Precedential Federal Circuit Opinions
- COMMSCOPE TECHNOLOGIES LLC v. DALI WIRELESS INC. [OPINION] (2020-1817, 2020-1818, 08/24/2021) (REYNA, SCHALL, and STOLL)
Stoll, J. The Court affirmed in part and reversed in part in a case involving numerous claims and counterclaims of patent infringement. The Court noted that “[t]his appeal and cross-appeal involve several patents and numerous issues regarding infringement and validity, but our opinion focuses on only two: infringement and validity of U.S. Patent No. 9,031,521.” With respect to the ’521 patent, the Court reversed the district court’s denial of judgment as a matter of law (JMOL) of no infringement and affirmed its denial of JMOL of invalidity. The ’521 patent “generally relates to wireless communications with portable equipment and handsets, such as mobile phones.” The Court explained that Dali had failed to show that the accused CommScope product met the ’521 claim limitation “switching a controller off,” and, “following the same logic,” affirmed the jury’s finding that the prior art did not disclose the same limitation.
- UNIVERSAL SECURE REGISTRY LLC v. APPLE INC. [OPINION] (2020-2044, 08/26/2021) (TARANTO, WALLACH, and STOLL)*
Stoll, J. The Court affirmed the district court’s judgment that all claims of four patents generally directed to “securing electronic payment transactions” were ineligible for patenting under 35 U.S.C. § 101. For the first two patents, the Court explained that the claims merely recite “conventional actions in a generic way … without improv[ing] any underlying technology” (quotation marks omitted). For the third patent, the Court explained that the claims are directed an abstract idea—specifically, “multi-factor authentication of a user’s identity using two devices to enable a transaction”—and merely recite “conventional” components without “sufficient specificity.” For the fourth patent, the Court again explained that the claims are not patentable subject matter because “the claims simply recite conventional actions in a generic way without purporting to improve the underlying technology.” The Court concluded that “all claims of the asserted patents are directed to an abstract idea and that the claims contain no additional elements that transform them into a patent-eligible application of the abstract idea.”
- JUNO THERAPEUTICS, INC. v. KITE PHARMA, INC. [OPINION] (2020-1758, 08/26/2021) (MOORE, PROST, and O’MALLEY)
Moore, J. The Court reversed a district court judgment and held that a patent directed to certain “single-chain antibody variable fragments” (“scFvs”) was invalid for lack of written description under 35 U.S.C § 112. The Court found that the patent specification provides “no details” about the two scFvs identified in the specification “for a skilled artisan to determine how or whether [the identified scFvs] are representative of the entire claimed genus.” The Court explained: “It is not fatal that the amino acid sequences of these two were not disclosed as long as the patent provided other means of identifying which scFvs would bind to which targets, such as common structural characteristics or shared traits. But this patent provides nothing to indicate that the inventors possessed the full scope of the genus that they chose to claim.” The Court concluded: “For the claimed functional scFv genus, the [asserted] patent does not disclose representative species or common structural features to allow a person of ordinary skill in the art to distinguish between scFvs that achieve the claimed function and those that do not.”
- MLC INTELLECTUAL PROPERTY LLC v. MICRON TECHNOLOGY, INC. [OPINION] (2020-1413, 08/26/2021) (NEWMAN, REYNA, and STOLL)*
Stoll, J. In an interlocutory appeal, the Court affirmed the district court’s orders “precluding [the plaintiff’s] damages expert from characterizing certain license agreements as reflecting a 0.25% royalty, opining on a reasonable royalty rate when [the plaintiff] failed to produce key documents and information directed to its damages theory when requested prior to expert discovery, and opining on the royalty base and royalty rate where the expert failed to apportion for non-patented features.” The Court explained: “we agree with the district court that [the plaintiff’s expert’s] characterization of the Hynix and Toshiba licenses reflecting a 0.25% royalty rate is not reliable.” The Court also found that “[t]he district court acted well within its discretion when it excluded [the plaintiff’s expert’s] opinion that the Hynix and Toshiba licenses reflect a 0.25% rate and the extrinsic documents under Rule 37(c)(1) as a result of MLC’s failure to supplement its discovery responses to provide this information.” Finally, the Court found that the plaintiff’s expert was properly excluded for failing to apportion damages to the alleged patented technology. Specifically, he “provided no evidence or explanation for how the 0.25% royalty rate he derived from the Hynix agreement accounts for apportionment of [the defendant’s] products” and he “conducted no assessment of the licensed technology versus the accused technology to account for any differences.”
*WilmerHale represented amici curiae in support of affirmance.
- DATA ENGINE TECHNOLOGIES LLC v. GOOGLE LLC [OPINION] (2021-1050, 08/26/2021) (REYNA, HUGHES, and STOLL)
Stoll, J. The Court affirmed a summary judgment of non-infringement in an appeal that turned on claim construction. The claim term at issue was a “three-dimensional spreadsheet” recited in the preamble of the asserted claims. The Court agreed with the district court that the preamble is limiting, noting that the patentee had previously relied on the preamble being limiting to overcome a challenge to patent eligibility under 35 U.S.C. § 101. The Court also affirmed the district court’s construction based on a prosecution history disclaimer that “provided an explicit definition of a ‘true’ three-dimensional spreadsheet and distinguished prior art under this definition.”
- BELCHER PHARMACEUTICALS, LLC v. HOSPIRA, INC. [OPINION] (2020-1799, 09-01-2021) (REYNA, TARANTO, and STOLL)
Reyna, J. The Court affirmed a judgment of the district court that the asserted patent was unenforceable for inequitable conduct because the patentee withheld “material information” from the U.S. Patent and Trademark Office (PTO) “with the requisite deceptive intent” during prosecution of the asserted patent. The Court held that the patentee had failed to disclose a prior art product that rendered the asserted claims invalid as obvious. The Court also concluded that “the district court did not clearly err in finding that the single most reasonable inference is that [the patentee] possessed the specific intent to deceive the PTO when withholding the [prior art] product.”
- LUBBY HOLDINGS LLC v. CHUNG [OPINION] (2019-2286, 09-01-2021) (NEWMAN, DYK, and WALLACH)
Dyk, J. The Court affirmed in part, reversed in part, and remanded a district court judgment finding patent infringement and damages. The Court held that substantial evidence supported the finding of infringement, but that the plaintiff was not entitled to damages prior to filing suit under 35 U.S.C. § 287. Although the defendant admittedly had prior notice of the patent, the notice was not sufficient under § 287 because the plaintiff had not made “[an] affirmative communication of a specific charge of infringement by a specific accused product or device” (quotation marks omitted). The Court remanded for a new trial to determine the number of infringing sales made after the suit was filed and the appropriate damages based on those sales.
Judge Newman concurred in part and dissented in part.
*WilmerHale represented the Appellee.
