Precedential Federal Circuit Opinions

1.  In Re MAXPOWER SEMICONDUCTOR, INC. [ORDER]  (2021-146, 9/8/21) (O’Malley, Reyna, Chen)

   Reyna, J.  Denying mandamus petition and dismissing appeal.  The Court declined to review the Board’s decision to institute inter partes review because decisions to institute are not appealable under 35 U.S.C.  §314(d).  The majority rejected the patentee’s argument that “the collateral order doctrine warrants immediate review because its challenge implicates questions of whether the Board can institute proceedings that are subject to arbitration.”  O’Malley, J. concurred-in-part and dissented-in-part arguing that the majority decision casts “a shadow over all agreements to arbitrate patent validity, which, after today, apply only in district courts and not in inter partes review proceedings.”

2. OMEGA PATENTS, LLC v. CALAMP CORP. [OPINION]  (2020-1793, 2020-1794, 9/14/21) (Dyk, Prost, Hughes)

   Prost, J.  Affirming judgment of infringement and vacating and remanding for new trial on damages.  The district court improperly excluded defendant’s damages expert from testifying.  Also, patent owner failed to establish the incremental value of the asserted patent, rendering the jury’s damages award unsustainable.  Patent owner’s damages arguments based on licenses were also improper.  “Here, we conclude that [patent owner] failed to adequately account for substantial ‘distinguishing facts’ between the proffered licenses and a hypothetical negotiation over a single-patent license to the [asserted] patent.  Most glaringly, each of the eighteen proffered licensees involves numerous patents, in contrast to a hypothetical negotiation for a single-patent license.”  Hughes, J. joined-in-part and dissented-in-part.