Latest Federal Circuit Court Cases, 11/19/18
ArcelorMittal Atlantique Et Lorraine v. AK Steel Corporation, Appeal No. 2017-1637 (Fed. Cir. Nov. 14, 2018)
In an opinion originally filed as sealed on Nov. 5 and unsealed on Nov. 18, the Federal Circuit vacated and remanded a district court’s grant of summary judgment of non-infringement. The Federal Circuit held that the district court erroneously applied the doctrine of collateral estoppel, but the doctrine did not apply because the accused products in this action were materially different.
The patent-at-issue relates to boron steel sheets with an aluminum-based coating that, when hot-stamped, become highly mechanically resistant. In 2010, patent owner ArcelorMittal brought patent infringement claims against AK Steel, alleging that the steel sheets produced by AK Steel met a claim limitation requiring the steel sheets to have a mechanical resistance of 1500 megapascals (“MPa”) or greater. A jury determined that AK Steel’s accused AXN products did not infringe, partly because the products failed to meet the 1500 MPa requirement.
In 2013, ArcelorMittal brought another suit accusing AK Steel’s ULTRALUME products of patent infringement. AK Steel argued that the ULTRALUME steel sheets and the AXN steel sheet are the same, and therefore, ArcelorMittal was collaterally estopped from bringing the infringement claims. However, ArcelorMittal argued that new evidence showed that the ULTRALUME products were materially different and hot-stamped to meet the 1500 MPa requirement.
On appeal, the Federal Circuit addressed whether the accused products are the same or whether they have materially changed. Accused products are “essentially the same” where the differences between them are merely colorable or unrelated to the limitations of the patent claims.
The Federal Circuit concluded that the ULTRALUME products and the AXN products were materially different, pointing to (1) a declaration and auto manufacturer’s presentation slide containing test data listing AK Steel as a supplier of steel sheets exceeding 1500 MPa, and (2) AK Steel’s own product brochure advertising its ULTRALUME products as “600 MPa to 1400 MPa and higher.” The Court determined that, in the aggregate, this evidence was enough to constitute “more than a modicum of proof” that the products accused in the 2013 action were materially different from those accused in the 2010 action. As such, granting summary judgment based on collateral estoppel was improper.
The opinion can be found here.
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Ancora Technologies, Inc. v. HTC America, Inc., HTC Corporation, Appeal No. 2018-1404 (Fed. Cir. November 16, 2018)
In an appeal from a district court granting HTC's motion to dismiss on the grounds that Ancora Technologies, Inc.’s patent claims were directed to patent ineligible subject matter under 35 U.S.C. § 101, the Federal Circuit reversed. The Federal Circuit found that under Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), the claims at issue were not directed to ineligible subject matter. Instead, the claimed advance was a concrete assignment of specified functions among a computer’s components to improve computer security, and this claimed improvement in computer functionality was eligible for patenting. As a result, the claims were not invalid under § 101, the Federal Circuit reversed the motion to dismiss and remanded the case.
The opinion can be found here.
Hamilton Beach Brands, Inc. v. f’real Foods, LLC, Appeal No. 2018-1274 (Fed. Cir. Nov. 16, 2018)
The Court affirmed an inter partes review decision of the Patent Trial and Appeal Board.
As an initial matter, the Court addressed a Notice of Supplemental Authority submitted by Patent Owner Appellee f’real, arguing that the IPR was time-barred under 35 U.S.C. § 315(b) in light of the Court’s recent decision in Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018). While f’real framed this argument as “an alternate basis on which to affirm the Board’s decision,” the Court declined to consider it based on f’real’s failure to file a cross-appeal, which is required “when acceptance of the argument [the litigant] wishes to advance would result in a reversal or modification of the judgment rather than an affirmance.” Because a finding that the IPR was time-barred would require vacatur of the Board’s decision and a remand for dismissal—rather than affirmance—f’real was required to file a cross-appeal and the Court declined to consider the new argument.
The Court proceeded to affirm PTAB’s claim constructions and found its finding of non-obviousness on the asserted grounds to be supported by substantial evidence.
The opinion can be found here.
In re Oath Holdings Inc., No. 2018-157 (Fed. Cir. Nov. 14, 2018
The Federal Circuit granted Oath’s petition for writ of mandamus in this opinion relating to venue. In granting the petition, the Court vacated an earlier order from the district court that denied Oath’s Rule 12(b)(3) motion to dismiss for improper venue, and remanded the case to the district court to either dismiss the case entirely or transfer it to a proper venue. This was Oath’s second petition for writ of mandamus on the issue of venue because after the Court’s decision on Oath’s first petition (in which the Court directed Oath to move the district court to reconsider its order denying Oath’s motion to dismiss), the district court, for a second time, denied Oath’s venue motion—this time on grounds of waiver, finding that the Supreme Court’s TC Heartland decision did not change the venue law and Oath thus waived its right to move to dismiss. In its opinion here, the Federal Circuit found the district court erred when it failed to follow the precedent set forth in Micron (see here), and specifically held that Oath did not waive or forfeit its venue rights by waiting until after the Supreme Court decided TC Heartland to move to dismiss for improper venue. Thus, the Court found that since Oath raised its venue defense within 21 days of the TC Heartland opinion, no waiver existed and Oath’s motion was proper.
Opinion can be found here.