Patent Case Summaries April 14, 2021

Patent Case Summaries | Week Ending April 9, 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.

Wi-LAN Inc. v. Sharp Electronics Corp., et al., Nos. 2020-1041, -1043 (Fed. Cir. (D. Del.) Apr. 6, 2021). Opinion by Dyk, joined by Taranto and Stoll.

Wi-LAN sued Sharp and Vizio for infringement of two patents relating to video deinterlacing and multimedia encoders, respectively. Regarding the first patent, the district court awarded the defendants summary judgment of noninfringement because Wi-LAN lacked sufficient admissible evidence to prove infringement. The district court found that, to demonstrate infringement, Wi-LAN would need to rely on source code for the accused systems. Wi-LAN thus supplied source code printouts obtained via litigation against third-party chip manufacturers, together with declarations from employees of those manufacturers purporting to authenticate the printouts. The district court found the printouts to be inadmissible, and thus held that Wi-LAN could not meet its evidentiary burden.

On appeal, the Federal Circuit affirmed, rejecting each of Wi-LAN’s arguments concerning the admissibility of the source code printouts. For instance, Wi-LAN argued that the printouts constituted business records that are admissible as an exception to the hearsay rule. Under that rule, Wi-LAN was required to provide testimony from a “custodian or another qualified witness” that the printouts satisfied the rule. The declarations supplied by Wi-LAN, however, were insufficient because the declarants were not available to testify at trial.

The Federal Circuit rejected Wi-LAN’s other arguments, too, ruling that the source code printouts were not trustworthy, contained inconsistent information and added commentary, and were not made admissible by virtue of Wi-LAN’s expert’s reliance on the printouts.

Regarding the second patent, the district court construed the claim terms “output multimedia data stream” and “a multimedia processor, coupled to the data rate analyzer” common to all of the asserted claims. Based on the constructions, Wi-LAN stipulated to noninfringement.

On appeal, the Federal Circuit affirmed, ruling that the district court’s constructions were correct. The Federal Circuit analyzed the patent specification, including the consistent use of the term “coupled,” and determined that the district court’s constructions were well supported.

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Apple Inc. v. Qualcomm Inc., Nos. 2020-1561, -1642 (Fed. Cir. (PTAB) Apr. 7, 2021). Opinion by Moore, joined by Reyna and Hughes.

Qualcomm sued Apple in district court alleging infringement of two patents. Apple then filed petitions for IPR challenging certain claims. The Patent Trial and Appeal Board issued final written decisions finding that Apple did not prove that the challenged claims would have been obvious.

Before Apple appealed the Board’s final written decisions, Apple and Qualcomm settled all litigation between the companies worldwide. As part of the settlement, they executed a six-year license agreement, with a possibility of a two-year extension, covering tens of thousands of patents including the two patents at issue in the litigation and IPRs.

The Federal Circuit held that under these circumstances Apple lacked standing to maintain the appeals.

As a preliminary matter, Qualcomm argued that Apple waived the ability to establish standing. The Federal Circuit initially agreed, stating that, “Given the global settlement between the parties, Apple should have made its standing arguments and proffered its evidence in support of standing in its opening brief.” Nevertheless, the court exercised its discretion to reach the issue of standing, in part because “the question of standing impacts these and other appeals.”

Turning to the merits of Apple’s arguments, the Federal Circuit first held that Apple’s ongoing payment obligations under the license agreement were insufficient to confer standing because Apple failed to establish that “the validity of any single patent, including the [two patents at issue], would affect its ongoing payment obligations.”

Second, the Federal Circuit rejected the notion of standing based on the possibility of infringement litigation after the license expires. The court ruled that “this possibility is too speculative to confer standing.”

Finally, the Federal Circuit held that the estoppel provisions in 35 U.S.C. § 315(e) are not a basis for standing. Quoting a prior decision, the court explained: “We have already rejected invocation of the estoppel provision as a sufficient basis for standing.” Thus, “the harm that Apple may face from estoppel is insufficient to provide standing.”

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