A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Google LLC v. IPA Technologies Inc., Nos. 2021-1179, -1180, -1185 (Fed. Cir. (PTAB) May 19, 2022). Opinion by Dyk, joined by Schall and Taranto.
Google filed three IPR petitions challenging the patentability of various claims, with each ground of unpatentability relying on the “Martin” reference. Google contended that the Martin reference was prior art as work “by others” because it described the work of an inventive entity (Martin, Cheyer, and Moran) different from the inventive entity of the challenged patents (only Martin and Cheyer). The Patent Trial and Appeal Board disagreed, finding that Google failed to establish that the Martin reference was prior art because Google did not show how Moran's contribution was sufficient to establish he was an inventive entity for the reference. Google appealed.
The Federal Circuit vacated and remanded, ruling that the Board “failed to resolve fundamental testimonial conflicts in concluding that the relied-upon reference was not prior art.”
The Federal Circuit explained that to be a joint inventor of the Martin reference, Moran “must have made an inventive contribution to the portions of the reference relied on and relevant to establishing obviousness.” The testimony provided by Moran conflicted with testimony by Cheyer and Martin, and the Federal Circuit observed that Moran's testimony “might well establish” that he was a co-inventor of those portions. “However, the Board did not complete the full … analysis.” Instead, the Board found the testimony of all three witnesses to be credible, which the Federal Circuit ruled “was not a tenable position for the Board to take.” “The Board was required to resolve this highly relevant evidentiary conflict and make appropriate findings of fact.” Thus, the Federal Circuit remanded.
Kaufman v. Microsoft Corp., Nos. 2021-1634, -1691 (Fed. Cir. (SDNY) May 20, 2022). Opinion by Taranto, joined by Dyk and Reyna.
Kaufman sued Microsoft for infringement of a patent directed to methods for using a computer to automatically generate an end-user interface for working with data in a relational database. A jury found Microsoft liable and awarded damages of $7 million to Kaufman. The district court upheld the verdict over Microsoft's post-judgment challenges, including Microsoft's assertion that the court failed to resolve claim construction disputes regarding the meaning of the claim terms “automatically generated” and “and.” The district court also denied Kaufman's request for prejudgment interest. Both parties appealed.
The Federal Circuit ruled that Microsoft failed to preserve its claim construction challenge regarding “automatically generated” because it failed to raise the issue in connection with the jury instructions, did not request a construction of the term in the original Markman proceedings, and did not sufficiently raise the issue at the pre-trial hearing. The Federal Circuit also rejected Microsoft's proposed construction (which required “automatically generated” to have additional steps beyond those recited in the claims as being “automatic”) because the proposal was undermined by Microsoft's own analysis of the claims and the accused product. Finally, the Federal Circuit rejected Microsoft's argument that, even under an improper interpretation of “automatically generated,” the jury had insufficient evidence to find infringement.
The Federal Circuit also rejected Microsoft's argument as to the construction of “and.” The court upheld the district court's construction that, in light of the specification, the term “and” means “and/or.” Thus, the Federal Circuit determined that the jury was able to correctly find infringement of the “and” limitation as construed by the court.
With respect to Kaufman's appeal, the Federal Circuit found that the jury verdict did not reasonably include interest as the district court had assumed. Second, the Federal Circuit ruled that there was no evidence of prejudice or undue delay in bringing suit against Microsoft. Thus, the district court abused its discretion in denying prejudgment interest.
Mitek Systems, Inc. v. United Services Automobile Association, No. 2021-1989 (Fed. Cir. (E.D. Tex.) May 20, 2022). Opinion by Taranto, joined by Dyk and Cunningham.
Mitek filed a complaint in California against USAA seeking a declaratory judgment that Mitek and its customers have not infringed four patents relating to use of a mobile device to capture an image of a bank check and to transmit it for deposit. USAA filed a motion seeking dismissal for lack of a case or controversy under Article III and, moreover, asking the court to exercise its discretion not to hear the case. In the alternative, USAA requested transfer to the Eastern District of Texas.
The California district court transferred the case to Texas without addressing the dismissal issues. The Texas district court then dismissed the case for lack of a case or controversy and also stated that, even if jurisdiction existed, it would exercise its discretion to decline to entertain the declaratory-judgment action. Mitek appealed.
On appeal, the Federal Circuit vacated the dismissal and remanded for further proceedings. The Federal Circuit issued its remand to the Texas court because it affirmed the California court's transfer order.
Regarding dismissal, the Federal Circuit explained that the parties debated the case-or-controversy issue at too high a level of generality. The court concluded that the jurisdictional issues “require finer parsing of the issues and more particularized determinations than we have before us, both from the parties and from the district court.” The Federal Circuit thus held that “further proceedings are needed in order for the case-or-controversy determination to be made and that, subject to forfeiture determinations we leave initially to the district court, the proceedings should include additional fact-finding proceedings.” The Federal Circuit also remanded as to the issue of discretion-based dismissal.
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