Patent Case Summaries January 13, 2021

Patent Case Summaries | Week Ending January 8, 2021

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.

ABS Global, Inc. v. Cytonome/ST, LLC, No. 2019-2051 (Fed. Cir. (PTAB) Jan. 6, 2021). Opinion by Stoll, joined by Moore. Opinion dissenting in part by Prost.

The Federal Circuit dismissed as moot ABS’s appeal of a Patent Trial and Appeal Board final written decision upholding the patentability of certain claims of a patent assigned to Cytonome.

The mootness arose from a parallel district court proceeding and associated disavowal of rights by Cytonome. Cytonome had sued ABS and other defendants for patent infringement. ABS then filed an IPR petition with the Board challenging the patentability of the claims. The Board issued a final written decision finding some of the claims unpatentable and upholding the patentability of the remaining claims. Soon after, the district court awarded ABS summary judgment of noninfringement. Two months later, ABS appealed the Board’s final written decision.

During the appellate briefing, Cytonome filed an affidavit stating that it would not appeal the district court’s finding of noninfringement. Cytonome then argued that ABS lacked the required injury in fact for Article III standing to appeal the Board’s decision. The Federal Circuit agreed: “Because we conclude that the voluntary cessation doctrine governs the mootness inquiry in this case, that Cytonome has demonstrated that its challenged conduct is not reasonably expected to recur, and that ABS has failed to demonstrate that it is engaged in or has sufficiently concrete plans to engage in activities not covered by Cytonome’s disavowal, we dismiss ABS’s appeal as moot.”

At oral argument, ABS raised for the first time that the proper disposition is to vacate the challenged portions of the Board’s final written decision. The court ruled, however, that ABS failed to preserve the argument, and thus the court “exercised [its] discretion to find forfeiture and therefore deny [ABS’s] request.”

Chief Judge Prost dissented in part, stating that “time and again the Supreme Court has explained that vacatur is in order when the prevailing party below unilaterally moots an appeal.” In her view, the majority departed from established practice by dismissing the appeal. “This appeal was not mooted by mere happenstance but by the unilateral act of an adversary to cement its victories below.” “Mere dismissal here deprives ABS of appellate review through no fault of its own, while vacatur clears the path for future relitigation of the appealed determinations.”

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SIMO Holdings Inc. v. Hong Kong uCloudlink Network Technology Ltd., et al., No. 2019-2411 (Fed. Cir. (SDNY) Jan. 5, 2021). Opinion by Taranto, joined by O’Malley and Wallach.

SIMO sued uCloudlink for infringing a patent related to reducing roaming charges on cellular networks when a user is traveling. Both parties filed motions for summary judgment addressing whether claim 8 requires a “non-local calls database” and, if so, whether uCloudlink’s products have such a database.

Claim 8 is directed to “[a] wireless communication client or extension unit comprising a plurality of” various physical components, including processors and a “non-local calls database.” The claim then recites that the apparatus “comprises instructions executable by at least one of the plurality of processors for” performing various steps. Thus, the “preamble” recites the structure of the claimed apparatus, and the “body” identifies only the functional properties of the claimed apparatus.

The district court concluded that the “non-local calls database” was not required and granted summary judgment of infringement. The court reasoned that the specification made clear that the database is optional and so the claim should be construed in a manner that would avoid excluding disclosed embodiments.

The Federal Circuit reversed, finding “no authority holding a preamble not limiting in this situation.” Importantly, the preamble contains the only language that identifies the physical components of the claimed physical device. As the court explained, “In supplying the only structure for the claimed apparatus, the preamble language supplies ‘essential structure,’ and the body does not define ‘a structurally complete invention’—which are two key reasons for preamble language to be deemed limiting.”

The Federal Circuit also explained that treating the “non-local calls database” as a limitation would not contradict the specification. “It simply leaves out some alternative embodiments of what SIMO’s specification describes as inventive, while capturing one embodiment expressly described.”

The Federal Circuit therefore reversed the district court’s judgment. A remand was not warranted because uCloudlink was entitled to a judgment of noninfringement. SIMO had not identified any evidence “that created a triable issue of fact on the presence in the accused products of [the required] ‘non-local calls database.’”

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