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Ninth Circuit Once Again Preserves Competitor’s Data-Scraping Rights

by Sarah Bro | May 12, 2022 | Copyrights

On remand from the Supreme Court of the United States, the US Court of Appeals for the Ninth Circuit reaffirmed its own 2019 opinion that preliminarily enjoined a professional networking platform from denying a data analytics company access to publicly available profiles. HiQ Labs, Inc. v. LinkedIn Corporation, Case No. 17-16783, (9th Cir., Apr. 18, 2022) (Wallace, Berzon, Berg (sitting by designation) JJ.).

Previously, the Supreme Court had granted certiorari in this case, but subsequently vacated the judgment and remanded back to the Ninth Circuit for further consideration in view of its 2021 decision in Van Buren v. United States. In Van Buren, the Supreme Court attempted to clarify the reach of the Computer Fraud and Abuse Act of 1986 (CFAA), holding that authorized computer access for arguably improper purposes likely does not constitute a violation of the CFAA. On remand, the Ninth Circuit concluded that Van Buren reinforced its determination that hiQ had raised “serious questions” about whether LinkedIn may invoke the CFAA to preempt hiQ’s claim of tortious interference.

HiQ is a data company that sells “people analytics” focused on predictive employee data. HiQ’s data is largely obtained by scraping public LinkedIn profiles with automated bots. In 2017, LinkedIn sent a demand letter to hiQ asserting that hiQ’s scraping activity was in violation of the CFAA, the Digital Millennium Copyright Act (DMCA), the California penal code and common law. HiQ immediately filed suit seeking injunctive relief and a declaratory judgment that LinkedIn could not lawfully invoke the asserted claims. Granting hiQ’s motion for the preliminary injunction, the district court ordered LinkedIn to remove, and to refrain from implementing, any technical barriers to hiQ’s access to the LinkedIn public profiles.

The Ninth Circuit stated that a plaintiff seeking a preliminary injunction must establish the following:

It is likely to succeed on the merits.
It is likely to suffer irreparable harm absent the injunction.
The balance of equities tips in its favor.
The injunction is in the public interest.

This analysis required the Ninth Circuit to focus only on whether hiQ had raised serious questions on the merits of the factual and legal issues presented. The Ninth Circuit’s re-examination of these factors was nearly identical to its 2019 holding.

Starting with irreparable harm, the Ninth Circuit found that the survival of hiQ’s business was threatened since it depends on being able to access public LinkedIn member profiles. The Court also agreed, once again, with the district court’s determination that the balance of the equities tipped in hiQ’s favor. The Court found that the privacy interests of individuals who have opted to maintain a public LinkedIn profile did not outweigh hiQ’s interests in continuing its business. On this factor, the Court noted that “little evidence” suggested that LinkedIn users who choose to make their profiles public actually maintain an expectation of privacy with respect to publicly posted information. The Court also noted that LinkedIn does not own its users’ data, since users retain [...]

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Robotic Skepticism May Not Trump Motivation to Combine

by Joshua Revilla | May 12, 2022 | Patents

The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board (Board) decision finding the challenged claims patentable because the Board impermissibly rested its motivation-to-combine analysis on evidence of general skepticism in the field of invention. Auris Health, Inc. v. Intuitive Surgical Operations, Case No. 21-1732 (Fed. Cir. Apr. 29, 2022) (Dyk, Prost, JJ.) (Reyna, J., dissenting).

Intuitive owns a patent that describes an improvement over earlier robotic surgery systems that allows surgeons to remotely manipulate surgical tools using a controller. The patent focuses on solving the problem of swapping surgical tools by implementing a pulley system that allows tools to be swapped in and out more quickly. Auris petitioned for inter partes review (IPR) of the patent, arguing that a combination of two references disclosed every limitation of the challenged claims. Auris further argued that a skilled artisan would be motivated to combine the references to decrease the number of assistants needed during surgery. While the Board agreed that the combination of the two references disclosed every limitation of the challenged claims, it found that a person of ordinary skill in the art would not be motivated to combine the references because of general skepticism from surgeons “about performing robotic surgery in the first place.” Auris appealed.

The Federal Circuit began by explaining that the motivation-to-combine inquiry asks whether a skilled artisan “not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.” The Court also explained that as to the “‘would have’ question, ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.’”

The Federal Circuit concluded that generic industry skepticism about robotic surgery cannot, on its own, preclude a finding of a motivation to combine. The Court explained that although industry skepticism can play a role as a secondary consideration in an obviousness finding, such evidence must be specific to the invention and not simply the field as a whole. The Court concluded that the Board’s motivation-to-combine determination was based almost exclusively on evidence of general skepticism. Thus, the Court vacated the decision and remanded the case, directing the Board to examine the evidence using the correct obviousness criteria.

Judge Reyna issued a dissenting opinion in which he disagreed as to whether the Federal Circuit should implement a rule that general skepticism cannot support a finding of no motivation to combine. Judge Reyna expressed concern that the majority opinion could be understood to create an inflexible, rigid rule that the Board cannot consider evidence of skepticism toward the invention , including whether that skepticism would have dissuaded a skilled artisan from making the proposed combination. Judge Reyna also argued that notwithstanding the majority opinion, the Board did not rely solely on general skepticism, but rather provided additional explanation as to why the “no [...]

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The Perils of Falling in Love

by Jodi Benassi | May 12, 2022 | Copyrights

The US Court of Appeals for the Second Circuit affirmed the dismissal of a lawsuit that sought a declaratory judgment on the basis that a notice of termination of copyright assignment under 17 U.S.C. § 203 did not validly terminate a 1983 grant of rights in the copyright. Valentina M. Peretti Acuti, et al. v. Authentic Brands Group, LLC, et al., Case No. 21-2174 (2d Cir. May 4, 2022) (Livingston, C.J.; Lynch, Lohier, JJ.)

Hugo Peretti co-wrote “Can’t Help Falling in Love,” a ballad popularized by Elvis Presley in 1961, and registered the composition with the US Copyright Office the same year. In 1983, Peretti, his wife and his daughters transferred their contingent rights and interest in the renewal term of the copyright to Julian and Jean Aberbach, predecessors-in-interest to Authentic Brands. Under the Copyright Act of 1976 (1976 Act), the renewal rights would not vest until the original term of the copyright expired in 1989 (28 years after the copyright was registered, under the Copyright Act of 1909, which applied to the initial term of the copyright because of its registration in 1961). Peretti died in 1986, before the renewal rights vested. His family registered the renewal of the copyright in 1989.

In 2014, Peretti’s widow and his daughter Valentina served a notice on Authentic Brands to terminate the 1983 assignment under 17 U.S.C. § 203. Section 203 provides for the right to terminate a grant executed by the author at any time during a five-year period beginning at the end of 35 years from the date of execution of the grant. Authentic Brands contested the effectiveness of the termination, and Valentina filed a lawsuit seeking a declaratory judgment that the termination was properly effectuated. The district court dismissed the claim, holding that Valentina had no right to terminate the assignment because the rights to the renewal term that were transferred were those of Valentina and her mother, which had vested upon expiration of the original copyright term. The district court held that § 203 provides termination rights only to post-1978 grants executed by an author and, therefore, Peretti’s widow and daughter’s rights to the renewal were not subject to termination under that provision. Valentina appealed.

The Second Circuit began with a discussion of § 203 of the Copyright Act, which applies only to grants executed by the author on or after January 1, 1978. The Court noted that the appeal hinged on the meaning of “executed by the author.” The 1976 Act provides that execution of a transfer of a copyright is not valid unless an instrument of conveyance is in writing and signed by the owner of the rights conveyed. Thus, as the Second Circuit explained, a grant “executed by the author” is a grant that is documented in writing, is signed by the author and conveys rights owned by the author.

Turning to the Peretti 1983 assignment, the Second Circuit explained that at the time the assignment was executed, ownership of the copyright in the composition [...]

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Over My Dead Body: Defendant Can’t “Wait Until He Dies” to Pay Arbitration Award

by Tessa Kroll | May 5, 2022 | Uncategorized

The US Court of Appeals for the Seventh Circuit reversed the district court’s interpretation of an arbitration award, finding that the defendant could not “wait until he dies” to pay a portion of the damages award. Nano Gas Techs., Inc. v. Roe, Case Nos. 21-1809; -1822 (7th Cir. Apr. 25, 2022) (Rovner, St. Eve, Jackson-Akiwumi, JJ.)

Clifton Roe invented a nozzle that disperses gases into liquids. Roe assigned the invention to Nano Gas as part of a collaboration agreement under which Roe received 20% equity and a board seat. The agreement also provided for a salary that was subject to Nano Gas’s ability to raise capital and Roe’s success in developing the invention at Nano Gas’s facility. The parties’ relationship deteriorated after the collaboration failed to produce the desired results. Roe ultimately took the machine and related intellectual property created by another Nano Gas employee and continued developing the product on his own. Arbitration ensued.

The arbitrator concluded that Roe did not have the right to remove the machine and related intellectual property from Nano Gas’s facility. The arbitrator determined that Roe should pay Nano Gas for the financial harm it suffered but also found that Roe deserved compensation for his work on the technology. In his award, the arbitrator indicated that he had initially considered giving Roe a royalty on future profits but declined to do so because Roe was a shareholder in Nano Gas and could benefit financially from the invention’s future success. The arbitrator offset Nano Gas’s $1.5 million damages award with an award to Roe of $1 million and ordered Roe to pay the $500,000 offset “in such manner as Roe chooses.” Roe was also required to return the related intellectual property or pay Nano Gas $150,000.

Nano Gas sued to enforce the award, and the district court entered judgment for $650,000 ($500,000 for the offset and $150,000 for the intellectual property). Nano Gas then filed a turnover motion for Roe’s Nano Gas stock, valued at $117,000. Roe argued that the arbitration award protected his status as a shareholder and allowed him to pay the damages “in such manner as [he] chooses.” Roe planned to pay the award with dividends from his stock and maintained that he could “wait until he die[s]” to satisfy the debt. The district court denied Nano Gas’s turnover motion, finding that Roe was entitled to remain a shareholder and could pay both awards “in such a manner as Roe chooses.” Nano Gas filed a motion to reconsider, and the court amended its order to require Roe to either turn over the stock or identify other assets to satisfy the $150,000 award. As to the remaining $500,000, the district court found that Roe could still choose how and when to pay that portion of the award. Both parties appealed.

The Seventh Circuit first addressed Roe’s argument that the arbitration award entitled him to remain a shareholder. The Court observed that the award did not stipulate that Roe would remain a shareholder indefinitely [...]

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Golden State of Mind: Witness Convenience Isn’t Based Solely on Travel Distance

by Amol Parikh | May 5, 2022 | Patents

The US Court of Appeals for the Federal Circuit ordered a district court to transfer a patent infringement case from Texas to California because the district court had wrongly assessed facts relating to the convenience of witnesses when it originally denied a motion to transfer venue. In re: Apple Inc., Case No. 22-128 (Fed. Cir. Apr. 22, 2022) (Dyk, Reyna, Chen, JJ.) (non-precedential).

CPC Patent Technologies PTY Ltd. filed a lawsuit against Apple in the Western District of Texas, alleging that Apple’s mobile phones, tablets and computing products equipped with Touch ID, Face ID or Apple Card features infringed three of CPC’s patents relating to biometric security. Apple moved to transfer to the Northern District of California, arguing that its employees responsible for the design, development and engineering of the accused functionality resided either in California or outside of the United States, and that the employees most knowledgeable about the marketing, licensing and financial issues relating to the accused products resided in California. Apple explained that no employees with relevant information worked in Western Texas.

The district court denied Apple’s motion. After acknowledging that the action might have been brought in Northern California, the district court analyzed the private and public interest factors governing transfer determinations. The court determined that the factor concerning the convenience of willing witnesses slightly favored transfer. However, the court determined that the factor accounting for the availability of compulsory process weighed strongly against transfer. The district court also determined that court congestion and practical problems factors weighed against transfer based on its ability to quickly reach trial and the fact that CPC had another pending infringement suit in Western Texas. The district court recognized that Apple had identified seven relevant witnesses in California who would have to travel to Texas but found that inconvenience was counterbalanced by the presence of two Apple employees in Austin who CPC insisted had relevant information, and an Apple witness in Florida who would “find it about twice as inconvenient to travel to [Northern California] than to [Western Texas] because Texas sits halfway from Florida to California.” The district court also relied on its ability to compel the third-party Mac Pro manufacturer in Western Texas to attend trial. Finally, the Court noted that there was local interest in the dispute because Apple employs thousands of workers in Western Texas. Balancing these facts, the district court determined that Apple had failed to meet the burden of proving that Northern California was clearly more convenient that Western Texas, and thus denied the motion. Apple petitioned for mandamus review.

The Federal Circuit reversed, finding that Apple had shown clear entitlement to transfer to the Northern District of California. The Court found that the district court erroneously relied on two Apple employees in Austin whom CPC identified as potential witnesses and concluded that it was far from clear that either employee had relevant or material information. One employee had testified that he worked on authentication technology that was different from that accused by CPC, [...]

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PTO Updates DOCX Filings, Delays Surcharge Fee

by Amol Parikh | May 5, 2022 | Patents

The US Patent & Trademark Office (PTO) recently announced that the surcharge fee for patent applications that are not filed in DOCX format will not go into effect until January 1, 2023. During the period before non-DOCX filings are hit with the surcharge fee, the PTO is encouraging applicants to begin filing patent applications in DOCX format (87 Fed. Reg. 25226). To address concerns some applicants have raised and to allow applicants to get acclimated to the process of filing applications in DOCX format, the PTO is providing applicants with the option to submit an applicant-generated PDF version of their application along with the DOCX file(s) when filing an application in the Patent Center without having to pay additional fees, such as application size fees.

Applicants who choose to submit an applicant-generated PDF with the validated DOCX file(s) will be able to rely on the applicant-generated PDF if a discrepancy occurs during the filing process. Once the non-DOCX filing surcharge fee officially goes into effect, applicants who submit an applicant-generated PDF with the validated DOCX file(s) will need to pay the surcharge fee and any other additional fees as a consequence for filing the applicant-generated PDF. This new document description is called “Auxiliary PDF of application,” and the corresponding document code is AUX.PDF.

The PTO advises:

Applicants are strongly encouraged to review their applications, including the USPTO-generated PDF, shortly after filing the application to identify any errors or discrepancies in the record, as discussed above. The applicant should file any necessary petition to correct the record early in prosecution and promptly after discovering any errors or discrepancies.

Wild and Untamed Trademarks: Madrid Protocol Grants Right of Priority as of Constructive Use Date

by Katherine Pappas | Apr 28, 2022 | Trademarks

Addressing for the first time the question of enforceability of a priority of right in a trademark granted pursuant to the Madrid Protocol where the registrant’s actual use in commerce began after the allegedly infringing use, the US Court of Appeals for the Ninth Circuit found that the Madrid Protocol grants priority as of the constructive use date, but to prevail on an infringement action based on that superior right of priority, the registrant must still establish the requisite likelihood of confusion under the Lanham Act. Lodestar Anstalt v. Bacardi & Co., Case No. 19-55864 (9th Cir. Apr. 21, 2022) (Baldock, Berzon, Collins, JJ.)

Under the Madrid Protocol, applicants with trademarks in another country may obtain an “extension of protection” (generally equivalent to trademark registration) in the United States without needing to first use the mark in US commerce. Instead, the grant may be based on an applicant’s declaration of bona fide intent to use its mark in the United States.

In 2000 and 2001, Lichtenstein-based company Lodestar developed a brand of Irish whiskey called “The Wild Geese,” which was marketed in the US as “The Wild Geese Soldiers & Heroes.” Around 2008 and 2009, Lodestar developed the idea for the “Untamed” word marks, and in 2009 the US Patent & Trademark Office (PTO) accepted for filing two applications on behalf of Lodestar seeking extension of protection under the Madrid Protocol for the internationally registered “Untamed” word marks. The PTO published the marks for opposition, then granted the extensions of protection in 2011. In 2013, Lodestar developed a rum under The Wild Geese Soldiers and Heroes brand that used the Untamed word mark on the label. The rum was shown at the April 2013 Rum Renaissance Trade Show in Florida, where consumers sampled the rum. The rum was also featured in print advertisements associated with the trade show. But by June 2013, Lodestar had “decided to park the USA rum project as [it was] getting better returns in other markets.”

In 2012, Bacardi began developing the ad campaign “Bacardi Untameable.” Before launching the campaign, Bacardi ran a trademark clearance search that turned up Lodestar’s “Untamed” trademarks. From 2013 to 2017, Bacardi ran its “Bacardi Untameable” campaign. In response, Lodestar began promoting a then-nonexistent product “Untamed Revolutionary Rum” in an effort “to complement the Wild Geese Rum and also to combat Bacardi’s attempts to take over our Untamed mark.” In January 2015, the first Untamed Revolutionary Rum was sold to US retailers. In August 2016, Lodestar sued Bacardi for trademark infringement, arguing injury based on reverse confusion, as well as associated claims for unfair competition. The district court granted summary judgment in favor of Bacardi. Lodestar appealed.

The Ninth Circuit found that the district court erred on the threshold question of whether Lodestar’s Revolutionary Rum should be considered in the analysis of likelihood of confusion. The district court had found that the relevant products were those existing prior to launch of Bacardi’s campaign (excluding the later-created Revolutionary Rum). The Court found [...]

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It’s Not in the Bag: TTAB Refuses to Register Generic Handbag Design

by Sarah Bro | Apr 28, 2022 | Trademarks

Ending a hard-fought three-year campaign to secure registration of a popular handbag, the US Patent & Trademark Office (PTO) Trademark Trial & Appeal Board designated as precedential its decision refusing registration of the product configuration mark, deeming it a generic configuration not eligible for trademark registration. The Board also concluded that even if the bag design had not been generic, the applicant failed to make a necessary showing that the design of the bag had acquired distinctiveness. In re Jasmin Larian, LLC, Serial No. 87522459 (TTAB, Jan. 19, 2022; redesignated Mar. 29, 2022) (Cataldo, Lynch, Allard, ATJ).

Fashion brand CULT GAIA’s “ARK” handbag is composed of bamboo strips creating a creating a see-through “sunburst design,” and has been carried by celebrities such as Beyoncé and Jessica Alba. The brand’s founder and CEO Jasmin Larian sought registration on the Principal Register of the following mark for a three-dimensional handbag:

After several years of examination, the examining attorney ultimately issued a final refusal on the ground that the proposed configuration was a generic configuration, or alternatively, was a nondistinctive product design that had not acquired distinctiveness. Larian appealed to the Board.

Acknowledging the commercial success of the CULT GAIA ARK bag, the Board explained that the issue before it was whether the proposed mark was generic (i.e., a common handbag design), or, alternatively, whether the bag constituted a nondistinctive product design that had acquired distinctiveness. The Board tackled both questions, since similar evidence was relevant to both inquiries.

A trademark must be distinctive to be eligible for registration. Such distinctiveness is measured on a spectrum, where one side of the spectrum is made up of generic terms or generic designs (i.e., non-distinctive and non-protectable as trademarks) and the other side is made up of registrable trademarks that are arbitrary or fanciful. Suggestive trademarks fall somewhere in the middle. In the context of product designs, genericness may be found where the design is so common in the industry that the design cannot be said to identify a particular source of the product. Generic product designs fail to function as a trademark. Genericness is assessed by determining the genus of the goods or services at issue, then determining whether the consuming public primarily regards the design sought to be registered as a category or type of trade dress for the genus of goods or services. For the ARK bag, the applicant and the examining attorney agreed that “handbags” was the genus of the goods at issue. The relevant consuming public was found to consist of ordinary consumers who purchase handbags.

The Board reviewed the evidence of record to assess the significance of the bag design to ordinary consumers, i.e., whether they viewed the configuration of the bag as a source-identifying trademark or merely as a common handbag design. The Board detailed eight different categories of evidence, which, according to the Board, showed that “in the decades leading up to and the years immediately preceding [...]

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Notice Letters, Related Communications May Establish Specific Personal Jurisdiction

by Cecilia Choy, Ph.D. | Apr 28, 2022 | Patents

The US Court of Appeals for the Federal Circuit rejected a bright-line rule that patent infringement notice letters and related communications can never form the basis for specific personal jurisdiction. Apple Inc. v. Zipit Wireless, Inc., Case No. 21-1760 (Fed. Cir. Apr. 18, 2022) (Hughes, Mayer, Stoll, JJ.)

Zipit owns two patents directed to wireless instant messaging devices that send and receive instant messages via Wi-Fi. Since 2013, Zipit and Apple have communicated and met at Apple’s offices in Cupertino, California, to discuss the possible purchase or license of Zipit’s patents. Zipit also sent Apple an e-mail in 2015 about “Apple’s Ongoing Infringement” and another e-mail later that year about “Apple’s Ongoing Willful Infringement,” addressed to Apple’s Cupertino office. In 2020, Zipit sued Apple in Georgia for patent infringement, but ultimately moved to dismiss the case without prejudice. Apple subsequently filed a complaint in Northern District of California seeking a declaratory judgment of noninfringement. Zipit moved to dismiss for lack of personal jurisdiction. Although the district court found that Apple had established requisite minimum contacts and Zipit had not established a compelling case that the exercise of jurisdiction would be unreasonable, the court ultimately dismissed Apple’s action for lack of personal jurisdiction. Apple appealed.

The Federal Circuit began its analysis by considering Zipit’s contacts with California, finding that that this case was not “one of the ‘rare’ situations in which sufficient minimum contacts exists but where the exercise of jurisdiction would be unreasonable.” The Court explained that that foreseeability (whether a defendant should reasonably anticipate being hauled into court) is a critical component is assessing specific personal jurisdiction. Citing the Supreme Court of the United States’ 1985 decision in Burger King v. Rudzewicz, the Court considered three factors relevant to assessing specific jurisdiction:

Whether a defendant purposefully directed its activities at residents of the forum
Whether the claim arose out of or related to the defendant’s activities within the forum
Whether asserting personal jurisdiction was reasonable and fair.

The Federal Circuit found that Apple had established that Zipit had minimum contacts with California by directing its activities to California by letters and claim charts, and traveling to Apple’s California offices for related discussions. The Court further noted Zipit’s escalation of its infringement allegations, going “so far as twice describing Apple’s infringement as willful” and keeping Apple apprised of the patents’ ongoing inter partes review status.

The Federal Circuit next found that the district court erred in finding that the exercise of jurisdiction would be unreasonable because Zipit’s contacts with California all related to the “attempted resolution of the status of the patents-in-suit, i.e., for the purpose of warning against infringement.” The Court explained that the “settlement-promoting policy” that a right holder trying settle disputes should be permitted to send a notice letter to a party in a particular forum without being hauled into court in that forum was relevant, but noted that this policy cannot “control the inquiry” and must be considered together with other Burger King factors [...]

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Terms of Degree Not Always Indefinite

by Tim Dunker | Apr 21, 2022 | Patents

The US Court of Appeals for the Federal Circuit overturned a district court determination that the claim terms “resilient” and “pliable” were indefinite. The Federal Circuit found that the claims, while broad, were sufficiently definite in view of both intrinsic and extrinsic evidence. The Federal Circuit also upheld the district court’s findings of no induced infringement, finding zero evidence of predicate direct infringement of the properly construed method claims. Niazi Licensing Corp. v. St. Jude Medical S.C., Inc., Case No. 21-1864 (Fed. Cir. Apr. 11, 2022) (Taranto, Bryson, Stoll, JJ.) The Federal Circuit also affirmed entry of sanctions excluding portions of the plaintiff’s technical and damages expert reports for failing to disclose predicate facts during discovery and also affirmed exclusion of portions of plaintiff’s damages expert report as unreliable for being conclusory and legally insufficient.

In reaching its decision on indefiniteness, the Federal Circuit focused on the terms “resilient” and “pliable” as used in a claim directed to a double catheter structure. Citing the 2014 Supreme Court decision in Nautilus v. Biosig Instruments, the Federal Circuit explained that language has “inherent limitations,” and stated that a “delicate balance” must be struck to provide “clear notice of what is claimed” and avoid the “zone of uncertainty” relating to infringement. The Court noted that under Nautilus, claims must provide “objective boundaries,” but the Court distinguished the present case from those in which “subjective boundaries” created uncertainty and rendered the claim indefinite. The Court pointed to its 2005 decision in Datamize v. Plumtree Software as a “classic example” of subjectivity where the term “aesthetically pleasing” was deemed indefinite because the patent provided no way to provide “some standard for measuring the scope of the phrase.” The Court also noted that a patent’s claims, written description and prosecution history—along with any relevant extrinsic evidence—can provide or help identify the necessary objective boundaries for claim scope

The Federal Circuit concluded that there was sufficient support in the intrinsic evidence, both in the claims themselves and the written description, to allow a skilled artisan to determine the scope of the claims with reasonable certainty. The Court explained that the claim at issue recited “an outer, resilient catheter having shape memory” that “itself provides guidance on what this term means—the outer catheter must have ‘shape memory,’ and ‘sufficient stiffness.’” The Court also cited to “[n]umerous dependent claims [that] further inform the meaning of this term by providing exemplary resilient materials of which the outer catheter could be made. . . . The written description provides similar guidance . . . . Thus, a person of ordinary skill reading the claims and written description would know of exemplary materials that can be used to make a resilient outer catheter, i.e., one that has shape memory and stiffness such that it can return to its original shape.”

The Federal Circuit distinguished this case from Datamize, where the claim scope depended on the eye of each observer, finding it more akin to its 2017 decision in Sonix Technologies. In that [...]

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