Recent Precedential Cases

All Holdings Below are the Court's Opinions, Not JustCite's

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Cywee Grp. Ltd. v. Google LLC - Fed. Cir. - 8 Feb 2023

And if by “right” CyWee means that there was no right for it to seek or obtain Director review, even if it were correct on that score, that also would not give rise to an Appointments Clause violation. “[T]he Appointments Clause was intended to prevent unappointed officials from wielding too much authority, not to guarantee procedural rights to litigants, such as the right to seek rehearing from the Director.” Piano Factory Grp., Inc. v. Schiedmayer Celesta GmbH, 11 F.4th 1363, 1374 (Fed. Cir. 2021); see also In re Palo Alto Networks, 44 F.4th at 1376 (observing that language in Arthrex “strongly suggests that delegation to the Board of the authority to decide on institution without a mechanism for parties to subsequently request Director review does not present Appointments Clause problems”); id. at 1375–77.5 

In re Google LLC -  Fed. Cir. - 1 Feb 2023

In sum, on the record before us, four factors favor transfer and four factors are neutral. No factor weighs against transfer. The center of gravity of this action, focusing on the Volkswagen factors and the overriding convenience inquiry, is clearly in the Northern District of California, not in the Western District of Texas. The district court clearly erred in finding otherwise and its decision to deny Google’s motion to transfer was a clear abuse of discretion.

Personalized Media Commc'ns, LLC v Apple -  Fed. Cir. - 20 Jan 2023

Prosecution laches requires proving two elements: (1) the patentee’s delay in prosecution must be unreasonable and inexcusable under the totality of circumstances and (2) the accused infringer must have suffered prejudice attributable to the delay. Id. at 1362. We conclude that the district court did not abuse its discretion by legally erring or making clearly erroneous factual findings in determining that Apple established both laches elements. 

The district court did not abuse its discretion in finding that Apple established laches, rendering the ’091 patent unenforceable.

The district court’s reliance on dictionary definitions of “enlarged” rather than the meaning a skilled artisan would reasonably understand from the intrinsic record led, in part, to its reliance on Liberty Ammunition. There, we found that “reduced area of contact” must be compared to the prior-art ammunition because there was no other objective boundary for a skilled artisan. Liberty Ammunition, 835 F.3d at 1396–97 (citing Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370–71 (Fed. Cir. 2014)). Here, however, the intrinsic record provides an objective boundary for a skilled artisan—i.e., the “enlarged chamber” must be large enough to prevent, during elevated pressurization, commingling of sample and pressurization fluids in the lower measurement zone. Unlike Liberty Ammunition, this objective boundary does not require a comparison to the size of prior-art chambers. 

A skilled artisan would understand the inherent parameters of the “enlarged chamber” through the intrinsic evidence. Like the spaced relationship in Nautilus, the “enlarged chamber” must be a certain minimum size, or large enough, to maintain sample fluid within the enlarged chamber when the sample fluid is under elevated pressurization. Although we disagree with the district court’s conclusion that “enlarged chamber” must be larger than something else rather than large enough to achieve a particular purpose, it appears that the indefiniteness question is not yet fully resolved and may require further fact finding on remand. 

In re Google LLC - Fed. Cir. - 9 Jan 2023

Indeed, although the Board concluded that modifying Parthasarathy’s threshold to take into account query length would have been obvious, Decision at *4, entirely absent from its decision is any discussion of how such a modification would be accomplished. Certainly, the Board did not discuss or suggest the specific modifications the PTO advances on appeal. In the absence of any specific findings by the Board on these matters, we may not adopt the PTO’s fact-based arguments in the first instance on appeal. 

In re Stingray IP Sols., LLC - Fed. Cir. - 9 Jan 2023

Likewise, we see nothing in Rule 4(k)(2) or its history that would permit a defendant to achieve transfer to a preferred district simply by unilateral, post-suit consent.2 The plain language of the rule does not support such a result. Nor do the Advisory Committee Notes, “a reliable source of insight into the meaning of a rule,” Hall v. Hall, 138 S. Ct. 1118, 1130 (2018) (internal quotation marks and citation omitted), which make clear that Rule 4(k)(2) was not intended to “affect the operation of federal law[s] providing for the change of venue,” §§ 1404(a), 1406, 1631, but was instead envisioned to work in harmony with those provisions to “preclude most conflicts between the full exercise of territorial jurisdiction permitted by this rule and the Fifth Amendment requirement of ‘fair play and substantial justice.’” 

Here, it was Dionex’s copying of Agilent’s claims that provoked the interference. That renders the Agilent application the originating disclosure. Therefore, we evaluate the patent claims based on the Agilent specification. . . . Although we have not had occasion to apply this rule in circumstances in which there was a prior unsuccessful effort between the same parties to provoke an interference, we neither see nor have been provided any persuasive reason not to apply our rule in this context.

The Board did not err in construing the claim language to permit “determining a movement amount” while “forwarding the piston . . . by the determined movement amount.” Dionex wrongly contends that “determining” has to occur before “forwarding” because of the “logical structure” of the claim language and because the Board’s construction renders “the determined movement amount” language superfluous. 

There is similarly no mandate that the Board draw a negative inference whenever a party fails to present some types of documentary evidence an opposing party insists must exist. 

Notably, this case does not involve whether Alaska’s information should be sealed or unsealed, but rather whether its information could be disclosed to MFA’s inhouse counsel, which is an entirely different issue. Moreover, the district court did not permit disclosure of Alaska’s confidential information to MFA’s in-house counsel, instead protecting that information by denying MFA’s inhouse counsel access. Because there is no risk Alaska’s information will be revealed to an improper recipient, the district court’s order does not fall within the “small class” of collateral rulings appropriate for appellate review. 

[W]e affirm the court’s holding that the asserted claims in the LFT patents would have been obvious over Azuma and the Pirespa® label, combined with well-known, standard medical practices. The asserted claims in the LFT patents do not represent the invention of a new drug, nor do they recite a novel application of an existing drug. Instead, these claims recite adjusting doses in the presence of side effects, which clinicians routinely do, and which would have been obvious in view of the prior art. 

It is true that although the Hatch-Waxman Act provides that the filing of an ANDA before a patent covering a compound or a use expires meets the technical jurisdictional requirement of infringement, that is not the same as the direct infringement that serves as a predicate for finding induced infringement. See 35 U.S.C. § 271(e)(2)(A) (filing an ANDA before a patent expires is “an act of infringement”); Glaxo, Inc. v. Novopharm, Ltd., 110 F.3d 1562, 1568–69 (Fed. Cir. 1997) (“The plain language of [§ 271(e)(2)(A)] does not alter a patentee’s burden of proving infringement . . . .”). Infringement still requires a finding that accused subject matter would meet the terms of a claim.

Here, as in Eli Lilly and Takeda, the district court did not clearly err by considering all the relevant evidence, including Sandoz’s proposed label and physician practice. Sandoz presented evidence of how pirfenidone would be prescribed in practice, including testimony from physicians that, in their decades of treating IPF patients, they had never prescribed pirfenidone to an IPF patient taking fluvoxamine; and were they to find themselves in that position, they would choose a noninfringing response—i.e., prescribing nintedanib instead. See Decision at *16; see also J.A. 7196, 7269, 7270–71. The court did not clearly err by considering physician evidence, weighing it against the language in Sandoz’s proposed label, and finding that Genentech failed to prove direct infringement. Genentech’s arguments to the contrary are unavailing.

Because inequitable conduct was in the case only as an affirmative defense, the denial of summary judgment – whether due to mootness or an insufficient showing on the merits – merged with the final judgment entered by the District Court, and we have jurisdiction. See Hendler v. United States, 952 F.2d 1364, 1368 (Fed. Cir. 1991).

Contrary to Mosaic’s suggestions, these statements are not limited to a best mode or particular embodiments. Instead, the ’616 patent uses “the present invention” to describe the invention as a whole, thereby disclaiming inventions constructed out of materials other than extrudable plastic. Thus, the District Court did not err in construing “lip” as being limited to extrudable plastic materials.

To obtain summary judgment of invalidity, Mosaic’s challenge was even greater: to show that no reasonable factfinder, taking the evidence in the light most favorable to Ridge, could do anything other than find clear and convincing evidence of anticipation. Mosaic failed to clear this high bar. To the contrary, Ridge showed that Kaminski’s credibility is a genuinely disputed material fact, thereby raising a related genuine dispute as to whether Mosaic’s corroborating documentary evidence is what it purports to be. Ridge’s challenges to Kaminski’s credibility and to the authenticity of Mosaic’s documentary evidence render summary judgment unwarranted on the record before us. See Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1364 (Fed. Cir. 2019)

In short, Mosaic did not meaningfully dispute the relevant facts, even though it bears the burden to show that its trade dress is non-functional. Therefore, even taking the facts in the light most favorable to Mosaic, any reasonable factfinder, when confronted with this record, would have to conclude that the overall design of the SMCII reflects functional considerations that are intended to satisfy consumer preferences. Thus, the design is not protectable trade dress, and summary judgment for Ridge was appropriate. We affirm this portion of the District Court’s order.

Ultimately, we agree with Premium Waters that it presented sufficient evidence from which a reasonable factfinder may find clear and convincing evidence that Falzoni was a joint inventor of the X Dimension Patents. Such a finding could be grounded in Falzoni’s testimony, as corroborated by the 3D model and the testimony of another SACMI employee, as well as the arguably suspicious timeline, in which the collapse of Plastipak’s efforts to license SACMI’s ML27 design was quickly followed by Darr and Morgan filing their patent application. Such a finding could lead to the conclusion that the X Dimension Patents are invalid for failure to name Falzoni as an inventor. Crucially, however, nothing in the record requires a reasonable factfinder – particularly one who is resolving all fact disputes, and drawing all reasonable inferences, in Plastipak’s favor – to make these necessary findings. Accordingly, summary judgment of invalidity is not warranted.

As this case illustrates, often the assessment of what contribution has been made by a purported inventor, and whether that contribution is significant, is bound up with material fact disputes which a reasonable factfinder could resolve in favor of either party. Here, specifically, a reasonable factfinder could find Falzoni did not provide Darr with the X Dimension Limitation and merely “contributed” the prior art concept of a Discontinuous TEF – and these findings would mean Falzoni is not a joint inventor. Alternatively, a reasonable factfinder could find the opposite, in which case Falzoni should have been listed on the Plastipak patents as a joint inventor. On the record before the District Court, these genuine disputes of material fact were not amenable to resolution on summary judgment.

Although Google did not raise its present collateral estoppel argument in its petition, that omission does not result in forfeiture in this case. The preclusive judgment on which Google now relies, the ’483 patent final written decision, issued on April 12, 2021, and became final on June 14, 2021, both of which occurred well after Google filed its petition in the ’816 IPR. Thus, Google could not have raised its collateral estoppel argument in its petition because the preclusive judgment did not yet exist. In such circumstances, Google did not forfeit its collateral estoppel argument by raising it for the first time on appeal. Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311, 1315 (Fed. Cir. 2015).

We conclude claim 18 of the ’816 patent and claim 18 of the ’483 patent are materially identical for purposes of collateral estoppel. Since the issues of patentability of claim 18 of the ’483 patent and claim 18 of the ’816 patent are identical and the other elements of collateral are undisputed, collateral estoppel applies and we accordingly hold claim 18 of the ’816 patent unpatentable.

Appellant Treehouse Avatar LLC appeals the grant of a motion to strike portions of an infringement expert report by the U.S. District Court for the Western District of Washington. Appellant also appeals the court’s grant of summary judgment of noninfringement. We conclude that the district court did not abuse its discretion in striking expert testimony that did not rely upon the parties’ own agreed-upon construction and that the court adopted, nor erred in finding that Treehouse failed to rebut Valve’s evidence of noninfringement. We affirm.

When the court has adopted a construction that the parties requested and agreed upon, any expert theory that does not rely upon that agreed-upon construction is suspect. Here, Mr. Friedman’s report undisputedly applied the “plain and ordinary meaning” of the CE limitation, not the parties’ agreed-upon construction. J.A. 775–776, ¶¶ 30–31. Under these circumstances, Treehouse has failed to demonstrate that the district court abused its discretion by striking portions of Mr. Friedman’s report that did not rely on the claim construction agreed to by the parties. Accordingly, the district court did not abuse its discretion in granting Valve’s motion to strike portions of Mr. Friedman’s report.