CAFC Patent Cases - September 2021 #3

Precedential Federal Circuit Opinions

1. IN RE: JUNIPER NETWORKS, INC. [OPINION]  (2021-160, September 2, 2021) (Lourie, Bryson, and Taranto) 

   Per curiam.  Issuing writ of mandamus directing the United States District Court for the Western District of Texas to transfer the case to the United States District Court for the Northern District of California.  This case was a “very close cousin” of the recent decisions in Samsung and Hulu, and the disposition of this case was largely dictated by the disposition of those cases. In those cases, as in this one, the center of gravity of the action was clearly in the transferee districts, not the Western District of Texas.  And, as in those cases, several of the most important factors bearing on the transfer decision in this case strongly favored the transferee court, and no factor favored retaining the case in the transferor court.

2. SRI INTERNATIONAL, INC. v. CISCO SYSTEMS, INC. [OPINION]  (2020-1685, 2020-1704, September 28, 2021) (Lourie, O’Malley, and Stoll)

   Stoll, J.  Reversing the district court’s denial of Plaintiff’s motion to reinstate the willfulness verdict, restoring the award of enhanced damages, and affirming the award of attorney fees.  To eliminate any confusion created by the “wanton, malicious, and bad-faith” language in Halo, the Court clarified that it had not intended to create a heightened requirement for willful infringement.  That sentence from Halo refers to “conduct warranting enhanced damages,” not conduct warranting a finding of willfulness.  Under Halo, the concept of “willfulness” requires a jury to find no more than deliberate or intentional infringement.  In this case, substantial evidence supported the jury’s finding of willful infringement after the date that Defendant had notice of the patent.  There was no clear error or abuse of discretion in the district court’s decision to enhance damages or award attorney’s fees in light of the district court’s findings.

3. IN RE: VIVINT, INC. [OPINION]  (2020-1992, September 29, 2021) (Moore, Chief Judge, Schall and O’Malley)

   MOORE, Chief Judge.  Vacating and remanding with instructions for the Patent Office to dismiss the ex parte reexamination.  While the ex parte reexamination in this case was based on substantial new questions of patentability, the Patent Office abused its discretion and acted arbitrarily and capriciously under § 325(d).  A question of patentability is “new” until it has been considered and decided on the merits.  Because the Patent Office has discretion to deny arguments that have been previously presented to it, more is required for a question of patentability to no longer be new; the Patent Office must have considered and decided that question on the merits.  The ex parte reexamination request raised four questions of patentability, and each of those questions was “new” within the meaning of § 303(a) because, In each case, the Patent Office had never considered the relevant question of patentability on the merits. Turning to the § 325(d) arguments, the Court rejected the government’s argument that § 325(d) decisions are unreviewable in this context.  In denying Patent Owner’s § 1.181 petitions, the Patent Office relied primarily on its alleged lack of authority to terminate an ex parte reexamination.  The Court disagreed with the Patent Office and held that the Patent Office does have the authority to reconsider its decision ordering ex parte reexamination based on § 325(d).  And, in this case, it would be arbitrary and capricious for the Patent Office to do anything on remand other than terminate the reexamination because the Patent Office, when applying § 325(d), cannot deny institution of IPR based on abusive filing practices then grant a nearly identical reexamination request that is even more abusive.

4. IN RE: SURGISIL, L.L.P., PETER RAPHAEL, SCOTT HARRIS [OPINION]  (2020-1940, October 4, 2021) (Moore, Chief Judge, Newman and O’Malley)

   MOORE, Chief Judge.  Reversing decision of the Patent Trial and Appeal Board rejecting a design patent application.  The Board erred in holding that the claimed design is not limited to the particular article of manufacture identified in the claim.  A design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract.  Here, the claim identifies a lip implant, the claim language recites “a lip implant,” and the Board found that the application’s figure depicts a lip implant.  As such, the claim is limited to lip implants and does not cover other articles of manufacture.

5. ACCELERATION BAY LLC v. 2K SPORTS, INC., ROCKSTAR GAMES, INC., TAKETWO INTERACTIVE SOFTWARE, INC. [OPINION]  (2020-1700, October 4, 2021) (Moore, Chief Judge, Reyna, and Hughes)

   Reyna, J.  Affirming the district court’s claim construction and summary judgment rulings.  With respect to two of the asserted patents, the appeal was moot because appellant only challenged one of multiple independent grounds that formed the basis for the district court’s summary judgment ruling.  As in Nasatka, the Court rejected the appellant’s argument that the appeal was not moot because a favorable ruling would impact the parties’ positions on the appellee’s then-pending motion for attorney fees under 35 U.S.C. § 285.  Nor does an impact on other cases between appellant and third parties confer jurisdiction.  The Court also affirmed summary judgment with respect to a third patent-at-issue because the summary judgment ruling would remain intact regardless of how the challenged claim limitation were interpreted; the district court interpreted a separate term in the asserted claims to include the challenged limitation and appellant did not appeal the district court’s rulings with respect to that separate term.  With respect to the remaining patent at issue, the Court found that the “final assembler” theory of direct infringement was unavailable because appellant does not contend that appellee makes hardware and installs it onto an existing network to complete the claimed system, but instead proffers a novel theory that the appellees are liable for “making” the claimed hardware components, even though they are in fact made by third parties, because their accused software runs on them.

6. COSMOKEY SOLUTIONS GMBH & CO. KG v. DUO SECURITY LLC, FKA DUO SECURITY, INC. [OPINION]  (2020-2043, October 4, 2021) (O’Malley, Reyna, and Stoll)

   Stoll, J.  Reversing decision of the district court granting judgment on the pleadings that the asserted patent claims were ineligible under 35 U.S.C. § 101.  The claims were patent-eligible under Alice step two because they recite a specific improvement to a particular computer-implemented authentication technique.  The claim limitations recited an improved method for overcoming hacking by ensuring that the authentication function is normally inactive, activating only for a transaction, communicating the activation within a certain time window, and thereafter ensuring that the authentication function is automatically deactivated. The specification explained that these features in combination with the other elements of the claim constitute an improvement that increases computer and network security, prevents a third party from fraudulently identifying itself as the user, and is easy to implement and can be carried out even with mobile devices of low complexity.  Such an improvement in computer or network security can constitute a non-abstract computer-functionality improvement if done by a specific technique that departs from earlier approaches to solve a specific computer problem.