This morning, the Federal Circuit released three precedential opinions, one nonprecedential opinion, two Rule 36 judgments, and two nonprecedential orders dismissing appeals. All three precedential opinions come in patent cases: one reviews an order holding asserted claims indefinite; another addresses the eligibility of asserted claims; and a third reviews a finding of a firm’s conflict of interest. The nonprecedential opinion comes in a pro se appeal of a decision of the Merit Systems Protection Board. Here are the introductions to the opinions and links to the judgments and dismissals.
Gramm v. Deere & Co. (Precedential)
Reaper Solutions, LLC and Richard Gramm appeal an order of the United States District Court for the Southern District of Iowa concluding the asserted claims of U.S. Patent No. 6,202,395 are invalid as indefinite and entering a judgment in favor of Deere based on that conclusion. We reverse the district court’s indefiniteness conclusion and judgment of invalidity and remand for further proceedings consistent with this opinion.
The Trustees of Columbia University in the City of New York v. Gen Digital Inc. (Precedential)
The Trustees of Columbia University in the City of New York (“Columbia”) brought suit against Gen Digital Inc., which markets the Norton software brand, (“Norton”) asserting infringement of several claims of United States Patent Nos. 8,601,322 (the “’322 patent”) and 8,074,115 (the “’115 patent”) related primarily to protecting computer systems from viruses and other malicious activity. Columbia also sought correction of inventorship of United States Patent No. 8,549,643 (the “’643 patent”).
Norton filed a motion for judgment on the pleadings with respect to the ’322 and ’115 patent claims, arguing the asserted claims were ineligible under 35 U.S.C. § 101. The district court denied the motion, concluding that under step one of the framework set forth in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the claims were not directed to an abstract idea. Before trial, the district court struck the § 101 defense. After trial, the jury returned a verdict of willful infringement on four claims: claims 2, 11, and 27 of the ’322 patent and claim 2 of the ’115 patent (together, the “asserted claims”) and awarded $185,112,727 in damages. The damages figure included damages based on Norton’s sales to customers outside the United States. The district court denied judgment as a matter of law (“JMOL”) on the issues of infringement, willfulness, and damages as to the foreign sales. Based on the jury verdict, the district court awarded enhanced damages and attorneys’ fees, in part because of a negative inference imposed based on a contempt finding against Quinn Emanuel Urquhart & Sullivan, LLP (“Quinn”), Norton’s counsel.
We vacate the judgment. We conclude that the asserted claims are abstract at step one of the Alice analysis and that further proceedings on remand are required as to step two. Because other issues may arise on the remand, we address those issues, which the district court need take up only if the patent claims are determined to be eligible. We see no error in the district court’s claim construction or its denial of JMOL with regard to the issues of infringement and willfulness. However, we conclude the district court erred in its denial of JMOL as to damages resulting from foreign sales. In the companion case we also decide today, No. 2024-1244, we reverse the contempt order against Quinn. This would require vacating the award of enhanced damages and attorneys’ fees in this case since those awards relied in part on the contempt finding. Other considerations also would require reconsideration of the enhancement.
The Trustees of Columbia University in the City of New York v. Gen Digital Inc. (Precedential)
The Trustees of Columbia University in the City of New York (“Columbia”) brought suit against Gen Digital, Inc., which markets the Norton software brand, (“Norton”) asserting infringement of several patents, including United States Patent Nos. 8,601,322 (the “’322 patent”) and 8,074,115 (the “’115 patent”), and seeking correction of inventorship as to United States Patent No. 8,549,643 (the “’643 patent”) owned by Norton. In a companion case, No. 2024-1243, Norton appeals the judgment of infringement with respect to the ’322 and ’115 patents. In a separate opinion issued today in that companion case, we address issues concerning patent ineligibility, infringement, foreign sales, enhanced damages, and attorneys’ fees. This case involves an appeal by Norton’s counsel, Quinn Emanuel Urquhart & Sullivan, LLP (“Quinn”), from a finding of civil contempt. The contempt issue arose in connection with Columbia’s claims for correction of inventorship of the ’643 patent owned by Norton, claims not involved in the other appeal.
The ’643 patent issued on October 1, 2013, listing Norton employee Darren Shou as the sole inventor. Columbia contended that Columbia professors Salvatore Stolfo and Angelos Keromytis were the true and only inventors of the ’643 patent, or in the alternative, joint inventors of the patent with Mr. Shou. In connection with the inventorship issue, Columbia argued that Norton’s counsel, Quinn, improperly represented both Norton and a former employee of Norton, Marc Dacier, and improperly prevented Dr. Dacier from testifying in support of Columbia’s inventorship claims.
The district court agreed that Quinn had a conflict of interest, which it concluded automatically terminated the representation of Dr. Dacier, and ordered Quinn to disclose its allegedly privileged communications with Dr. Dacier. Quinn refused, and the court found Quinn in civil contempt, imposing as a sanction a negative inference that Dr. Dacier would have testified that Quinn acted improperly, supporting Columbia’s motion for enhanced damages and attorneys’ fees for infringement of the ’332 and ’115 patents in the companion case.
We reverse the order requiring Quinn to disclose its communications with Dr. Dacier and the order holding Quinn in contempt.
As a result, in the companion case we also set aside the district court’s award of enhanced damages and attorneys’ fees since they rested in part on the improper contempt finding.
Patrick v. Federal Deposit Insurance Corp. (Nonprecedential)
Kimberly Patrick appeals the final decision of the Merit Systems Protection Board (“Board”) sustaining her removal from her position with the Federal Deposit Insurance Corporation (“FDIC”) on the charge of excessive absences. Patrick v. Federal Deposit Insurance Corporation, No. NY-0752-12-0130-I-6, 2024 WL 1885525 (M.S.P.B. Apr. 29, 2024) (“Final Order”). For the reasons stated below, we affirm the Board’s decision.