Precedential Federal Circuit Opinions
1. ADASA INC. v. AVERY DENNISON CORPORATION [OPINION] (2022-1092, 12/16/2022) (Moore, Hughes, and Stark)
Moore, C.J. The Court affirmed in part, vacated in part, and remanded for further proceedings in a patent case involving radio-frequency identification (RFID) tags used to identify and track objects in the stream of commerce. First, the Court affirmed the district court’s summary judgment that the asserted patent claim is directed to patent eligible subject matter, finding that the claimed RFID invention was not directed to an abstract idea, but rather to “an encoded RFID transponder implemented with a memory structure accommodating a specific hardware-based number scheme.” Second, the Court reversed the district court’s summary judgment that the prior art cited by Avery does not invalidate the asserted patent claim and remanded for further proceedings. Third, the Court held that the district court did not err in not instructing the jury on a lump-sum damages award, because Avery’s damages expert had not offered any lump-sum damages opinion and there was insufficient evidence to support a lump-sum damages instruction. Fourth, the Court held that the district court did not err in excluding Avery’s damages expert’s comparable license opinion because the expert had failed to provide a sufficient opinion that the licensed patents were sufficiently comparable to the asserted patents. Finally, the Court affirmed the district court’s decision to impose discovery sanctions on Avery where it had failed to disclose more than two billion additional infringing RFID tags until after trial; however, the Court vacated the $20 million sanctions award as not sufficiently tied to the harm caused by the discovery violation and remanded for further proceedings.
2. PLASTIPAK PACKAGING, INC. v. PREMIUM WATERS, INC. [OPINION] (2021-2244, 12/19/2022) (Newman, Stoll, and Stark)
Stark, J. The Court reversed and remanded a district court’s grant of summary judgment that the asserted patent was invalid for non-joinder of an inventor under pre-AIA 35 U.S.C. § 102(f). The Court found that summary judgment was inappropriate because the record reflects a genuine dispute of material fact as to whether an alleged inventor sufficiently contributed to the claimed inventions.
3. MOSAIC BRANDS, INC. v. RIDGE WALLET LLC [OPINION] (2022-1001, 2022-1002, 12/20/2022) (Newman, Prost, and Stark)
Stark, J. This is an appeal and cross appeal of an intellectual property case involving wallets in which Mosaic and Ridge both asserted patent infringement claims against each other; Mosaic also asserted a trade dress claim against Ridge. The district court had dismissed Mosaic’s infringement claim based on a stipulation of non-infringement under its claim construction, granted summary judgment of invalidity on Ridge’s asserted patent, and granted summary judgment that Mosaic’s claimed trade dress was invalid. With respect to Mosaic’s infringement claim, the Court agreed with the district court that the asserted patent claim should be construed consistent with the patent’s description of the “present invention,” and on that basis affirmed the dismissal of Mosaic’s infringement claim. With respect to Ridge’s infringement claim, the Court reversed the summary judgment of invalidity of Ridge’s asserted patent, finding a genuine dispute of material fact as to whether a Mosaic product was prior art. With respect to Mosaic’s trade dress infringement claim, the Court affirmed the summary judgment that Mosaic’s claimed trade dress is invalid because Mosaic had failed to present evidence to show that its alleged trade dress is non-functional.
4. GENENTECH, INC. v. SANDOZ INC. [OPINION] (2022-1595, 12/22/2022) (Newman, Lourie, and Prost)
Lourie, J. The Court affirmed a district court’s decision holding that: (1) the claims of Genentech’s Liver Function Test (“LFT”) patents are unpatentable as obvious and (2) sale of Sandoz’s generic product would not directly infringe Genentech’s Drug-Drug Interaction (“DDI”) patents. With respect to the LFT patents, the Court found that the district court “properly held that the specific dose modifications claimed in the LFT patents would have been obvious over the disclosures in [the prior art] Azuma and the Pirespa® label, combined with well-known standard medical practices.” With respect to the DDI patents, the Court held that “the district court did not clearly err in finding that Genentech had not met its burden to show that if Sandoz’s drug were put on the market, it would directly infringe the asserted claims of the DDI patent.”
Judge Newman dissented without opinion.
