Justia Intellectual Property Opinion SummariesArticles Posted in US Court of Appeals for the Federal Circuit
Energy Heating, LLC v. Heat On-The-Fly, LLC
The district court found HOTF’s patent, which relates to a “method and apparatus for the continuous preparation of heated water flow for use in hydraulic fracturing” (fracking), unenforceable due to inequitable conduct. The court found by clear and convincing evidence that the patent would not have been issued but for HOTF’s deliberate decision to withhold information from the Patent Office information about substantial on-sale and public uses of the claimed invention before the patent’s critical date, and that it withheld with an intent to deceive. The jury found that HOTF tortiously interfered with Energy’s business when it represented in bad faith that it held a valid patent. The court denied attorneys’ fees under 35 U.S.C. 285. The Federal Circuit remanded on that issue alone.On remand, the district court found the case to be exceptional and awarded attorneys’ fees. The Federal Circuit affirmed, citing findings that “HOTF litigated the case in an unreasonable manner by persisting in its positions,” that “[t]he number of undisclosed prior sales and the amounts HOTF received from those prior sales constitute affirmative egregious conduct” and that HOTF “pursued claims of infringement without any apparent attempt to minimize litigation costs” “despite [its] knowledge that its patent was invalid.” View "Energy Heating, LLC v. Heat On-The-Fly, LLC" on Justia Law
Mobility Workx, LLC v. Unified Patents, LLC
Mobility’s patent, titled “System, Apparatus, and Methods for Proactive Allocation of Wireless Communication Resources,” is “generally directed to the allocation of communication resources in a communications network.” The Patent Trial and Appeal Board determined that five claims of the patent were unpatentable as obvious.Mobility sought a remand under the Supreme Court's 2021 Arthrex decision, challenged the merits of the Board’s decision, and raised for the first time several constitutional challenges, including a challenge to the structure of the Board. Mobility argued that Board members have an interest in instituting AIA proceedings to generate fees to fund the agency and ensure future job stability and that individual administrative patent judges (APJs) have a personal financial interest in instituting AIA proceedings in order to earn better performance reviews and bonuses.Federal Circuit held that Mobility’s constitutional arguments are without merit. The President, not the agency, submits the budget, and Congress sets the USPTO budget and controls whether the USPTO has access to surplus funds. A remand of the “Appointments Clause” challenge is required under the Arthrex decision to allow the Acting Director to review the final written decision of the APJ panel pursuant to newly established USPTO procedures. View "Mobility Workx, LLC v. Unified Patents, LLC" on Justia Law
Traxcell Technologies, LLC v. Sprint Communications Co.
Traxcell sued Sprint and Verizon for infringement of four patents related to self-optimizing wireless networks and to navigation technology. All share a specification and a 2001 priority date. After claim construction and discovery, the district court granted summary judgment for Sprint and Verizon. Summary judgment was based on several grounds. One claim was not infringed because Traxcell had not met the “way” prong of the function-way-result test in asserting an infringing structural equivalent to a means-plus-function limitation nor had Traxcell shown a genuine dispute about either the “location” limitation or the “first computer” and “computer” limitations in other claims. The district court held one claim indefinite for failure to disclose sufficient structure for a means-plus-function limitation. Traxcell could not show that the accused technology determined a wireless device’s location on the network itself, as claimed, rather than on the device.The Federal Circuit affirmed, upholding the district court’s claim construction. Under that construction, Traxcell failed to show a genuine issue of material fact as to infringement and that several of Traxcell’s claims are indefinite. View "Traxcell Technologies, LLC v. Sprint Communications Co." on Justia Law
Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd.
In 2012, Samsung contacted Kannuu, an Australian start-up that develops media-related products, inquiring about Kannuu’s remote control search-and-navigation technology. The companies entered into a non-disclosure agreement (NDA) to protect confidential business information while engaging in discussions. The NDA explains: [N]othing contained in this Agreement will be construed as granting any rights to the receiving party, by license or otherwise, to any of the Confidential Information disclosed. A forum selection clause identified New York for purposes of choice of laws principles and as the venue for any proceedings. In 2013, the parties ceased communications without reaching an agreement.Six years later, Kannuu sued Samsung, alleging patent infringement and breach of the NDA. Samsung filed petitions for inter partes review, alleging that all claims of the asserted patents are unpatentable as obvious and not novel. Kannuu argued that Samsung violated the NDA’s forum selection clause in filing for such review. The Patent Trial and Appeal Board denied IPR for three patents (on the merits) but instituted review for two asserted patents. The Federal Circuit affirmed the denial of a preliminary injunction to compel Samsung to seek dismissal of the IPRs. IPR does not relate to the Agreement itself and is not subject to the NDA. View "Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd." on Justia Law
Cosmokey Solutions GMBH & Co. v. Duo Security LLC
The Federal Circuit reversed the district court's entry of judgment on the pleadings holding that the asserted claims of CosmoKey's U.S. Patent No. 9,246,903 are ineligible under 35 U.S.C. 101. The district court determined that the claims were directed to abstract ideas and fail to provide an inventive concept.The court concluded that the claims of the '903 patent are patent-eligible under the Alice step two determination for patent eligibility because they recite a specific improvement to a particular computer-implemented authentication technique. In this case, the abstract describes a method of authenticating the identity of a user performing a transaction at a terminal (e.g., a computer), including activating an authentication function on the user's mobile device. The court explained, as the specification itself makes clear, that the claims recite an inventive concept by requiring a specific set of ordered steps that go beyond the abstract idea identified by the district court and improve upon the prior art by providing a simple method that yields higher security. View "Cosmokey Solutions GMBH & Co. v. Duo Security LLC" on Justia Law
In Re: SurgiSil, LLP
The Federal Circuit reversed the Patent Trial and Appeal Board's decision affirming an examiner's rejection of SurgiSil's design patent application, No. 29/491,550, concluding that the Board erred in holding that the claimed design is not limited to the particular article of manufacture identified in the claim. In this case, the '550 application claims an ornamental design for a lip implant. The examiner rejected the sole claim of the '550 application as anticipated by a Dick Blick catalog, which discloses an art tool called a stump.The court explained that the claim is limited to lip implants and does not cover other articles of manufacture. In this case, there is no dispute that Blick discloses an art tool rather than a lip implant and the Board's anticipation finding rests on an erroneous interpretation of the claim's scope. The court considered the cases cited by the Director, and concluded that they do not support the Director's position. View "In Re: SurgiSil, LLP" on Justia Law
Acceleration Bay LLC v. 2K Sports, Inc.
Acceleration Bay appealed the district court's decisions construing certain claim terms in Acceleration Bay's four asserted patents, U.S. Patent Nos. 6,701,344, 6,714,966, 6,910,069, and 6,920,497, and granting 2K Sports, Rockstar Games, and Take-Two Interactive Software's motion for summary judgment of non-infringement. In this case, the patents disclose a networking technology that allegedly improves upon pre-existing communication techniques because it is "suitable for the simultaneous sharing of information among a large number of the processes that are widely distributed."The Federal Circuit concluded that Acceleration Bay's appeal is moot with respect to the '344 and '966 patents, and thus dismissed the appeal in part for lack of jurisdiction. The court explained that Acceleration Bay has forfeited any challenge to the district court's grant of summary judgment of non-infringement on the basis that the accused products fail to satisfy the "mregular" limitation of the '344 and '966 patents' asserted claims.The court affirmed the district court's claim construction on the '069 patent and its grant of summary judgment of non-infringement as to the '069 and '497 patents. Even considering Acceleration Bay's arguments regarding the construction of the term "fully connected portal computer," the court concluded that the district court's grant of summary judgment would remain intact because the district court interpreted a separate term in the '069 patent's asserted claims to include the "m-regular" limitation. Finally, in regard to the '497 patent, the court rejected Accleration Bay's contention that it has asserted a viable "final assembler" theory of direct infringement based on Centrak, Inc. v. Sonitor Technologies, Inc., 915 F.3d 1360 (Fed. Cir. 2019). View "Acceleration Bay LLC v. 2K Sports, Inc." on Justia Law
In Re Vivint, Inc.
Vivint sued Alarm.com for infringement of the 513 patent. Alarm.com unsuccessfully requested inter partes review (IPR). Later, Alarm.com requested ex parte reexamination of the 513 patent, repackaging its arguments. The Patent Office ordered reexamination, finding that Alarm.com had raised substantial new questions of patentability despite the prior IPRs, reasoning that references to prior art had been presented in a new light. Vivint argued that the Patent Office has authority to deny reexamination under 35 U.S.C. 325(d) because that statute applies to ex parte reexaminations and IPRs equally and that each factor applicable to exercising its discretion under section 325(d) counseled in favor of dismissal. In Vivint’s view, the Patent Office could not decline to institute IPR based on abusive filing practices, yet grant reexamination on essentially the same facts. The Patent Office disagreed, holding that a petition raising 35 U.S.C. 325(d) must be filed before reexamination is ordered. Ultimately, an examiner issued a final rejection for all claims of the 513 patent.The Federal Circuit vacated. The Patent Office must find a “substantial new question of patentability” before ordering reexamination, 35 U.S.C. 303(a), and it may deny reexamination when “the same or substantially the same prior art or arguments previously were presented to the Office,” section 325(d) While the ex parte reexamination, in this case, was based on substantial new questions of patentability, the Patent Office abused its discretion and acted arbitrarily and capriciously under section 325(d). View "In Re Vivint, Inc." on Justia Law
SRI International, Inc. v. Cisco Systems, Inc.
SRI alleged that Cisco infringed its patents, titled “Network Surveillance” and “Hierarchical Event Monitoring and Analysis.” A jury found infringement, awarded $23,660,000 in compensatory damages, and found that Cisco’s infringement was willful. The district court determined that substantial evidence—including that certain Cisco employees did not read the asserted patents until their depositions, that Cisco designed the products in an infringing manner, and that Cisco instructed its customers to use those products in an infringing manner—supported the willfulness finding and awarded SRI attorney fees and costs, noting that “Cisco pursued litigation about as aggressively as the court has seen,” and doubling the damages award.The Federal Circuit remanded, noting it was undisputed that Cisco did not know of SRI’s patents until after May 2012, and “the record is insufficient to establish that Cisco’s conduct rose to the level of wanton, malicious, and bad-faith behavior required for willful infringement.” On remand, the district court held that substantial evidence did not support the verdict of willful infringement after May 2012 and again found the case “exceptional.”The Federal Circuit reversed. Substantial evidence supports the finding of willful infringement. The court restored the award of enhanced damages and affirmed the award of attorney fees. View "SRI International, Inc. v. Cisco Systems, Inc." on Justia Law
In Re Juniper Networks, Inc.
Brazos filed lawsuits in the Western District of Texas charging Juniper, a Delaware corporation headquartered in California, with infringing patents that had been assigned to Brazos. Juniper moved to transfer the case to the Northern District of California, 28 U.S.C. 1404(a). Juniper argued that Brazos “describes itself as a patent assertion entity” that “does not seem to conduct any business” from its recently-opened office in Waco other than filing patent lawsuits. The assignment agreement by which Brazos received much of its patent portfolio lists a California address for Brazos; only one of the officers listed on its website resides in Texas. Brazos’s CEO and its president reside in California. The accused products were primarily designed, developed, marketed, and sold from Juniper’s headquarters within the Northern District of California; potential witnesses who would be expected to testify as to the structure, function, marketing, and sales of the accused products are located in California. Juniper had a small office in Austin, Texas.The Federal Circuit vacated the denial of the motion to transfer and granted the petition. The “center of gravity of the action” was clearly in California: several of the most important factors strongly favor the transferee court. No factor favors retaining the case in Texas. View "In Re Juniper Networks, Inc." on Justia Law