This morning, the Federal Circuit issued a precedential opinion in a patent case, a precedential order denying a stay in a patent case, and a nonprecedential opinion in a patent case. The Federal Circuit also issued a Rule 36 judgment. Here are the introductions to the opinions, the text of the order, and a link to the Rule 36 judgment.
TecSec, Inc. v. Adobe Inc. (Precedential)
TecSec, Inc. brought this case in 2010 against several companies, including Adobe Inc., alleging that the companies directly and indirectly infringed claims of four TecSec patents. Aspects of the case have been before this court three times already. The present appeal involves Adobe only and several rulings of the district court, of which two are central. Specifically, before trial, in response to a motion in limine by Adobe, the court excluded all evidence of induced infringement from March 3, 2011, through the expiration of the patents at issue in October 2013. Earlier, the court had rejected Adobe’s challenge to the asserted claims as ineligible under 35 U.S.C. § 101.
A jury found for TecSec on direct infringement, but not induced infringement; rejected Adobe’s prior-art validity challenges; and awarded damages. The district court, though generally denying Adobe’s post-trial motions, reduced the damages award to zero on the ground that there was no proof of any damages from direct infringement and the jury had rejected induced infringement.
TecSec appeals. It challenges the district court’s motion-in-limine ruling, as well as certain jury instructions and the post-trial damages reduction. Adobe cross-appeals, challenging the district court’s ruling on eligibility. We reverse the evidentiary ruling that eliminated TecSec’s inducement case for a substantial period, and we reject Adobe’s challenge to the district court’s eligibility ruling. For those reasons, and others stated in this opinion, we reverse the judgment in part and remand for further proceedings on TecSec’s claim of induced infringement.
American Axle & Manufacturing, Inc. v. Neapco Holdings Inc. (Precedential Order)
Plaintiff-appellant American Axle & Manufacturing, Inc. (“AAM”) filed a motion to stay issuance of the mandate pending the filing of a petition for writ of certiorari in the Supreme Court. Defendants-appellees opposed the motion.
We conclude that the irreparable injury requirement is not satisfied here. On this ground alone a stay is not warranted, quite apart from the merit or lack of merit of the petition for certiorari.
IT IS ORDERED THAT:
The motion to stay the mandate pending the filing of a petition for writ of certiorari in the Supreme Court is denied.
MOORE, Circuit Judge, concurring.
Today, we adopt the three-prong test for staying a mandate adopted by our sister circuits and several individual Justices. I write separately to elaborate on how those prongs apply here. While American Axle has established a reasonable probability that certiorari will be granted and a fair prospect that the majority of the Court will reverse, it fails to establish irreparable harm and thus a stay is not warranted.
Realtime Data LLC v. Reduxio Systems, Inc. (Nonprecedential)
In 1955, Judge Learned Hand called the court-created “invention requirement” “the most baffling concept” in all of patent law. Lyon v. Bausch & Lomb Optical Co., 224 F.2d 530, 536 (2d Cir. 1955). Today, he would likely save that characterization for the court-created exceptions to what constitutes patentable subject matter under 35 U.S.C. § 101. Because those exceptions are complex and their application is reviewed de novo, district courts might be tempted to opt for an effective coin toss rather than a reasoned analysis when faced with a challenge under § 101. This is especially so where the abstract idea exception is invoked. But the system is not supposed to work that way. The parties are entitled to more and the Court of Appeals needs more.
A district court opinion “must contain sufficient findings and reasoning to permit meaningful appellate scrutiny.” Gechter v. Davidson, 116 F.3d 1454, 1458 (Fed. Cir. 1997). Although we have said that we review judgments, not opinions, King Instrument Corp. v. Otari Corp., 767 F.2d 853, 862 (Fed. Cir. 1985), where a district court has offered no reasoning for us to review we may, and most often do, decline to analyze a legal question in the first instance. Proveris Sci. Corp. v. Innovasystems, Inc., 739 F.3d 1367, 1373 (Fed. Cir. 2014).
Realtime Data LLC (“Realtime”) appeals from a bench ruling of the United States District Court for the District of Delaware holding all 159 claims of U.S. Patent Nos. 7,415,530 (“’530 patent”), 8,717,203 (“’203 patent”), 9,054,728 (“’728 patent”), 9,116,908 (“’908 patent”), and 9,667,751 (“’751 patent”) (collectively “patents-in-suit”) patent ineligible under 35 U.S.C. § 101. See J.A. 52–59. Because this case presents one of those rare circumstances in which a district court’s treatment of a complex and close legal issue is too cursory to allow for meaningful appellate review, we vacate and remand for the district court to give additional consideration to the eligibility question and elaborate on its reasoning.
TARANTO, Circuit Judge, concurring in the judgment.
I concur in the judgment, which vacates the district court’s judgments dismissing the cases and denying an opportunity to amend the complaints and remands for further proceedings.
In these cases, I agree that it is appropriate to take what is, and should remain, the unusual step of remanding for reconsideration of the § 101 issue without ruling on the issue ourselves. A remand will allow the district court to characterize the claims more accurately and, on that new basis, to consider relevant precedents of this court that the district court did not address, including a number of postJuly 2019 precedents that provide clarifying guidance concerning the inquiries pertinent to the analysis in cases like the ones before us. See, e.g., TecSec, Inc. v. Adobe Inc., Nos. 2019-2192, -2258 (Fed. Cir. Oct. 23, 2020), slip op. at 20–31 (citing and discussing cases); Packet Intelligence LLC v. NetScout Sys., Inc., 965 F.3d 1299, 1309–10 (Fed. Cir. 2020); Uniloc, 957 F.3d at 1306–07; Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., 955 F.3d 1317, 1327–28 (Fed. Cir. 2020); Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364–65 (Fed. Cir. 2020); Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143, 1149– 50 (Fed. Cir. 2019); see also SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1303–04 (Fed. Cir. 2019) (mid-July 2019). A remand will also allow the district court, should Step 2 be reached, to reconsider, after a re-focused analysis proceeding through the Step 1 and Step 2 inquiries, whether the filing of amended complaints should be permitted. I therefore concur in the judgment of the court.