Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
MLC Intellectual Property, LLC v. Micron Technology, Inc., Appeal No. 2020-1413 (Fed. Cir. Aug. 26, 2021)
For those interested in an important Section 112 written description case, we recommend reading the Juno Therapeutics decision below, one of many significant precedential opinions issued this week. We choose as our Case of the Week another important decision issued this week, on the issue of damages, discovery, and expert disclosures. The case provides a cautionary tale on the failure to disclose damages-related contentions during fact discovery—a situation that frequently arises during patent litigation, where damages theories evolve throughout a case, and some of the relevant information is in the hands of the defendant. The decision also puts guardrails on expert opinions that fail to properly apportion for the patentable features.
MLC sued Micron for infringing a patent concerning computer memory. Specifically, the patent concerns memory chips that can store more than one bit of memory per cell. There had been prior approaches to multiple-level memory cells. The patent claim at issue narrowly recited an “apparatus for programming an electrically alterable non-volatile memory cell having more than two predetermined memory states.”
MLC relied on an expert, Mr. Milani, to provide a damages opinion. Mr. Milani relied largely on license agreements entered into between MLC’s predecessor and third parties, including Hynix, Toshiba, and Samsung.
Juno Therapeutics, Inc. v. Kite Pharma, Inc., Appeal No. 2020-1758 (Fed. Cir. Aug. 26, 2021)
In a blockbuster opinion that wiped out a $1.2 billion verdict, the Federal Circuit found Juno’s patents invalid for lack of written description support. Juno sued Kite Pharma for infringement of a patent related to a particular treatment for lymphoma. One of the limitations recited a “binding element.” Dependent claims recited that the “binding element” could be “a single chain antibody,” otherwise known as an scFv. The patent disclosed two scFvs. The Federal Circuit found the disclosure of two scFvs (species) was insufficient to support claims for the entire genus of “single chain antibodies” that could function as a “binding element.” The Court quoted its prior en banc decision in Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc) in stating that “[f]or genus claims using functional language, like the binding function of the scFvs claimed here, the written description ‘must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.’” The Court found that “no reasonable jury could find the ’190 patent’s written description sufficiently demonstrates that the inventors possessed the full scope of the claimed invention.”
Universal Secure Registry LLC v. Apple Inc., Appeal No. 2020-2044 (Fed. Cir. Aug. 26, 2021)
In an appeal from a district court decision finding all asserted claims of a patent ineligible under 35 U.S.C. § 101, the Federal Circuit affirmed. Universal Secure Registry (“USR”) sued Apple and Visa (collectively, “Apple”) for infringement of four unrelated patents, all of which were directed to similar technology geared toward securing electronic payment transactions. Apple moved to dismiss for failure to state a claim, arguing that the asserted patents claimed patent-ineligible subject matter. The district court granted Apple’s motion to dismiss, finding that the claims were directed to the abstract idea of “the secure verification of a person’s identity,” and that the asserted patents failed to disclose an inventive concept that would transform this abstract idea into patent-eligible subject matter. The Federal Circuit affirmed, concluding that each asserted patent failed under step one and two of Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). With regard to Alice step one, the Court found that the asserted patents were all directed to abstract ideas rather than technological solutions to technical problems because they used “combination[s] of conventional components in [ ] conventional way[s] to achieve [ ] expected result[s].” With regard to Alice step two, the Court found that the asserted claims of the patents at issue failed to rise to the level of inventive concepts necessary to convert the claimed systems into patent-eligible subject matter. Accordingly, the Court found that the asserted claims of the patents at issue were ineligible and affirmed the district court’s decision to dismiss for failure to state a claim.
In three separate non-precedential opinions issued the same day and the following day, the Federal Circuit dismissed as moot appeals from IPRs concerning the same patents. Those opinions can be found here, here, and here. In a fourth non-precedential opinion, found here, the Court held that a substitute claim proposed in the IPRs also suffered from the same Section 101 problem.
Data Engine Technologies LLC v. Google LLC, Appeal No. 2021-1050 (Fed. Cir. Aug. 26, 2021)
In a second appeal in this case, the Federal Circuit affirmed a district court’s claim construction of the term “three-dimensional spreadsheet”—a term found in the preamble. Previously, the district court found the patent to be invalid under Section 101. On appeal, Data Engine argued the importance of its invention relating to three-dimensional spreadsheets. The Federal Circuit agreed. We wrote up that opinion as our Case of the Week in October 2018 here. On remand, Google asked to reopen claim construction and construe the preamble term “three-dimensional spreadsheet” in view of the Federal Circuit eligibility determination. The district court found it to be limiting, and the Federal Circuit agreed, particularly in light of the first appeal. This is the second opinion in one week where the Court relied on Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) for the premise that a “patent may not, like a nose of wax, be twisted one way to avoid anticipation and another to find infringement.” Having found the term to be limiting, the Court affirmed the district court’s judgment that Google did not infringe, which was not disputed if the preamble was limiting.
Commscope Technologies LLC v. Dali Wireless Inc., Appeal Nos. 2020-1817, -1818 (Fed. Cir. Aug. 24, 2021)
In an appeal following a jury verdict on issues of validity and infringement of multiple patents, the Federal Circuit isolated a single patent for a written decision, and reversed. The patent concerned wireless technology. A jury had found it not invalid and infringed based on a particular claim construction. The Federal Circuit affirmed that construction, finding that Dali forfeited its objection by including it only in a footnote in its brief. The Court then also found that Dali had failed to prove infringement based on that construction, identifying a limitation that was not sufficiently matched to a component of the accused devices at trial. The Court also noted an inconsistency between Dali’s positions with respect to that limitation in its infringement analysis and its no-invalidity analysis. The Court quoted its decision in Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) for the premise that a “patent may not, like a nose of wax, be twisted one way to avoid anticipation and another to find infringement.”
In light of this inconsistency, the Court held that the patent was not anticipated, but also not infringed.