Judgment of Non-Infringement Moots Appeal of PTAB Decision Sustaining Validity

In ABS Global, Inc. v. Cytonome/St, LLC, [2019-2051] (January 6, 2021), the Federal Circuit dismissed the appeal of a PTAB decision in an inter partes review sustaining the patentability of certain claims of U.S. Patent No. 8,529,161, finding that it was unlikely that the ‘161 patent would be asserted against the petitioner in the future.

Two weeks after the Board’s final written decision, the district court granted in part ABS’s motion for summary judgment, concluding that ABS’s accused products did not infringe any of the ’161 patent claims. In June 2019, nearly two months after the district court’s summary judgment decision, ABS appealed the Board’s final written decision. Cytonome’s response brief, filed about three months later, included an affidavit by Cytonome’s counsel stating that Cytonome “has elected not to pursue an appeal of the dis-trict court’s finding of non-infringement as to the ’161 pa-tent and hereby disclaims such an appeal.” Cytonome then argued that, because it disavowed its ability to challenge the district court’s summary judgment that ABS did not infringe the ‘161 patent claims, ABS lacked the requisite injury in fact required for Article III standing to appeal the Board’s final written decision regarding validity of the claims of the ’161 patent.

The Federal Circuit, applying the voluntary cessation doctrine, concluded that Cytonome’s disavowal of its right to appeal the district court’s noninfringement judgment mooted ABS’s appeal of the IPR. The Federal Circuit first observed that Cytonome’s assertion of the ’161 patent against ABS—cannot reasonably be expected to recur. Although Cytonome’s
affidavit disavowing its appeal is unquestionably narrower than a covenant not to sue, Cytonome’s disavowal was “coextensive with the asserted injury” in fact. The Federal Circuit said that Cytonome’s disavowal estops Cytonome from asserting liability against ABS for infringement of the ’161 patent claims in connection with the accused products, thereby allowing ABS to make, use, and sell those products freely.

The Federal Circuit found that Because Cytonome has demonstrated that its disavowal encompasses all of its allegedly unlawful conduct, it was incumbent on ABS to indicate that it engages in or has sufficiently concrete plans to engage in activities not covered by the disavowal. The Federal Circuit concluded that ABS’s IPR appeal is moot because there is no injury sufficient to support an ongoing case or controversy.

Posted in IPR

Even If Phrase Was In the Preamble, it is a Claim Limitation that was Not Met

In Simo Holdings Inc. v. Hong Kong Ucloudlink Network Technology Ltd., [2019-2411] (January 5, 2021) the Federal Circuit reversed the district court’s final judgment of $8,230,654 for infringement of claim 8 of U.S. Patent No. 9,736,689, on apparatuses and methods that allow individuals to reduce roaming charges on cellular networks, rejecting the district court’s claim construction.

At issue was whether claim 8 required a a “non-local calls database.” The Federal Circuit noted that the language at issue follows, rather than precedes, the word “comprising,” which is one of the transition words that typically mark the end of the preamble, with what follows constituting the body of the claim. The Federal Circuit said that the placement of the language suggests that it is part of the body of the claim, a characterization that, if accepted, would place its limiting character beyond dispute. However. the parties treated the language at issue as part of the preamble, treating only the succeeding six paragraphs as the body of the claim. But even under that characterization, the Federal Circuit concluded, the language at issue is limiting. By supplying the only structure for the claimed apparatus, the Federal Circuit said that the preamble language supplies “essential structure,” and the body does not define “a structurally complete invention”—which are two key reasons for preamble language to be deemed limiting. Further supporting its conclusion that the “preamble” was limiting, the Federal Circuit noted thatthe opening language of the preamble provided an antecedent basis for terms in the body of the claim.

Simo argued that even if some parts of the preamble are limiting, some components, including the disputed “non-local calls database”, should not be deemed limiting, because they are “unnecessary to perform the functions specified after the preamble. However, the Federal Circuit declined to parse the preamble in that way where the preamble supplies the only structure of the claimed device and the disputed language does not merely identify an intended use or functional property but is “intertwined with the rest of the preamble.”

The Federal Circuit rejected the district court’s conclusion that claim 8 does not require a “non-local calls database.” The determinative issue was the phrase “a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database.” The Federal Circuit said that the district court treated the word “and” near the end of the phrase as meaning “and/or,” incorrectly concluding that “a plurality of” requires only “at least two” members selected from the entire list of identified items (memory, processors, etc.). The Federal Circuit said instead. “a plurality of” requires at least two of each of the listed items in the phrase at issue in claim 8.

Having concluded that the a non-local calls database was a required element, the finding of infringement should be reversed, and summary judgment of non-infringement should be granted.