Oct 11, 2021Legal
Fresh From the Bench: Latest Federal Circuit Court Cases


Kannuu Pty Ltd. v. Samsung Electronics Co., Appeal No. 2021-1638 (Fed. Cir. Oct. 7, 2021)

The Federal Circuit addressed whether a forum selection clause in an NDA may prohibit a party from petitioning for an inter partes review with the PTAB. Kannuu filed a motion for a preliminary injunction, asking the district court to compel Samsung to withdraw their petitions. The district court denied the motion, and Kannuu appealed. The Federal Circuit affirmed the decision on the merits (the express language in the NDA), and did not address the larger issue of whether such an approach would ever be appropriate.

In 2012, Kannuu and Samsung engaged in business discussions regarding Kannuu’s technology and the possibility of licensing its patents. The discussions commenced under the protection of an NDA containing a forum selection clause that was to govern “any legal action, suit or proceeding arising out of or relating to this Agreement or the transactions contemplated [t]hereby.” In 2013, the parties ceased communications without having reached a deal over Kannuu’s technology and patents...

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By Annie White


In re: Surgisil, L.L.P., Appeal No. 2020-1940 (Fed. Cir. Oct. 4, 2021)

In an appeal from a Patent Office decision rejecting a design patent as anticipated, the Federal Circuit reversed. The claim at issue was for the ornamental design of a “lip implant” as shown below:

The examiner rejected the claim as anticipated by an art tool known as a “stump”—essentially a double-sided pencil used for shading:

The Federal Circuit reversed, holding that the claim was limited to the scope of the article of manufacture identified in the claim (a lip implant) and therefore could not have been anticipated by a design for a different article of manufacture.

A copy of the opinion can be found here.

By Nika Aldrich

CosmoKey Solutions GmbH & Co. KG v. Duo Security LLC, Appeal No. 2020-2043 (Fed. Cir. Oct. 4, 2021)

In an appeal from a district court judgment on the pleadings that a patent was ineligible under 35 U.S.C. § 101, the Federal Circuit reversed. The claims were directed to a mobile authentication method in which the authenticating device checks whether an authentication function on a user’s mobile device is activated within a predetermined period of time following a request, and required that that authentication function normally be inactive, be activated by the user only preliminarily for the transaction, and be automatically deactivated following the authentication. The patent disclosed that this method advantageously permitted higher-security mobile authentication with mobile devices of lower complexity. The Federal Circuit held that regardless of whether the claims were directed to an abstract idea under step one of the Alice analysis, they disclosed a specific inventive improvement over prior authentication techniques and so were patent-eligible under Alice step two. Judge Reyna filed a short concurring opinion agreeing with this result, but arguing that the majority should not have “skipped” Alice step one and that the claims were not directed to an abstract idea.

A copy of the opinion can be found here.

By Jason Wrubleski

Acceleration Bay LLC v. 2K Sports, Inc., et al., Appeal No. 2020-1700 (Fed. Cir. Oct. 4, 2021)

In an appeal from the United States District Court for the District of Delaware, the Federal Circuit dismissed the appeal in part as to two patents for lack of subject matter jurisdiction, and affirmed the district court’s claim construction and its grant of summary judgment of non-infringement as to the remaining patents.

In dismissing the appeal in part, the Federal Circuit held that Acceleration Bay’s appeal with respect to the ’344 and ’966 patents was moot because Acceleration Bay only challenged one of multiple independent grounds that the district court articulated for granting summary judgment. Thus, even if the Court were to find that Acceleration Bay’s theory on appeal was viable as a matter of law, the Court’s reversal on that issue would leave the district court’s grant of summary judgment on the other independent grounds intact. As such, granting relief in favor of Acceleration Bay would make no difference to Acceleration Bay’s legal interest.  As for the remaining patents (’069 and ’497), the Federal Circuit rejected Acceleration Bay’s claim construction argument because it did not challenge the district court’s full basis for construing the patent’s asserted claims.

A copy of the opinion can be found here.

By Mario Delegato

Edited by: Scott D. Eads and Nika Aldrich, Schwabe Williamson & Wyatt

Contributors: Annie White, Jason Wrubleski and Mario Delegato

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