Overview
In this series of monthly updates, we summarize decisions from July 2022 where the Federal Circuit reversed or vacated the Patent Trial and Appeal Board ("Board") or trial court rulings, which can provide guidance on how to succeed on appeal.
Quick takeaways:
- Pop Top Corp. v. Rakuten Kobo Inc.: the Federal Circuit sanctioned Pop Top and its counsel for filing frivolous appeal.
- Vocalife LLC v. Amazon.com, Inc.: the Federal Circuit concluded that Vocalife failed to prove infringement because the claim required a function being performed in a plurality of configurations, but the testimony suggested the function for only the specific configuration on the specific device.
- Ethanol Boosting Systems, LLC v. Ford Motor Co.: the Federal Circuit concluded that the fuel system comprising "a first fueling system that uses direct injection" and "a second fueling system that uses port fuel injection" did not require two different fuels, because, among other reasons, the specification disclosed an embodiment using a single fuel.
- Wireless Protocol Innovations, Inc. v. TCT Mobile, Inc.: the Federal Circuit held that TCT forfeited the argument that the prior art could be modified to meet the claimed limitation, because it failed to present it prior to remand, despite being on notice of the claim construction later adopted.
- Innovation Sciences, LLC, v. Amazon.com, Inc.: the Federal Circuit reversed an award in graphics costs as being outside the scope of 28 U.S.C. §1920(4).
- TalexMedical, LLC v. Becon Medical Limited: the Federal Circuit held that the Board erred in claim construction because it improperly narrowed the scope of the claims by importing a directional limitation based on embodiments described in the specification.
Pop Top Corp. v. Rakuten Kobo Inc., 21-2174, 2022 WL 2751662 (Fed. Cir. July 14, 2022)
Pop Top owned the asserted patent relating to methods and systems for "content providers and authors of web-based content to enable highlighter functionality on their web pages." The sole claim of the patent required an "internet document" that included "code for invoking a highlighting service." Pop Top sued Kobo, alleging that Kobo's eBooks infringed the patent. Kobo moved for summary judgment of noninfringement, arguing that its eBooks did not contain any code relating to highlighting and that the only code relating to highlighting was found in the Kobo App software itself. The district court granted summary judgment of non-infringement. Pop Top appealed, but the Federal Circuit affirmed without opinion. Kobo moved for sanctions against Pop Top, arguing that Pop Top's appeal was frivolous. The Federal Circuit agreed.
The Federal Circuit found that Pop Top's appeal was frivolous because Pop Top provided no evidence that the accused eBooks satisfied the asserted claim limitation and thus had no reasonable basis to appeal the District Court's summary judgment. The appeal was also frivolous because Pop Top misconstrued Kobo's position regarding the scope of the "code for invoking" term found in the claim, and Pop Top's misrepresentation of Kobo’s position warranted sanctions.
The Federal Circuit found Pop Top and its counsel jointly and severally liable for sanctions, and awarded Kobo $107,748.27.
Vocalife LLC v. Amazon.com, Inc., 2021-1937, 2021-1984, 2022 WL 2986786 (Fed. Cir. July 28, 2022)
Vocalife owned the asserted patent, which was directed to methods and systems for "enhancing acoustics of a target sound signal received from a target sound source, while suppressing ambient noise signals." The asserted claims included the limitation of "determining a delay . . . wherein said determination of said delay enables beamforming for said array of sound sensors in a plurality of configurations." Vocalife sued Amazon, accusing certain Amazon Echo products of infringing the patent. Amazon moved for judgment as a matter of law (JMOL) of noninfringement after the close of evidence. The district court denied JMOL of no induced infringement but granted JMOL of no direct or contributory infringement and no infringement under the doctrine of equivalents. After the district court's summary judgment determinations, the only infringement issue at trial for the jury to decide was whether Amazon induced users of the Echo to literally infringe the patent. The jury found that Amazon did, and Amazon renewed its motion for JMOL of no induced infringement, which the district court again denied. Both parties appealed. Amazon appealed the denial of its JMOL motion. Vocalife cross-appealed the two summary judgment grants.
Regarding Amazon’s appeal, the issue was whether the Echo infringed the "plurality of configurations" limitation. Vocalife's expert testified that it did infringe because the software code running on the Echo could be utilized across different Echo products with different microphone array configurations. The Federal Circuit disagreed with that conclusion, finding that the testimony did not show that the delay determination occurring on a given Echo device enabled beamforming for a plurality of configurations. In the Federal Circuit's view, the testimony suggested that the determination enabled beamforming for only the specific microphone array configuration on that specific device. Vocalife provided no evidence that it enabled beamforming for a variety of microphone configurations, as opposed to only the configuration of that particular device.
Finding no substantial evidence showing that the accused products practiced the limitation of "in a plurality of configurations," the Federal Circuit concluded that Vocalife failed to show infringement. Accordingly, the Federal Circuit reversed the district court's denial of JMOL of no induced infringement and vacated the jury verdict. This mooted Vocalife's cross-appeal.
The asserted patents disclosed a fuel management system for enhanced operation of a spark ignition gasoline engine. Claim 1 recited in relevant part a fuel management system comprising "a first fueling system that uses direct injection" and "a second fueling system that uses port fuel injection." The district court construed the claim to require a dual-fuel engine. In view of that, the parties stipulated to judgment of non-infringement. EBS appealed.
EBS contended that the district court erred in construing the first fueling system to be limited to using fuels different than the fuel in the second system. The Federal Circuit agreed. Nothing in the claim language required the use of different fuels in the two systems. The asserted patents' specifications did not impose a single-fuel requirement either. To the contrary, they disclosed an embodiment in which 100% of the fuel came from ethanol. Requiring two different fuels would exclude this disclosed embodiment. Nothing in the specification amounted to a clear and unmistakable disavowal of single-fuel systems. Thus, the Federal Circuit concluded that the district court erred in construing the claims to require a dual-fuel system.
The Federal Circuit also noted that its position was not inconsistent with the construction requiring dual fuels for related patents in a prior case, where the patents were different and did not disclose 100% ethanol used in an embodiment. Related patents having different specifications and disclosures can result in different claim constructions.
The Federal Circuit majority therefore vacated the district court's non-infringement judgment premised on that erroneous construction and remanded for further proceedings. Judge Newman dissented, stating that the district court correctly construed the claims.
This is the second appeal arising from inter partes review of the challenged patent. In the initial final written decision, the Board found all challenged claims unpatentable as obvious. In the first appeal, the Federal Circuit vacated the Board's decision with respect to one ground because the Board applied a flawed claim construction and remanded.
On remand, the Board permitted the parties to submit additional briefing and expert testimony, reasoning that the Federal Circuit's interpretation of a claim term was neither proposed nor addressed by either party during the trial. In its remand decision, the Board found all challenged claims unpatentable as obvious based on TCT's new argument that that a prior art could be modified to meet the claimed limitation under Federal Circuit's claim construction. WPI appealed, and the Federal Circuit agreed that the Board improperly relied on the new modification theory of the prior art, because TCT forfeited the argument by failing to present it prior to remand.
In the Federal Circuit's view, TCT was on notice of the Federal Circuit's claim construction in the first appeal, which was similar to WPI’s positions on claim construction. Under these circumstances, if TCT wanted to raise the modification argument, it needed to introduce it for the Board to consider no later than in its reply, rather than wait until the case returned on remand. The Federal Circuit thus concluded that TCT forfeited the modification argument and reversed the Board's unpatentability finding.
Innovation Sciences ("IS") sued Amazon, alleging infringement of patents relating to "methods and apparatus for efficiently directing communications" in a communication network. A jury returned general verdicts of invalidity and noninfringement. IS moved for (1) judgment as a matter of law (JMOL) that the claims were not invalid and that Amazon infringed them; or (2) a new trial. Amazon moved for costs under 28 U.S.C. §1920(4). The district court denied IS’s motion and granted Amazon's motion in part. IS appealed both orders. The Federal Circuit affirmed the denial of the JMOL and the denial of a new trial. Additionally, the Federal Circuit affirmed an award of Amazon's printing costs, but reversed an award of $126,399.19 in graphics costs as being outside the scope of 28 U.S.C. §1920(4).
Regarding graphics costs, the Federal Circuit agreed with IS that the district court should not have included "graphics support" in its award of costs as graphics did not meet the definition of exemplification found in 28 U.S.C. §1920(4). Exemplification is limited to an "official transcript of a public record, authenticated as a true copy for use as evidence." Since creating graphics was not copying, the Federal Circuit reversed the district court’s award of graphics costs. However, the Federal Circuit did not reverse the district court’s award for printing costs.
TalexMedical, LLC v. Becon Medical Limited, No. 21-2069, 2022 WL 2898934 (Fed. Cir. July 22, 2022)
Becon owned the challenged patents, which described "correcting misshaped ears using a molding device.” Talex petitioned for inter partes review of certain claims. The Board found some claims unpatentable and some claims patentable. Both parties appealed. The Federal Circuit held that the Board erred in its construction of “reversibly engage," and affirmed the remaining issues appealed.
Regarding "reversibly engage," the Board considered certain embodiments and construed it to mean "to engage a surface on a reverse side facing away from the ear." The Federal Circuit held that the construction improperly narrowed the scope of the claims by importing a directional limitation based on embodiments described in the specification. In describing reversible engagement, the specification described supports that engaged and disengaged. The plain meaning of the word "reversibly" also implied a two-way direction for engagement.
The Federal Circuit concluded that the "reversibly engage" limitation meant "interchangeably engage with and disengage from, to stabilize the device," and accordingly vacated the Boards construction and its judgment of related claims.
