Lelo opinion. Next, the court considered the Commission’s reliance on the legislative history but concluded that it “does not justify the inference the Commission draws from it.” “The Commission identifies nothing in the legislative history that warrants declaring significant employment of labor or capital as insufficient (counter to the language of clause (B)) to the extent it is used in warehousing, quality control, or distribution.”
Next, turning to the technical prong of the domestic industry requirement, the Federal Circuit agreed with the Commission’s construction of “heat fused” and thus affirmed the determination that Lashify failed to satisfy the technical prong for the asserted utility patent.
Because the Federal Circuit concluded that the Commission’s interpretation of clause (B) was incorrect, the court vacated and remanded for redetermination of satisfaction of the economic prong. The court explained: “On remand, the Commission must count Lashify’s employment of labor and capital even when they are used in sales, marketing, warehousing, quality control, or distribution, and the Commission must make a factual finding of whether those qualifying expenses are significant or substantial based on ‘a holistic review of all relevant considerations’ ….” And the Federal Circuit said the Commission “must do so specifically with respect to the two design patents” since the court affirmed the Commission’s holding that Lashify failed to satisfy the technical prong for the utility patent.
ImmunoGen, Inc. v. Stewart, No. 2023-1762 (Fed. Cir. (E.D. Va.) Mar. 6, 2025). Opinion by Lourie, joined by Dyk and Prost.
ImmunoGen filed a patent application directed to a dosing regimen for administering IMGN853, an antibody drug conjugate used for treating certain ovarian and peritoneal cancers. After a patent examiner rejected the claims, and after the Patent Trial and Appeal Board affirmed, ImmunoGen brought suit seeking a judgment under 35 U.S.C. § 145 that would declare its entitlement to the patent.
After a bench trial, the district court found that the claims were both “fatally indefinite” and unpatentable as obvious over the prior art of record. Immunogen appealed.
The Federal Circuit affirmed the district court’s judgment on obviousness grounds and thus did not address indefiniteness.
ImmunoGen first argued that the district court erred in its motivation-to-combine analysis because it was undisputed that skilled artisans would not have known that IMGN853 caused ocular toxicity in humans. According to ImmunoGen, because there was no motivation to solve the problem of ocular toxicity, the claimed dosing limitation could not have been obvious.
The Federal Circuit disagreed. The court explained that “although ImmunoGen is correct that ‘where a problem was not known in the art, the solution to that problem may not be obvious,’ … it does not follow that a claimed solution to an unknown problem is necessarily non-obvious.” The district court had explained that ocular toxicity was a well-known adverse event in administering immunoconjugates that contain DM4, and because IMGN853 includes DM4, skilled artisans would have understood the risk of ocular toxicity and would have monitored for it. The Federal Circuit saw no clear error in these findings.
The Federal Circuit also saw no clear error in the district court’s finding that skilled artisans would have been motivated to select the claimed dose with a reasonable expectation of success. Skilled artisans would have started with doses known in the prior art and would have determined the claimed dose “based on routine optimization.”
The Federal Circuit considered ImmunoGen’s remaining arguments and found them unpersuasive. Thus, the court affirmed the judgment denying ImmunoGen’s claim for entitlement to a patent.
Odyssey Logistics & Technology Corp. v. Stewart, No. 2023-2077 (Fed. Cir. (E.D. Va.) Mar. 6, 2025). Opinion by Dyk, joined by Reyna and Stoll.
Odyssey filed a patent application relating to online logistics and the planning and management of freight shipments. A patent examiner rejected the claims, and the Patent Trial and Appeal Board affirmed in 2018. Odyssey appealed to the Federal Circuit, which affirmed and issued its mandate in May 2020.
In June 2021, the Supreme Court issued its Arthrex opinion, holding that administrative patent judges’ unreviewable authority in inter partes review proceedings violated the Appointments Clause. One week later, Odyssey raised an Appointments Clause challenge for the first time by filing a request for Director review of the Board’s 2018 decision. After Director review was denied, Odyssey filed a district court complaint requesting that the court require the Director to promptly consider Odyssey’s request for director review and provide a written decision. The court dismissed the case for lack of subject matter jurisdiction. Odyssey appealed.
The Federal Circuit treated Odyssey’s district court complaint as “essentially a request for reconsideration or reopening of th[e] final Board decision based on an intervening change in the law.” The Federal Circuit “conclude[d], without reaching the propriety of reconsideration of the Board’s decision, that the PTO did not abuse its discretion in denying the request for Director review.”
Under Rule 60(b)(6) of the Federal Rules of Civil Procedure, a district court may relieve a party from a final judgment for “any other reason that justifies relief.” But one limitation is that “Rule 60(b) … requires that the motion be made within a reasonable time.”
The Federal Circuit ruled that “Odyssey provides no justification that would have permitted its delay.” Odyssey “had notice of the Arthrex issue during the pendency of its appeal and made no effort to present this argument on appeal of the Board’s 2018 decision. There is no question that Odyssey could have raised this challenge, and Odyssey concedes that it failed to do so.” The court explained that “Odyssey waited fourteen months after the issuance of our May 2020 mandate affirming the Board’s decision before making its request for Director review.”
Thus, the Federal Circuit held that the PTO did not abuse its discretion in denying the request for review. The court ruled that Odyssey’s complaint failed to state a claim for relief, and thus the court affirmed the district court’s decision “for failure to state a claim, rather than for lack of subject matter jurisdiction.”
IQRIS Technologies LLC v. Point Blank Enterprises, Inc., et al., No. 2023-2062 (Fed. Cir. (S.D. Fla.) Mar. 7, 2025). Opinion by Stoll, joined by Lourie and Linn.
IQRIS sued Point Blank and National Molding for infringement of two of IQRIS’s patents related to quick release systems on tactical vests. The patents’ common specification teaches that a user pulls a handle that withdraws connected cables to disassemble the vest. The claims refer to this as a “pull cord,” which the district court construed as a “cord that can be directly pulled by a user to disengage a reasonable fastener or releasable hook.”
Point Blank and National Molding moved for summary judgment of noninfringement, arguing that the accused products lack a “pull cord” as construed by the court. The district court granted the motion, and IQRIS appealed.
IQRIS challenged two parts of the district court’s claim construction. IQRIS argued that the construction erroneously requires a user to pull on the pull cord directly, and excludes cords that have a handle.
The Federal Circuit agreed with IQRIS. First, the Federal Circuit observed that “the claims say nothing about who or what pulls the pull cord,” and they “do not specify pulling directly or indirectly.” Also, even though all embodiments in the specification depict a pull cord that is directly pulled, the court ruled that, “while this is a close question, we are not inclined under our precedent to limit the term ‘pull cord’ to the preferred embodiments in the specification.”
The court continued: “Even when all embodiments in the written description depict a pull cord that is directly pulled, our precedent counsels against reading this requirement into the claims when the claims do not expressly require as much. There is a fine line between reading the claims in light of the specification and importing limitations from the specification into the claims, and here, where there is no evidence suggesting that the ordinary meaning of pull cord is limited to a cord that is directly pulled, we are not inclined to import limitations from the preferred embodiments into the claimed invention.”
Second, the Federal Circuit agreed with IQRIS that “the district court erred by interpreting ‘pull cord’ to exclude pull cords that include a handle when analyzing infringement under the doctrine of equivalents.” The court ruled that “nothing in the claim language, specification, or prosecution history supports this construction.”
Because the district court’s summary judgment of no infringement depended on a flawed construction, the Federal Circuit vacated the judgment and remanded.
AliveCor, Inc. v. Apple Inc., Nos. 2023-1512, -1513, -1514 (Fed. Cir. (PTAB) Mar. 7, 2025). Opinion by Stark, joined by Hughes and Linn.
AliveCor filed a complaint in the ITC alleging that Apple was importing or selling products that infringe the claims of three AliveCor patents. The patents relate to systems and methods for measuring and analyzing physiological data to detect cardiac arrhythmias.
Apple filed IPR petitions challenging all claims of the three asserted patents as obvious. The parties’ disputes in the IPRs focused on two features of the claims: the use of machine learning to detect arrhythmias, and the step of confirming the presence of arrhythmias.
While the IPR proceedings were pending, the administrative law judge (ALJ) issued an initial determination in the ITC investigation. The ALJ upheld the validity of various claims and, in reaching that conclusion, found that AliveCor had presented secondary consideration evidence, including evidence of copying, sufficient to rebut Apple’s “strong” prima facie showing of obviousness.
The Patent Trial and Appeal Board then conducted the oral hearing in the IPRs nearly three months after the ALJ’s initial determination became publicly available. But “AliveCor made no effort to inform the Board of the ALJ’s findings with respect to the evidence of copying that had been presented in the ITC, and it did not ask the Board to order Apple to produce that same evidence as discovery in the IPRs.” The Board found all claims unpatentable as obvious over certain asserted prior art.
AliveCor appealed the IPR final written decisions, contending that the machine learning and confirmation limitations were not rendered obvious by the prior art and that Apple violated its discovery obligations by failing to produce secondary consideration evidence from the parallel ITC proceeding. The Federal Circuit addressed, and rejected, each of AliveCor’s arguments.
First, the Federal Circuit held that the Board’s decision for the machine learning claims was supported by substantial evidence, including testimony by Apple’s expert. The court explained that the claims “do not require any specific type of machine learning algorithm or a precise method for inputting and analyzing data to detect arrhythmias. Hence, Apple’s burden could be, and was, satisfied by substantial evidence that a person of ordinary skill in the art would have found it obvious to use machine learning, generally, in the context of PPG and ECG data to detect cardiac arrhythmia.” The Board’s findings “were made at the same level of specificity as the claims.”
As for the claims requiring confirming the presence of arrhythmias, the Federal Circuit again held that substantial evidence supported the Board’s findings. The Board “reasonably read” the prior art reference, and the Board appropriately relied on the opinions by Apple’s expert.
Lastly, the Federal Circuit held that AliveCor forfeited its discovery challenge by failing to raise it with the Board. Although Apple had refused to allow AliveCor to introduce in the IPR proceedings the evidence of secondary considerations Apple had produced in the ITC investigation, AliveCor never raised that issue with the Board. The Federal Circuit held that it was “AliveCor’s obligation to present issues to the Board, and preserve them, if it wants an opportunity to argue them on appeal.” The Federal Circuit explained that “at the very least, AliveCor could have directed the Board to the portion of the publicly available ITC ALJ Initial Decision showing that the ITC was persuaded by secondary consideration evidence that Apple was not permitting the Board to consider.”