The following telephone arguments will be available to the public live. Access information will be available by 9 AM ET each day of argument at: http://www.cafc.uscourts.gov/public-access-arguments.
Monday, February 1, 2021
Uniloc 2017 LLC v. Facebook, Inc., No. 19-1688
Throughout 2016, Uniloc asserted U.S. Patent No. 8,995,433 (the "'433 patent") in the Eastern District of Texas against Facebook, WhatsApp, Inc., Apple, Inc., and LG Electronics. In late 2016, Apple filed an inter partes review ("IPR") petition challenging claims 1–8 of the '433 patent ("Apple IPR"). Then, in May 2017, Facebook and WhatsApp (collectively, "Facebook") filed an IPR petition challenging claims 1–6 and 8 of the '433 patent ("Facebook IPR"). Shortly after, the Board instituted review in the Apple IPR.
In the Facebook IPR, the Board instituted trial but invited the parties to weigh in on whether, in light of the joinder of Facebook in the Apple IPR, estoppel under 35 U.S.C. § 315(e)(1) would attach to Facebook. In the meantime, LG moved to join the Facebook IPR, and the Board joined LG.
After the Board issued a Final Written Decision in the Apple IPR finding claims 1–6 and 8 were not shown to be unpatentable, the Board in Facebook held Facebook estopped under 35 U.S.C. § 315(e)(1) from challenging claims 1–6 and 8 and dismissed Facebook as a petitioner as to those claims. The Board allowed Facebook to remain as petitioner as to claim 7 and allowed LG to remain as to claims 1–8. Ultimately, the Board found claims 1–8 unpatentable.
On appeal, Uniloc argues that LG, once joined as a petitioner in the Facebook IPR, should have similarly been estopped as to claims 1 and 6–8 by the Apple IPR. According to Uniloc, the estoppel arising from the Apple IPR extends under § 315(e)(1) to "the real party in interest or privy" of Facebook, and LG's joinder as a petitioner and subsequent participation in the Facebook IPR rendered it such a privy. Uniloc highlights that LG agreed to be bound by the determination in the Facebook IPR and relied on the very grounds Facebook could not due to estoppel. Lastly, Uniloc criticizes the Board for declining to extend the estoppel to claim 7. According to Uniloc, claim 7 depends from claim 1 and the Apple IPR determined that claim 7, by virtue of its dependency on claim 1, was not unpatentable. Moreover, Uniloc argues, allowing a petitioner estopped from challenging an independent claim to still challenge its dependent claim would render the estoppel meaningless and encourage petitioners to bring piecemeal challenges to avoid estoppel.
Facebook responds that Uniloc's challenge to the Board's estoppel determinations under § 315(e)(1) is in fact a challenge to the Board's decision under 35 U.S.C. § 315(c) to institute the Facebook IPR and join LG. According to Facebook, § 315(c) is just as much an "institution-related statute" as the 35 U.S.C. § 315(b) time bar considered in Thryv, Inc. v. Click-to-Call Technologies, LP and the 35 U.S.C. § 312(a)(2) real parties in interest requirement considered in ESIP Series 2, LLC v. Puzhen Life USA, LLC. Like determinations made under § 315(b) and § 312(a)(2) then, Facebook argues, determinations under § 315(c) should be non-reviewable under § 314(b). Facebook further argues that, even if judicial review is appropriate, estoppel under § 315(e)(1) should not attach, because LG's motion to join the Facebook IPR did not render it a real party in interest or privy to Facebook.
Tuesday, February 2, 2021
Windy City Innovations, LLC v. Facebook, Inc., No. 20-1153
Windy City asserted U.S. Patent No. 8,458,245 (the "'245 patent") against Facebook in the Northern District of California, and the case was stayed pending an IPR. After some of the claims of the '245 patent were upheld in the IPR, the parties briefed claim construction issues to the district court. In addition, Facebook moved for summary judgment, asserting that the claims of the '245 patent are ineligible under 35 U.S.C. § 101 and providing expert testimony in support. Windy City responded but did not provide any expert testimony of its own. Without ruling on the claim construction issues, the district court granted Facebook's motion, finding there was no material factual dispute as to whether the claims of the '245 patent are ineligible under § 101.
On appeal, Windy City argues that the district court ignored evidence of a material factual dispute as to the eligibility of the claims of the '245 patent. Noting that, under Berkheimer v. HP Inc., the determination of patent eligibility relies on underlying factual determinations, Windy City argues that it provided the district court with evidence that the claims were not well-understood, routine, and conventional under Step Two of the Alice Corp. v. CLS Bank International framework. In particular, Windy City points to inventor testimony, the '245 patent's prosecution history, and the Final Written Decision from the IPR. According to Windy City, the district court improperly ignored that evidence of eligibility because it was not in the form of expert testimony. Windy City further argues that, in this case, the district court should have construed one term—"real time"—before ruling on Facebook's motion, because it informs what the claims are "directed to" under Step One of the Alice framework.
Facebook responds that the district court properly ruled on its motion for summary judgment. First, Facebook argues there was no material factual dispute as to whether the claims of the '245 patent are ineligible under § 101. Facebook highlights that, when it submitted to the district court a statement of undisputed material facts, it asserted that the claims of the '245 patent were "routing, conventional, and well-understood at the time the '245 patent was filed." Under the district court's standing order, Facebook argues, because Windy City failed to respond to that assertion, it is "deemed to be admitted for purposes of the motion." Facebook further argues that Windy City presented only attorney argument that the claims were not well-understood, routine, and conventional under Step Two of the Alice framework, which the district court found unpersuasive in ruling on the motion. Lastly, Facebook argues Windy City waived its argument that "real time" needed to be construed before the district court ruled on the motion, noting Windy City argued to the district court that this term requires no construction and its plain and ordinary meaning should apply.
Wednesday, February 3, 2021
Raytheon Technologies Corp. v. General Electric Co., No. 20-1755
General Electric ("GE") petitioned for IPR of claims 3 and 16 of Raytheon's U.S. Patent No. 9,695,751 ("the '751 patent"), challenging both as obvious over a prior art reference, Knip. Before the Board, Raytheon disputed that Knip was enabling. Applying the In re Wands factors, the Board determined that Knip would have enabled a skilled artisan to make and use the invention claimed in the '751 patent and, accordingly, the claims would have been obvious.
On appeal, Raytheon argues that, under Dynamic Drinkware, LLC v. National Graphics, Inc., GE bore the ultimate burden of persuasion on enablement, but the Board failed to hold GE to that burden. According to Raytheon, while Knip was initially presumed to be enabling, Raytheon met its burden of production by submitting evidence of non-enablement, including evidence from Knip itself and both Raytheon's and GE's experts. At that point, Raytheon argues, GE bore the burden of persuasion to show Knip was enabling, but GE failed to rebut Raytheon's evidence or submit any evidence of its own. According to Raytheon, the Board improperly put the burden of persuasion as to enablement on Raytheon. Moreover, Raytheon argues, the Board erred in finding Knip enabling, because the evidence shows that Knip is not.
GE responds that Raytheon's evidence regarding Knip's enablement was irrelevant because Raytheon employed the incorrect legal standard. According to GE, Symbol Technologies, Inc. v. Opticon, Inc. holds that "[w]hile a reference must enable someone to practice the invention in order to anticipate under § 102(b), a non-enabling reference may qualify as prior art for the purpose of determining obviousness under § 103." Because the claims of the '751 patent were challenged as obvious, GE argues, Knip—even if non-enabling of its own disclosure—qualifies as prior art. According to GE, the Board was correct to assess not whether Knip enables its own disclosure, but instead whether Knip would have enabled a skilled artisan to make and use the invention claimed in the '751 patent. Moreover, GE argues, the Board correctly found that Knip would have enabled a skilled artisan to do so.
University of South Florida Research Foundation, Inc. v. Fujifilm Medical Systems, No. 20-1872
The inventors of U.S. Patent No. 6,630,937 ("the '937 patent") submitted an Invention Disclosure describing their invention and assigning it to the University of South Florida ("USF"). The inventors, USF, and the University of South Florida Research Foundation ("USFRF") later executed a license transferring from USF to USFRF certain rights in the invention described in the Invention Disclosure. USFRF then asserted the '937 patent against Fujifilm in the District of Connecticut. Fujifilm moved for summary judgment, asserting that, because USFRF is not the owner of the '937 patent, it lacks standing to sue. USFRF sought to amend its complaint to add USF. Without ruling on Fujifilm's motion, the district court dismissed the action sua sponte, without prejudice, finding USFRF did not have standing to bring the action.
USFRF argues that, under Vaupel Textilmaschinen KG v. Meccanica Euro Italia, S.P.A., when a licensee holds all substantial rights in a patent, the licensee may bring suit in its own name to enforce that patent and the patent owner is not a necessary party to that action. According to USFRF, it acquired all substantial rights in the '937 patent through the license. First, USFRF argues that none of the rights reserved to USF by the license are substantial rights that would undermine its standing. Regarding USF's right to use the '937 patent for "internal research, clinical and educational purposes," USFRF argues this is not a reservation of patent rights because USF did not reserve a right to sell anything under the '937 patent. And regarding USF's right to share in infringement damages, USFRF argues Vaupel found this "without more does not amount to a substantial right." Second, USFRF argues that, while the license is silent on the right to sue, any right to sue of USF is illusory because the license permits USFRF to grant a royalty-free sublicense to any party. Third, USFRF argues that it presented sufficient evidence to establish that the license was executed before USFRF brought suit and transferred rights in the '937 patent.
Fujifilm responds that USFRF failed to establish that it had standing to bring suit. First, Fujifilm argues, because the license does not transfer rights in the '937 patent itself, but only in the Invention Disclosure, USFRF failed to prove that license transferred any rights in the '937 patent at all. Second, Fujifilm argues, USFRF failed to establish that any rights were transferred before USFRF brought suit as required for standing because the license is undated. Third, Fujifilm argues, the license fails to convey all substantial rights in the '937 patent to USFRF. In particular, Fujifilm argues that USF retains rights to bring suit; to practice the '937 patent; and receive a portion of infringement damages. Lastly, Fujifilm argues that the '937 patent states the government has "certain rights" in it as well, but USFRF failed to explain what they are.
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