Fresh From the Bench: Latest Federal Circuit Court Case
CASE OF THE WEEK
Mitek Systems, Inc. v. United Services Automobile Association, Appeal No. 2021-1989 (Fed. Cir. May 20, 2022)
Our Case of the Week this week is a declaratory judgment action brought against USAA. In a 27-page opinion, the Federal Circuit addressed three issues: subject matter jurisdiction for declaratory judgment actions under Article III of the U.S. Constitution, the discretionary authority of courts to decline declaratory judgment jurisdiction, and venue for hearing such a case.
The case concerned four U.S. patents relating to use of mobile devices to capture an image of a bank check and to transmit it for deposit. The patents are owned by USAA, an organization based in Texas. Mitek, based in California, created software for mobile check capture.
By Nika Aldrich
ALSO THIS WEEK...
Michael Philip Kaufman v. Microsoft Corporation, Appeal Nos. 2021-1634, -1691 (Fed. Cir. May 20, 2022)
In an appeal from a district court proceeding, the Federal Circuit upheld a $7 million jury verdict against Microsoft Corporation and its “Dynamic Data” product for infringing claims of a patent directed to the automatic generation of a user interface for working with data in a relational database. Microsoft argued on appeal, inter alia, that the district court had failed to resolve a claim construction dispute concerning the scope of an “automatically generating” limitation in the claim preamble, entitling it to a new trial under O2 Micro Int’l, Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir. 2008), and that the district court had improperly construed the term “and” to mean “and/or.” Mr. Kaufman also appealed the district court’s denial of pre-judgment interest.
The Court rejected Microsoft’s challenges. As to the O2 Micro issue, Microsoft argued that the district court failed to resolve whether the “automatically generating” limitation required certain unclaimed steps to be performed without user input, such as preparatory steps taken before generation of the user interface. The Federal Circuit found that Microsoft forfeited the issue by failing to advance any construction to the district court that would have resolved a dispute, and that its counsel’s comments during summary judgment proceedings that a dispute existed were insufficient to preserve the issue. The Court also found that because a purely conjunctive construction of “and” would have excluded the only embodiment set forth in the patent specification, Microsoft’s argument that “‘and’ must carry its usual conjunctive meaning” was insufficient to overcome the presumption that that embodiment was covered by the claims.
The Federal Circuit also found that the district court erred in declining to award prejudgment interest; prejudgment interest was not in the jury’s award because the jury was provided no means to calculate it, and Mr. Kaufman did not unduly delay in bringing suit for five years because there was no evidence that it was a self-serving litigation tactic or that Microsoft was necessarily prejudiced. As such, the Court affirmed denial of Microsoft’s post-trial motions and reversed the denial of prejudgment interest.
The opinion can be found here.
Google LLC v. IPA Technologies Inc., Appeal Nos. 2021-1179, -1180, -1185 (Fed. Cir. May 19, 2022)
In an appeal from the U.S. Patent Trial and Appeal Board, the Federal Circuit addressed whether the Board correctly concluded that Google had not shown the challenged claims to be unpatentable. The Federal Circuit reversed the Board, holding that the Board failed to resolve fundamental testimony conflicts in concluding that the relied-upon reference was not prior art. The Circuit Court vacated the decision and remanded for further proceedings.
The opinion can be found here.
Edited by: Nika Aldrich and Scott D. Eads, Schwabe, Williamson & Wyatt
Contributors: Jason A. Wrubleski and Mario E. Delegato