Apple Inc. v. Gesture Technology Partners, LLC, Appeal Nos. 2023-1475, -1533 (Fed. Cir. Mar. 4, 2025)

Our Case of the Week is a high-stakes appeal from an inter partes review concerning a patent titled “Camera Based Sensing in Handheld, Mobile, Gaming, or Other Devices.” The patent, filed in 1999, “relates to simple input devices for computers . . . intended for use with 3-D graphically intensive activities, and operating by optically sensing a human input to a display screen or other object and/or the sensing of human positions or orientations.” The invention uses TV cameras whose output is analyzed and used as input to a computer to provide information concerning the objects held by a person. The figures look like a predecessor to Nintendo’s Wii gaming system:

The Patent Office found many claims nonpatentable. Apple appealed with respect to findings that two claims specific to a telephone were not nonpatentable. Gesture appealed the finding of nonpatentability with respect to the other claims.

A few days prior to the Apple IPR filing, UnitedPatents, LLC filed an IPR with respect to the same patent. The Board issued its final written decision concerning the UnitedPatents IPR a few days before issuing its final written decision in the Apple IPR. With respect to Apple’s appeal, Gesture argued that Apple was estopped pursuant to 35 U.S.C. § 315(e)(1), which prohibits a party from “maintain[ing] a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during [a prior] inter partes review,” because of Apple’s role or participation in UnitedPatents.

The Federal Circuit rejected that argument on account of Gesture’s forfeiture. Privity and real-party-in-interest determinations are questions of fact, which the Federal Circuit does not consider in the first instance, and Gesture had failed to raise the argument with the PTAB. Accordingly, the Federal Circuit did not consider the matter on appeal.

With respect to the two claims that concern telephones, the Federal Circuit affirmed the PTAB’s ruling that those claims were not nonpatentable. Apple had argued that a person of ordinary skill would have been motivated to combine prior teachings with a cellular phone. The PTAB rejected this because Apple had failed to establish how the prior art would have been combined into a cell phone. And with respect to a limitation concerning videophones, there was no evidence such technology was actually available in 1999, the priority date for the patent. Though such technology was in development, there was insufficient evidence that a combination of the prior art with such emerging technology as a videophone would have been within the ambit of a person of ordinary skill.

Gesture cross-appealed the findings that its remaining claims were invalid.  The Court walked through a number of specific arguments concerning whether the prior art matched particular claim limitations as construed by the PTAB, and concluded the PTAB had not erred in its analysis with respect to those limitations.

The full opinion can be found here.

By Nika Aldrich

ALSO THIS WEEK

IQRIS Techs. v. Point Blank Enter., Inc. & Nat’l Molding, Inc., Appeal No. 2023-2062 (Fed. Cir. Mar. 7, 2025)

In an appeal from a district court summary judgment ruling, the Court vacated a district court finding of no literal or equivalent infringement of two IQRIS patents, U.S. Patent Nos. 7,814,567 (“the ’567 patent”) and 8,256,020 (“the ’020 patent”). Both patents share a common specification that relates to quick-release systems or “pull cords” on tactical vests. Appellant IQRIS disputed the district court’s interpretation of the claim term “pull cord,” which limited the term to cords pulled directly by a user as well as those without handles. The Court agreed with IQRIS and declined to adopt the district court’s interpretation. The Court explained that, although the preferred embodiments refer directly to pulled cords, the claim language nowhere specified whether the cords were pulled directly or indirectly. Quoting Phillips v. AWH Corp., 415 F.3d 1303, 1312, 1323 (Fed. Cir. 2005) (en banc), the Court reasoned that “[i]t is the claims, not the preferred embodiments, that define the metes and bounds of the patentee’s invention.” The Court further stated that the district court had erred by interpreting “pull cords” to disclaim cords with handles, because the specification did not expressly disavow the use of handles. Thus, Point Blank and National Molding could not meet the high bar of establishing the feature was disavowed by clear and convincing evidence. Accordingly, the Court vacated the grant of summary judgment and remanded the case for further consideration.

The opinion can be found here.

By Elizabeth Graves

AliveCor, Inc. v. Apple Inc., Appeal Nos. 2023-1512, -1513, -1514 (Fed. Cir. Mar. 7, 2025)

In appeals from the United States Patent and Trademark Office’s Patent Trial and Appeal Board, the Federal Circuit addressed whether the board had erred in finding three patents owned by AliveCor, Inc. were unpatentable as obvious. The patents at issue belong to a family of patents related to systems and methods for measuring and analyzing physiological data that detect cardiac arrhythmias, and describe a method for monitoring a subject to determine when to record an electrocardiogram and a wearable device designed to predict the presence of arrhythmias. The Federal Circuit held that the board’s obviousness conclusion was supported by substantial evidence. The Federal Circuit also addressed AliveCor’s request to vacate the board’s decisions due to Apple’s alleged failure to comply with what AliveCor characterized as the self-executing discovery obligations of an inter partes review’s petitioner. Specifically, AliveCor argued that Apple had violated its discovery duties by failing to produce, during the inter partes reviews, the secondary consideration evidence the administrative judge had found persuasive in a parallel International Trade Commission investigation. The Federal Circuit held that AliveCor had forfeited its argument by failing to raise it with the board.

The opinion can be found here.

By Mario E. Delegato

Immunogen, Inc. v. Coke Morgan Stewart, Appeal No. 2023-1762 (Fed. Cir. Mar. 6, 2025)

In ImmunoGen’s second round before the Federal Circuit with this case, the Court affirmed the district court’s holding that ImmunoGen’s patent application was not patentable. Immunogen had originally sued the federal government for refusing to grant a patent on an application directed to an antibody-drug, conjugate. The claims in the current case were directed to a method of treating ovarian cancer with conjugate, when administered at a specific dosing level. ImmunoGen argued the benefit of the claimed dosing level was that it helped prevent ocular toxicity.

The district court had initially found that ImmunoGen was not entitled to a patent because the claims were indefinite and obvious. When Immunogen appealed that initial case to the Federal Circuit, the higher court reversed and remanded, finding the district court had erred by resolving numerous factual disputes against non-movant ImmunoGen. On remand, the district court again held the application was not entitled to a patent for obviousness and indefiniteness. This time, the Federal Circuit agreed.

The Court discussed only the obviousness factor and, having found the claims obvious, chose not to address indefiniteness. ImmunoGen had argued it had been unknown in the art at the time of invention that the specific antibody-drug conjugate caused ocular toxicity; therefore, the claim it provides the benefit of preventing ocular toxicity was not obvious. In other words, Immunogen argued a person of skill in the art would not have been motivated to solve a problem not known to exist. The Federal Circuit disagreed and stated it’s not the case that a claimed solution to an unknown problem is necessarily non-obvious. Further, the Court stated that, although ocular toxicity was not specifically known as a problem for the antibody-drug conjugate, it was a known problem for the drug portion of conjugate. Therefore, a skilled artisan could have suspected the antibody-drug conjugate had a similar problem.

The Federal Circuit also found that a skilled artisan would have selected the specific dosing range and expected success because a similar dosing range had been discussed in the prior art. Dosing adjustments are regarded as routine optimization and generally obvious. Moreover, the claims were silent on ocular toxicity. Therefore, ImmunoGen’s argument that a skilled artisan would not have expected the results of preventing ocular toxicity was unconvincing. Thus, the Federal Circuit found the application obvious because a person of skill in the art would have been motivated to combine elements known in the art with a reasonable expectation of success.

The opinion can be found here.

By Ann Bernert

Restem, LLC v. Jadi Cell, LLC, Appeal No. 2023-2054 (Fed. Cir. Mar. 4, 2025)

In an appeal from an inter partes review decision that had upheld the challenged claims of Jadi Cell’s U.S. Patent No. 9,803,176, the Court affirmed. The ’176 patent claims stem cells with a specific cell marker expression profile, produced by placing a subepithelial layer of mammalian umbilical cord tissue in direct contact with a growth substrate. Among other details, the panel rejected challenger Restem’s argument that, because the prior art disclosed the claims’ broadly recited process, it inherently disclosed cells with the claimed expression profile. The Court explained that when assessing the validity of a product-by-process claim over the prior art, “the focus is on the product and not on the process of making it,” partly because “an old product is not patentable even if it is made by a new process.” Conversely, the Court found here that substantial evidence supported PTAB’s determination that prior art variations of the claimed process would not necessarily have resulted in the claimed cell marker expression profile, such that the claims were not shown to be invalid over the prior art.

By Jason A. Wrubleski

The opinion can be found here. 

Odyssey Logistics & Technology Corp. v. Coke Morgan Stewart, Appeal No. 2023-2077 (Fed. Cir. Mar. 6, 2025)

In an appeal from a district court dismissal of a complaint that untimely sought Director review under United States v. Arthrex, Inc., 594 U.S. 1 (2021), the Court affirmed. In Arthrex, the Supreme Court held that the then-unreviewable status of decisions by administrative judges of the Patent Trial and Appeal Board violated the Appointments Clause of the U.S. Constitution. Appellant Odyssey’s patent application had been rejected in a 2018 decision by PTAB, which in turn had been affirmed by the Federal Circuit in 2020. Construing Odyssey’s claim as a request for reconsideration in view of an intervening change in law, the Federal Circuit found that the USPTO had not abused its discretion in denying Odyssey’s request. The Court reasoned that the Appointments Clause challenge had been available to Odyssey during its earlier appeal—notwithstanding the Supreme Court’s Arthrex decision had yet to issue—and that Odyssey had not been diligent in waiting 14 months after issuance of its earlier mandate to raise the issue. The Federal Circuit affirmed the dismissal, but while the district court had reasoned it lacked subject matter jurisdiction, the higher court held this was not a jurisdictional issue and instead affirmed on grounds that Odyssey had failed to state a claim for relief.

The opinion can be found here.

By Jason A. Wrubleski

Lashify, Inc. v. Qingdao Hollyren Cosmetics Co. Ltd, Appeal No. 2023-1245 (Fed. Cir. Mar. 5, 2025)

In an appeal from a Section 337 decision of the United States International Trade Commission (ITC), the Federal Circuit affirmed in part, vacated in part, and remanded a determination that patent owner Lashify had failed to satisfy the economic prong of 19 U.S.C. § 1337(a)(2)’s “domestic industry” requirement for its eyelash extension utility and design patents. The ITC had determined that Lashify failed to establish a domestic industry, and reasoned that expenditures of labor or capital used for marketing and advertisement activities are insufficient to show a “significant employment of labor or capital” concerning the articles protected by the patent. The Federal Circuit disagreed, and ruled that neither the statutory language nor legislative history supported ITC’s conclusion. Specifically, the panel stated the plain language of 19 U.S.C. § 1337(a)(3)(B) provides “no carveout of employment of labor or capital for sales, marketing, warehousing, quality control, or distribution.” Therefore, “labor” and “capital” should “carry their ordinary meaning in this context as of 1988,” which is “a stock of accumulated goods” for capital, and “human activity that produces goods or provides the services in demand in an economy” with reference to labor. The panel affirmed the administrative law judge and ITC’s findings that Lashify’s utility patent did not satisfy the technical prong of 19 U.S.C. § 1337(a)(2), but remanded for the ITC to determine whether Lashify had satisfied the economic prong of 19 U.S.C. § 1337(a)(2) with respect to the design patents.

The opinion can be found here.

By Jeff Liao