Opinions & Orders – November 25, 2020

By David Taylor on November 25, 2020

This morning the Federal Circuit issued six opinions and orders:

a precedential opinion in a patent case affirming a holding of obviousness by the Patent Trial and Appeal Board,
a nonprecedential opinion in another patent case affirming a holding of nonobviousness by the Patent Trial and Appeal Board,
a nonprecedential opinion in a third patent case affirming a district court’s dismissal due to ineligibility, and
three nonprecedential orders denying or dismissing petitions for writs of mandamus.

Here are the introductions to the opinions and excerpts from the orders.

VidStream LLC v. Twitter, Inc.

On two inter partes review (“IPR”) petitions filed by Twitter, Inc., the Patent Trial and Appeal Board (“PTAB” or “Board”) held that claims 1–35 of U.S. Patent No. 9,083,997 (“the ’997 patent”), assigned to VidStream LLC, are unpatentable on the ground of obviousness. VidStream appeals, arguing that the Board erred in finding that a book authored by Anselm Bradford and Paul Haine (“Bradford”) is prior art against the ’997 patent.

We affirm the Board’s holding that Bradford is prior art. With Bradford as the primary reference, VidStream does not appeal the Board’s decision of unpatentability of claims 1–35. That decision is affirmed.

Cisco Systems, Inc. v. XR Communications, LLC

Cisco Systems, Inc. appeals the Patent Trial and Appeal Board’s final written decision holding Cisco had not proven that claims 1–9 and 12 of U.S. Patent No. 6,611,231 would have been obvious. For the reasons discussed below, we affirm.

Fast 101 Pty Ltd. v . CitiGroup Inc.

Fast 101 Pty Ltd. (Fast 101) appeals from a decision of the United States District Court for the District of Delaware dismissing its complaint for failure to state a claim and denying its motion for leave to take targeted discovery and amend its complaint. The district court found that all claims of the asserted patents recite patent-ineligible subject matter under 35 U.S.C. § 101. We affirm.

In re Koki Holdings America Ltd.

Koki Holdings America Ltd. petitions for a writ of mandamus directing the United States International Trade Commission (“Commission”) to vacate its September 16, 2020 order instituting modification proceedings and to terminate the proceedings. Kyocera Senco Brands Inc. and the Commission oppose. Koki replies.

In September 2017, Kyocera filed a complaint against Koki with the Commission under 19 U.S.C. § 1337. Kyocera alleged that Koki violated § 1337 by importing gas spring nailer products covered by claims 1, 10, and 16 of U.S. Patent No. 8,387,718 (“the ’718 patent”). The Commission instituted an investigation. After concluding that the products infringed the claims, the Commission issued a limited exclusion order against Koki gas spring nailer products that infringed the asserted claims. The Commission also issued a cease-and-desist order.

Shortly thereafter, Koki requested from United States Customs and Border Protection a ruling that Koki’s redesigned version of its nailer products did not infringe and were thus not subject to the Commission’s exclusion order. On June 30, 2020, Customs issued its ruling letter, agreeing with Koki that its redesigned products did not infringe. On August 17, 2020, Kyocera petitioned the Commission to institute modification proceedings to determine whether the redesigned products were within the scope of the Commission’s remedial orders. On September 16, 2020, the Commission issued notice and ordered institution of those proceedings and referred the matter to an administrative law judge to issue a recommendation. Koki then filed this petition to challenge whether the Commission exceeded its authority in implementing those proceedings.

* * *

Koki’s core argument is that the presumed statutory basis on which the Commission invoked these modification proceedings, 19 U.S.C. § 1337(k)(1), does not provide the Commission authority to “add products to a previously-issued exclusion order,” which, Koki contends, is the “sole and avowed purpose” behind these proceedings. Pet. at 10– 11. But Koki has not shown that a post-judgment appeal would be an inadequate available way of raising this challenge. Moreover, whatever force Koki’s argument may have on direct appeal to this court, we cannot say that it has established the right to mandamus relief.

In re Point Conversions, LLC

Tropical Paradise Resorts LLC d/b/a Rodeway Inn & Suites (“Rodeway”) filed the underlying suit against Point Conversions, LLC (“PC”) in the Southern District of Florida. After the district court dismissed all claims, PC appealed to the United States Court of Appeals for the Eleventh Circuit. On May 26, 2020, the Eleventh Circuit affirmed. PC subsequently asked the Eleventh Circuit to transfer the case to this court, which the Eleventh Circuit denied on July 16, 2020. After the Eleventh Circuit denied rehearing, PC filed this petition seeking mandamus to direct the district court to vacate its order or, alternatively, to direct the Eleventh Circuit to transfer.

We must dismiss this request. PC was content with the Eleventh Circuit adjudicating its appeal until it received an unfavorable ruling. To the extent PC believes that the Eleventh Circuit erred in exercising jurisdiction or erred in affirming the district court’s judgment, the proper course is to seek review by the Supreme Court of the United States, which has jurisdiction to review decisions of the Eleventh Circuit. It cannot seek mandamus from this court, which does not have such authority. See In re Roberts, 846 F.2d 1360, 1362 (Fed. Cir. 1988) (noting that this court as “a co-equal member of a system of thirteen appellate courts. . . is not . . . possessed of jurisdiction to review and reverse the judgements of the other twelve”); see also Baker Perkins, Inc. v. Werner & Pfleiderer Corp., 710 F.2d 1561, 1565 (Fed. Cir. 1983) (citation omitted) (noting that a petitioner must “show that the action sought to be corrected by mandamus is within this court’s statutorily defined subject matter jurisdiction”).

In re Vulcan Industrial Holdings, LLC

Vulcan Industrial Holdings, LLC et al. (“Vulcan”) petition for a writ of mandamus directing the United States District Court for the Western District of Texas to vacate its August 2, 2020 order and to stay proceedings. Kerr Machine Co. opposes the petition.

Kerr and Vulcan compete in the oilfield plunger pump market. Kerr brought this suit in March 2020 seeking both damages and injunctive relief, alleging that Vulcan infringes U.S. Patent No. 10,591,070 (“the ’070 patent”). In May 2020, Vulcan petitioned the United States Patent and Trademark Office to institute post grant review (“PGR”) of all claims of the ’070 patent. Two months later, Vulcan moved to stay the litigation pending the outcome of the PGR. On August 3, 2020, the district court denied that motion, explaining, among other things, that “[t]he PTAB has not [yet] instituted the PGR.” Appx1.