On February 15, 2023, the Federal Circuit affirmed a district court’s grant of summary judgment of invalidity under the public use bar of pre-AIA 35 U.S.C. § 102(b), based on the patentee’s disclosure of devices having the patented technology at an industry event.  Minerva Surgical, Inc. v. Hologic, Inc., No. 2021-2246 (Fed. Cir. Feb. 15, 2023).  The Court found that the patentee had allowed sophisticated industry members to scrutinize the devices closely, such that they would have understood the invention, without any obligations of confidentiality.

On November 30, 2022, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the U.S. District Court for the Western District of Washington striking portions of a plaintiff’s expert report and granting summary judgment of non-infringement to defendant.  Treehouse Avatar LLC v. Valve Corp., No. 21-1171 (Fed. Cir. Nov. 30, 2022).  The CAFC found that the district court did not abuse its discretion in its decision to strike portions of the report, nor did it err in its finding that plaintiff failed to rebut defendant’s evidence of non-infringement.

On November 14, 2022, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the Patent Trial and Appeal Board (PTAB) allowing claim amendments during inter partes review (IPR) proceedings that addressed issues additional to those raised by the grounds relied upon for institution of the IPR. Am. Nat’l Mfg. Inc. v. Sleep No. Corp., Nos. 2021-1321, 1323, 1379, 1382, (Fed. Cir. Nov. 14, 2022). The Court found that the PTAB had not erred when it permitted Sleep Number, the patent owner, to submit claim amendments in IPR that addressed Section 112 issues (which were additional to amendments addressing the instituted grounds).

On October 19, 2022, the Federal Circuit, on a petition for writ of mandamus, vacated and remanded an order by Judge Mazzant of the Eastern District of Texas (EDTX) denying FedEx Corporate Services, Inc.’s motion to transfer the case to the Western District of Tennessee (WDTN). In re FedEx Corp. Servs., Inc., No. 2022-156 (Fed. Cir. Oct. 19, 2022). The Court found that the district court had erred in its analysis of the local interest factor and had failed to provide a sufficient explanation regarding witness-related factors, the latter of which left the Court “unable to effectively conduct mandamus review on the present record.”

On December 8, 2021, Judge Albright of the U.S. District Court for the Western District of Texas issued a sealed opinion granting the defendants’ motion to transfer venue to the Northern District of Georgia.  Lynk Labs, Inc v. Home Depot USA, Inc., No. 6:21-cv-00097-ADA (W.D. Tex. Dec. 8, 2021).  A public, redacted version has since published, in which the court addresses the public and private interest convenience factors, finding that the Northern District of Georgia was a clearly more convenient forum.

On October 19, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) granted a petition for writ of mandamus ordering the United States District Court for the Western District of Texas to transfer the underlying action to the United States District Court for the District of Colorado.  In re DISH Network, L.L.C., No. 2021-182 (Fed. Cir. Oct. 19, 2021).  The CAFC held that Judge Albright abused his discretion when denying DISH’s motion to transfer on convenience grounds pursuant to 28 U.S.C. § 1404(a).

On September 10, 2021, Judge Richard G. Andrews of the U.S. District Court for the District of Delaware issued a Memorandum Opinion on claim construction.  Peloton Interactive, Inc. v. ICON Health & Fitness, Inc., No. 20-662-RGA, slip. op. (D. Del. Sept. 10, 2021).  Judge Andrews held that certain claims of the asserted patent containing “translator device…” limitations were invalid as indefinite under 35 U.S.C. § 112 ¶ 6 because they failed to disclose corresponding structure for the claimed function.

On August 12, 2021, the United States District Court for the District of Delaware issued an opinion granting plaintiff Microsoft Corporation’s (“Microsoft”) motion for judgment on the pleadings related to infringement counterclaims brought by SynKloud Technologies, LLC (“SynKloud”).  SynKloud Techs. LLC v. HP, Inc., et al., No. 19-1360-RGA (D. Del. Aug. 12, 2021).  The Court ruled that the patents at issue related to the patent-ineligible abstract idea of “requesting an institution to obtain data from remote locations and to store that data in storage space assigned to a specific user.”

On August 5, 2021, Judge Gilstrap of the U.S. District Court for the Eastern District of Texas issued a Memorandum Opinion and Order Supported by Findings of Fact and Conclusions of Law regarding defendant Apple’s counterclaim for prosecution laches.  Personalized Media Communications, LLC v. Apple, Inc., No. 2:15-cv-01366-JRG, slip op. (E.D. Tex. Aug. 5, 2021).  Judge Gilstrap found and declared the asserted patent unenforceable under the doctrine of prosecution laches.  In doing so, Judge Gilstrap overturned a $308.5 million jury verdict.

On July 13, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed in part, reversed in part, and remanded appellant Bot M8 LLC’s (“Bot M8”) appeal of several underlying orders related to the dismissal of its patent infringement action against Sony Corporation of America (“Sony”).  Bot M8 LLC v. Sony Corporation of America, ___ F.3d ___ (Fed. Cir. July 13, 2021).  The CAFC clarified that while a plaintiff need not plead infringement on an element-by-element basis, reciting claim elements and merely concluding that the accused products have those elements is insufficient.

On July 6, 2021, Judge Noreika of the United States District Court for the District of Delaware issued an Order denying defendant’s motion in limine to preclude plaintiff from asserting claims of a patent that were found unpatentable by the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office in an inter partes review.  TrustID, Inc. v. Next Caller Inc., Slip. Op. (D. Del. July 6, 2021).  The Court determined that plaintiff was not collaterally estopped.

On June 1, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) vacated-in-part and remanded a ruling from the U.S. District Court for the District of Columbia related to prosecution laches.  Hyatt v. Hirshfeld, --- F.3d --- (Fed. Cir. June 1, 2021).  The CAFC determined that the appellant, U.S. Patent and Trademark Office (“PTO”), met its burden to prove prosecution laches, and remanded to the district court to determine whether appellee Gilbert Hyatt had a legitimate reason to excuse his prosecution delay.

On March 2, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing the district court’s conclusion that a claim was not invalid as indefinite.  Rain Computing, Inc. v. Samsung Elecs., Am., Inc., __ F.3d __ (Fed. Cir. Mar. 2, 2021).  The CAFC held that the claim term, “user identification module,” was a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6, and invalid as indefinite for failure to disclose corresponding structure (here, an algorithm).
 

On December 1, 2020, the United States District Court for the Northern District of Illinois issued an opinion denying plaintiff Abbott Laboratories’ motion to dismiss infringement counterclaims brought by defendants Grifols Diagnostic Solutions Inc., Grifols Worldwide Operations Ltd., and Novartis Vaccines and Diagnostics, Inc.  Abbott brought a declaratory judgment action against defendants asserting that U.S. Patent No. 7,205,101 (“the ’101 patent”) is invalid.  Defendants filed a counterclaim asserting that Abbott infringes claim 7 of the ’101 patent.  Abbott moved to dismiss the counterclaim on the basis that claim 7 is invalid as a matter of law under 35 U.S.C. § 101 because it is directed to a patent-ineligible natural phenomenon.