Wash World Inc. v. Belanger Inc., No. 2023-1841 (Fed. Cir. (E.D. Wis.) Mar. 24, 2025). Opinion by Stark, joined by Lourie and Prost.
Belanger sued Wash World for infringement of a patent related to a spray type car wash system. The jury returned a verdict finding that Wash World’s “Razor EDGE” car wash system infringed certain claims of Belanger’s patent and awarding Belanger $9.8 million in lost profits damages.
Wash World then moved for judgment as a matter of law that certain claims were not infringed and, alternatively, for a new trial or remittitur of the damages award by an amount corresponding to “Belanger’s losses for nonpatented ‘convoyed sales,’” reflecting alleged “lost profits from auxiliary products lacking any functional relationship to Belanger’s patent claim.” The district court denied the motion, and Wash World appealed.
On appeal, Wash World challenged both the district court’s handling of claim construction and the court’s refusal to overturn the portion of the jury’s damages award related to convoyed sales. For each argument, Belanger responded that Wash World forfeited its positions by their “not being preserved in, or in some instances not even being presented to, the district court.”
For two of the three contested claim terms, the Federal Circuit agreed with Belanger that Wash World forfeited its arguments because it proposed “a materially different construction [on appeal] than it did in the district court.” For the third term, Wash World sufficiently preserved its challenge, but the Federal Circuit agreed with the district court’s claim construction. Thus, the Federal Circuit affirmed the judgment of infringement.
Turning to damages, the Federal Circuit rejected Belanger’s argument “that Wash World forfeited its request for remittitur by failing to ask the district court to remit any part of the damages award.” Although Wash World “certainly could have been clearer” that it was seeking remittitur of approximately $2.6 million for convoyed sales, the record persuaded the Federal Circuit that the district court and Belanger understood remittitur was a component of Wash World’s request.
As to the merits, the Federal Circuit agreed with Wash World that there was insufficient evidence in the record to support damages for convoyed sales. The court ruled: “Taking the trial record in the light most favorable to Belanger, no reasonable juror could have found that the unpatented components of Belanger’s Razor EDGE system constitute a functional unit with the patented portions of the system.” Thus, the Federal Circuit vacated and remanded the district court’s damages award with instructions to remit the approximately $2.6 million related to convoyed sales.
In re: Riggs, et al., No. 2022-1945 (Fed. Cir. (PTAB) Mar. 24, 2025). Opinion by Stoll, joined by Moore and Cunningham.
Certain inventors filed a patent application directed to logistics systems and methods for transportation of goods. The Examiner rejected some claims as anticipated by “Lettich” and other claims as obvious over Lettich in view of a second reference. Lettich is a published patent application that claims priority to a provisional application.
In sustaining the Examiner’s rejection, the Patent Trial and Appeal Board agreed with the Examiner that Lettich qualified as prior art under pre-AIA 35 U.S.C. § 102(e)(1). The Board found that Lettich qualified as prior art because the provisional application included support for each limitation of issued claim 1.
The named inventors appealed, challenging whether the “Board properly afforded Lettich the earlier filing date of its provisional application for purposes of determining that it was prior art under pre-AIA § 102(e).” The Federal Circuit agreed with the inventors that “the Board conducted an incomplete analysis in determining whether Lettich qualifies as prior art under § 102(e),” and thus vacated and remanded.
The Federal Circuit noted that while it has “explained that a prior art patent or published application cannot be accorded the benefit of its provisional application’s filing date absent a showing that the provisional application provides support for the claims of the patent or published application,” it had “not addressed whether the Board’s test is sufficient where, as here, the Examiner (or any party challenging the validity of a patent) demonstrated support for one claim and then relied on other portions of the specification” to support a rejection.
As to that new scenario, the court concluded that the Board’s test was not sufficient. The Federal Circuit held that “even if one demonstrates that a provisional application provides written description support for one claim of the non-provisional application or patent, the provisional application must also provide written description support for the specific portions of the patent specification identified and relied on in the prior art rejection.” The court continued: “In other words, to claim priority to the provisional filing date, the portion of the application relied on by the examiner as prior art must be supported by the provisional application. It makes no sense to suggest that if a single claim is supported by the provisional application, then everything in the later filed application gets the benefit of the provisional date whether supported or not.” Because the Board had not performed that analysis, the Federal Circuit remanded for the Board to do so.
The Federal Circuit also considered other issues raised by the named inventors, including “whether the Board’s decision to grant the Examiner’s request for rehearing was ultra vires.” The Federal Circuit concluded that, based on a prior litigation, issue preclusion applied and estopped the inventors from arguing that the Board acted ultra vires.