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, May 4, 2020
Electronic Communication v. ShoppersChoice.com, LLC, 19-2087, teleconference
This appeal centers on whether the district court abused its discretion by not classifying this case as exceptional under 35 U.S.C. § 285 and not awarding attorneys' fees to appellant ShoppersChoice. The district court invalidated Electronic Communication's (ECT) claim 11 of U.S. Patent No. 9,373,261 (the "'261 patent") and granted ShoppersChoice a judgment on the pleadings. The court held that the claim, relating to an automated notification system, was directed to an abstract idea under 35 U.S.C. § 101 and that the elements of the claim did not transform it into patent-eligible subject matter. ShoppersChoice then filed a motion for attorney's fees under § 285, and the district court denied it.
On appeal, ShoppersChoice argues that the case is exceptional because ECT improperly attempted to enforce the '261 patent, which belongs to a family in which three patents have previously been invalidated. ShoppersChoice also argues that it is entitled to attorneys' fees because ECT could not describe any claimed inventive concept to the district court. Lastly, ShoppersChoice argues that ECT has a prolific history of bringing allegedly nuisance infringement claims against multiple defendants. ECT argues that ShoppersChoice incorrectly relies on patents that are not in suit and relies on non-precedential cases in making arguments regarding ECT's prior litigations.
Thursday, May 7, 2020
In Re PersonalWeb Technologies LLC, 19-1918, teleconference
This appeal addresses whether the district court properly precluded PersonalWeb's infringement claims relating to Amazon's Simple Storage Service ("S3"). PersonalWeb sued Amazon in the Eastern District of Texas ("EDTX") in 2011, alleging infringement of its patents by S3. After the suit was dismissed with prejudice, PersonalWeb later sued multiple website operators alleging infringement of a different feature of S3. The district court here granted Amazon's motion for summary judgment and held that under the Kessler doctrine, the earlier EDTX suit involving the first feature precluded this suit about the second feature.
On appeal, PersonalWeb argues that the Kessler doctrine cannot apply because the EDTX case did not result in a final adjudication of non-infringement, and that claim preclusion cannot apply because the accused features are not "essentially the same." Amazon argues that because the product in question is S3 in both cases, the EDTX case has a preclusive effect.
Thursday, May 7, 2020
Uniloc 2017 LLC v. Hulu, LLC, 19-1686, teleconference
This appeal concerns whether the Patent Trial and Appeal Board ("PTAB") properly denied Uniloc's motion to amend U.S. Patent No. 8,566,960 (the "'960 patent") because the PTAB found the substitute claims ineligible under § 101. Hulu filed an inter partes review ("IPR") challenging the patent's claims. Uniloc filed a contingent motion to amend certain claims should the PTAB find those claims unpatentable. In its final written decision, the PTAB analyzed Uniloc's proposed claims and found them patent-ineligible under § 101. The PTAB thus denied the motion and also denied Uniloc's request for a rehearing.
On appeal, Uniloc argues that the America Invents Act ("AIA") precludes the PTAB from considering § 101 eligibility issues in the amended claims, as grounds for invalidation in IPRs are limited to § 102 and § 103 issues. Uniloc points to other post-grant proceedings that explicitly allow § 101 analyses as a comparison. Uniloc also references case law that discusses the purpose of IPRs, which Uniloc argues is to allow a patent owner to narrow its claims under minimal regulatory criteria. Hulu argues that the AIA does not limit which patentability challenges can be made against substitute claims, and that provisions pointed to by Uniloc apply to only patented claims, not substitute claims.
Friday, May 8, 2020
Dana-Farber Cancer Institute v. Ono Pharmaceutical Co., Ltd., 19-2050, teleconference
The focus of this appeal is whether the district court erred by holding two individuals as co-inventors of the patents at issue, which relate to methods of treating cancer. Dana-Farber sued Ono Pharmaceuticals, its affiliates, and the named inventor on the patents to add the two individuals as co-inventors to the patents. The district court found that both individuals qualified as inventors.
Ono, the appellant, argues that the alleged inventors' contributions to the invention were "too far removed" from the patented methods as they did not continuously work together, and that none of the cited experiments in the patents was actually performed by the alleged inventors. Ono also argues that the alleged inventors' contributions were publicly disclosed before supposed conception. Dana-Farber argues in response that inventorship does not require that inventors work together or at the same time, and that preliminary discussions between the alleged inventions and the undisputed inventor substantially affected the trajectory of conception of the claimed inventions.
Originally published May 1, 2020.
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