Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
GS CleanTech Corp. v. Adkins Energy LLC, Appeal No. 2016-2231, 2017-1838, 2017-1832 (Fed. Cir. Mar. 2, 2020)
In this week’s Case of the Week, the Federal Circuit affirmed a district court’s bench trial judgment that asserted patents were unenforceable due to inequitable conduct, covering methods for recovering oil from ethanol production byproducts. The district court found that the inventors had made an offer to sell the patented system more than one year prior to filing the August 17, 2004 provisional application to which the patents claimed priority, and intentionally withheld information from the USPTO concerning the offer for sale. On appeal, the patent owner argued that the district court erred in its “on-sale bar” determination, as well as its conclusions regarding the inventors’ knowledge of materiality and their intent to deceive the USPTO.
Customedia Technologies, LLC v. Dish Network Corp. et al., Appeal No. 2018-2239 (Fed. Cir. Mar. 6, 2020)
This case involves two related patents directed to comprehensive data management and processing systems. Accused infringer Dish Network petitioned for CBM review. The Board instituted review and ultimately found multiple claims patent ineligible under 35 U.S.C. § 101. Patent owner Customedia appealed. In applying Alice step one, the Court affirmed the Board’s ineligibility finding on grounds that the claimed invention was at most an improvement to the abstract concept of targeted advertising where the computer is used only as a tool. The Court found nothing in the claims that improved the functioning of the computer. Applying Alice step two, the Court agreed with the Board that considering the elements of the challenged claims individually and as an ordered combination, the claims failed to recite an inventive concept. In view of these findings, the Court affirmed the Board’s finding of unpatentability under § 101.
Comcast Corp. v. Int’l Trade Commission, Appeal Nos. 2018-1450, -1653, 1667 (Fed. Cir. Mar. 2, 2020)
In Comcast Corp. v. Int’l Trade Comm’n, the Federal Circuit affirmed the International Trade Commission’s (“ITC”) ruling barring the importation of Comcast’s X1 set-top boxes because the boxes infringed several of Rovi Corporations and Rovi Guides, Inc.’s (together, “Rovi”) patents. The Court agreed with ITC that Comcast was an importer for the purposes of Section 337 of the Tariff Act of 1930, because “Comcast [was] sufficiently involved in the importation of the accused products that it satisfie[d] the importation requirement.” Comcast’s involvement included exclusive control over “the volume of accused products that enter[ed] the United States.” The Court also denied Comcast’s motion to dismiss for mootness based on the expiration of two of Rovi’s patents at issue, holding the other pending ITC investigations involving the set-top boxes and Rovi’s unexpired patents were “sufficient collateral consequences to negate mootness.”