Justia U.S. Federal Circuit Court of Appeals Opinion Summaries

Future Link Systems, LLC entered into a license agreement with MediaTek, Inc. in 2019, which stipulated that MediaTek would pay Future Link a lump sum if Future Link filed a lawsuit against Realtek Semiconductor Corporation. Future Link subsequently filed a complaint with the International Trade Commission (ITC) accusing Realtek of patent infringement. During the litigation, Future Link settled with a third party and informed Realtek, leading Realtek to file a motion for sanctions against Future Link before the administrative law judge (ALJ).The ALJ expressed concerns about the legality of the agreement between Future Link and MediaTek but ultimately denied Realtek's motion for sanctions, concluding that the agreement did not influence Future Link's decision to file the complaint. Future Link then withdrew its complaint and moved to terminate the investigation, which the ALJ granted. The ITC terminated the investigation when no petition for review was filed. Realtek petitioned the ITC to review the ALJ's order denying sanctions, but the ITC declined and terminated the sanctions proceeding.Realtek appealed to the United States Court of Appeals for the Federal Circuit, seeking an order for Future Link to pay a fine to the Commission. The Federal Circuit concluded that it lacked jurisdiction to hear Realtek's appeal, as the Commission's decision on sanctions was not a "final determination" under 19 U.S.C. § 1337(c) that would affect the exclusion or non-exclusion of articles from entry. The court dismissed the appeal, noting that jurisdiction over such matters likely lies with the district courts, not the Federal Circuit. View "Realtek Semiconductor Corp. v. International Trade Commission" on Justia Law

Optis Cellular Technology, LLC, Optis Wireless Technology, LLC, PanOptis Patent Management, LLC, Unwired Planet International Limited, and Unwired Planet, LLC (collectively, “Optis”) sued Apple Inc. (“Apple”) for patent infringement in the U.S. District Court for the Eastern District of Texas. Optis asserted that various Apple products implementing the LTE standard infringed five of its standard-essential patents. The jury found Apple infringed certain claims of the asserted patents and awarded $506,200,000 in damages. Apple moved for a new trial, arguing the jury did not hear evidence regarding Optis’s obligation to license the patents on FRAND terms. The district court granted a new trial on damages, and the jury awarded $300,000,000 in the retrial.The United States Court of Appeals for the Federal Circuit reviewed the case. The court vacated both the infringement and second damages judgments, remanding for a new trial on infringement and damages. The court dismissed Optis’s cross-appeal to reinstate the original damages verdict. The court also reversed the district court’s findings that claims 6 and 7 of the ’332 patent are not directed to an abstract idea under 35 U.S.C. § 101 and that claim 1 of the ’557 patent does not invoke 35 U.S.C. § 112 ¶ 6. The court affirmed the district court’s construction of claim 8 of the ’833 patent. Additionally, the court concluded that the district court abused its discretion by admitting the Apple-Qualcomm settlement agreement and related expert testimony into evidence.The Federal Circuit held that the single infringement question on the verdict form violated Apple’s right to a unanimous verdict, as it did not ensure all jurors agreed on the same patent being infringed. The court also determined that claims 6 and 7 of the ’332 patent are directed to an abstract idea and remanded for further analysis under Alice step two. The court found that “selecting unit” in claim 1 of the ’557 patent invokes § 112 ¶ 6 and remanded for further proceedings. View "OPTIS WIRELESS TECHNOLOGY, LLC v. APPLE INC. " on Justia Law

United Services Automobile Association (USAA) owns U.S. Patent No. 10,402,638, which is directed to remote check deposit technology. The patent describes a system where a customer uses a personal mobile device to take a picture of a check and transmit the image to a financial institution. The system includes steps for error checking and optical character recognition (OCR) to ensure the check image is of sufficient quality. USAA sued PNC Bank, N.A. for infringement of this and other patents.The United States District Court for the Eastern District of Texas granted USAA’s motion for summary judgment, finding the asserted claims patent-eligible under 35 U.S.C. § 101. The court denied PNC’s cross-motion for summary judgment. A jury trial followed, where the jury found no invalidity and that PNC had infringed USAA’s patents. PNC appealed the district court’s summary judgment ruling on § 101.The United States Court of Appeals for the Federal Circuit reviewed the case and reversed the district court’s decision. The Federal Circuit held that the asserted claim of the ’638 patent is directed to the abstract idea of depositing a check using a handheld mobile device and does not contain an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The court concluded that the claim recites routine data collection and analysis steps implemented by a generic device, which is insufficient for patent eligibility under § 101. Consequently, the Federal Circuit reversed the district court’s grant of summary judgment and did not address USAA’s cross-appeal regarding damages testimony. View "UNITED SERVICES AUTOMOBILE ASSOCIATION v. PNC BANK N.A. " on Justia Law

Mitek Systems, Inc. (Mitek) filed a declaratory judgment action against United Services Automobile Association (USAA) seeking a declaration of non-infringement concerning four patents related to its MiSnap software product. Mitek argued that it faced potential liability for direct, induced, and contributory infringement, as well as indemnification demands from its licensees after USAA sent them letters seeking to sell licenses to USAA patents.The United States District Court for the Eastern District of Texas initially dismissed Mitek’s complaint for lack of subject-matter jurisdiction and alternatively declined to exercise jurisdiction. On appeal, the Federal Circuit vacated the dismissal and remanded for further proceedings, instructing the district court to conduct a more detailed analysis. On remand, the district court again dismissed the case, finding no subject-matter jurisdiction and reiterating its decision to decline jurisdiction even if it existed.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court’s decision. The court agreed that Mitek did not have a reasonable apprehension of suit for direct, induced, or contributory infringement based on the record evidence, including USAA’s allegations and claim charts from prior litigation. The court also found that Mitek’s potential indemnification liability was not sufficient to establish jurisdiction, as the indemnification agreements contained applicable carve-outs and did not create a reasonable potential for liability. Additionally, the court upheld the district court’s discretionary decision to decline jurisdiction, noting that intervention in future litigation involving Mitek’s customers would be a more effective remedy. View "MITEK SYSTEMS, INC. v. UNITED SERVICES AUTOMOBILE ASSOCIATION " on Justia Law

Agilent Technologies, Inc. appealed two final written decisions by the Patent Trial and Appeal Board (Board) that determined all claims of U.S. Patent Nos. 10,337,001 and 10,900,034 to be unpatentable. The patents in question relate to CRISPR-Cas systems for gene editing, specifically focusing on chemically modified guide RNAs (gRNAs) used in these systems. The Board found that the claims were anticipated by prior art, specifically a reference known as Pioneer Hi-Bred, and that certain claims were also obvious in view of additional references, Threlfall and Deleavey.The Board's decisions were based on findings that Pioneer Hi-Bred disclosed the claimed gRNA functionality and that the reference was enabling. The Board also found that the additional references provided sufficient motivation and reasonable expectation of success for a person of ordinary skill in the art to combine the teachings of Pioneer Hi-Bred with those of Threlfall and Deleavey.The United States Court of Appeals for the Federal Circuit reviewed the Board's findings. The court affirmed the Board's determination that Pioneer Hi-Bred disclosed the claimed gRNA functionality, noting that substantial evidence supported the Board's findings. The court also agreed with the Board's conclusion that Pioneer Hi-Bred was an enabling reference, rejecting Agilent's arguments that undue experimentation would be required to practice the disclosed invention.Additionally, the court upheld the Board's finding that the dependent claims, which included specific chemical modifications, were obvious in view of the combined teachings of Pioneer Hi-Bred, Threlfall, and Deleavey. The court found that the Board had provided a thorough analysis and that substantial evidence supported the Board's conclusion that a person of ordinary skill in the art would have had a reasonable expectation of success in making the claimed modifications.In conclusion, the Federal Circuit affirmed the Board's decisions, holding that all claims of the '001 and '034 patents were unpatentable. View "AGILENT TECHNOLOGIES, INC. v. SYNTHEGO CORP. " on Justia Law

Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung e.V. (Fraunhofer) is a non-profit research organization that developed and patented multicarrier modulation (MCM) technology used in satellite radio. In 1998, Fraunhofer granted WorldSpace International Network, Inc. (WorldSpace) an exclusive license to its MCM technology patents. Fraunhofer also collaborated with XM Satellite Radio (XM) to develop a satellite radio system, requiring XM to obtain a sublicense from WorldSpace. XM later merged with Sirius Satellite Radio to form Sirius XM Radio Inc. (SXM), which continued using the XM system. In 2010, WorldSpace filed for bankruptcy, and Fraunhofer claimed the Master Agreement was terminated, reverting patent rights to Fraunhofer. In 2015, Fraunhofer notified SXM of alleged patent infringement and filed a lawsuit in 2017.The United States District Court for the District of Delaware initially dismissed the case, ruling SXM had a valid license. The Federal Circuit vacated this decision and remanded the case. On remand, the district court granted summary judgment for SXM, concluding Fraunhofer's claims were barred by equitable estoppel due to Fraunhofer's delay in asserting its rights and SXM's reliance on this delay to its detriment.The United States Court of Appeals for the Federal Circuit reviewed the case and reversed the district court's summary judgment. The Federal Circuit agreed that Fraunhofer's delay constituted misleading conduct but found that SXM did not indisputably rely on this conduct in deciding to migrate to the high-band system. The court noted that SXM's decision was based on business pragmatics rather than reliance on Fraunhofer's silence. The case was remanded for further proceedings to determine if SXM relied on Fraunhofer's conduct and if it was prejudiced by this reliance. View "Fraunhofer-Gesellschaft v. Sirius XM Radio Inc." on Justia Law

Dolby Laboratories Licensing Corporation (Dolby) owns U.S. Patent No. 10,237,577, which is directed to a prediction method using an in-loop filter. Unified Patents, LLC (Unified) filed a petition for inter partes review (IPR) challenging claims 1, 7, and 8 of the patent as anticipated and obvious. Unified certified it was the sole real party in interest (RPI). Dolby identified nine other entities it believed should also have been named as RPIs. The Patent Trial and Appeal Board (Board) declined to adjudicate whether these entities were RPIs and instituted the review with Unified as the sole RPI. The Board ultimately held that Unified failed to show any of the challenged claims were unpatentable.The Board's final written decision did not address the RPI dispute, explaining that there was no evidence any of the alleged RPIs were time-barred or estopped from bringing the IPR, or that Unified purposefully omitted any RPIs to gain an advantage. Dolby appealed the Board's decision, arguing that the Board's refusal to adjudicate the RPI dispute caused various harms, including potential breaches of license agreements, conflicts of interest, improper estoppel in future proceedings, and disincentivizing Unified from filing IPRs.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that Dolby failed to establish an injury in fact sufficient to confer standing to appeal. The court found Dolby's claims of harm to be too speculative, noting that Dolby did not provide evidence of any actual or imminent injury. The court dismissed the appeal for lack of standing and did not reach the merits of Dolby's substantive challenges. View "Dolby Laboratories Licensing Corporation v. Unified Patents, LLC" on Justia Law

Alnylam Pharmaceuticals, Inc. filed two lawsuits against Moderna, Inc., ModernaTX, Inc., and Moderna US, Inc. (collectively Moderna) in the District Court for the District of Delaware. Alnylam alleged that Moderna’s mRNA-based COVID-19 vaccine SPIKEVAX® infringed U.S. Patent Nos. 11,246,933 and 11,382,979, which cover cationic lipids used for delivering nucleic acids. The dispute centered on the interpretation of the term “branched alkyl” in the patent claims, specifically whether it required a carbon atom bound to at least three other carbon atoms.The District Court for the District of Delaware concluded that Alnylam had acted as a lexicographer in defining “branched alkyl” in the patent specification. The court adopted Moderna’s proposed construction, which required that a “branched alkyl” must have a carbon atom bound to at least three other carbon atoms. Based on this construction, the parties stipulated that Moderna did not infringe the asserted patent claims, as Moderna’s product did not meet this requirement. The district court entered final judgment of noninfringement accordingly.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court’s decision. The Federal Circuit agreed that the specification’s definition of “branched alkyl” was clear and unequivocal, requiring a carbon atom bound to at least three other carbon atoms. The court found no evidence in the claims, specification, or prosecution history that specified otherwise for the asserted claims. Consequently, the Federal Circuit upheld the district court’s claim construction and the resulting judgment of noninfringement. View "ALNYLAM PHARMACEUTICALS, INC. v. MODERNA, INC. " on Justia Law

Sigray, Inc. filed a petition with the Patent and Trademark Office (PTO) requesting inter partes review of all claims of U.S. Patent No. 7,400,704, owned by Carl Zeiss X-Ray Microscopy, Inc. The patent claims X-ray imaging systems incorporating projection magnification. The PTO's Patent Trial and Appeal Board (PTAB) granted the petition, finding a reasonable likelihood that at least one of the challenged claims was unpatentable. However, in its final written decision, the PTAB declined to hold any of the asserted claims unpatentable. Sigray appealed the PTAB's decision regarding the unpatentability of claims 1-6 based on the prior art reference Jorgensen.The PTAB found that Sigray had not shown that Jorgensen inherently disclosed projection magnification within the claimed range. The PTAB concluded that there was a dispute about whether Jorgensen taught a diverging X-ray beam and found that Sigray failed to demonstrate that Jorgensen's X-ray beam diverged enough to result in projection magnification between 1 and 10 times.The United States Court of Appeals for the Federal Circuit reviewed the PTAB's decision. The court found that the PTAB had implicitly construed the claim limitation "between 1 and 10" to exclude small amounts of magnification, which was an error. The court held that the plain meaning of "between 1 and 10" includes even tiny, undetectable magnification. The court concluded that Jorgensen inherently contained projection magnification, as the evidence showed that Jorgensen's X-ray beams were not completely parallel and must result in some magnification. Therefore, the court reversed the PTAB's decision regarding claims 1, 3, and 4, finding them anticipated by Jorgensen. The court vacated the PTAB's decision regarding claims 2, 5, and 6 and remanded for further proceedings to determine if these claims would have been obvious in light of the opinion. View "SIGRAY, INC. v. CARL ZEISS X-RAY MICROSCOPY, INC. " on Justia Law

Rebecca Curtin filed an opposition to United Trademark Holdings’ (UTH) registration of the mark RAPUNZEL for dolls and toy figures, claiming the mark was generic, descriptive, and failed to function as a trademark. Curtin, a doll collector and mother, argued that the registration would harm consumers by reducing competition and increasing prices for Rapunzel merchandise. She also claimed it would chill the creation of new Rapunzel-themed dolls and toys.The Trademark Trial and Appeal Board (TTAB) dismissed Curtin’s opposition, concluding she was not statutorily entitled to oppose the registration under 15 U.S.C. § 1063. The TTAB applied the Lexmark framework, which requires a plaintiff to fall within the zone of interests protected by the statute and to show a reasonable belief in damage proximately caused by the registration. The TTAB found that Curtin, as a consumer, did not have a commercial interest protected by the Lanham Act and that her alleged injuries were too remote and speculative.The United States Court of Appeals for the Federal Circuit reviewed the case. The court affirmed the TTAB’s decision, agreeing that the Lexmark framework was correctly applied. The court held that the interests protected by the Lanham Act in this context are commercial, and Curtin, as a consumer, did not fall within the zone of interests. Additionally, the court found that Curtin’s alleged injuries were derivative of harms to commercial actors and too remote to establish proximate causation. Thus, Curtin was not entitled to oppose the registration of the RAPUNZEL mark. View "CURTIN v. UNITED TRADEMARK HOLDINGS, INC. " on Justia Law