This morning the Federal Circuit issued three precedential opinions in patent cases and one nonprecedential opinion in a patent case. Here are the introductions to the opinions.
In re IPR Licensing, Inc. (Precedential)
This case returns to us after remand to the Patent Trial and Appeal Board (“the Board”). In the previous appeal, we affirmed the Board’s findings that claims 1–7, 14–16, 19–29, 36–38, and 41–44 of U.S. Patent 8,380,244 (“the ’244 patent”) were obvious based on prior art references cited in ground one of ZTE’s petition, the only one of three asserted grounds on which the Board instituted review. We remanded as to claim 8, however, because we found insufficient record support for the Board’s determination that claim 8 is invalid as obvious. See IPR Licensing, Inc. v. ZTE Corp., 685 F. App’x 933 (Fed. Cir. 2017). Importantly, we examined each piece of evidence cited in the Board’s order and concluded that the evidence to which the Board pointed failed—either individually or collectively—to support the conclusion that there would have been a motivation to combine the relevant prior art references. Id. Rather than reverse the Board’s judgment as to claim 8 as unsupported, we remanded because we could not be sure that the record was totally “devoid of any possible motivation to combine.” Id. at 940. On remand, the Board again found claim 8 unpatentable. ZTE Corp. v. IPR Licensing, Inc., IPR2014-00525, 2018 WL 1224736, at *1 (P.T.A.B. Mar. 6, 2018) (the “Remand Decision”). In this appeal, Appellant IPR Licensing (“IPRL”) argues that the only additional evidence the Board cited in support of its conclusion on remand was not part of the record before the Board. We agree. Because the Board’s decision remains unsupported, we reverse the Board’s finding of invalidity as to ground one and, because all other challenges to the Board’s final judgment of invalidity are waived, we vacate that judgment.
Pharma Tech Solutions, Inc. v. Lifescan, Inc. (Precedential)
This is an appeal from the district court’s summary judgment of noninfringement under the doctrine of equivalents. Because prosecution history estoppel bars the claims for infringement under the doctrine of equivalents, we affirm.
TQ Delta, LLC v. Cisco Systems, Inc. (Precedential)
In a pair of inter partes review proceedings, the Patent Trial and Appeal Board invalidated all claims of two related patents. TQ Delta, LLC, the patent owner, appeals the Board’s determination that all claims of the challenged patents would have been obvious in view of the prior art asserted by Cisco Systems, Inc., and the other appellees (collectively, “Cisco”). TQ Delta also raises several other challenges to the IPR proceedings relating to the admissibility of evidence, claim construction, and due process. Because fact findings underlying the Board’s obviousness determinations are not supported by substantial evidence, we reverse the Board’s decisions on that ground.
Circuit Judge HUGHES dissents without opinion.
VirnetX Inc. v. Apple Inc. (Nonprecedential)
VirnetX Inc. and Leidos, Inc. (together, VirnetX) brought this case against Apple Inc., alleging that Apple infringed four VirnetX patents. The district court entered summary judgment for VirnetX on invalidity, determining that Apple was precluded from pressing its proposed invalidity challenges because of previous litigation between the parties. A jury found for VirnetX on infringement and awarded roughly $503 million as a reasonable royalty, equal to a rate of $1.20 for each device whose sale by Apple infringed. The district court denied Apple’s post-trial motion for judgment as a matter of law and entered a final judgment for VirnetX.
Apple appeals. We affirm the district court’s determination that Apple is precluded by the prior litigation from pressing its proposed invalidity challenges. We affirm the judgment of infringement as to two of the patents but reverse as to two others. In light of our partial reversal on infringement, we vacate the damages award and remand for the district court to consider whether it can and should enter a revised award without conducting a new trial and, if not, to hold a new trial limited to damages.