Federal Circuit Review - Issue 285

Troutman Pepper

285-1. Federal Circuit Reverses District Court's Construction of Preamble of Claim and Holds Non-Infringement by Hong Kong-based Mobile Technology Company

The United States Court of Appeals for the Federal Circuit recently reversed a summary judgment holding from the United States District Court for the Southern District of New York that found uCloudlink infringed a patent of SIMO Holdings Inc. See SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech., No. 2019-2411, 2021 U.S. App. LEXIS 137 (Fed. Cir. Jan. 5, 2021) (Before O'Malley, Wallach, and Taranto, Circuit Judges) (Opinion for the Court, Taranto, Circuit Judge).

SIMO Holdings Inc. (SIMO) is the owner of U.S. Patent No. 9,736,689 (the '689 patent) directed to "apparatuses and methods that allow individuals to reduce roaming charges on cellular networks when traveling outside their home territory." SIMO sued Hong Kong uCloudlink Network Technology Limited and uCloudlink (America), Ltd. (collectively, uCloudlink) alleging that several products of uCloudlink infringed the '689 patent. The district court granted summary judgment to SIMO on infringement, reasoning that Claim 8 did not require a non-local calls database as recited in the preamble of Claim 8, and accordingly that uCloudlink's products met each limitation of Claim 8. Subsequently, uCloudlink appealed.

On appeal, the Federal Circuit primarily examined construction of the preamble of Claim 8 by the district court. The preamble of Claim 8 recites "[a] wireless communication client or extension unit comprising a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local cells database, at least one of the plurality of programs stored in the memory comprises instructions executable by at least one of the plurality of processors . . . ." (emphasis added).

The Federal Circuit first agreed with the district court that the preamble of Claim 8 is limiting such that infringement of Claim 8 requires that the accused products practice each limitation of the preamble either through literal infringement or under the doctrine of equivalents. The Federal Circuit explained that Claim 8 is an apparatus claim and the preamble is the only portion of the claim that "identifies physical components of the claimed physical device" whereas the body of the claim only provides functional characteristics of the claimed physical device.

Next, the Federal Circuit explained that the primary issue is whether the language of the preamble requires a plurality of non-local cells databases. The district court construed "a plurality of" to require "at least two" elements of the entire list of identified items in the preamble (i.e., memory, processors, programs, etc.). However, the Federal Circuit disagreed. The Federal Circuit pointed to its holding in SuperGuide Corporation v. DirecTV Enterprises, Inc., 358 F.3d 870 (Fed. Cir. 2004) as guidance. In such case, the Federal Circuit found that the phrase "at least one of" followed by a list of items connected by the conjunction "and" meant that there had to be at least one or more of each item of such list. Here, the Federal Circuit extended such principle by holding that "a plurality of" followed by a list of items connected by the conjunction "and" should be construed to require two or more of each item of such list. The Federal Circuit further noted that there is no article in front of "non-local calls database," thereby supporting extending the SuperGuide principle in this instance. Additionally, the Federal Circuit explained that the use of "the plurality" in the preamble following "non-local calls database" in the phrases "at least one of the plurality of programs . . ." and "at least one of the plurality of processors . . ." again indicates that "the plurality of" followed by the list of items must be construed such that "the plurality" applies individually to each item in the list. Lastly, the Federal Circuit explained that although the specification indicated that a "non-local calls database" is optional, every claim does not have to be interpreted to cover all embodiments and, here, the text of the claim makes it clear that Claim 8 is not intended to cover embodiments that do not require a non-local calls database. PPC Broadband, Inc. v. Corning Optical Communications RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016). The Federal Circuit further noted that the '689 patent includes other independent claims that cover embodiments that do not require a non-local calls database.

Ultimately, the Federal Circuit reversed the district court's summary judgment of infringement by uCloudlink of the '689 patent and concluded that the preamble of Claim 8 requires "a plurality of" each component of "memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local cells database." Because SIMO did not present any evidence that established a triable issue of fact regarding whether the accused products of uCloudlink include a non-local cells database, the Federal Circuit concluded that uCloudlink was entitled to summary judgment of noninfringement and no remand was necessary.

A claim that includes the phrase "a plurality of" followed by a list of items connected by "and" requires that there be a plurality of each item in the list. Even when the specification of the patent identifies an element in the list as optional, such construction of the phrase "a plurality of" still applies when the text of the claim dictates such construction. The mere fact that there is an alternative embodiment disclosed in the specification that is not within the scope of construction of an asserted claim does not outweigh the language of the claim, particularly when the construction of the asserted claim is based on intrinsic evidence.

285-2. Federal Circuit Opines on Mootness Due to the Voluntary Cessation Doctrine and Dismisses Appeal as Moot

The United States Court of Appeals for the Federal Circuit recently dismissed ABS Global's appeal from the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB), finding its appeal moot because ABS had not established that its activity would place it at substantial risk of infringement of a patent owned by Cytonome. ABS Glob., Inc. v. Cytonome/ST, LLC, No. 2019-2051, 2021 U.S. App. LEXIS 275 (Fed. Cir. Jan. 6, 2021) (Before Prost, Chief Judge, Moore and Stoll, Circuit Judges).

Cytonome is the assignee of US Patent No. 8,529,161, (the '161 patent) which is directed to microfluidic devices and methods of configuring microfluidic systems. In June of 2017 Cytonome filed a complaint against ABS and others in district court asserting infringement of claims of six patents, including the '161 patent. ABS later filed a petition for inter partes review (IPR). The PTAB instituted an IPR and subsequently issued a final written decision that invalidated some claims of the '161 patent. The PTAB concluded that ABS failed to show that the remaining claims of the '161 patent were unpatentable. Several weeks after the PTAB decision, the district court granted ABS's motion for summary judgment, holding that ABS's accused products did not infringe any of the '161 patent's claims. ABS appealed the PTAB judgment. During the appeal, Cytonome filed an affidavit stating that Cytonome had "elected not to pursue an appeal of the district court's finding of non-infringement as to the '161 patent and hereby disclaims such an appeal." Cytonome presented arguments that its affidavit resulted in ABS lacking standing to appeal the PTAB's decision regarding the validity of the '161 patent, because the disavowal resulted in ABS lacking the requisite injury in fact to support an appeal.

The Federal Circuit initially noted that standing was the incorrect doctrine to be applied to the mootness question inquiry raised by Cytonome regarding the ABS appeal. Rather, the voluntary cessation doctrine governed the mootness inquiry in this case. The Federal Circuit found that Cytonome's affidavit was sufficient to shift the burden to ABS to offer evidence of current activity or future plans that would subject ABS to infringement liability under the '161 patent. The court found the evidence presented by ABS to be insufficient to meet the voluntary cessation standard of whether the wrongful behavior could reasonably be expected to recur.

The Federal Circuit also rejected ABS's primary argument that the PTAB appeal was not moot based on an exception to mootness found in Fort James Corp. v. Solo Cup Co. The exception described in Fort James is patent law specific—a patent owner who strategically waits until after the resolution of its claim for patent infringement to offer a covenant not to sue or appeal does not moot a challenge to the patent's validity. The Federal Circuit noted that the holdings of Fort James applied to mooting counterclaims of unenforceability within the same proceeding, rather than assessing mootness in the context of parallel proceedings. Accordingly, the Federal Circuit rejected ABS's claim that the resolution of infringement claims in a first proceeding would give rise to an exception to the mootness of claims in a second separate proceeding.

Additionally, the majority concluded that because ABS did not timely request vacatur it failed to preserve the right to request vacating the challenged portions of the PTAB decision. Chief Judge Prost dissented from the majority view, explaining that vacatur avoids the unfairness present when the prevailing party below unilaterally moots an appeal. While the majority held that ABS forfeited the vacatur argument, Prost explained that dismissal without vacatur deprived ABS of appellate review through no fault of its own.

A plaintiff's unilateral disavowal of a right to appeal a finding of non-infringement of a patent may moot the defendant's appeal of a decision regarding invalidity of the same patent under the voluntary cessation doctrine.

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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