One type of case we track here at Fed Circuit Blog is any patent case pending before a panel where an amicus brief has been filed. Besides identifying these cases, aggregating related data (e.g., briefs, oral argument recordings, orders, and opinions), and making this data available using our “Other Cases” page, once a month we plan to provide a blog post summarizing recent activity in these cases. Today we do that with respect to eight such patent cases. Of these cases, three concern the non-obviousness requirement; two include jurisdictional questions; one pertains to infringement; one discusses F/RAND commitments; and one raises the issue of patent eligibility.
Conversant Wireless Licensing v. Apple Inc.
This case concerns the enforceability of Conversant’s patent in light of the district court’s finding, as Conversant explains in its opening brief, “that Nokia, the original patentee of the ‘151 Patent, made an untimely disclosure of a related patent application to the ETSI standards setting body.” The district court “grant[ed] Apple’s motion for unenforceability” in this circumstance, concluding “that Conversant has implicitly waived its rights to enforce the ‘151 patent . . . against products practicing the GPRS standard, including the accused Apple products.” On appeal, Conversant argues that “[t]he district court ignored [instructions given by the Federal Circuit on remand], finding the ‘151 Patent unenforceable, and in doing so committed three errors.”
In support of Conversant, Nokia Technologies filed an amicus brief arguing that the district court holding is incorrect because “Nokia did not gain any extra benefit during the standards-setting process.” Specifically, Nokia believes “that a case like this does not come close to meeting the high threshold for unenforceability.” Nokia points out that “the district court found . . . ‘Nokia’s misconduct was not egregious or extraordinary.'” Nokia also highlights that “there is no evidence that Nokia’s specific disclosure of the ’151 patent in 2002 (as opposed to the patent application in 1998) materially and directly led to any unfair or inequitable benefits to Nokia or anyone else, or in fact changed anything at all.” As a general policy, Nokia argues that “imposing the severe remedy of unenforceability in these circumstances could potentially have far-reaching and unintended consequences in the industry.”
Ericsson, Panasonic, Blackberry Uk, and Koninklijke Philips also jointly filed an amicus brief in support of Conversant. These amici argue that “[t]he decision below threatens to unsettle” ETSI’s “balanced framework for the contribution of patented technology to ETSI standards.”
Facebook, Inc. v. Windy City Innovations, LLC
On its face, this case concerns whether Windy City’s patents, which Facebook explains claim “methods for allowing users to communicate over a computer-based network such as the Internet,” are unpatentable as obvious under 35 U.S.C. § 103(a). The amicus activity surrounding this case, however, stems from the Federal Circuit’s order after oral argument asking “what, if any, deference should be afforded to decisions of a Patent Trial and Appeal Board Precedential Opinion Panel (‘POP’).”
David E. Boundy filed an amicus brief in response to the order arguing that “[t]he POP, at least as the PTO uses it in 2019, is a dangerous and destabilizing abrogation of law. It should not be encouraged.” Boundy concedes that “POP is not inherently unlawful” but nevertheless raises concern over “the PTAB’s historical practice, accelerating recent trend of bypassing rulemaking for frequently-recurring issues . . . , and general neglect of basic administrative law.” Boundy suggest that the pre-existing “APA offers a perfectly good, well-paved road that works just fine for other agencies: the Director can issue an interim rule in the Federal Register, 5 U.S.C. § 553(d)(3), and then follow up with notice-and-comment rulemaking.”
Jeremy C. Doerre also filed an amicus brief answering the question presented in the court’s order. Overall, Doerre “urges that although interpretations in some Board decisions such as the POP decision at issue here may be eligible for Chevron deference if they are issued ‘on behalf of the Director’ where the Director has adjudicatory authority, any categorical claim that ‘the POP’s precedential decisions interpreting the AIA qualify for Chevron deference’ is problematic because it strains credulity to suggest that Congress intended the Director to exercise his rulemaking power during the Board’s exercise of its adjudicative authority that Congress specifically chose to assign to the Board rather than to the Director.”
In contrast to the Boundy and Doerre briefs, the United States submitted an amicus brief claiming that “the POP’s opinions generally, and its decision in Proppant specifically, are entitled to Chevron deference.” The United States believes that “where, as here, Congress has empowered an agency to proceed both by adjudication and regulation, it is not a precondition for Chevron deference that the agency choose the rulemaking path.”
In re Google LLC
In this case, Google has petitioned for a writ of mandamus “directing the District Court for the Eastern District of Texas to dismiss the case pursuant to 28 U.S.C. § 1406(a).” The issue at hand is, according to Google, “[w]hether a defendant who keeps computer equipment in the facility of a third party in a judicial district has a ‘regular and established place of business’ in that district under the patent venue statute. 28 U.S.C. § 1400(b).”
A group of companies (Acushnet, Bigcommerce, Chargepoint, Checkpoint Software Technologies, Dish Network, Ebay, Fitbit, Garmin, High Tech Inventor’s Alliance, HP, L Brands, Merit Medical Systems, Netflix, Quantum Corporation, Ringcentral, Twitter, Walmart, and Williams-Sonoma) jointly filed an amicus brief in support of Google. These amici believe that “in the case below, the court gave the patent venue statute a highly expansive reading—holding, for the second time, that physical equipment constitutes a ‘place’.” In sum, they argue that the holding below reinforces “an aberrant interpretation of the patent venue statute, and it has created an untenable situation in which one rule is followed by a single court within the Eastern District of Texas while a very different rule applies everywhere else.”
Nevro Corp. v. Stimwave Technologies, Inc.
As Stimwave Technologies explains in its opening brief, in this case the “district court has entered a preliminary injunction that prevents Stimwave from providing patients with an FDA cleared pain-relief therapy.” Indeed, in the opinion below the district court held that Nevro met its burden to show “(1) it is likely to succeed on the merits, (2) it is likely to suffer irreparable harm if the injunction is not granted, (3) that the balance of equities between the parties tips in its favor, and (4) that an injunction is in the public interest.”
On appeal, Stimwave Technologies raises disputes with respect to the district court’s “findings relat[ing] to . . . irreparable harm, invalidity, public interest, and the scope of the injunction.” Of these arguments, amici have supported Stimwave Technologies’ argument pertaining to the public interest factor. Stimwave Technologies argues that the holding below is improper in that “[t]he preliminary injunction injures the public interest because it denies some patients the medical care that is best for them.” Further, it contends that “[d]enying these patients treatment at this preliminary stage, before Stimwave has even had the opportunity to defend itself on the merits, is against the public interest.”
Nine medical doctors “practicing in the United States in the field of chronic pain management” filed an amicus brief in support of Stimwave Technologies’ public interest argument. These amici seek to corroborate the claim that “the preliminary injunction leads to suboptimal care in those patients that are not candidates for the Nevro device.” Further, they contend that “[i]f the Stimwave device is ultimately found to infringe the Nevro patents, patent law provides a mechanism to compensate Nevro. There is no need for an injunction that would interfere with medical decisions and patient care.”
Trimble Inc. v. PerDiemCo LLC
The issue on appeal in this case is whether personal jurisdiction can be exercised over PerDiemCo. According to Trimble’s opening brief, the district court refused to do so “even though (a) PerDiemCo expressly and repeatedly accused Trimble, a company based in northern California, of infringing PerDiemCo’s patents; (b) the district court itself recognized that Appellants had established the minimum contacts necessary for personal jurisdiction; and (c) PerDiemCo failed to establish a ‘compelling case that the presence of some other considerations would render jurisdiction unreasonable.'” Trimble further argues that the district court’s conclusion was compelled by its adherence to the Federal Circuit’s “controversial decision in Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355 (Fed. Cir. 1998).” According to Trimble, that case caused the district court to apply “a patent-specific rule that a patent owner’s enforcement efforts and assertions against a forum resident can never be enough, by themselves, to justify personal jurisdiction.” Trimble urges that the Federal Circuit “overrule [the Red Wing Shoe line of cases] as imposing rigid, patent-specific rules that are contrary to controlling Supreme Court law and unwarranted by the public-policy justifications cited in Red Wing Shoe.”
R Street Institute, Public Knowledge, The Electronic Frontier Foundation, Engine Advocacy, and the Innovation Defense Foundation filed an amicus brief in support of Trimble. These amici argue that “Red Wing Shoe makes the choice of forum in patent cases consistently unfair by restricting choice of jurisdiction for declaratory judgment actions.” Further, they point out that “Red Wing Shoe relies on the idea that promotion of settlements mandates a rule that insulates patent demand letters from creating personal jurisdiction.” However, the “Supreme Court has now repeatedly held that encouragement of settlements is not an all-overpowering justification for rules of law.” In sum, they believe “Red Wing Shoe was incorrectly decided, and it is creating ongoing and increasing problems in view of the contemporary patent system.”
Voip-Pal.com, Inc. v. Twitter, Inc.
According to Voip-Pal.com, the issue in this case is “[w]hether the district court erred in holding the claimed method and process for automatically routing telephone calls and other communications in a multi-network environment using a physical controller covers ‘abstract ideas’ that are not patent eligible under 35 U.S.C. §101.” Voip-Pal.com argues the district court misapplied step one of the Alice/Mayo framework because “in determining the character of the claims, the court excluded from its analysis any limitation with a basis in the prior art and ignor[ed] others as generic, declaring the asserted claims to be intangible and abstract because they lacked novelty and were generic or not-enabled.” On the other hand, Twitter argues that “[b]ecause the claims at most automate a process formerly done by switchboard operators or callers, and do so in purely general and functional terms, they are directed to an abstract idea and the analysis proceeds to Alice’s step two.” Further, at step two, Twitter contends that the claims “contain no additional details that transform those claims into patent eligible subject matter.”
Raymond A. Mercado, Ph.D., filed an amicus brief in support of Voip-Pal.com. He argues that “[m]any courts, like the court in this case, are still bypassing the critical factual inquiries [the Federal Circuit] identified in Berkheimer/Aatrix and, instead, determining whether claims contain inventive concepts as a matter of improper judicial notice, without claim construction or a proper evidentiary record, and with no more than a cursory glance at the claims themselves.”
Upcoming Oral Arguments
Network-1 Technologies, Inc. v. Hewlett-Packard Company has been scheduled for oral argument on November 4, 2019 at 10:00 a.m.
Power Integrations, Inc. v. Fairchild Semiconductor Int’l has been scheduled for oral argument on November 5, 2019 at 10:00 a.m.
Next week we will provide argument previews for these two cases.