August 2022 Federal Circuit Updates

Update by Donald R. McPhail

In Hologic, Inc. v. Minerva Surgical, Inc., No. 2019-2054 (August 11, 2022), a panel consisting of Judges Stoll*, Clevenger, and Wallach considered whether assignor estoppel precluded Minerva’s validity challenge to claim 1 of U.S. Patent No. 9,095,348 based on an earlier assignment of U.S. Patent No. 6,813,520 to Hologic from Minerva’s founder. This case had been remanded by the Supreme Court following its decision in Minerva Surgical, Inc. v. Hologic, Inc., 141 S. Ct. 2298 (2021) holding that assignor estoppel remained a valid doctrine, but “only when an inventor says one thing (explicitly or implicitly) in assigning a patent and the opposite in litigating against the patent’s owner.” The panel was therefore tasked with determining whether claim 1 of the ’348 patent was “materially broader” than the claims of the ‘520 patent.  Ultimately finding that it was not, the panel held that Minerva was estopped from challenging the validity of the claim.

In Click-to-Call Technologies LP v. Ingenico, Inc., No. 2022-1016 (August 17, 2022), a panel consisting of Judges Stoll*, Schall, and Cunningham considered the application of 35 U.S.C. § 315(e)(2) to an IPR that had been instituted by the Board on less than all petitioned grounds.  Significantly, the non-instituted grounds challenged a claim (claim 27) that the instituted grounds did not challenge. During the pendency of the IPR, the Supreme Court decided SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018) and overruled the practice of partial institutions by the Board.  Ingenico, however, never sought remand after SAS for the Board to consider the challenge on the non-instituted grounds.  The panel concluded that Ingenico was estopped from challenging the validity of claim 27 due to IPR estoppel.

In In re Killian, No. 2021-2113 (August 23, 2022), a panel consisting of Judges Taranto, Clevenger, and Chen* considered whether a method of determining eligibility for Social Security disability benefits was patentable subject matter under 35 U.S.C. § 101. This case came up on appeal from the Patent Trial & Appeal Board, which had affirmed the examiner’s rejection for lack of patentable subject matter. Considering the first prong of the Alice test, the panel determined that the claimed process was an abstract mental process which could be performed in the human mind and was therefore patent-ineligible. Turning to the second prong, the panel agreed with the Board that there was no inventive concept to be found in the steps recited in the claims on appeal. The panel therefore held that the claims were not directed to patentable subject matter.