Precedential and Key Federal Circuit Opinions
1. NEXSTEP, INC. v. COMCAST CABLE COMMUNICATIONS, LLC [OPINION] (2022-1815, 2022-2005, 2022-2113, 10/24/2024) (Reyna, Taranto, Chen)
Chen, J. The Court affirmed the district court’s judgment of non-infringement in favor of Comcast. Before the district court, Comcast prevailed on all nine patents asserted by NexStep, including patents related to voice remote controls and customer support systems. For seven of the asserted patents, including U.S. Patent No. 8,885,802 (the “’802 patent”), Comcast won summary judgment of non-infringement. Comcast also succeeded in getting the district court to exclude all of NexStep’s remaining damages theories, limiting the trial solely to the issue of liability on the remaining two patents. At trial, the jury found that Comcast did not infringe one of the remaining asserted patents, and no literal infringement of U.S. Patent No. 8,280,009 (the “’009 patent”), but found that Comcast infringed the ’009 patent under the doctrine of equivalents. Following the jury verdict, the district court granted Comcast’s motion for judgment as a matter of law of non-infringement for the ’009 patent, concluding that NexStep did not present expert testimony or other evidence sufficient to support the jury’s verdict. As a result, Comcast achieved a complete victory—including a judgment of non-infringement for all nine of NexStep’s asserted patents.
NexStep appealed the district court’s rulings with respect to the ’802 and ’009 patents and damages. The Court affirmed the district court’s non-infringement rulings, rendering the remaining issues on appeal moot.
First, with respect to the ’802 patent, the Court rejected NexStep’s challenge to the district court’s construction of Voice Over Internet Protocol (“VoIP”). The Court concluded that VoIP was a well-known industry term and that the extrinsic evidence supported the district court’s construction. The Court further determined that NexStep forfeited its argument that the ’802 patent adopted an unconventional definition of VoIP, and that, in any event, NexStep’s arguments were incorrect. Finally, the Court found that NexStep forfeited its argument that there was a genuine dispute of material fact regarding infringement under the district court’s construction.
Second, with respect to the ’009 patent, the Court determined that NexStep failed to put forth evidence that could support a finding of infringement of the ’009 patent under the doctrine of equivalents. Specifically, the Court concluded that NexStep’s expert failed to provide the necessary particularized testimony and linking argument and instead presented testimony that was properly characterized as a “word salad.” The Federal Circuit also rejected NexStep’s argument that there should be no requirement that a patentee present particularized testimony and linking argument to establish infringement under the doctrine of equivalents for “easily understandable” technologies.
Judge Reyna dissented in part.
*WilmerHale represented Comcast both before the district court and on appeal.
2. ALEXSAM, INC. v. AETNA, INC. [OPINION] (2022-2036, 10/8/2024) (Lourie, Bryson, Stark)
Stark, J. The Court vacated and remanded the district court’s dismissal of AlexSam’s complaint for patent infringement. AlexSam’s patent relates generally to a particular card system that uses a central processing hub to conduct certain card functions through an existing banking network.
AlexSam’s complaint alleged that Aetna’s VISA products and Mastercard products directly and indirectly infringe its patent. The district court granted Aetna’s motion to dismiss the complaint with prejudice. The district court found that AlexSam could not prevail on its claims against Aetna’s Mastercard products because they were covered by a license agreement between AlexSam and Mastercard that included the asserted patent. The district court further concluded that AlexSam failed to state a claim of direct or indirect infringement based on Aetna’s VISA products. On appeal, with respect to Aetna’s MasterCard products, the Court determined that dismissal was not warranted because it was possible that transactions involving Aetna’s Mastercard products could be within the scope of AlexSam’s infringement claims but outside the scope of the license. With respect to Aetna’s VISA products, the Court held that AlexSam’s allegations regarding how Aetna made and used the products were sufficient to state a claim for direct infringement “given the simplicity of the technology involved.” The Court also held that the direct infringement claim was supported by AlexSam’s allegations that Aetna “owns, operates, or leases all equipment in the infringing system, or alternatively exercises direction and control over the operation of all equipment in the infringing system.” The Court further held that AlexSam sufficiently pled induced infringement and contributory infringement for Aetna’s VISA products, because the allegations supported a plausible inference that at least one directly infringing Aetna customer exists.
3. UTTO INC. v. METROTECH CORP., AKA VIVAX-METROTECH [OPINION] (2023-1435, 10/18/2024) (Prost, Taranto, Stoll)
Taranto, J. The Court vacated and remanded the district court’s dismissal of Utto’s complaint for patent infringement. The Court affirmed the district court’s dismissal of Utto’s state-law claim for tortious interference with prospective economic advantage.
Utto’s asserted patent relates generally to methods for detecting and identifying underground utility lines. In preliminary injunction proceedings, the district court construed a claim limitation reciting a “group of buried asset data points” to require two or more data points. Based on that construction, the district court denied the preliminary injunction and dismissed Utto’s infringement claim.
On appeal, the Court determined that additional claim construction proceedings were needed to construe the limitation at issue and remanded the infringement claim on that basis. With respect to the state law tortious interference claim, the Court affirmed the district court’s conclusions that Utto had not plausibly alleged the market power and fraud elements of its claims.
4. TELEFONAKTIEBOLAGET LM ERICSSON, ERICSSON AB, ERICSSON, INC. v. LENOVO (SHANGHAI) ELECTRONICS TECHNOLOGY CO. LTD., LENOVO BEIJING, LTD., LENOVO GROUP LIMITED, MOTOROLA (WUHAN) MOBILITY TECHNOLOGIES COMMUNICATION CO., LTD. [OPINION] (2024-1515, 10/24/2024) (Lourie, Prost, Reyna)
Prost, J. The Court vacated the district court’s denial of Lenovo’s antisuit-injunction request and remanded for further proceedings.
The suit arose from Lenovo and Ericsson’s attempt to agree to a global cross-license to each other’s standard-essential patents (“SEPs”) on the 5G wireless-communication standard. Both Lenovo and Ericsson have made FRAND commitments to grant irrevocable licenses to their SEPs on fair, reasonable, and non-discriminatory terms and conditions under the European Telecommunications Standards Institute (“ETSI”). In connection with its final licensing offer to Lenovo, Ericsson sued Lenovo in the U.S. District Court for the Eastern District of North Carolina for infringement of four U.S. patents that Ericsson contends are 5G SEPs. Ericsson also alleged that Lenovo had breached its FRAND commitment by failing to negotiate in good faith. Ericsson further sought a declaration that it had complied with its FRAND commitment regarding its offer to Lenovo, and if its offer was found to be inconsistent with its FRAND commitment, Ericsson asked the district court to determine a FRAND rate for a global cross-license between the parties.
Ericsson also initiated proceedings against Lenovo in Colombia and Brazil, asserting infringement of certain Ericsson patents in Colombia and Brazil that it contends are 5G SEPs, and secured preliminary injunctions in both countries. After the Colombian and Brazilian injunctions against Lenovo were entered, Lenovo asserted counterclaims in the district court suit, alleging that Ericsson infringed four of Lenovo’s U.S. patents that it contends are 5G SEPs and breached its FRAND commitment by failing to negotiate in good faith. Lenovo also moved the district court to enter an antisuit injunction prohibiting Ericsson from enforcing its Colombian and Brazilian injunctions.
The district court denied Lenovo’s foreign antisuit-injunction request under the framework set forth in Microsoft Corp. v. Motorola, Inc., 696 F.3d 872 (9th Cir. 2012). Under this framework, “there is a first, ‘threshold’ requirement: the parties and issues must be the same in both the domestic and foreign suits, and the domestic suit must be dispositive of the foreign action to be enjoined.” Second, “the domestic court considers whether at least one of the antisuit-injunction factors applies, including “whether the foreign litigation would (1) frustrate a policy of the forum issuing the [antisuit] injunction; (2) be vexatious or oppressive; (3) threaten the issuing court’s in rem or quasi in rem jurisdiction; or (4) where the proceedings prejudice other equitable consideration[s].” The district court concluded that, under the first, threshold requirement, the suit before it was not dispositive of the foreign action, and it therefore denied Lenovo’s requested antisuit injunction. The district court reasoned that, to be dispositive, “the domestic suit would have to result in a global cross-license between the parties.”
The Court disagreed with the district court’s conclusion on the threshold “dispositive” requirement for an anti-suit injunction and held that the requirement was met here. The Court rejected the district court’s reasoning that to be dispositive, the domestic suit must necessarily result in a global cross-license between the parties. The Court explained that “the ‘dispositive’ requirement can be met even though a foreign antisuit injunction would resolve only a foreign injunction (and not the entire foreign proceeding), and even though the relevant resolution depends on the potential that one party’s view of the facts or law prevails in the domestic suit.” The Court concluded that “the ‘dispositive’ requirement of the foreign-antisuit-injunction framework is met here” because “(1) the ETSI FRAND commitment precludes Ericsson from pursuing SEP-based injunctive relief unless it has first complied with the commitment’s obligation to negotiate in good faith over a license to those SEPs; and (2) whether Ericsson has complied with that obligation is an issue before the district court. Accordingly, if the court determines that Ericsson has not complied with that obligation, that determination will dictate the impropriety of Ericsson’s pursuing its SEP-based injunctive relief.”
The Court remanded to the district court for analysis of the remaining elements of the foreign-antisuit-injunction framework.
