Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
In re PersonalWeb Technologies LLC, Appeals Nos. 2021-1858, -1859, -1860 (Fed. Cir. Nov. 3, 2023)
In this appeal from the United States District Court for the Northern District of California, the question before the Federal Circuit was whether an award of approximately $5.1 million in attorneys’ fees under 35 U.S.C. § 285 was appropriate. The Federal Circuit affirmed the fee award, holding that the district court had not abused its discretion in finding the case exceptional or in calculating the total fees due.
This was the third appeal from multidistrict litigation involving PersonalWeb Technologies LLC (“PersonalWeb”). Litigation had commenced in 2011 when PersonalWeb sued Amazon.com, Inc. (“Amazon”) in the Eastern District of Texas for Amazon’s alleged infringement of certain patents (PersonalWeb’s “True Name Patents”). After claim construction, PersonalWeb dismissed its claims against Amazon with prejudice (the “Texas Action”). Then, in 2018, PersonalWeb brought claims against Amazon customers, again asserting the True Name Patents and alleging their use of an Amazon product, Amazon S3, infringed those patents. Amazon intervened and filed a motion for declaratory judgment barring PersonalWeb’s infringement actions against Amazon and its customers based on the Texas Action. The cases were consolidated. PersonalWeb counterclaimed against Amazon, alleging that two Amazon products infringed the True Name Patents: S3 and CloudFront. The district court granted partial summary judgment of non-infringement of the S3 product in favor of Amazon, which was affirmed by the Federal Circuit. Litigation continued with regard to CloudFront. Eventually, the district court granted summary judgment of non-infringement of the CloudFront product in favor of Amazon.
ALSO THIS WEEK
Malvern Panalytical Inc. v. TA Instruments-Waters LLC, Appeal No. 2022-1439 (Fed. Cir. Nov. 1, 2023)
Malvern appealed the District Court’s holding that defendant Waters had not infringed Malvern’s patents. The Federal Circuit vacated and remanded due to a claim construction error. Specifically, the parties disputed whether the claim phrase “pipette guiding mechanism” covered both manual and automatic guiding mechanisms, as argued by Malvern, or only manual pipette guiding, as argued by Waters.
The District Court had adopted Waters’ view that the claim phrase meant only manual guiding mechanisms because the District Court regarded the phrase as a coined term. Given that reading, the District Court limited its construction to the specification embodiments that described manual guiding mechanisms. The Federal Circuit overturned this interpretation, and held instead that the words within the claim phrase should be construed primarily on the plain meaning of words. The Federal Circuit cited precedent to the effect that if a patentee intends to deviate from the plain and ordinary meaning of a claim term, it must be explicit within the specification. In Malvern’s patents, there was nothing in the specifications that explicitly supported a presumption that the claim phrase was a coined term limited to only manual pipette guiding.
Another question the Federal Circuit considered here was whether the prosecution history of an unrelated patent, also owned by Malvern and involving similar technology, could be used in the present claim construction analysis or for prosecution disclaimer. Here, the Federal Circuit held that it could not, because the connection between the prosecution history and the claim phrase at hand was too tenuous and ambiguous.
The opinion can be found here.
Editors:
Nika Aldrich, IP Litigation Group Leader, Schwabe, Williamson & Wyatt, P.C.
Jason A. Wrubleski, Shareholder
Contributors:
Mario E. Delegato, Associate
Anne Bernert, Patent Law Clerk