Precedential Federal Circuit Opinions
1. PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC. [OPINION] (2021-2275, 1/20/23) (Reyna, Chen, and Stark)
Reyna, J. Affirming district court’s decision that asserted patent was unenforceable based on prosecution laches because plaintiff successfully employed an inequitable scheme to extend its patent rights. District court found this case very similar to Hyatt and prior cases, and, in some ways, to involve even more egregious facts because, as the district court found, the record showed that plaintiff institutionalized its abuse of the patent system by expressly adopting and implementing dilatory prosecution strategies, specifically to ambush companies many years after plaintiff filed its applications. The district court did not abuse its discretion in finding that defendant established prejudice. While plaintiff was in pre-suit negotiations with defendant, plaintiff reintroduced a previously-rejected claim in a particularly patent application; plaintiff did not mention the application or claim to defendant during negotiations; plaintiff was able to get the claim quickly granted, assert that claim against defendant, and obtain a damages award. This showed that the district court did not err by determining that plaintiff was still implementing its express strategy of delay at least the time of its pre-suit negotiations with defendant. Additionally, in so delaying, plaintiff prejudiced defendant, which had already begun investing in the accused product’s development and continued to do so.
2. IN RE GOOGLE LLC [OPINION] (2023-101, 2/1/23) (Lourie, Taranto, and Stark)
Stark, J. Granting petition for writ of mandamus directing the district court to vacate its order denying defendant’s motion to transfer and to transfer the case to the United States District Court for the Northern District of California. The center of gravity of this action, focusing on the Volkswagen factors and the overriding convenience inquiry, was clearly in the Northern District of California, not in the Western District of Texas. The district court clearly erred in finding otherwise and its decision to deny defendant’s motion to transfer was a clear abuse of discretion.
3. CYWEE GROUP LTD. v. GOOGLE LLC [OPINION] (2020-1565, 2020-1567, 2/8/23) (Prost, Taranto, and Chen)
Prost, J. Affirming denial by Director of the U.S. Patent and Trademark Office to rehear two IPR proceedings, each of which had resulted in a final written decision of the Patent Trial and Appeal Board determining all challenged claims unpatentable. Patent Owner’s untimeliness arguments were without merit—the statutory provisions setting specific deadlines for institution decisions and final written decisions say nothing of deadlines for any further Director review of those decisions. There was also no merit to Patent Owner’s argument that the Board lacked authority to extend the one-year deadline for final written decisions in the case of joinder. Patent Owner was also mistaken insofar as it suggested that an Appointments Clause violation occurred because there was no “right” for Director review of the Board’s extension decisions; the usual rule is that an agency head’s delegation of her authority to subordinates is premised, at least in part, on the delegating official maintaining the power to review the decisions of the delegee.
