Fresh From the Bench: Latest Federal Circuit Court Cases

CASE OF THE WEEK

Elbit Systems Land and C4I Ltd. v. Hughes Network Systems, LLC, Appeal No. 2018-1910 (Fed. Cir. June 25, 2019)

In this appeal from the United States District Court for the Eastern District of Texas, the Federal Circuit affirmed the district court’s finding of infringement and damages, but dismissed the portion of the appeal relating to exceptional case attorney’s fees under 35 U.S.C. § 285 due to lack of jurisdiction.

Elbit filed suit against Hughes for infringement of two patents, only one of which is at issue on appeal. That patent, U.S. Patent No. 6,240,073 (“the ’073 patent”) is directed to a system for transmitting information in a satellite communication network. The ’073 patent specifically claims a “transmitter means” that has two “communication means,” one for transmitting short bursts of data, the other for continuous transmission of data. The ’073 patent also claims a “switching means” to switch between the two communication means. Hughes’s products use two methods for transmitting data; in one (the ALOHA method) the satellite randomly transmits bursts of data, and in the other (the Dynamic Stream method) the terminal can send transmissions of variable sizes during each frame. The jury found that Hughes’s products infringed the ’073 patent and awarded Elbit over $2 million in damages. The district court found the case to be exceptional due to Hughes’s litigation conduct, and granted Elbit’s motion for attorney’s fees, but did not quantify the fee award.

ALSO THIS WEEK

Cellspin Soft, Inc. v. Fitbit, Inc., Appeal Nos. 2018-1817, -1819 ,-1820, -1821, -1822, -1823, -1824, -1825, -1826, -2178, -2179, -2180, -2181, -2183, -2184 (Fed. Cir. June 25, 2019)

The Court vacated orders dismissing infringement claims as directed to patent-ineligible subject matter under 35 U.S.C. § 101, and awarding attorney’s fees under 35 U.S.C. § 285. The asserted claims were directed to methods of automatically publishing data from a “data capture device” (such as a camera) to the Internet, via a paired mobile device, automatically and with minimal or no user intervention. Applying the two-part Alice test, the Federal Circuit agreed with the trial court that the claims were directed to an abstract idea. With respect to the presence of an inventive concept, the Court found that the district court erroneously ignored specific, plausible allegations in the complaints that, taken as true, indicated that certain claimed combinations of elements were not well-understood, routine, or conventional at the time of the invention. The Court also found that the trial judge erroneously distinguished its precedent concerning Section 101 invalidity at the summary judgment stage, and held that factual disputes concerning an inventive concept may preclude dismissal at the pleadings stage.

In the interest of judicial economy, the Court also addressed certain errors in the vacated fee award, which was based in part on the trial court’s determination that plaintiff should have examined its claims more critically before bringing suit. The Federal Circuit advised that this basis was erroneous, because the presumption of patent validity extends to patent-eligibility under Section 101.

The opinion can be found here.

UCB, Inc. v. Watson Laboratories Inc., Appeal Nos. 2018-1397, -1453 (Fed. Cir. June 24, 2019)

This appeal concerns two patents involving rotigotine, a drug used for treatment of Parkinson’s disease. In a bench trial, the district court had found a first patent directed to a system for using rotigotine infringed under the doctrine of equivalents, and had rejected defendants’ obviousness and anticipation challenges. The district court had found a second patent directed to a polymorph of rotigotine invalid under 35 U.S.C. section 102(a) as being “known or used by others” in the United States before the date of invention. The Federal Circuit affirmed on all counts. Addressing the system patent first, the Federal Circuit upheld the district court’s rejections of defendants’ various arguments against infringement under the doctrine of equivalents, including prosecution history estoppel, intentional narrow claiming, vitiation, and ensnarement. Moving to alleged invalidity, the Federal Circuit found the district court had correctly rejected defendants’ lack of motivation to combine and reasonable expectation of success arguments in support of obviousness, and that anticipation was absent due to a missing claim limitation. Turning to the polymorph patent, the Federal Circuit affirmed the district court’s holding that use of the claimed polymorph by a single patient prior to the invention date was sufficient to invalidate the asserted patent on anticipation grounds.

The opinion can be found here.

Written by: Scott D. Eads and Nika Aldrich, Schwabe Williamson & Wyatt

Contributors: Jason Wrubleski and Erin Forbes