Federal
Circuit Vacates And Remands Permanent Injunction
In Versata Software Inc. et al. v. SAP America Inc. et al. (Appeal Nos.
2012-1029, 1049), the Federal Circuit affirmed the jury’s infringement
decision and damages awards, but vacated the trial court’s issuance of a
permanent injunction.
The patents-in-suit relate to the field of
computer-based pricing of products. The claimed invention leverages hierarchical product and data
structures to organize pricing information. After affirming the district court judgment of infringement and the
damages award, the Federal Circuit found the breadth of the permanent
injunction to be overbroad.
SAP argued that the injunction was overbroad because it
prohibited SAP from offering maintenance and additional seats for SAP’s
current customers. “Additional seats” refers to increasing the number of
users covered under a specific license. SAP did not challenge the portion of
the injunction that prohibits it from offering the accused functionality in
new sales of its software. The
injunction used two key terms: the “Infringing Products” and “the Enjoined
Capability.” The enjoined capability
was the capability to execute a pricing procedure using hierarchical access
of customer and product data. However, the enjoined capability represented
only a fraction of the features contained in the infringing products. The Federal Circuit held that the trial
court erred by placing emphasis on SAP’s product as a whole, and SAP should
be able to provide maintenance or additional seats for prior customers of its
infringing products, so long as the maintenance or the additional seat did not
involve, or allow access to, the enjoined capability.
The
Federal Circuit accordingly vacated certain language from the permanent
injunction and remanded to the trial court to modify its order in accordance
with the Federal Circuit’s opinion.
Federal
Circuit Vacates Grant Of Summary Judgment
In Baron Services, Inc. v. Media Weather Innovations LLC (Appeal
Nos. 2012-1285, -1443), the Federal Circuit vacated the district court’s
summary judgment and award of attorney’s fees and remanded the case for
further proceedings.
Baron
owns U.S. Patent No. 6,490,525 (“’525 patent”), which generally relates to
systems and methods for weather reporting and forecasting, and more
particularly, to computerized systems and methods for reporting and
forecasting real-time weather information. Barron sued MWI’s WeatherCall programs for infringement.
MWI
filed a summary judgment motion for noninfringement. Baron requested the
district court to delay ruling on the summary judgment motion until it had
the opportunity to examine MWI’s source code and to depose the witnesses who
had submitted affidavits in support of the summary judgment motions. The
district court granted the summary judgment motion and held that Baron never
“ask[ed] for more time to complete discovery” and failed to “assert it could
not prosecute this action without further discovery.” Subsequently, MWI filed a motion for
attorney’s fees pursuant to 35 U.S.C. § 285, which the district court
granted, and the district court entered judgment awarding MWI $243,757.45 for
attorney’s fees.
On
appeal, the Federal Circuit found that Baron appeared to have diligently
pursued discovery, and under the circumstances, it was
improper for the district court to have refused Baron’s request to delay
ruling on MWI’s summary judgment motion until Baron had the opportunity to
access MWI’s source code and depose the witnesses. The Federal Circuit thus held that the
district court abused its discretion by denying Baron’s request under Rule
56(d) to delay ruling on MWI’s summary judgment motion, and vacated the
district court’s summary judgment order and the district court’s order and
judgment awarding attorney’s fees.
Federal
Circuit Affirms Finding That Claims Were Directed to Ineligible Subject
Matter Under 35 U.S.C. § 101
In CLS
Bank Int’l v. Alice Corporation (Appeal No. 2011-1301), the Federal Circuit, sitting en banc, affirmed the district court
decision that Alice’s patents were directed to ineligible subject matter under 35 U.S.C § 101.
The claims of the patents-in-suit were for methods,
computer-readable media, and systems for the use of intermediaries to help
consummate exchanges between parties (an escrow arrangement). A majority of the judges found the method
and computer-readable media claims to be patent-ineligible, while the court
divided equally as to the system claims.
Separate opinions were filed by (1) Judge LOURIE, joined
by Judges DYK, PROST, REYNA, and WALLACH, (2) Chief Judge RADER and Judges LINN,
MOORE, and O’MALLEY, (3) Judge MOORE, joined by Judges RADER, LINN and
O’MALLEY, (4) Judge NEWMAN, (5) Judges LINN and O’MALLEY, and (6) Judge RADER
filed a 5-page set of “additional reflections.”
Judge Lourie’s opinion adopted an approach for evaluating
subject matter eligibility that turned on the “practical likelihood of a
claim preempting a fundamental concept.” This approach called for determining whether a claim posed any risk of
preempting an abstract idea and, if so, whether the claim limitations added
“enough” beyond the abstract idea to sufficiently limit the claim “to a
narrower, patent-eligible application of that idea.”
Federal
Circuit Vacates Grant Of Summary Judgment For Lack Of Subject Matter
Jurisdiction
In Forrester Envionmental v. Wheelabrator Tech. (Appeal No. 2012-1686), the Federal Circuit vacated the
district court’s grant of summary judgment on the grounds that the district
court lacked subject matter jurisdiction.
Forrester
filed suit against Wheelabrator in State court. The complaint alleged four
causes of action, all based on New Hampshire state law. Wheelabrator removed the case to the U.S.
District Court for the District of New Hampshire. Forrester filed a motion to remand the case
to state court, arguing that the district court
lacked
subject-matter jurisdiction. In response, Wheelabrator argued that there was
federal jurisdiction because Forrester could only recover if it prevailed on
a substantial question of U.S. patent law.
The Federal Circuit, citing Gunn v. Minton, 568 U.S. ___, ___, 133 S. Ct. 1059,
1065 (2013), held that even if the
allegations contained in Forrester’s complaint necessarily raise a question
of patent law, the patent law issues are not “substantial in the relevant
sense” under Gunn. As such, the district court lacked subject-matter
jurisdiction over Forrester’s claims, and the Federal Circuit vacated the
district court’s judgment and remanded to the district court with
instructions to remand the case to the New Hampshire state court.
Federal Circuit Reverses Finding Of No
Infringement
In Aventis Pharmaceuticals Inc. v. Amino
Chemicals, Ltd. (Appeal Nos. 2011-1335,-1336) the Federal Circuit
reversed a judgment of no patent infringement.
The
parties stipulated to noninfringement following the district court’s Markman
opinion. The district court construed
the term “substantially pure” to require “at least 98% purity with respect to
all impurities.”
The
Federal Circuit determined that this construction conflated the purity
required for the piperidine end product with that of the CPK
intermediate. As such, the district
court erred in requiring that “substantially pure” have the same
interpretation when applied to the CPK intermediate and the piperidine derivative
end product. Because the district court erred in construing “substantially
Pure,”
the Federal Circuit reversed and remanded. |