Broadband iTV, Inc. v. Amazon.com, Inc., et al., No. 2023-1107 (Fed. Cir. (W.D. Tex.) Sept. 3, 2024). Opinion by Reyna, joined by Dyk and Stark.
Broadband iTV sued Amazon for infringement of five patents directed to electronic programming guides for televisions. Amazon moved for summary judgment that the patents were ineligible under 35 U.S.C. § 101, and the district court granted the motion.
Addressing the first four patents as a group, the district court determined under Alice step one that the claims are directed to the abstract idea of receiving hierarchical information and organizing the display of video content. For the fifth patent, the court determined that the claims are directed to the abstract idea of collecting and using a viewer’s video history to suggest categories of video content. Next, the district court determined under Alice step two that nothing transformed any of the claims into something other than the abstract ideas themselves. Broadband iTV appealed.
The Federal Circuit affirmed. As to the group of four patents, the Federal Circuit agreed with the district court that “receiving hierarchical information and organizing the display of video content” is an abstract idea. The court ruled that the claims are “substantively similar to claims [the Federal Circuit] has previously found directed to abstract ideas.” The Federal Circuit distinguished precedent cited by Broadband iTV, explaining that the claims in those cases were “directed to an improved structure or function of a user interface,” while the claims here are “directed to arranging content in a particular order.”
Broadband iTV also argued that the district court erred by performing an Alice step two inquiry within Alice step one. The Federal Circuit discerned no error in the district court’s analysis. The court explained that while steps one and two should not be conflated, “steps one and two are plainly related and patent eligibility may involve overlapping scrutiny of the content of the claims.”
As to the fifth patent, the Federal Circuit agreed with the district court that the claims were directed to the “abstract idea of collecting and using viewing history data to recommend categories of video content,” otherwise known as targeted advertising, which the court has repeatedly held is abstract. The abstract idea was not saved by the stated goal of reduced key presses of a viewer.
Lastly, for all five patents, the Federal Circuit affirmed the district court’s ruling under Alice step two that nothing in the claims saved them from being patent ineligible. Broadband iTV made several arguments about claim elements that allegedly transform the claims into something significantly more than the abstract ideas themselves, but the Federal Circuit was not persuaded.
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Osseo Imaging, LLC v. Planmeca USA Inc., No. 2023-1627 (Fed. Cir. (D. Del.) Sept. 4, 2024). Opinion by Stoll, joined by Dyk and Clevenger.
Osseo sued Planmeca alleging infringement of three patents related to certain orthopedic imaging systems. A jury trial was held, and the jury found infringement of all three patents and that none of the asserted claims were invalid for obviousness.
The district court upheld the jury verdict as supported by substantial evidence. Planmeca argued that the testimony of one of Osseo’s experts should have been disregarded because he was not a person of ordinary of skill in the art at the time of the alleged invention, but acquired the requisite experience nearly ten years later. The district court rejected Planmeca’s argument as legally incorrect. Planmeca appealed.
Affirming the judgment, the Federal Circuit addressed “the qualifications necessary to provide expert testimony from the perspective of one of ordinary skill in the art.” The court ruled: “All that is required to be qualified to offer expert testimony on issues from the vantage point of an ordinarily skilled artisan in a patent case is that an expert must at a minimum possess ordinary skill in the art. … Our precedent is clear—nothing more is required.”
The Federal Circuit rejected Planmeca’s urging “to add a timing requirement to the minimum qualifications necessary to offer expert testimony from the perspective of a person of ordinary skill.” The court explained that “it makes little sense to add Planmeca’s suggested timing requirement.” The testimony should be “from the vantage point of a person of ordinary skill in the art.” An expert “can acquire the necessary skill level later and develop an understanding of what a person of ordinary skill knew at the time of the invention.” That an expert was not a person of ordinary skill in the art at the time of the invention “may well be used during cross examination to undermine the credibility of the expert,” but Planmeca’s proposed timing requirement is not a basis for excluding an expert’s testimony as a matter of law.
As for the merits, the Federal Circuit agreed with the district court that substantial evidence supported the jury verdict. Thus, the Federal Circuit affirmed.
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ParkerVision, Inc. v. Qualcomm Inc., et al., Nos. 2022-1755, 2024-2221 (Fed. Cir. (M.D. Fla.) Sept. 6, 2024). Opinion by Stark, joined by Lourie and Mayer.
In 2011, ParkerVision sued Qualcomm for infringement of patents relating to “down-converting” electromagnetic signals. In an eventual appeal (ParkerVision I), the Federal Circuit affirmed the district court’s grant of judgment as a matter of law of noninfringement. In 2014, ParkerVision sued Qualcomm for infringement of several patents not asserted in the 2011 action but involving similar technology.
While both actions were pending, Qualcomm filed several IPR petitions challenging the patentability of apparatus and method claims, including one of the claims asserted in the 2014 action. The Patent Trial and Appeal Board issued a final written decision finding the challenged apparatus claims unpatentable as obvious, but ruled that Qualcomm failed to prove the challenged method claims would have been obvious. The Federal Circuit affirmed (ParkerVision II).
Afterward, the district court in the 2014 action instructed the parties to address whether any patents and claims were affected by ParkerVision I. Qualcomm moved for partial summary judgment of noninfringement based on collateral estoppel arising from ParkerVision I, but the court denied the motion because Qualcomm failed to “show there is no material difference between the patents-at-issue in ParkerVision I and the claims now asserted by ParkerVision” in the 2014 action.
Qualcomm also filed two Daubert motions. The first sought to exclude the testimony of ParkerVision’s validity expert on the ground that collateral estoppel arising from ParkerVision II precluded ParkerVision from attempting to contradict any of the Board’s findings. The second sought to exclude the testimony of ParkerVision’s infringement experts based on unreliability because the experts failed to conduct allegedly necessary testing and simulations. The district court granted both motions. The court also granted Qualcomm’s motion for summary judgment of noninfringement. ParkerVision appealed.
In the appeal, ParkerVision raised three issues, and the Federal Circuit agreed with ParkerVision as to all three.
First, ParkerVision argued that the district court erred in granting summary judgment of noninfringement based on the purported collateral estoppel effect of ParkerVision I. The sole dispute was whether the infringement issue in this case (the 2014 action) was identical to the infringement issue litigated in the 2011 action. On that point, the Federal Circuit ruled that “the district court erred by concluding, without expressly assessing through the ordinary claim construction process, that the scope of the claims asserted here is materially the same as the scope of those at issue in ParkerVision I.”
Second, ParkerVision argued that the district court erred in applying collateral estoppel to prevent its validity expert from offering testimony that would have been arguably inconsistent with the Board’s findings during the IPR. The Federal Circuit recognized that it “ha[d] not previously addressed the question of whether a finding underlying an unpatentability decision in an IPR proceeding collaterally estops a patentee from making validity arguments regarding separate, related claims in district court litigation.” Addressing that issue now, the Federal Circuit held “that it does not” result in collateral estoppel. For instance, in the IPR proceedings Qualcomm’s burden was only a preponderance of the evidence, while Qualcomm’s burden to show invalidity in district court is “a higher burden: clear and convincing evidence.” Thus, the district court abused its discretion in granting Qualcomm’s Daubert motion excluding the testimony of ParkerVision’s validity expert.
Finally, ParkerVision argued that the district court abused its discretion in excluding its infringement experts’ testimony as unreliable. The Federal Circuit agreed, ruling there was neither a factual or legal basis for requiring the experts to test or simulate the accused products. The Federal Circuit ruled: “While Qualcomm’s attacks on ParkerVision’s experts may well persuade a jury not to credit the experts’ infringement opinions, the district court should have left it to jurors to evaluate the correctness of facts underlying an expert’s testimony.”