CAFC Patent Cases - October 2021

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Precedential Federal Circuit Opinions

  1. KANNUU PTY LTD. v. SAMSUNG ELECTRONICS CO., LTD. [OPINION] (2021-1638, 10/7/21) (Newman, Prost, Chen)

    Chen, J. Denying motion for preliminary injunction. Patentee sought to compel defendant to seek dismissal of its instituted inter partes reviews. The Court upheld the dismissal of patentee’s motion. “The underlying question that this case presents is one of first impression: Does the forum selection clause in the non-disclosure agreement between the entities prohibit [defendant] from petitioning for inter partes review of [patentee’s] patents at the Board? … The district court correctly concluded that the inter partes review proceedings ‘do not relate to the Agreement itself,’ [citation omitted], ‘[n]or do the [inter partes review] proceedings relate to transactions contemplated under the Agreement.’ [citation omitted].” Newman, J. dissented.

  2. HYATT v. HIRSHFELD [OPINION] (2020-2321, 2020-2323, 2020-2324, 2020-2325, 10/12/21) (Moore, Reyna, Hughes)

    Hughes, J. Vacating award of attorney’s fees and affirming denial of expert fees. “The central logic of NantKwest is applicable to our decision here, indicating that § 145 does not shift expert witness fees. The American Rule sets a high bar that vague definitions cannot overcome, particularly considering the many instances in which Congress has explicitly shifted expert fees. We therefore affirm the district court’s holding that the PTO is not entitled to reimbursement of its expert witness fees… We do not lightly overturn decades of practice in federal district courts. But the phrase ‘[a]ll the expenses of the proceedings’ in § 145 does not specifically and explicitly invoke expert witness fees.”

  3. TRAXCELL TECHNOLOGIES, LLC v. SPRINT COMMUNICATIONS COMPANY [OPINION] (2020-1852,2020-1854, 10/12/21) (Prost, O’Malley, Stoll)

    Prost, J. Affirming claim construction and summary judgement of noninfringement and indefiniteness. The structure corresponding to a means-plus-function element was a “‘very detailed’ algorithm. That algorithm includes numerous steps necessary for its function. [citation omitted]. But [patentee] neglected to address a significant fraction of that structure. Indeed, [patentee’s] infringement expert instead discussed the accused technology at only a generalized level and didn’t at all discuss at least nine entire steps of the algorithm—focusing on function and results but eliding the way those results are achieved. [citation omitted]. Accordingly, [patentee] didn’t provide enough evidence for a reasonable jury to conclude that the accused structure performs the claimed function in ‘substantially the same way’ as the disclosed structure… We agree with the district court’s thorough analysis. Showing identical function is not enough for literal infringement of a means-plus-function claim—[patentee] must also provide evidence of identical or equivalent structure. Here it did not, and so summary judgment was proper.” Another means-plus-function claim was indefinite because the specification filed to disclose adequate corresponding structure.

  4. TRAXCELL TECHNOLOGIES, LLC v. NOKIA SOLUTIONS AND NETWORKS [OPINION] (2020-1440, 2020-1443, 10/12/21) (Prost, O’Malley, Stoll)

    Prost, J. Affirming claim construction and summary judgment of noninfringement. The claim term “location” was construed to exclude “the grid position sense of ‘location’” due to disclaimer during prosecution. That exclusion was a basis for noninfringement. The claim terms “first computer” and “computer” were construed to require “that a single computer could perform the recited functions” and that was another basis for noninfringement. “As a matter of plain language, reciting ‘a computer’ (or a ‘first computer’) that performs a function, and then further reciting that ‘the computer’ (or ‘said first computer’) performs multiple additional functions, suggests that such ‘computer’ must be tied to all those functions. And it would make little sense—indeed, it would defy the concept of antecedent basis—for the claims to recite ‘the computer’ or ‘said first computer’ being ‘further’ programmed to do a second set of tasks if a different computer were to do those tasks instead.”

  5. MOBILITY WORKX, LLC v. UNIFIED PATENTS, LLC [OPINION] (2020-1441, 10/13/21) (Newman, Schall, Dyk)

    Dyk, J. Remanding IPR final written decision in view of Arthrex for the Acting Director to determine whether to grant rehearing. Also rejecting arguments that IPRs are improper, e.g., because of Board members’ alleged financial interests. “Here, as in Delaware Riverkeeper, Benitez-Villafuerte, and Patlex, congressional control of the USPTO’s budget renders any agency interest in fee generation too tenuous to constitute a due process violation under Tumey.” Newman, J. concurred-in-part and dissented-in-part.

  6. ENERGY HEATING, LLC v. HEAT ON-THE-FLY, LLC [OPINION] (2020-2038, 10/14/21) (Moore, Prost, Stoll)

    Prost, J. Affirming determination of exceptionality under § 285 and award of attorneys’ fees. The Court rejected patentee’s argument that the district court was required to consider lack of litigation misconduct. “In other words, while the ‘manner’ or ‘broader conduct’ of litigation is relevant under § 285, the absence of litigation misconduct is not separately of mandatory weight.”

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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