Fresh From the Bench: Latest Precedential Patent Cases
CASE OF THE WEEK
Telefonaktiebolaget LM Ericsson, Ericsson AB, Ericsson, Inc. v. Lenovo (United States), Inc. et. al., Appeal No. 2024-1515 (Fed. Cir. Oct. 24, 2024)
In our Case of the Week, the Federal Circuit clarified that, for an issue in a domestic suit to be “dispositive” under the Microsoft framework in foreign antisuit injunction proceedings, it only needs to potentially resolve whether the injunction is appropriate, and does not need to necessarily resolve the entire dispute.
Ericsson and Lenovo are engaged in multi-jurisdictional disputes regarding standard essential patents (“SEPs”) owned by each party. They are both members of the European Telecommunications Standards Institute, whose intellectual property rights policy requires members to license their SEPs on fair, reasonable, and non-discriminatory (“FRAND”) terms. Ericsson and Lenovo have been negotiating for years over a global cross-license of their SEPs.
ALSO THIS WEEK
NexStep, Inc. v. Comcast Cable Comms., LLC, Appeal Nos. 2022-1815, -2005, -2113 (Fed. Cir. Oct. 24, 2024)
In this case, a split panel of the Federal Circuit affirmed final judgment of non-infringement as to NexStep’s U.S. Patent Nos. 8,885,802 and 8,280,009, which NexStep alleged had been infringed by voice-activated remotes and support services, respectively, offered by appellant Comcast. Among other things, the decision emphasized the importance of clear expert testimony in showing infringement under the doctrine of equivalents (DOE).
Here, the panel majority found that NexStep’s proffered equivalents testimony on the ’009 patent was too vague and unstructured to support the jury’s finding of DOE infringement; for example, it appeared directed more to similarities between the accused and claimed processes as a whole than to the required showing of equivalence on an element-by-element basis. The panel reaffirmed that “from handbells to complex electronics, particularized testimony and linking argument is always required” to properly constrain application of the doctrine, and to prevent juries from eroding the important public notice function of a patent’s actual claim language. As to the ’802 patent, the Federal Circuit affirmed the district court’s construction of “VoIP” in the claims as specifically requiring two-way audio communications. It affirmed the district court’s grant of summary judgment of non-infringement on that basis.
Judge Reyna concurred as to the ’802 patent but dissented with regard to the ’009 patent. He criticized the majority for adopting what he characterized as a “new rule” that expert testimony was always required to show infringement under the doctrine of equivalents. The judge explained that taken as a whole, he believed NexStep’s expert had provided the jury with sufficient evidence on which to base a conclusion of DOE infringement.
The opinion can be found here.
Editors:
Nika Aldrich, IP Litigation Group Leader, Schwabe
Jason A. Wrubleski, Shareholder
Contributor:
Tyler Hall, Shareholder