Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
Trimble Inc. v. PerDiemCo LLC, Appeal No. 2019-2164 (Fed. Cir. May 12, 2021)
In this week’s Case of the Week, the Federal Circuit revisited its decision in Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F .3d 1355 (Fed. Cir. 1998), often cited for the proposition that a patentee does not subject itself to personal jurisdiction in a forum merely by sending correspondence asserting patent infringement by a resident of the forum. On the facts presented, the Court found that a patentee’s negotiations with a California-headquartered corporation supported jurisdiction in the Northern District of California for the corporation’s declaratory judgment action, reversing the district court’s dismissal for lack of personal jurisdiction. Trimble presents several considerations of note for non-practicing entities (NPEs) engaged in nationwide licensing campaigns, and provides guidance on when a patentee may be haled into an accused infringer’s home forum on the basis of pre-litigation communications.
New Vision Gaming & Development, Inc. v. SG Gaming, Inc., Appeal Nos. 2020-1399, -1400 (Fed. Cir. May 13, 2021)
In an appeal from final written decisions from covered business method reviews, the Federal Circuit remanded the cases in light of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F .3d 1320 (Fed. Cir. 2019). Arthrex was decided before the opening brief was due, and the Arthrex challenge was thus timely. Judge Newman concurred in part and dissented in part. She agreed that Arthrex controlled. But the parties had agreed in a patent license agreement that any disputes would be resolved in Nevada. Judge Newman believed the Court should consider whether the forum selection clause should have been enforced, barring review by the PTAB. She believed such a review would be appealable under exceptions to the “No Appeal” bar of Section 324(e), and that the Court should have done so before remanding to the PTAB.
Uniloc 2017 LLC v. Apple Inc., Appeal Nos. 2020-1403, -1404 (Fed. Cir. May 12, 2021)
The Federal Circuit affirmed the Patent Trial Appeal Board in these two consolidated appeals. Apple initiated an inter partes review of Uniloc’s patent directed to a system and method of policing the use of VoIP features on the basis of obviousness. The Board held that claims 1–17 and 23–25 of the patent in suit were invalid for obviousness, but Apple had failed to meet its burden with respect to claims 18-22. Uniloc and Apple appealed. The Court affirmed the Board’s claim construction and related holding of obviousness of claims 1–17 and 23–25. The Court also affirmed the Board’s holding that Apple failed to demonstrate that claims 18–22 are unpatentable.
Free Stream Media Corp. v. Alphonso Inc., Appeal Nos. 2019-1506, -2133 (Fed. Cir. May 11, 2021)
In this case, the Federal Circuit reversed-in-part and affirmed-in-part two district court rulings addressing issues of patent ineligibility and claim construction. At issue was Samba’s appeal of a California district court’s grant of summary judgment of noninfringement and a Texas district court’s claim construction order, as well as Alphonso’s cross-appeal of the California district court’s denial of its motion to dismiss under 35 U.S.C. § 101.
The Court reversed the order denying Alphonso’s motion to dismiss under 35 U.S.C. § 101, finding that the disputed claims of the ’‘356 patent were in fact patent ineligible. In reaching this conclusion, the Court applied the “two-step process established by the Supreme Court in Alice.” First, the Court considered whether the patent was directed to a patent-ineligible concept. The Court found in the affirmative, explaining that the asserted claims were “not directed to an improvement of a technology or a creation of a new computer functionality,” but rather “merely improve[d] the abstract idea of targeted advertising.” Second, the Court considered whether the patent held an inventive concept taking it into the realm of patent eligibility. The Court explained that “an abstract idea is not patentable if it does not provide an inventive solution to a problem in implementing the idea.” Finding that the asserted claims “simply recite[d] that the abstract idea [would] be implemented using conventional components and functions generic to the technology,” the Court concluded that the patent held no inventive concept taking it into the realm of patent eligibility. Accordingly, the Court held that the asserted claims of the ’356 patent were patent ineligible and reversed the California district court’s denial of Alphonso’s motion to dismiss. The Court affirmed the Texas district court’s claim construction order of the asserted claims of the ’668 patent, explaining that in the context of the specification, “a person of ordinary skill in the art would have understood ‘communication session’ as requiring bidirectional communication.” As a result, the Court did not address the California district court’s grant of summary judgment based on the same disputed claim construction.
Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc., Appeal Nos. 2020-2155, -2156 (Fed. Cir. May 11, 2021)
In an appeal from the United States District Court for the District of Delaware, the Court addressed PacBio’s call for a new trial or a judgment as a matter of law based on two arguments. First, PacBio argued that the jury’s verdict finding the patents lacked enabling disclosure was unsupported by the evidence. Second, PacBio argued that Oxford’s improper remarks to the jury regarding the connection between the trial and COVID-19 were prejudicial and reasonably probable to influence the jury. The Court rejected both arguments, holding that there was ample evidence supporting non-enablement, and that there was no basis for overturning the district court’s assessment that there was an insufficient likelihood that Oxford’s improper remarks had an adverse impact on the verdict.