Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
Parkervision, Inc. v. Qualcomm Inc., Appeal Nos. 2022-1755, 2024-2221 (Fed. Cir. Sept. 6, 2024)
In this week’s Case of the Week, the Federal Circuit weighed in again on a 13-year-old patent dispute concerning Qualcomm’s alleged infringement of signal processing patents owned by ParkerVision. Among other things, the panel addressed questions of collateral estoppel that arose from prior proceedings between the parties on similar patents, as well as from co-pending inter partes review (“IPR”) proceedings. The Court held that subsidiary findings by the Patent Trial and Appeal Board in an inter partes review cannot collaterally estop a patentee from making contrary validity arguments on related claims in district court litigation. The Court also provided guidance on applying collateral estoppel to questions of infringement where the defendant had previously been found not to infringe claims similar to those asserted. It ultimately vacated the district court’s summary judgment of non-infringement and remanded for further proceedings.
ALSO THIS WEEK
Osseo Imaging, LLC v. Planmeca USA Inc., Appeal No. 2023-1627 (Fed. Cir. Sept. 4, 2024)
In this precedential opinion, the Federal Circuit addressed whether expert witnesses must have acquired skill in the relevant art at the time of invention to qualify as a “person of ordinary skill in the art.” The case concerned 3D imaging systems produced by the appellant, Planmeca, which the jury found had infringed patents for orthopedic imaging systems owned by the appellee, Osseo. The district court denied Planmeca’s motions for judgment as a matter of law as to invalidity and noninfringement, and rejected Planmeca’s argument that Osseo’s expert testimony should be disregarded because the expert had not acquired the requisite experience until 8 to 10 years after the alleged date of invention. The Federal Circuit affirmed the district court’s denial of judgment as a matter of law, and declined to add Planmeca’s proposed timing requirement, explaining that case law only requires an expert at a minimum to possess ordinary skill in the art. The Court also found that substantial evidence supported the jury’s verdict.
The full opinion can be found here.
Broadband ITV, Inc. v. Amazon.com, Inc., Appeal No. 2023-1107 (Fed Cir. Sept. 3, 2024)
In this appeal from the United States District Court for the Western District of Texas, the Federal Circuit affirmed the district court’s finding that Broadband iTV’s five patents at issue—generally related to electronic programming guides for televisions—were directed to an abstract idea, and that the patents failed to provide an inventive step that would transform the abstract idea into a patent-eligible invention. The Federal Circuit reviewed the district court’s 35 U.S.C. § 101 analysis, which followed the two-step test set forth by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. 208 (2014), and found no error. Notably, this was the second time the Federal Circuit has held that certain Broadband iTV’s patents relating to electronic programming guides for televisions were directed to patent-ineligible subject matter.
The full opinion can be found here.
Editors:
Nika Aldrich, IP Litigation Group Leader, Schwabe
Jason A. Wrubleski, Shareholder
Contriubtors:
Mario E. Delegato, Associate
Brittani Gambrell, Associate