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Non-Respondent’s Product Cannot Be Adjudicated for Infringement in Context of General Exclusion Order

by Jay Reiziss and Paul Devinsky | Oct 15, 2020 | Patents

The US International Trade Commission issued a general exclusion order (GEO) excluding from entry into the United States products infringing patents directed to luxury vinyl tile, but vacated findings in the Initial Determination (ID) adjudicating infringement for products belonging to entities not named as respondents in the investigation. The Commission explained that a finding should not be made as to whether a non-respondent’s product infringes a patent in the context of a GEO, but instead the analysis should be limited to whether the “alleged” infringement supports a finding that there is a pattern of violation of Section 337. Certain Luxury Vinyl Tile and Components Thereof, USITC Inv. No. 337-TA-1155, Comm’n Op. (Oct. 5, 2020).

The ITC instituted an investigation against multiple respondents. The administrative law judge granted summary determination of violation by certain defaulting respondents and recommended a GEO. Unlike limited exclusion orders (LEO), which only prohibit infringing goods imported by a named respondent in an investigation, GEOs prohibit entry of the infringing products regardless of the source. GEOs are issued when necessary to prevent circumvention of an LEO or when there is a pattern of violation and it is difficult to identify the source of infringing products. In connection with the request for a GEO in this investigation, the complainants accused two additional products from non-respondents of infringement. In the ID, the administrative law judge analyzed the two products and determined that they infringed the asserted patents.

The Commission determined to review the ID in part. On review, the Commission determined that a GEO was appropriate, but vacated the findings of the ID that adjudicated infringement of the asserted patents by the two products belonging to the non-respondents. The Commission explained that in considering a GEO, a finding should not be made as to whether a non-respondent’s product infringes a patent and instead the analysis should be limited to whether there is a pattern of violation of Section 337. The Commission therefore vacated the infringement findings to avoid confusion and possible prejudice to the non-respondents in future proceedings.

Practice Note: A GEO is an attractive remedy for companies confronted by widespread infringement by imported products originating from sources that are difficult to identify or companies that dissolve and re-emerge as new entities and can therefore circumvent an LEO. The Commission has now made it easier to obtain a GEO because “alleged” infringement by products from a non-respondent can be used to show a pattern of violation warranting a GEO without a full adjudication of infringement for those products.

By the Book: Unauthorized Material Doesn’t Forfeit Training Guide’s Copyright Protection

by Paul Devinsky | Oct 8, 2020 | Copyrights

The US Court of Appeals for the Sixth Circuit affirmed a jury verdict in favor of a copyright owner in a lawsuit alleging infringement of the copyright in a home-services training manual, finding that the jury was correctly instructed that a work’s incorporation of some copyrighted content does not invalidate the copyright in the work’s original parts. Hiller LLC v. Success Grp. Int’l Learning Alliance LLC, Case No. 19-6115 (6th Cir. Sept. 23, 2020) (Suhrheinrich, J.).

Hiller is a home-services company providing HVAC services. Hiller was a paying member of Success Group International, which offered customer service training to home services companies. Success Group conducted training courses using manuals copyrighted by its owner, Clockwork Home Services. Hiller sent its employees to Success Group’s courses and had access to the manuals. Clockwork later sold Success Group to another company, but retained ownership of the copyrights in the manuals and granted a perpetual license for use of the manuals in Success Group’s training business.

Hiller later hired a contractor to create a more interactive training guide for its technicians as a replacement for the manuals. To create the guide, the contractor conducted a two-day workshop with Hiller employees and representatives from Success Group. The workshop included a series of interactive brainstorming sessions. One of the manuals was referred to during the workshop. Ultimately the new guide incorporated some content generated at the design workshop. Other “gap-filling” content was taken directly from the manuals. The contractor also added other original content. The contractor assigned its copyright in the guide to Hiller.

The Success Group subsequently conducted a training class using a workbook that closely resembled the guide. Hiller ended its Success Group membership and sued Success Group for copyright infringement for its use of the workbook. Clockwork intervened, alleging that it owned the guide and seeking declaratory relief invalidating Hiller’s copyright in the guide. Following a seven-day trial, a jury concluded that Hiller had a valid copyright in the guide and that the Success Group workbook copied protected elements of the guide. Clockwork moved for a judgment notwithstanding the verdict, which the district court denied. Success Group ultimately settled with Hiller. Clockwork appealed.

The Sixth Circuit affirmed. First, the Court found that sufficient evidence supported the jury’s verdict that Hiller owned a copyright in the guide. The Court rejected Clockwork’s two-pronged argument that the guide lacked independently created material (required to meet the Copyright Act’s originality requirement) and that Hiller should lose its copyright because the guide contained content taken from the manuals. Based on its selection and organization, the guide contained enough originality created independently by or on behalf of Hiller (through Hiller’s contractor) to meet the originality threshold for copyright protection. The original material included information and graphical depictions selected and organized at the design workshop. The Court also rejected Clockwork’s argument that Hiller should lose copyright protection because the guide was based on Clockwork’s “copyrighted system.” Copyright protection does not preclude others from copying or using the underlying ideas contained [...]

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Product-by-Process Analysis Applies to Method of Treatment Claims

by Paul Devinsky | Oct 8, 2020 | Patents

In a case relating to use of recombinant human interferon-β (IFN-β) proteins for the treatment of viral diseases, the US Court of Appeals for the Federal Circuit ruled that a “product-by-process” analysis applies even when the product-by-process limitation is nested within a method of treatment claim. Biogen MA Inc. v. EMD Serono, Inc., et al., Case No. 19-1133 (Fed. Cir. Sept. 28, 2020) (Linn, J.).

The claims at issue relate to a method of treating a viral condition, a viral disease, cancers or tumors by administration of a pharmaceutically effective amount of recombinant IFN-β. The claims contained a product-by-process limitation that partially defined the recombinant IFN-β in terms of the method or process by which it is made:

a recombinant polypeptide produced by a non-human host transformed by a recombinant DNA molecule comprising a DNA sequence selected from the group consisting of . . .

It was undisputed that native IFN-β proteins comprise sequences identical to those recited in the claims at issue, and that native IFN-β had been used in the prior art to treat viral conditions. At issue was whether the use of native IFN-β to treat viral conditions anticipated the use of recombinantly produced IFN-β for the claimed treatment.

When considering product-by-process claims, the Federal Circuit has long held that “an old product is not patentable even if it is made by a new process.” See, e.g., Amgen v. Hoffmann-La Roche (Fed. Cir. 2009). The district court granted Biogen’s judgment as a matter of law (JMOL) motion and reversed the jury verdict on anticipation, reasoning that the Amgen analysis did not apply here because the claims were directed to a method of treatment and not a product. Further, the “source limitations” (i.e., the limitations requiring that the IFN-β be produced using recombinant methods) overcame the shortcoming of the prior art. Namely, the unavailability of native IFN-β in sufficient quantity to facilitate practical treatment “lies at the heart of the benefit of this invention” and should be given “force and effect in the anticipation analysis.” Serono appealed.

The Federal Circuit reversed, explaining that the nesting of the product-by-process limitation within a method of treatment claim does not change the proper construction of the product-by-process limitation itself. The Federal Circuit reasoned that “an old method of administration of an old product made by a new process is not novel and cannot be patented.” Further, the Court found that the district court erred in considering the advantages of the recombinant process—the new capability of manufacturing sufficient quantities of IFN-β through recombinant technology—as a reason not to apply the product-by-process analysis. The proper anticipation analysis does not turn on the source of the claimed polypeptide, but on a comparison of the claimed recombinant polypeptide and the prior art native polypeptide.

In granting JMOL, the district court alternatively reasoned that under a product-by-process analysis, the native IFN-β could not anticipate recombinant IFN-β, because the prior art did not disclose that the native and recombinant IFN-β shared an identical three-dimensional structure or that [...]

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No Due Process Violation When New Panel Hears Substantive Arguments

by McDermott Will & Emery | Oct 8, 2020 | America Invents Act, Patents

Affirming a Patent Trial and Appeal Board (Board) non-obviousness determination, the US Court of Appeals for the Federal Circuit found that the Board did not abuse its discretion in sanctioning a patent owner who engaged in ex parte communications by having a new panel hear the merits of the petition. Apple Inc. v. Voip-Pal.com Inc., Case Nos. 18-1456, -1457 (Fed. Cir. Sept. 25, 2020) (Reyna, J.).

Voip-Pal sued Apple for allegedly infringing two of its patents directed to routing communications between two different types of networks: public and private. Apple then petitioned for inter partes review (IPR) of several claims from both patents, arguing they were invalid as obvious. The Board ultimately found the claims were not invalid because Apple did not provide evidentiary support as to the motivation to combine multiple references.

During the IPR proceedings, Voip-Pal’s former CEO sent six letters to various parties, copying members of Congress, the President, federal judges and administrative patent judges at the Board criticizing the IPR system, complaining about the cancellation rate and requesting judgment in favor of Voip-Pal. The letters did not discuss the underlying merits of Apple’s petitions. In view of Voip-Pal’s conduct, Apple requested that the Board sanction Voip-Pal by entering adverse judgment against Voip-Pal or by vacating the final written decisions and assigning a new panel to preside over “constitutionally correct” new proceedings going forward.

For the sanctions proceeding, a new panel replaced the initial panel and determined that Voip-Pal had engaged in sanctionable conduct, and further determined that it would preside over Apple’s petition for rehearing. The new panel found that Apple failed to show the initial panel had misapprehended or overlooked any matter, and even if the final panel were to accept Apple’s view of the prior art, it would not reach a different conclusion. Apple appealed.

On appeal, the Federal Circuit first addressed whether the appeal was moot. Before oral argument, the Court found in separate proceedings that some, but not all, of the claims at issue were invalid. Apple argued that this case mooted the entire appeal, even though the claims did not entirely overlap. Starting with the overlapping claims, the Court found that the appeal was moot in regards to these claims because Apple no longer had the potential for injury. However, the Court rejected Apple’s argument that the appeal was moot under a theory of claim preclusion in regards to the non-overlapping claims. The Court explained that any preclusive effect from the other appeal must be decided by a future court in any subsequent action brought by Voip-Pal. Thus, any discussion regarding claim preclusion would be advisory in nature and outside the scope of the Court’s Article III jurisdiction.

Turning to the merits, the Federal Circuit affirmed the Board did not violate the Administrative Procedure Act (APA) or Apple’s due process rights. The Board’s rules provide that “[t]he Board may impose a sanction” and explains that “[s]anctions include entry of one or more” of eight defined actions. Although the Board’s sanctions imposed [...]

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One Claim Construction Error Is Enough to Trigger New Trial on Infringement

by McDermott Will & Emery | Oct 8, 2020 | Patents, Technology

The US Court of Appeals for the Federal Circuit re-affirmed that incorrect construction of even a single claim element can be grounds for a new trial on infringement. Network-1 Technologies, Inc. v. Hewlett-Packard Company, Case Nos. 18-2338, -2339, -2395, -2396 (Fed. Cir. Sept. 24, 2020) (Prost, C.J.).

Network-1 Technologies sued Hewlett-Packard (HP) for patent infringement. HP defended on the grounds that the patent was invalid and that it did not infringe. The jury found the patent not infringed and invalid as obvious. Following post-trial motions, the district court denied Network-1’s request for a new trial on infringement but granted its motion for judgment as a matter of law (JMOL) on validity. The court found that HP should have been estopped from raising certain obviousness challenges as a consequence of certain obviousness challenges raised by a third party in a prior inter partes review (IPR) that were essentially the same as HP’s obviousness challenge here. Network-1 appealed the district court’s final judgment that HP did not infringe, arguing that the district court erred in its claim construction. HP cross-appealed on the issues of IPR estoppel under 35 USC § 315(e)(2) and invalidity because of a claim improperly broadened in re-examination.

On appeal, Network-1 contended that the district court erroneously construed the claim terms “main power source” and “low level current.” In order to prevail, Network-1 had to establish not only that at least one jury instruction on claim construction was legally erroneous, but that the error had prejudicial effect. Under Federal Circuit precedent, an incorrect claim construction that removes from the jury a basis on which it reasonably could have reached a different verdict can be an incorrect jury instruction. As the Court explained in Avid Tech. v. Harmonic (Fed. Cir. 2016), “[a]n erroneous claim construction on one element is harmless ‘only if a reasonable jury would have been required by the evidence to find non-infringement even without the error.’”

The Federal Circuit concluded that the district court correctly construed the term “low level current” but erred in its construction of “main power source” to exclude AC power sources on the basis of expert testimony that receipt of AC power by a network device would render it inoperable. The Court deemed this error for two reasons:

- Even though the network device cannot receive AC power, the record established that “data nodes” or network switches were commonly used to convert AC power to DC power as needed to power the network device. Because nothing in the patent claims precluded the conversion of AC power to DC power, it was error for the district court to add such a limitation.
- The district court erred by adding a limitation to the claims to carve out certain inoperable embodiments, in this case embodiments that do not convert AC to DC. The Federal Circuit has previously explained that it is improper to add limitations to a claim to exclude only certain inoperable embodiments (Cordis v. Medtronic (Fed. Cir. 2008)). Here, [...]
  
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“Can’t Hold Us” Liable: Macklemore & Ryan Lewis Win Affirmance in Copyright Suit

by Paul Devinsky | Oct 8, 2020 | Copyrights

The US Court of Appeals for the Fifth Circuit affirmed a grant of summary judgment on the issue of copyright infringement and an award of attorneys’ fees against the plaintiff under the Copyright Act. Although the Court noted that it lacked jurisdiction to review sanctions against the plaintiff’s attorney, it observed that counsel went beyond “vigorous representation.” Batiste v. Lewis, Case Nos. 19-30400, -30889 (5th Cir. Sept. 22, 2020) (Clement, J.).

Batiste, a local musician, sued Macklemore & Ryan Lewis, an internationally famous hip-hop duo, for copyright infringement. Batiste alleged that the duo sampled his songs without authorization. As support, Batiste submitted the expert report of a musicologist, Milton, but Milton later admitted that Batiste had conducted the analysis and written the report, and that Milton did not even have access to the necessary software. The district court excluded the report, which Batiste then sought leave to resubmit in his own name. The district court denied leave because Batiste had not disclosed himself as an expert and because the new report was untimely. The district court subsequently granted the defendants’ motion for summary judgment, finding that Batiste had failed to submit sufficient evidence of Macklemore and Lewis’s alleged access to Batiste’s work or of probative similarity between Macklemore and Lewis’s works and Batiste’s. The district court then awarded fees to Macklemore and Lewis under the Copyright Act (17 USC § 505) and made Batiste’s attorney (Hayes) jointly and severally liable for the fees award as a sanction under 28 USC § 1987. Batiste appealed.

Addressing the district court’s summary judgment of no infringement, the Fifth Circuit considered Batiste’s proofs as to access and similarity.

Batiste tried to prove access through “widespread dissemination” and “chain of events” theories. The Court held that Batiste’s evidence of widespread dissemination was insufficient because it only established “quite limited” dissemination of Batiste’s music. Batiste’s chain of events theory—under which Macklemore and Lewis allegedly accessed Batiste’s work by playing a concert at a venue near a record store that sold Batiste’s music—raised only a “bare possibility” of access and was therefore also insufficient.

On the issue of similarity, the Court explained that because of Batiste’s failure to show access, he needed to show “striking similarity” to withstand summary judgment. The Court rejected Batiste’s argument that “overwhelming evidence of access” obviated any need for him to show similarity. The Court compared the allegedly infringing songs to Batiste’s and found them insufficiently similar for a jury to find striking similarity. The Court also rejected Batiste’s invitation to adopt the US Court of Appeals for the Sixth Circuit’s ruling in Bridgeport, which held a showing of similarity unnecessary in some circumstances. The Fifth Circuit noted that Bridgeport has been widely criticized, and pointed out that Bridgeport considered the issue of substantial similarity (which dictates whether factual copying, once established, is legally actionable), whereas the issue in this case was probative similarity (which raises an inference of factual copying).

Batiste challenged the award of attorneys’ fees as erroneous absent a [...]

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Overcoming Heavy Burden Required to Succeed on Venue-Related Writ of Mandamus

by Amol Parikh | Sep 29, 2020 | Patents, Technology

Addressing a venue challenge, the US Court of Appeals for the Federal Circuit denied a petition for a writ of mandamus because the challenger did not demonstrate it had no adequate alternative means to obtain desired relief since meaningful review could occur after final judgment was entered. In re. Google, Case No. 20-144 (Fed. Cir. Sept. 18, 2020) (Reyna, J.).

Personalized Media Communications (PMC) sued Google in the Eastern District of Texas for infringement of six patents related to adaptive video streaming. PMC initially asserted venue was proper based on the presence of several Google Global Cache (GGC) servers at facilities owned by internet service providers (ISPs) located within the district. Google moved to dismiss for improper venue. While Google’s motion was pending, the Federal Circuit issued its decision in In re. Google, rejecting a venue argument asserted by a different plaintiff against Google that was also premised on the presence of GGC servers, and finding that a regular and established place of business requires the regular physical presence of an employee or other agent of the defendant conducting the defendant’s business at the alleged place of business.

After the Federal Circuit’s decision, PMC asserted a different venue theory based on Google’s agreements with Communications Test Design (CTDI) to warehouse, refurbish, repair and ship hardware products, such as Google’s cellphones and speakers, from a CTDI facility located in the Eastern District of Texas. The district court agreed with PMC and denied Google’s motion, finding that CTDI was acting as Google’s agent and was conducting Google’s business from its facility. Google filed a petition for a writ of mandamus seeking to vacate the district court’s order.

The Federal Circuit denied Google’s petition. The Court explained that a party seeking a writ bears the heavy burden of demonstrating that it has no adequate alternative means to obtain the desired relief and that the right to issuance of the writ is clear and indisputable. Without providing an explanation, the Court found that although Google raised viable arguments based on the law of agency and the Court’s precedent, it was not satisfied that Google’s right to a writ was clear and indisputable. The Court concluded that Google can obtain meaningful review of the district court’s venue ruling after final judgment in the case.

Practice Note: The Federal Circuit was also concerned that the district court did not move more quickly to resolve Google’s venue challenge. Significant work in the case had already been done, and the trial date is currently set for November 2020. If the venue is later found to be improper, the case will be transferred and a new trial will occur.

Jersey Boys Don’t Cry: No Copyright Protection for Facts “Based on a True Story”

by Jodi Benassi | Sep 16, 2020 | Copyrights

The US Court of Appeals for the Ninth Circuit affirmed a district court’s grant of judgment as a matter of law finding that the musical Jersey Boys did not infringe a copyright held in an autobiography of band member Tommy DeVito. Donna Corbello v. Frankie Valli, et al., Case No. 17-16337 (9th Cir. Sept. 8, 2020) (Berzon, J.).

In the 1990s, Rex Woodard ghostwrote an autobiography of Tommy DeVito, one of the original members of the 1950s quartet the Four Seasons. Woodard and DeVito agreed to split the profits equally. However, shortly after finishing the book, and before finding a publisher, Woodard died. Donna Corbello, Woodard’s widow, became the successor-in-interest to the book, and she continued the search for a publisher. Almost 15 years later, Corbello still had not published the book.

DeVito’s autobiography reads as a straightforward historical account of the Four Seasons. At the beginning of the book, DeVito, as the narrator, describes his autobiography as a “complete and truthful chronicle of the Four Seasons,” and he promises not to let “bitterness taint the true story.” Corbello also sent letters to potential publishers emphasizing that the book provided a “behind-the-scenes” look at the Four Seasons. In all accounts, the book is a non-fiction, historical chronicle of events of the Four Seasons.

In 2005, the musical Jersey Boys debuted on Broadway. Jersey Boys also depicts the history of the Four Seasons from its origins in New Jersey to its induction into the Rock and Roll Hall of Fame in 1990. DeVito admitted to working with people involved in developing Jersey Boys and sharing the book with the individuals researching the history of the band.

In 2007, Corbello sued DeVito and 14 defendants, including the band members and the writers, directors and producers of Jersey Boys. The complaint included 20 causes of action, including various forms of copyright infringement. The district court granted summary judgment in favor of the defendants on most of the claims. Corbello appealed. The Ninth Circuit reversed the district court’s grant of summary judgment in favor of defendants, vacated its assessment of costs against Corbello, and remanded for further proceedings.

On remand, the case proceeded to a jury trial where the jury found that the musical infringed the book and that use of the book was not fair use. After the verdict, the district court granted the defendant’s motion for judgment as a matter of law, concluding that any infringement was fair use. Corbello appealed.

On appeal, the central disagreements were whether the musical was substantially similar to the book and whether the defendants copied any protectable portions of the book. The Ninth Circuit analyzed the similarities under the extrinsic test for substantial similarity. The appellate court found that each of the similarities failed because they involved only non-protectable elements of the book. Those non-protectable elements included DeVito depicting himself in the musical (a character based on a historical figure is not protected); Bob Gaudio arriving late to rehearsal, excited about a new song he just [...]

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Full of Hot Air? PTAB Joinder Decisions Under § 315(c) Are Appealable

by Paul Devinsky | Sep 16, 2020 | Patents

Addressing whether it has jurisdiction to review joinder decisions made by the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit reissued a prior decision explaining that a joinder decision is reviewable because the decision occurs after the inter partes review (IPR) proceeding institutes. Facebook, Inc. v. Windy City Innovations, LLC, Case Nos. 18-1400, -1401, -1402, -1403, -1537, -1540, -1541 (Fed. Cir. Opinion Issued: Mar. 18, 2020, Opinion Reissued: Sept. 4, 2020) (Prost, C.J.) (Prost, C.J., concurring with additional views).

Windy City Innovations filed a complaint accusing Facebook of infringing four patents that collectively have 830 claims. Facebook filed a motion requesting that Windy City be forced to limit the number of asserted claims to 40 by the time of Facebook’s one-year IPR filing deadline, but the district court denied the motion. One year after it was served with the complaint, Facebook filed petitions for IPR on a subset of the 830 claims.

Five months after Facebook filed its petitions, Windy City narrowed its case to a subset of claims, including claims that were not subject to Facebook’s IPR petitions. After the PTAB instituted review based on Facebook’s petitions, Facebook immediately filed two new IPR petitions. Because the one-year time bar had passed, Facebook also filed a motion under § 315(c) to join the new IPR petitions to its now-instituted proceedings. The PTAB granted Facebook’s motion for joinder and ultimately issued a final written decision with a mixed result, cancelling some claims and finding others not unpatentable. Both parties appealed

The Federal Circuit found that the PTAB erred in allowing Facebook to use § 315(c) to join itself to its earlier-filed petitions. The Court explained that the statutory language was unambiguous, finding that the ordinary usage of “joining a person as a party to a proceeding” means that the joined party must necessarily be someone who is not already a party. The Court further explained that allowing same-party joinder would impermissibly allow the Director to join new issues to an existing proceeding. The Court found that § 315(c) only authorizes the Director to join (1) a person (2) as a party (3) to an already instituted IPR. The language does not authorize the joined party to bring new issues into the already instituted IPR proceeding. The Court found this understanding consistent with other subsections of § 315, where there is a clear distinction between § 315(c), which refers to the joinder of a person as a party, and § 315(d), which refers to the consolidation of multiple proceedings and the issues in each. The Court was sympathetic to Facebook’s policy concerns regarding patents with a large number of claims that may not be narrowed to a manageable number of asserted claims before the one-year time-bar. Nevertheless, it found that policy considerations could not overcome the unambiguous language of the statute. The Court therefore vacated the PTAB’s final written decisions as to the later-filed petitions.

After the Court issued its original opinion, Facebook filed a petition for panel rehearing, [...]

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Logic to Modify: Even Deceptive Intent Does Not Bar Inventorship Correction

by Paul Devinsky | Sep 16, 2020 | Patents

The US Court of Appeals for the Federal Circuit vacated a district court invalidity determination finding that judicial estoppel prevented a patent owner from relisting an inventor previously removed for strategic litigation purposes. Egenera, Inc. v. Cisco Sys., Inc., Case Nos. 19-2015, -2387 (Fed. Cir. Aug. 28, 2020) (Prost, C.J.).

Egenera sued Cisco for infringement of a patent directed to a reconfigurable virtual network that included a “logic to modify” and transmit received messages. In response Cisco petitioned for inter partes review (IPR). During the IPR’s pendency, Egenera realized that all claim limitations were conceived of before inventor Schulter began working at the company, and petitioned the US Patent and Trademark Office (PTO) to remove Schulter as a listed inventor. The Patent and Trial Appeal Board (PTAB) declined to institute Cisco’s IPR, and the PTO granted Egenera’s petition to remove Schulter shortly thereafter.

During the litigation, the district court construed the patent claims’ “logic” terms as means-plus-function elements and concluded that the “logic to modify” limitation corresponded to a “tripartite structure” described in the specification. Cisco then asserted invalidity under pre-America Invents Act (AIA) § 102(f), contending that Schulter invented the tripartite structure, and that the patent therefore did not list all inventors. Egenera attempted to re-correct inventorship to include Schulter, but the court rejected the attempt. The district court found the patent invalid under § 102(f), reasoning that judicial estoppel precluded Egenera from “resurrecting” Schulter’s inventorship. Egenera appealed both the means-plus-function construction and the judicial estoppel finding.

The Federal Circuit first addressed whether Egenera could correct inventorship absent any judicial estoppel. The Court looked to the plain meaning of post-AIA § 256, which provides that “the error of omitting inventors . . . shall not invalidate the patent . . . if it can be corrected.” Notably, post-AIA § 256 removed the requirement that an inventorship error occur “without . . . deceptive intent.” The Federal Circuit stated it plainly: “‘Error’ is simply the incorrect listing of inventors” and does not exclude even deceptive intention. The Court explained that the inequitable conduct rules provide a safety valve for such actions, not § 256. The Court also noted that at the time Egenera removed Schulter as an inventor, no one had argued that “logic to modify” was means-plus-function language, which it presumptively was not. Egenera’s preferred construction of that term was consistent with its assertion that Schulter was not an inventor. The omission of Schulter as inventor was thus an “error” within the scope of § 256.

The Federal Circuit next turned to whether Egenera was judicially estopped from relisting Schulter as an inventor. Applying the First Circuit’s New Hampshire factors, the Federal Circuit looked to whether Egenera’s positions were inconsistent, whether its first position was successfully accepted by the court, and whether Egenera would derive an unfair advantage if not estopped. The Federal Circuit found that the district court erred in finding Egenera’s changing inventorship positions inconsistent. The Court explained that inventorship is complex and can depend on claim [...]

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