Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
SnapRays v. Lighting Defense Group, Appeal No. 2023-1184
(Fed. Cir. May 2, 2024)
Our Case of the Week deals with an issue the Court has not addressed recently: the question of declaratory judgment jurisdiction. Specifically, the Court considered whether a patent owner that employs Amazon.com’s Amazon Patent Evaluation Express (APEX) program confers personal jurisdiction in the state where the defendant is based. This case may reshape the landscape on personal jurisdiction in patent disputes going forward.
Lighting Defense Group (LDG) is a Delaware LLC and has its principal place of business in Arizona. It owns a patent directed to electrical equipment. SnapRays (aka SnapPower) is based in Utah, and it designs, markets, and sells products out of Utah. SnapPower sells its products on Amazon.com.
ALSO THIS WEEK
IOENGINE, LLC v. Ingenico Inc., Appeal Nos. 2021-1227, -1331, and -1332 (Fed. Cir. May 3, 2024)
In a precedential decision, the Federal Circuit reversed-in-part and affirmed-in-part a series of related inter partes review decisions from the Patent Trial and Appeals Board. The IPRs were related to U.S. Patent Nos. 8,539,047, 9,059,969, and 9,774,703. The patents generally relate to a Tunneling Client Access Point (TCAP), which is described as a portable device configured to plug into another computing device (e.g., a desktop or laptop computer). The primary issues discussed in the opinion related to the Board’s obviousness and anticipation determinations, waiver of a claim construction argument, and the printed matter doctrine.
Packet Intelligence LLC v. NetScout Systems, Inc. et al., Appeal No. 2022-2064 (Fed. Cir. May 2, 2024)
Also this week, the Federal Circuit wiped out a pending $3.35 million damages award for infringement of NetScout’s computer networking patents after the claims were affirmed to be invalid in third-party inter partes reviews. The decision reinforced a bright-line rule that in order for a judgment to be sufficiently “final” and thereby immunized from the collateral effects of intervening validity determinations, “the litigation must be entirely concluded so that the cause of action against the infringer was merged into a final judgment [that] leaves nothing for the court to do but execute the judgment.”
Intellectual Tech LLC v. Zebra Technologies Corporation, Appeal No. 2022-2207 (Fed. Cir. May 1, 2024)
In addition to the foregoing decisions, the Federal Circuit reversed the Western District of Texas, holding that a patent owner still had standing to enforce its patent even when a secured party had an option to exercise rights under the same patent.
In 2017, Intellectual Tech LLC was joined to a loan agreement between Intellectual Tech’s parent company and lender Main Street Capital Corporation, and entered into a security agreement with Main Street, which granted Main Street a security interest in Intellectual Tech’s U.S. Patent No. 7,233,247. Under the security agreement, if Intellectual Tech defaulted, Main Street could license, sell, assign, transfer, pledge, and enforce the ’247 patent. In 2018, Intellectual Tech defaulted. In 2019, Intellectual Tech asserted the ’247 patent against Zebra Technologies Corporation. Zebra moved, and the district court granted, to dismiss Intellectual Tech’s claims for lack of constitutional standing. There was no evidence that Main Street had exercised any of its rights with respect to the ’247 patent after the 2018 default, but according to the district court, Main Street’s mere option to exercise rights with respect to the patent had deprived Intellectual Tech of all its exclusionary rights under the patent, which meant that Intellectual Tech could not satisfy the injury-in-fact standing requirement.
Editors:
Nika Aldrich, IP Litigation Group Leader, Schwabe, Williamson & Wyatt, P.C.
Jason A. Wrubleski, Shareholder
Contributors:
Tyler Hall, Shareholder
Mike Moore, Of Counsel