Fresh From the Bench: Latest Federal Circuit Court Cases

CASE OF THE WEEK

Mobility Workx, LLC v. Unified Patents, LLC, Appeal No. 2020-1441 (Fed. Cir. Oct. 13, 2021)

In this week’s Case of the Week, a panel of the Court of Appeals for the Federal Circuit considered, and rejected, new constitutional challenges to the structure and funding of the Patent Trial and Appeal Board. Judge Newman concurred with the majority that the Board’s decision should be remanded for Director approval under United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), but authored a lengthy dissent against the majority’s rejection of Mobility Workx’s constitutional challenges, what Judge Newman referred to as her “colleagues’ endorsement of the status quo” of America Invents Act (“AIA”) proceedings.
Mobility Workx‎ appealed a final written decision that several claims of its patent were invalid and unpatentable. Before the Federal Circuit, Mobility Workx (1) challenged the merits of the Board’s decision and requested a remand to the Director of the United States Patent and Trademark Office under Arthrex; and (2) raised a number of constitutional challenges, including that the means of funding the Board and paying Administrative Patent Judges created the possibility of bias in favor of instituting AIA proceedings (and invalidating patents) and violated the Constitution’s Due Process Clause. The USPTO intervened, arguing against Mobility Workx.

By Tyler Hall

ALSO THIS WEEK

Energy Heating, LLC v. Heat On-The-Fly, Appeal No. 2020-2038 (Fed. Cir. Oct. 14, 2021)

In an appeal from a district court decision finding a case exceptional and awarding attorneys’ fees, the Federal Circuit affirmed. The case has a storied history, which we have covered twice. In 2018 the Federal Circuit held that claims were unenforceable due to inequitable conduct, but vacated a determination of no exceptionality under Section 285 and remanded on that issue. We covered that first appeal here. On remand, the district court found the case exceptional and awarded attorneys’ fees. Granting deference to the district court’s determination, and finding no error in the district court’s assessment of the facts, the Federal Circuit affirmed.

The case also spawned a separate, Walker Process antitrust case, which the Federal Circuit decided earlier this year. We wrote about that decision here.

A copy of the opinion can be found here.

Hyatt v. Hirshfeld, Appeal Nos. 2020-2321, -2323, -2324, -2325 (Fed. Cir. Aug. 18, 2021, opinion modified Oct. 12, 2021)

The case concerns a Section 145 action brought by Mr. Hyatt, which we discussed here. In August 2021, the Federal Circuit issued an opinion concerning the fee shifting provisions of Section 145. We covered that prior opinion here. This week, the Court issued a modified version of that opinion, removing one phrase in the background portion of its opinion concerning the motivation for Mr. Hyatt’s delays in prosecuting his patents.

A copy of the opinion can be found here.

Traxcell Technologies, LLC v. Nokia Solutions & Networks Oy, Appeal Nos. 2020-1440, -1443 (Fed. Cir. Oct. 12, 2021)

In an appeal from a district court summary judgment opinion, the Court affirmed on multiple issues relating to multiple patents. The Court agreed with the district court that the term “location” meant more than simply being based on a grid. The court provided a lengthy discourse on prosecution disclaimer, and explained that, in order to avoid prior art, the patentee had argued that “location” did not mean merely locating on a grid. Thus, the term “location” had to mean more than that. The Court also agreed that Traxcell had not established infringement based on this definition. The Court also agreed with the district court that “a computer,” when followed by the term “the computer,” meant one computer, and not a plurality of computers. The Court agreed that the patent was not infringed under this construction, agreeing with the district court that the prosecution history estoppel foreclosed a “multiple computer” equivalent of the “a computer” term.

A copy of the opinion can be found here.

Traxcell Technologies, LLC v. Sprint Communications Company LP, Appeal Nos. 2020-1852, -1854 (Fed. Cir. Oct. 12, 2021)

In this companion case, the Federal Circuit affirmed the district court’s summary judgment opinion on multiple additional issues. In addition to some of the same issues raised in the Nokia case, the Court further agreed with the district court’s assessment of a means-plus-function claim term, and that the accused products did not meet the “way” requirement of the function-way-result test. The Court also agreed with the district court that certain claims were indefinite, and that the district court denied leave to amend the complaint. Following a claim construction order finding the terms indefinite, the patentee filed a certificate of correction with the Patent Office to cure one of the indefiniteness issues. However, that certificate of correction did not cure a separate issue of indefiniteness. Thus, it would have been futile to allow Traxcell leave to amend its complaint, because the claims would still have been indefinite. Finally, the Court affirmed summary judgment of noninfringement as to a separate patent, finding certain claim limitations not satisfied in Sprint’s or Verizon’s systems.

A copy of the opinion can be found here.

By Nika Aldrich

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

Contributor: Tyler Hall