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| November 12, 2021 to November 18, 2021 |
| Patent Appeals Report |
| Global Apple/Qualcomm Settlement Agreement Defeats Apple's Standing to Seek Federal Circuit Review of PTAB Final Written Decisions |
| In a precedential opinion, the Federal Circuit dismissed petitioner's appeals from several final written decisions for lack of Article III standing after the parties executed a global settlement agreement. "[Petitioner] raises a 'nuance' that it says [Apple Inc. v. Qualcomm Inc., 992 F.3d 1378 (Fed. Cir. 2021) ('Apple I')] didn't 'specifically address.' In its view, Apple I 'did not explain why the threat of liability, if [Petitioner] ceases the ongoing payment and the agreement is terminated, is not a sufficient injury to support standing.' But we're unconvinced that this 'nuance' allows us to turn back the clock on Apple I. 'Panel opinions are, of course, opinions of the court and may only be changed by the court sitting en banc.' As a panel, we're bound by stare decisis. We can't defy Apple I by dealing differently with its double. And as [Petitioner] acknowledges, this 'nuance' was at the heart of its denied en banc petition in Apple I. Per Apple I, therefore, we dismiss for lack of standing." |
| Apple Inc. v. Qualcomm Incorporated, 20-1683 (CAFC 2020-04-10) (Hon. Sharon Prost) |
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| Decisions on Petitions for Writs of Mandamus |
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| patents at issue |
| 8768865 - Learning situations via pattern matching |
| PTAB Determination: Not unpatentable |
| CAFC Ruling:
Dismissed |
| 8971861 - Relevant content delivery |
| PTAB Determination: Not unpatentable |
| CAFC Ruling:
Dismissed |
| 9024418 - Local interconnect structures for high density |
| PTAB Determination: Not unpatentable |
| CAFC Ruling:
Dismissed |
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| Judge Aaron W. Moore Decisions being appealed |
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| Judge Amanda F. Wieker Decisions being appealed |
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| Judge Daniel N Fishman Decisions being appealed |
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| Challenged Construed Terms |
| 8971861 - a plurality of predefined content |
| PTAB
Definition: multiple content items that exist prior to receiving the physiological state data |
| CAFC Ruling:
Dismissed |
| 8768865 - condition |
| PTAB
Definition: at least broad enough to encompass each of the exemplary above-identified examples (i.e., sensor-tracked parameters indicative of user-related events or conditions (e.g., walking, driving, fidgeting, etc.)) disclosed in the '865 patent-including, for example, walking and driving |
| CAFC Ruling:
Dismissed |
| 9024418 - configured to |
| PTAB
Definition: the structure is designed or constructed to accomplish the specified objective; does not agree that this interpretation distinguishes the claims over Rashed |
| CAFC Ruling:
Dismissed |
| VIEW 17 MORE CONSTRUED TERMS |
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| CAFC Precedential Opinion |
| Judge(s): en banc, Sharon Prost, Kara Farnandez Stoll, Evan J. Wallach, Pauline Newman |
| Legal Concepts: |
| Standing |
| In a precedential opinion, the Federal Circuit dismissed petitioner's appeals from several final written decisions for lack of Article III standing after the parties executed a global settlement agreement. "[Petitioner] raises a 'nuance' that it says [Apple Inc. v. Qualcomm Inc., 992 F.3d 1378 (Fed. Cir. 2021) ('Apple I')] didn't 'specifically address.' In its view, Apple I 'did not explain why the threat of liability, if [Petitioner] ceases the ongoing payment and the agreement is terminated, is not a sufficient injury to support standing.' But we're unconvinced that this 'nuance' allows us to turn back the clock on Apple I. 'Panel opinions are, of course, opinions of the court and may only be changed by the court sitting en banc.' As a panel, we're bound by stare decisis. We can't defy Apple I by dealing differently with its double. And as [Petitioner] acknowledges, this 'nuance' was at the heart of its denied en banc petition in Apple I. Per Apple I, therefore, we dismiss for lack of standing." |
| Legal Concepts: |
| Standing |
| In a precedential opinion, the Federal Circuit dismissed petitioner's appeals for lack of Article III standing and declined petitioner's request to vacate the underlying final written decisions. "Because [Petitioner's] injury disappeared before it invoked our jurisdiction, [Petitioner's] problem is lack of standing at the outset of the appeal, not mootness. As [Petitioner] recognizes, 'Munsingwear-type vacatur arises where a case has become moot while the case is on appeal.' . . . And even if this could be framed as mootness, vacatur would still be inappropriate because the jurisdiction-destroying event is a settlement [Petitioner] voluntarily entered." |
| CAFC Dissenting Opinion |
| Pauline Newman |
| Legal Concepts: |
| Subject Matter Jurisdiction |
| In a dissenting opinion, one judge wrote separately to find that the court did not lack jurisdiction to hear the appeal from the licensee petitioner's appeals from several final written decisions. "On extensive precedent, it is apparent that a patent licensee has standing to challenge validity of the patents to which it is licensed, including challenge in federal court on appeal from PTO decisions. . . . The only area in which standing to appeal has occasionally been rejected are cases in which the challenger has no direct or economic interest in the outcome of the appeal. . . . the filing of infringement suits by [Patent Owner], and the temporary license taken by [Petitioner], support [Petitioner's] standing to pursue these appeals, reinforced where, as here 'Congress has accorded a procedural right to a litigant, such as a right to appeal an administrative decision.'" |
| Legal Concepts: |
| PTAB Petitioner Estoppel Following PGR/CBM (35 USC § 325(e)) |
| In a dissenting opinion, one judge wrote separately to find that the court did not lack jurisdiction to hear the appeal from the licensee petitioner's appeals from several final written decisions. "[Petitioner] was sued for infringement, leading to this six-year license. This unresolved controversy of itself suffices to establish standing to challenge validity of the licensed patents, for [Petitioner's] 'risk of liability is not "conjectural" or "hypothetical."' The estoppel provision of itself provides [Petitioner] with standing to appeal the PTAB decisions, and provides this court with jurisdiction to receive the appeals. Constitutional considerations were recognized in the America Invents Act, and are reflected in the provisions for judicial review. In addition, there is a 'strong presumption that Congress intends judicial review of administrative action.'" |
| Legal Concepts: |
| PTAB Vacating Final Written Decision |
| In a dissenting opinion, one judge wrote separately to find that the Federal Circuit should vacate the underlying final written decisions if it lacked constitutional jurisdiction. "The panel majority proposes that [Petitioner] 'forfeited' the right to appeal to the Federal Circuit and forfeited access to vacatur of the PTAB decision. The record contains no action or inaction by [Petitioner] suggestive of forfeiture. To the contrary, these four cases are [Petitioner's] statutory appeals from the PTAB decisions, and Munsingwear instructs that parties should not be 'forced to acquiesce in a judgment that they can no longer challenge on the merits.' [Petitioner] duly filed these appeals of the PTAB's decisions. If the appeals are now deemed barred, the PTAB decisions are appropriately vacated." |
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| patents at issue |
| 7188659 - Injection-molded plastic guide rail |
| MIED Determination: Invalid |
| CAFC Ruling:
Affirmed (Summarily) |
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| Judge Terrence G. Berg Decisions being appealed |
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| Challenged Construed Terms |
| 7188659 - groove |
| MIED
Definition: a long, narrow cut,
channel or depression in a material, but not through the material |
| CAFC Ruling:
Affirmed (Summarily) |
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| CAFC Rule 36 Judgment of Affirmance |
| Judge(s): per curiam, Alan D. Lourie, Jimmie V. Reyna, Richard G. Taranto |
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| patents at issue |
| 8515825 - Methods of expanding commercial opportunities for internet websites through coordinated offsite marketing |
| PTAB Determination: Unpatentable/Cancelled |
| CAFC Ruling:
Affirmed (Summarily) |
| 9043228 - Specially programmed computer server serving pages offering commercial opportunities for merchants through coordinated offsite marketing |
| PTAB Determination: Unpatentable/Cancelled |
| CAFC Ruling:
Affirmed (Summarily) |
| 9639876 - Method and computer system for serving commerce information of an outsource provider in connection with host web pages offering commercial opportunities |
| PTAB Determination: Unpatentable/Cancelled |
| CAFC Ruling:
Affirmed (Summarily) |
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| Judge Patrick M. Boucher Decisions being appealed |
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| Challenged Construed Terms |
| 8515825 - commerce object |
| PTAB
Definition: a product (goods or services), a product category, a catalog, or an indication that product (goods or services), product category, or catalog should be chosen dynamically |
| CAFC Ruling:
Affirmed (Summarily) |
| 8515825 - commission |
| PTAB
Definition: money paid to a party by or on behalf of a third-party seller for facilitating the seller’s sales of products |
| CAFC Ruling:
Affirmed (Summarily) |
| 9043228 - host |
| PTAB
Definition: an operator of a website that engages in Internet commerce by incorporating one or more links to an e-commerce outsource provider into its web content |
| CAFC Ruling:
Affirmed (Summarily) |
| VIEW 10 MORE CONSTRUED TERMS |
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| CAFC Rule 36 Judgment of Affirmance |
| Judge(s): per curiam, Alan D. Lourie, Timothy B. Dyk, Kara Farnandez Stoll |
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| patents at issue |
| 8078436 - Aerial roof estimation systems and methods |
| NJD Determination: Not invalid |
| CAFC Ruling:
Appeal Voluntarily Dismissed |
| 8170840 - Pitch determination systems and methods for aerial roof estimation |
| NJD Determination: Not invalid |
| CAFC Ruling:
Appeal Voluntarily Dismissed |
| 8818770 - Pitch determination systems and methods for aerial roof estimation |
| NJD Determination: Not invalid |
| CAFC Ruling:
Appeal Voluntarily Dismissed |
| 8825454 - Concurrent display systems and methods for aerial roof estimation |
| NJD Determination: Not invalid |
| CAFC Ruling:
Appeal Voluntarily Dismissed |
| 9129376 - Pitch determination systems and methods for aerial roof estimation |
| NJD Determination: Not invalid |
| CAFC Ruling:
Appeal Voluntarily Dismissed |
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| Judge Renee Marie Bumb Decisions being appealed |
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| Motion by a Party -- Motion for Enhanced Damages (35 USC § 284) |
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| CAFC Ruling:
Appeal Voluntarily Dismissed |
| Legal Concepts: |
| Enhanced Damages Granted |
| Closeness of Case |
| Concealment |
| Copying |
| Duration of Infringement |
| Litigation Misconduct |
| Motivation to Harm |
| No Good Faith Belief/Objectively Baseless |
| Remedial Action |
| Deterrance |
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| Stipulated/Agreed -- CAFC Motion to Dismiss – Voluntary Dismissal (FRAP 42(b)) |
| Judge(s): per curiam, Raymond C. Clevenger, III, Richard G. Taranto, Raymond T. Chen |
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| patents at issue |
| 7848439 - Communication apparatus, communication system, and communication method |
| PTAB Determination: Not unpatentable |
| CAFC Ruling:
Affirmed (Summarily) |
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| Judge Barbara A. Benoit Decisions being appealed |
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| CAFC Rule 36 Judgment of Affirmance |
| Judge(s): per curiam, Richard G. Taranto, Raymond T. Chen, Pauline Newman |
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| Judge Alan D. Albright Decisions being appealed |
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| CAFC Order on Petition for Writ of Mandamus |
| Judge(s): per curiam, Sharon Prost, Timothy B. Dyk, Todd M. Hughes |
| Legal Concepts: |
| Private Interest Factors (Venue) |
| The Federal Circuit granted defendant's petition for a writ of mandamus directing the district court to transfer venue from the Western District of Texas to the Northern District of California because the district court clearly erred in its analysis of the § 1404 private interest factors. "[Defendant's] sworn declaration and deposition testimony make clear that essentially all of its source code and documentary evidence relevant to this action are maintained in the Northern District of California. . . . [T]he district court should have weighed the compulsory process factor in favor of transfer. . . . The district court erroneously discounted [certain] third parties when it faulted [Defendant] for not identifying any specific employees of those entities. . . . [T]he district court should have weighed the relative convenience of the two competing forums for potential witnesses strongly in favor of transfer. . . . Notwithstanding [our] precedent, the district court gave no weight to the relative convenience of the transferee forum for the potential witnesses. . . . [T]he district court erred in weighing the practical problems factor strongly against transfer. . . . [Plaintiff's] separate actions are therefore likely to result in 'significantly different discovery, evidence, proceedings, and trial.'" |
| Legal Concepts: |
| Public Interest Factors (Venue) |
| The Federal Circuit granted defendant's petition for a writ of mandamus directing the district court to transfer venue from the Western District of Texas to the Northern District of California because the district court clearly erred in its analysis of the § 1404 public interest factors. [T]he district court erred in weighing the court congestion factor heavily against transfer. . . . The district court did not explain how any difference in the prospective time-to-trial was caused by an appreciable difference in the degree of docket congestion between the two forums. . . . [T]he district court should have weighed the local interest factor strongly in favor of transfer. . . . Because only the Northern District of California has significant connections to the events that gave rise to this suit, the local interest factor weighs strongly in favor of transfer." |
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| Judge Alan D. Albright Decisions being appealed |
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| CAFC Order on Petition for Writ of Mandamus |
| Judge(s): per curiam, Sharon Prost, Timothy B. Dyk, Todd M. Hughes |
| Legal Concepts: |
Private Interest Factors (Venue)
Public Interest Factors (Venue) |
| The Federal Circuit granted defendant's petition for a writ of mandamus directing the transfer of venue from the Western District of Texas to the Northern District of California because the district court clearly abused its discretion in its § 1404 analysis. "Because several relevant nonparty witnesses are located in the Northern District of California, none are located in the Western District of Texas, and some are unwilling to travel to the Western District of Texas, the district court erred in finding this factor neutral. . . . [T]he district court failed to give weight to the comparative convenience of the Northern District of California for potential willing witnesses. . . . [T]he court concluded that [Defendant] employees in Austin have at least the same knowledge as its employees in Northern California. But that conclusion relied on a considerable amount of conjecture . . . . [T]he district court erred in its analysis of the local interest factor. . . . [T]he court erroneously found that '[one accused product] was significantly developed in the Western District of Texas.' . . . [A]ny judicial economy considerations in having one trial judge handle lawsuits involving the same patents and technology do favor the Northern District of California. . . . [T]he time to trial statistics provided in this case, unsupported by additional facts such as the number of cases per judge and the speed and availability of other case dispositions, cannot alone weigh 'heavily against transfer.'" |
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| Judge Alan D. Albright Decisions being appealed |
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| CAFC Order on Petition for Writ of Mandamus |
| Judge(s): per curiam, Sharon Prost, Timothy B. Dyk, Todd M. Hughes |
| Legal Concepts: |
Private Interest Factors (Venue)
Public Interest Factors (Venue) |
| The Federal Circuit granted defendant's petition for a writ of mandamus directing the transfer of venue from the Western District of Texas to the Northern District of California because the district court clearly abused its discretion in weighing the sources of proof and practical problems factors. "The district court erred by analyzing only the location of servers where documents are stored, rather than also considering the location of document custodians and location where documents are created and maintained, which may bear on the ease of retrieval. This factor appears to slightly favor transfer. . . . Until [Plaintiff] filed this suit, only the Northern District of California had been home to cases involving the same asserted patents, breeding decisions and familiarity with the issues. Moreover, as of the time the district court denied [Defendant's] motion, all of [Plaintiff's] co-pending actions in the Western District of Texas—filed the same day as the [Defendant] action—were subject to a motion to transfer venue (three to the Northern District of California and one to the Austin division of the Western District of Texas). The district court has since transferred two of these cases to the Northern District of California." |
| Legal Concepts: |
| Public Interest Factors (Venue) |
| The Federal Circuit granted defendant's petition for a writ of mandamus directing the transfer of venue from the Western District of Texas to the Northern District of California because the district court clearly abused its discretion in considering court congestion. "[W]here, as here, the district court has relied only on time to trial to support its conclusion as to court congestion, we have characterized this factor as 'speculative.' However, the time to trial statistics provided in this case, unsupported by additional facts such as the number of cases per judge and the speed and availability of other case dispositions, cannot alone weigh 'heavily against transfer.' This factor is plainly insufficient to warrant keeping this case in the Texas forum given the striking imbalance favoring transfer based on the other convenience factors." |
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| Judge Rodney Gilstrap Decisions being appealed |
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| Stipulated/Agreed -- CAFC Motion to Dismiss – Voluntary Dismissal (FRAP 42(b)) |
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| Judge Alan D. Albright Decisions being appealed |
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| Stipulated/Agreed -- CAFC Motion to Dismiss – Voluntary Dismissal (FRAP 42(b)) |
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| Judge Raymond P. Moore Decisions being appealed |
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| CAFC Order on Petition for Writ of Mandamus |
| Judge(s): per curiam, Sharon Prost, Timothy B. Dyk, Todd M. Hughes |
| Legal Concepts: |
Private Interest Factors (Venue)
Public Interest Factors (Venue) |
| The Federal Circuit denied plaintiff's petitioner for a writ of mandamus directing the district court to vacate its transfer from the District of Colorado to the Western District of Texas because the district court did not clearly err in its § 1404 analysis. "The district court concluded that [Plaintiff's] choice of forum was not entitled to significant deference in this case. The court based that finding on its determination that [Plaintiff] had filed this declaratory judgment suit to avoid an anticipated suit in the Western District of Texas. . . . The district court also concluded that the Western District of Texas had significant connections to the events giving rise to this case because both parties have material operations in the transferee venue and a considerable portion of the alleged infringing activity occurred within the Western District of Texas. The court also found that the transferee venue would be more convenient because of the location of key witnesses and employees of both parties in that forum. Finally, given the pending actions in the Western District of Texas, the court noted that 'transferring this action would avoid having a second court engage in claim construction of the '697 patent.' [Plaintiff] has not made a persuasive case that the district court clearly abused its discretion in making those findings." |
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| patents at issue |
| 6952413 - Extended dynamic resource allocation in packet data transfer |
| DED Determination: Invalid |
| CAFC Ruling:
Reversed |
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| Judge Leonard P. Stark Decisions being appealed |
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| CAFC Non-Precedential Opinion |
| Judge(s): Kimberly A. Moore, Alan D. Lourie, Timothy B. Dyk |
| Legal Concepts: |
| Abstract Idea |
| On appeal, the Federal Circuit reversed an order granting defendant's motion to dismiss on the ground that plaintiff's dynamic resource allocation patent encompassed unpatentable subject matter because the district court erred in finding the asserted claims were directed to an abstract idea. "The district court held that claim 5 was directed to the abstract idea of 'receiving a USF and transmitting data during the appropriate timeslots.' We do not agree. The district court's formulation of the abstract idea appears to be a high-level description of how USFs operate in mobile stations using extended bandwidth allocation generally. However, the claimed invention departs from this conventional use through a shifted USF, which breaks the fixed relationship between USFs in a downlink slot and the availability for transmission in the corresponding uplink slot. The district court's abstract idea fails to mention a shifted USF, nor does it capture the receipt of two PDCH assignments that permit monitoring and detecting the PDCHs for a shifted USF and transmission based thereon. Accordingly, it is untethered to the invention as claimed." |
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| patents at issue |
| 7943788 - Glucopyranoside compound |
| NJD Determination: Not invalid |
| CAFC Ruling:
Dismissed |
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| Judge Freda L. Wolfson Decisions being appealed |
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| Stipulated/Agreed -- CAFC Motion to Dismiss and Remand After Indicative Ruling (FRAP 12.1) |
| Judge(s): Kathleen M. O'Malley, Kara Farnandez Stoll, Tiffany P. Cunningham |
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| patents at issue |
| 7565344 - Method and system for establishing and using a social network to facilitate people in life issues |
| CAND Determination: Invalid |
| CAFC Ruling:
Affirmed (Summarily) |
| 9978107 - Method and system for establishing and using a social network to facilitate people in life issues |
| CAND Determination: Invalid |
| CAFC Ruling:
Affirmed (Summarily) |
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| Judge Vince Chhabria Decisions being appealed |
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| Stipulated/Agreed -- CAFC Motion for Summary Affirmance |
| Judge(s): Kathleen M. O'Malley, Jimmie V. Reyna, Kara Farnandez Stoll |
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| Judge Vince Chhabria Decisions being appealed |
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| CAFC Precedential Opinion |
| Judge(s): Kathleen M. O'Malley, Alan D. Lourie, Raymond T. Chen |
| Legal Concepts: |
| Arbitration |
| In a precedential opinion, the Federal Circuit affirmed an order granting the declaratory judgment defendant's motion to compel arbitration because the district court did not err in finding that the arbitrator was to determine arbitrability. "[The declaratory judgment plaintiff's] contention that § 1297.161 is irrelevant to the dispute before us mistakes the record facts and ignores the key text of the code. While [Plaintiff] may not be a signatory to the TLA, it clearly is covered by, and obligated under, it. The TLA provides that it applies to all subsidiaries of [Plaintiff's parent]. No matter how [Plaintiff] tries to pigeonhole this action into its 'domestic action' moniker, moreover, this case is merely one aspect of a sprawling international dispute. . . . The CCCP dictates that disputes governed by international commercial arbitration agreements as defined by CCCP § 1297.13 shall be governed by the provisions of CCCP Title 9.3, including the jurisdictional provision of § 1297.161, and § 1297.17, which makes clear that other generally applicable arbitration provisions are superseded in such cases." |
| Legal Concepts: |
| Arbitration |
| In a precedential opinion, the Federal Circuit affirmed an order granting the declaratory judgment defendant's motion to compel arbitration because the district court did not err in finding that the arbitrator was to determine arbitrability. "Virtually all courts to consider the question, including this court, have concluded that, in contracts between sophisticated parties, incorporation of rules with a provision on the subject is normally sufficient "clear and unmistakable" evidence of the parties' intent to delegate arbitrability to an arbitrator. . . . [Plaintiff] argues that the mere incorporation of rules, such as the UNCITRAL, AAA, or CCCP rules, is not a sufficiently clear and unmistakable delegation of authority to determine arbitrability under First Options of Chi., Inc. v. Kaplan, 514 U.S. 938 (1995). It argues that we should overrule [Oracle Am., Inc. v. Myriad Grp. A.G., 724 F.3d 1069 (9th Cir. 2013)] . . . on that ground. But Oracle—which was decided long after First Options and is binding on us in this appeal—expressly found to the contrary, relying on the very standard set out in First Options ." |
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| Granted Petitions for Writ of Certiorari |
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