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

Qualcomm accused Apple of infringing various patents. Apple petitioned the Patent Trial and Appeal Board for inter partes review (IPR) of those patents. In 2019, the parties settled all their patent-infringement litigation worldwide and entered a six-year global patent license agreement with a two-year extension option, resulting in the dismissal of the infringement case with prejudice. The Board determined that Apple failed to prove various claims unpatentable. The Federal Circuit dismissed Apple’s appeal for lack of standing.Subsequently, Qualcomm again accused Apple of infringement and Apple again sought IPR. Then came the settlement and license agreement, resulting in the dismissal of the district court action with prejudice. The Board then issued final written decisions concluding that Apple had not proven various claims unpatentable. The Federal Circuit again dismissed an appeal for lack of Article III standing and rejected Apple’s request that, if it lacked jurisdiction, it should vacate the Board’s decisions “to eliminate any doubt about the applicability of estoppel.” View "Apple Inc. v. Qualcomm Inc." on Justia Law

Ravgen filed suit in the federal district court in Waco, Texas, accusing Quest’s QNatal Advanced test of infringing patents relating to non-invasive tests for prenatal genetic disorders. Quest moved to transfer the case (28 U.S.C. 1404(a)), arguing that the Central District of California was a more convenient forum; its knowledgeable employees work in that district and third-party witnesses reside in the district. Although Quest maintains patient service centers across the country—including in the Western District of Texas—Quest designed, developed, and continues to perform QNatal Advanced testing only in the Central District of California. Quest argued that Ravgen, headquartered in Maryland, has no meaningful connections to the Western District of Texas. Ravgen noted that it had filed three related complaints in the Western District of Texas, alleging infringement of the same patents. After analyzing the public and private interest factors that govern transfer determinations, the district court denied Quest’s motion.The Federal Circuit directed the district court to transfer the case. When there are numerous witnesses in the transferee venue and the only other witnesses are far outside the plaintiff’s chosen forum, the witness-convenience factor favors transfer. The court erroneously discounted documents located in California that relate to the development, validation, testing, and performance of the accused product and in weighing court congestion as strongly against transfer. View "In Re Quest Diagnostics, Inc." on Justia Law

In 2007, ROHM Japan and MaxPower entered into a technology license agreement (TLA). ROHM Japan was permitted “to use certain power [metal oxide semiconductor field-effect transistors (MOSFET)]-related technologies of” MaxPower (Licensor) developed under a Development and Stock Purchase Agreement in exchange for royalties paid to MaxPower. The TLA, as amended in 2011, includes an agreement to arbitrate “[a]ny dispute, controversy, or claim arising out of or in relation to this Agreement or at law, or the breach, termination, or validity thereof.” Arbitration is to be conducted “in accordance with the provisions of the California Code of Civil Procedure.”In 2019, a dispute arose between ROHM Japan and MaxPower concerning whether the TLA covers ROHM’s silicon carbide MOSFET products. MaxPower notified ROHM Japan of its intent to initiate arbitration. Shortly thereafter, ROHM's subsidiary, ROHM USA, sought a declaratory judgment of noninfringement of four MaxPower patents in the Northern District of California and four inter partes review petitions. The district court granted MaxPower’s motion to compel arbitration and dismissed the case without prejudice, reasoning that the TLA “unmistakably delegate[s] the question of arbitrability to the arbitrator.” The Federal Circuit affirmed. In contracts between sophisticated parties, incorporation of rules with a provision on the subject is normally sufficient “clear and unmistakable” evidence of the parties’ intent to delegate arbitrability to an arbitrator. View "ROHM Semiconductor USA, LLC v. MaxPower Semiconductor, Inc." on Justia Law

The district court found HOTF’s patent, which relates to a “method and apparatus for the continuous preparation of heated water flow for use in hydraulic fracturing” (fracking), unenforceable due to inequitable conduct. The court found by clear and convincing evidence that the patent would not have been issued but for HOTF’s deliberate decision to withhold information from the Patent Office information about substantial on-sale and public uses of the claimed invention before the patent’s critical date, and that it withheld with an intent to deceive. The jury found that HOTF tortiously interfered with Energy’s business when it represented in bad faith that it held a valid patent. The court denied attorneys’ fees under 35 U.S.C. 285. The Federal Circuit remanded on that issue alone.On remand, the district court found the case to be exceptional and awarded attorneys’ fees. The Federal Circuit affirmed, citing findings that “HOTF litigated the case in an unreasonable manner by persisting in its positions,” that “[t]he number of undisclosed prior sales and the amounts HOTF received from those prior sales constitute affirmative egregious conduct” and that HOTF “pursued claims of infringement without any apparent attempt to minimize litigation costs” “despite [its] knowledge that its patent was invalid.” View "Energy Heating, LLC v. Heat On-The-Fly, LLC" on Justia Law

Mobility’s patent, titled “System, Apparatus, and Methods for Proactive Allocation of Wireless Communication Resources,” is “generally directed to the allocation of communication resources in a communications network.” The Patent Trial and Appeal Board determined that five claims of the patent were unpatentable as obvious.Mobility sought a remand under the Supreme Court's 2021 Arthrex decision, challenged the merits of the Board’s decision, and raised for the first time several constitutional challenges, including a challenge to the structure of the Board. Mobility argued that Board members have an interest in instituting AIA proceedings to generate fees to fund the agency and ensure future job stability and that individual administrative patent judges (APJs) have a personal financial interest in instituting AIA proceedings in order to earn better performance reviews and bonuses.Federal Circuit held that Mobility’s constitutional arguments are without merit. The President, not the agency, submits the budget, and Congress sets the USPTO budget and controls whether the USPTO has access to surplus funds. A remand of the “Appointments Clause” challenge is required under the Arthrex decision to allow the Acting Director to review the final written decision of the APJ panel pursuant to newly established USPTO procedures. View "Mobility Workx, LLC v. Unified Patents, LLC" on Justia Law

Traxcell sued Sprint and Verizon for infringement of four patents related to self-optimizing wireless networks and to navigation technology. All share a specification and a 2001 priority date. After claim construction and discovery, the district court granted summary judgment for Sprint and Verizon. Summary judgment was based on several grounds. One claim was not infringed because Traxcell had not met the “way” prong of the function-way-result test in asserting an infringing structural equivalent to a means-plus-function limitation nor had Traxcell shown a genuine dispute about either the “location” limitation or the “first computer” and “computer” limitations in other claims. The district court held one claim indefinite for failure to disclose sufficient structure for a means-plus-function limitation. Traxcell could not show that the accused technology determined a wireless device’s location on the network itself, as claimed, rather than on the device.The Federal Circuit affirmed, upholding the district court’s claim construction. Under that construction, Traxcell failed to show a genuine issue of material fact as to infringement and that several of Traxcell’s claims are indefinite. View "Traxcell Technologies, LLC v. Sprint Communications Co." on Justia Law

In 2012, Samsung contacted Kannuu, an Australian start-up that develops media-related products, inquiring about Kannuu’s remote control search-and-navigation technology. The companies entered into a non-disclosure agreement (NDA) to protect confidential business information while engaging in discussions. The NDA explains: [N]othing contained in this Agreement will be construed as granting any rights to the receiving party, by license or otherwise, to any of the Confidential Information disclosed. A forum selection clause identified New York for purposes of choice of laws principles and as the venue for any proceedings. In 2013, the parties ceased communications without reaching an agreement.Six years later, Kannuu sued Samsung, alleging patent infringement and breach of the NDA. Samsung filed petitions for inter partes review, alleging that all claims of the asserted patents are unpatentable as obvious and not novel. Kannuu argued that Samsung violated the NDA’s forum selection clause in filing for such review. The Patent Trial and Appeal Board denied IPR for three patents (on the merits) but instituted review for two asserted patents. The Federal Circuit affirmed the denial of a preliminary injunction to compel Samsung to seek dismissal of the IPRs. IPR does not relate to the Agreement itself and is not subject to the NDA. View "Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd." on Justia Law

The Federal Circuit reversed the district court's entry of judgment on the pleadings holding that the asserted claims of CosmoKey's U.S. Patent No. 9,246,903 are ineligible under 35 U.S.C. 101. The district court determined that the claims were directed to abstract ideas and fail to provide an inventive concept.The court concluded that the claims of the '903 patent are patent-eligible under the Alice step two determination for patent eligibility because they recite a specific improvement to a particular computer-implemented authentication technique. In this case, the abstract describes a method of authenticating the identity of a user performing a transaction at a terminal (e.g., a computer), including activating an authentication function on the user's mobile device. The court explained, as the specification itself makes clear, that the claims recite an inventive concept by requiring a specific set of ordered steps that go beyond the abstract idea identified by the district court and improve upon the prior art by providing a simple method that yields higher security. View "Cosmokey Solutions GMBH & Co. v. Duo Security LLC" on Justia Law

The Federal Circuit reversed the Patent Trial and Appeal Board's decision affirming an examiner's rejection of SurgiSil's design patent application, No. 29/491,550, concluding that the Board erred in holding that the claimed design is not limited to the particular article of manufacture identified in the claim. In this case, the '550 application claims an ornamental design for a lip implant. The examiner rejected the sole claim of the '550 application as anticipated by a Dick Blick catalog, which discloses an art tool called a stump.The court explained that the claim is limited to lip implants and does not cover other articles of manufacture. In this case, there is no dispute that Blick discloses an art tool rather than a lip implant and the Board's anticipation finding rests on an erroneous interpretation of the claim's scope. The court considered the cases cited by the Director, and concluded that they do not support the Director's position. View "In Re: SurgiSil, LLP" on Justia Law

Acceleration Bay appealed the district court's decisions construing certain claim terms in Acceleration Bay's four asserted patents, U.S. Patent Nos. 6,701,344, 6,714,966, 6,910,069, and 6,920,497, and granting 2K Sports, Rockstar Games, and Take-Two Interactive Software's motion for summary judgment of non-infringement. In this case, the patents disclose a networking technology that allegedly improves upon pre-existing communication techniques because it is "suitable for the simultaneous sharing of information among a large number of the processes that are widely distributed."The Federal Circuit concluded that Acceleration Bay's appeal is moot with respect to the '344 and '966 patents, and thus dismissed the appeal in part for lack of jurisdiction. The court explained that Acceleration Bay has forfeited any challenge to the district court's grant of summary judgment of non-infringement on the basis that the accused products fail to satisfy the "mregular" limitation of the '344 and '966 patents' asserted claims.The court affirmed the district court's claim construction on the '069 patent and its grant of summary judgment of non-infringement as to the '069 and '497 patents. Even considering Acceleration Bay's arguments regarding the construction of the term "fully connected portal computer," the court concluded that the district court's grant of summary judgment would remain intact because the district court interpreted a separate term in the '069 patent's asserted claims to include the "m-regular" limitation. Finally, in regard to the '497 patent, the court rejected Accleration Bay's contention that it has asserted a viable "final assembler" theory of direct infringement based on Centrak, Inc. v. Sonitor Technologies, Inc., 915 F.3d 1360 (Fed. Cir. 2019). View "Acceleration Bay LLC v. 2K Sports, Inc." on Justia Law