CAFC Patent Cases - May 2021 #2

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Precedential Federal Circuit Opinions

  1. CAP EXPORT, LLC v. ZINUS, INC. [OPINION]  (2020-2087, 5/5/21) (Dyk, Bryson, Hughes)

    Dyk, J. Affirming decision to set aside judgment and injunction pursuant to Federal Rule of Civil Procedure 60(b)(3). Patent owner’s “president and expert witness, misrepresented his knowledge of highly material prior art. The district court properly declined to condone such conduct.”

  2. PACIFIC BIOSCIENCES v. OXFORD NANOPORE TECHNOLOGIES [OPINION]  (2020-2155, 2020-2156, 5/11/21) (Lourie, Taranto, Stoll)

    Taranto, J. Affirming verdict of invalidity due to lack of enablement for claims related to sequencing nucleic acid using nanopore technology. “We therefore conclude that there was ample evidence to support a finding that, before the 2009 priority date of the [asserted] patents, relevant artisans did not know how to perform nanopore sequencing for more than a narrow range of the full scope of nucleic acids covered by the asserted claims.” Patentee requested a new trial because of defendant’s references to COVID-19 during its opening statement and the Court upheld the denial of that request. “The [district] court determined that there was not a high enough likelihood, in light of the curative instructions, that [defendant’s] improper opening tainted the jury’s consideration of the issues to justify ordering a new trial... Given all the circumstances, we do not see a basis for disturbing the district court’s assessment that there was an insufficient likelihood that the improper opening remarks had an adverse impact on the ultimate verdict to justify a new trial in this case.”

  3. FREE STREAM MEDIA CORP. v. ALPHONSO INC. [OPINION]  (2019-1506, 2019-2133, 5/11/21) (Dyk, Reyna, Hughes)

    Reyna, J. Reversing denial of motion to dismiss because “we conclude that [asserted claims of one patent] are in fact patent ineligible.” The Court found that “the alleged technological improvement does nothing more than implement a computer to achieve the abstract idea of providing targeted advertising to the mobile device user.” The Court also affirmed construction of another patent, under which the patentee had stipulated to noninfringement. Specifically, the Court affirmed a construction of “communication session” that required “bidirectional communication.” “Given the specification, we conclude that a person of ordinary skill in the art would have understood ‘communication session’ as requiring bidirectional communication.”

  4. TRIMBLE INC. v. PERDIEMCO LLC [OPINION]  (2019-2164, 5/12/21) (Newman, Dyk, Hughes)

    Dyk, J. Reversing order finding lack of personal jurisdiction in declaratory judgment case and remanding. In analyzing the factors related to personal jurisdiction, the Court noted regarding the “burden on the defendant” factor that litigating “in the Northern District of California does not impose an undue burden on [patentee]. While [patentee] claims to have offices in the Eastern District of Texas, [patentee’s sole employee] has never visited that office and his office is in Washington, D.C. The district court found that [patentee’s] presence in Texas was ‘pretextual’ and ‘amount[ed] to little more than a façade.’” Patentee argued that the Court’s prior decision in Red Wing required the district court to dismiss due to lack of personal jurisdiction. The Court disagreed. “Red Wing remains correctly decided with respect to the limited number of communications involved in that case. However, there is no general rule that demand letters can never create specific personal jurisdiction. As we stated in Jack Henry, Red Wing ‘did not create such a rule’ because that rule ‘would contradict the Court’s directive to ‘consider a variety of interests’ in assessing whether jurisdiction would be fair.’ [citation omitted]. The central question under Red Wing is now whether a defendant’s connection to a forum is sufficient to satisfy the minimum contacts or purposeful availment test and, as discussed [below], whether the exercise of jurisdiction conforms to the due process and fairness criteria of precedent… We conclude that the minimum contacts or purposeful availment test is satisfied in this case. [Patentee’s] contacts with California are far more extensive than those in Red Wing. [Patentee] exchanged twenty-two communications with [declaratory judgment plaintiff] in California over a period of three months...”

  5. UNILOC 2017 LLC v. APPLE INC. [OPINION]  (2020-1403, 2020-1404, 5/12/21) (Prost, Bryson, Reyna)

    Bryson, J. Affirming Board decision in IPR that some claims are invalid and others are not in a patent related to VoIP calls. The Court affirmed a construction of “intercepting” that permitted a message to be intentionally directed to the intercepting device, and under that construction the prior art rendered some of the claims obvious. “We hold that the claims encompass the situation in which a sending client device intentionally sends a signaling message to the intermediate network entity that performs the interception. Contrary to [patentee’s] contention, that construction is not at odds with the plain meaning of the claims. The receiving client device is still ‘the intended recipient’ of the message because it is the ultimate, intended destination of that message; the intermediate network entity is not ‘the intended recipient,’ even though it is intended to intercept the message on its way to the intended recipient. In that situation, ‘intercepting’ retains a meaning distinct from merely ‘receiving.’ The network entity ‘intercepts’ the message, rather than merely ‘receiving’ the message, because the network entity sits between the two client devices and processes the message during its passage from its source to its ultimate destination.” Other claims were not invalid because they required use of a single message for some purposes, whereas the prior art used two.

    WilmerHale represented the cross-appellant, Apple Inc.

  6. NEW VISION GAMING v. SG GAMING, INC. [OPINION]  (2020-1399, 2020-1400, 5/13/21) (Newman, Moore, Taranto)

    Moore, J. Vacating Board decision in covered-business method review final-written decisions and remanding. “Because Arthrex issued after the Board’s final-written decisions and after [patentee] sought Board rehearing, [patentee] has not waived its Arthrex challenge by raising it for the first time in its opening brief before this Court.” Newman, J. concurred-in-part and dissented-in-part.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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