A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc., Nos. 2018-1329, -1331, -1728 (Fed. Cir. (S.D. Cal.) Nov. 13, 2019). Opinion by Lourie, joined by Moore and Stoll.
Columbia asserted infringement of a utility patent and a design patent in the District of Oregon. In response, Seirus filed a motion to dismiss for improper venue, seeking to transfer the case to the Southern District of California. The District of Oregon initially denied the motion and, following briefing, granted summary judgment that Seirus’s products infringe the design patent. After the Supreme Court’s TC Heartland decision, Seirus renewed its motion to transfer and the district court agreed, transferring the case to the Southern District of California. The California court held a jury trial, and the jury found that the claims of Columbia’s utility patent were invalid as anticipated and obvious. After post-trial motions, both parties appealed.
Addressing invalidity of the utility patent, Columbia argued on appeal that the primary prior art reference failed to disclose certain claim limitations, and that Seirus’s expert “falsely testified” about the teachings of that reference. The Federal Circuit analyzed the record and ruled that “the jury’s verdict that the claims of the [utility] patent would have been obvious is certainly supported by substantial evidence.” The Federal Circuit therefore did not reach the issue of anticipation. As for the asserted false testimony, the Federal Circuit refused to award Columbia a new trial, noting that the reference was in evidence for the jury to consider and that Columbia “had ample opportunity to cross-examine” the expert.
Turning to the district court’s summary judgment ruling that Seirus infringed Columbia’s design patent, the Federal Circuit reversed. The design patent claims the ornamental design of a heat reflective material with a “wave-pattern design” depicted in the figures. Seirus argued that summary judgment was improper due to “substantial and significant differences between the designs” that involve factual disputes. The Federal Circuit agreed that there were factual disputes that should have been tried to a jury.
The Federal Circuit also noted that, in the accused design, Seirus’s logo is an integral part of the design, and the district court “improperly declined to consider the effect of Seirus’s logo in its infringement analysis.” The Federal Circuit explained that while infringement liability cannot be avoided by copying a design and labeling it with a different name, that was not the case here. In this case, the fact finder should consider Seirus’s “ornamental logo, its placement, and its appearance as one among other potential differences between a patented design and an accused one. Indeed, the fact finder is tasked with determining whether an ordinary observer would find the ‘effect of the whole design substantially the same.’” The Federal Circuit therefore reversed the grant of summary judgment and remanded.
Lastly, Columbia challenged the district court’s transfer of the case to California. The Federal Circuit addressed the circumstances, including the intervening TC Heartland opinion, and ruled that the district court did not abuse its discretion by transferring the case.
Koninklijke KPN N.V. v. Gemalto M2M GmbH, et al., Nos. 2018-1863, -1864, -1865 (Fed. Cir. (D. Del.) Nov. 15, 2019). Opinion by Chen, joined by Dyk and Stoll.
The Federal Circuit reversed a district court ruling that Koninklijke’s asserted patent claims were ineligible for patenting under 35 U.S.C. § 101.
In the district court, Koninklijke asserted infringement of a patent related to an improved check data generating device that can detect errors not detectable by prior art systems. The accused infringers moved for judgment on the pleadings that the claims of the patent are ineligible. The district court granted the motion, applying the two-step framework laid out in Alice. At step one, the district court found that the claims were directed to the abstract idea of reordering data and generating additional data. At step two, the court indicated that while the patent specification may recite patent-eligible subject matter, the inventive concept was not captured in the claims. Koninklijke appealed.
At the outset, the Federal Circuit stated that, “since Alice, we have found software inventions to be patent-eligible where they have made non-abstract improvements to existing technological processes and computer technology.” However, “an improved result, without more stated in the claim, is not enough to confer eligibility to an otherwise abstract idea. To be patent-eligible, the claims must recite a specific means or method that solves a problem in an existing technological process.”
Under step one of Alice (without needing to reach step two), the Federal Circuit concluded that the claims “are patent-eligible because they are directed to a non-abstract improvement in an existing technological process (i.e., error checking in data transmissions).” The claims recite a sufficiently specific implementation of an existing tool “that improves the functioning of the overall technological process of detecting systematic errors in data transmissions.” The court continued: “Importantly, the claims do not simply recite, without more, the mere desired result of catching previously undetectable systematic errors, but rather recite a specific solution for accomplishing that goal.” Therefore, the Federal Circuit reversed the district court’s determination that the claims are ineligible.