Patent Case Summaries - January 2020 #2

Alston & Bird

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

Eko Brands, LLC v Adrian Rivera Maynez Enterprises, Inc., et al., Nos. 2018-2215, -2254 (Fed. Cir. (W.D. Wash.) Jan. 13, 2020). Opinion by Dyk, joined by Hughes. Opinion concurring-in-part and dissenting-in-part by Reyna.

Eko filed suit against Adrian Rivera and Adrian Rivera Maynez Enterprises (ARM) seeking a declaratory judgment of noninfringement and obviousness of certain claims of a patent owned by ARM. The district court granted Eko declaratory judgment of noninfringement but denied Eko’s motion for summary judgment as to obviousness, finding that there were disputed issues of material fact. After a trial, a jury found the claims obvious. The district court awarded Eko attorneys’ fees associated with obtaining a judgment of noninfringement and obviousness. ARM then appealed the findings of noninfringement and obviousness, as well as the fee awards. 

In addition to its declaratory judgment claims, Eko asserted that ARM infringed one of Eko’s patent claims. The district court construed the disputed claim, and ARM stipulated to infringement. At trial, the jury awarded Eko damages but found that ARM did not willfully infringe. ARM then appealed the finding of infringement, and Eko cross-appealed the jury’s finding of no willful infringement.

Addressing Eko’s declaratory judgment case, the Federal Circuit affirmed the district court’s claim construction and grant of summary judgment, and the jury’s verdict of obviousness. The Federal Circuit then turned to the award of attorneys’ fees to Eko based on the issue of obviousness. ARM argued that the district court’s denial of Eko’s motion for summary judgment “conclusively established the reasonableness of [ARM’s] litigation position.” The Federal Circuit disagreed, explaining: “Our cases require only that the district court considers the denial of summary judgment, not that the district court always gives that denial decisive weight.” The Federal Circuit ruled that the district court properly considered its denial of summary judgment and provided a reasonable explanation for its fee award. Thus, the district court did not abuse its discretion.

Addressing the infringement of Eko’s patent, and specifically the jury’s finding of no willfulness, the Federal Circuit focused on the jury instruction for willfulness. The parties initially agreed to the Federal Circuit Bar Association’s National Patent Jury Instruction 4.1 for willful infringement. But before the instruction was given to the jury, Eko objected to the language describing willful infringement as “especially worthy of punishment” and as being “reserved for egregious behavior.” The Federal Circuit agreed that the language is erroneous and not appropriate for jury consideration because “the issue of punishment by enhancement is for the court and not the jury.” However, the court observed that Eko failed to object to other problematic language in the instruction, including references to “malicious,” “consciously wrongful,” and “bad faith” conduct. And the court determined that the instruction contained other language that properly described willfulness. Thus, taken together, the Federal Circuit ruled that “the instruction as a whole was not legally erroneous given the limited nature of Eko’s objection.”

Judge Reyna dissented in part. In his view, the district court erred in construing the claims of ARM’s patent “by rewriting the claims, including adding a negative limitation that is unsupported by the specification.” Judge Reyna also explained that, based on the erroneous construction, the district court erred in granting summary judgment of noninfringement and in awarding attorneys’ fees.

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