Fresh From the Bench: Latest Federal Circuit Court Cases
CASE OF THE WEEK
Samsung Electronics America, Inc. v. Prisua Engineering Corp., Appeal No. 2019-1169, -1260 (Fed. Cir. Feb. 4, 2020)
Our case of the week concerns issues particular to inter partes review proceedings and, specifically, how seemingly indefinite claim terms should be handled by the PTAB in an IPR.
Samsung filed an IPR concerning a patent directed to video streaming. Prior to the Supreme Court’s decision in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), the PTAB instituted review of claim 11, but declined to institute review as to claims 1-4 and 8 because it found those claims to be indefinite. The indefiniteness issue arose for two different reasons. First, the panel held that the term “digital processing unit” in claim 1 was a means plus function claim subject to 35 U.S.C. § 112 ¶ 6, but without corresponding structure. Second, the PTAB found that the claims were indefinite under IPXL Holdings, LLC v. Amazon.com, Inc., 430 f .3d 1377, 1384 (Fed. Cir. 2005). IPXL concerned claims that were ambiguous as to whether they covered a system or a method, and in that case the court held that they were indefinite because a member of the public would not know what acts constituted infringement. The PTAB held that the claims in the patent at issue here suffered the same problem—the claims appeared to cover both a device and a method of using the device within the same claim, leading to ambiguity.
Apple Inc. v. Andrea Elecs. Corp., Appeal Nos. 2018-2382, et al. (Fed. Cir. Feb. 7, 2020)
In this appeal from two IPR proceedings brought by Apple against a single patent, the PTAB concluded that all but four claims were invalid. With respect to those four claims, the PTAB refused to consider arguments raised by Apple in its reply brief, holding that its introduction of those arguments into the case was untimely. The Federal Circuit reversed, holding that Apple’s reply arguments, supported by a reply expert declaration, were in rebuttal to arguments raised by Andrea in its response brief. Andrea was given an opportunity to depose Apple’s witness a second time after the reply declaration was submitted. Andrea did not move to strike, nor did it move for a sur-reply. The Federal Circuit held that the Board abused its discretion in refusing to consider the new arguments. The Federal Circuit advanced the following test for resolving the appropriateness of reply evidence: “whether the petitioner’s reply brief is responsive to arguments originally raised in its petition; or whether the reply arguments are responsive to arguments raised in the patent owner’s response brief.” The Court found that both tests were met. The Court remanded for further consideration of Apple’s reply arguments, and otherwise affirmed its holding of unpatentability with respect to the remaining claims.
Cheetah Omni LLC v. AT&T Services, Inc., Appeal No. 2019-1264 (Fed. Cir. Feb. 6, 2020)
In this case, the Federal Circuit affirmed the summary judgment ruling of a district court that the plaintiff’s infringement suit was barred by a prior settlement and license agreement with an intervening defendant. At issue was whether the patent in suit, a continuation of a continuation of the parent of the previously-asserted patent, was covered by the license. The common parent was expressly licensed under the terms of the agreement. Relying on precedents holding that an express license to a patent presumably includes an implied license to its continuations, absent a clear indication of mutual intent to the contrary, the Federal Circuit found that the patent-in-suit was included in the previous license, barring the infringement suit. In so finding, the Federal Circuit rejected patentee’s argument that the precedents applied only to continuations issued after a license agreement is signed, holding that the timing of patent issuance is not material to the policy rationale underpinning the implied license presumption.
In this appeal from the United States District Court for the Northern District of Florida, the Federal Circuit addresses issues relating to admissibility of lay opinion testimony on obviousness. Specifically, the Court held that opinion testimony on obviousness, given at trial from an unqualified witness and which was not provided in the defendant’s mandatory pre-trial expert disclosures, was inadmissible. Such testimony goes to the “central legal and technical question at trial,” and allowing the jury to hear it at trial was not harmless because there was no way to know whether the improper testimony provided some or all of the basis for the jury’s decision.