Freshub, Inc. v., Inc., Appeal Nos. 2022-1391, -1425 (Fed. Cir. Feb. 26, 2024)

In the Court’s only precedential patent opinion this week, the Court affirmed a jury finding that use of Amazon’s “Alexa” products to create a shopping list did not infringe appellant Freshub’s U.S. Patent No. 9,908,153 directed to certain voice-processing technology.  The Court also denied Freshub’s appeal of the district court’s denial of its motion for a new trial based on allegedly prejudicial statements by Amazon’s counsel, and denied Amazon’s cross-appeal concerning the district court’s rejection of its inequitable conduct defense.

On the question of infringement, the Court’s decision deferred to the jury’s latitude in its understanding and application of an unconstrued claim term.  The claims of the ’153 patent are directed to a system that translates a user’s spoken words into text, which must then “identify an item corresponding to the text” and “add the identified item to a list associated with the user.”  The Court’s discussion on appeal turned on the presence of the “identify an item” limitation, and Freshub argued that substantial evidence did not support the jury’s finding of non-infringement.  For example, the evidence showed that when a user instructed Alexa to “add bananas to my shopping list,” the software would typically extract the keyword “bananas” to add to the list, which Freshub argued necessarily showed the presence of the “identify an item” limitation.

The Federal Circuit disagreed, emphasizing that there had been no claim construction of the “identify an item” or related limitations, and that Freshub had not argued that there should have been.  Without that guidance, the Court reasoned, the jury was free to understand the limitation to refer to some specific, purchasable item as opposed to simply text extracted from a larger string of text.  Amazon’s experts had testified at trial that Alexa’s shopping list feature did not perform any search or analysis to determine, for example, whether “bananas” is an actual, purchasable thing, and that the system would freely add nonsense entries like “sad” or “unicorns in a can” at a user’s command.  The Federal Circuit found that such evidence would provide sufficient support for the jury to conclude that the accused shopping list feature did not identify or add “items” as required by the claims.

Freshub had also moved for a new trial based on certain statements from Amazon’s counsel, arguing that Amazon had prejudicially referred to the filing date of its patent application to suggest some improper attempt to cover Amazon’s products, and that Amazon’s discussion at trial of the U.S. patent system had been intended to invoke an “us vs. them” mentality against Freshub, an Israeli company.  The district court denied Freshub’s motion, relying largely on the fact that Freshub had not timely objected at trial to the allegedly objectionable statements.  The Federal Circuit affirmed.

Notwithstanding that it upheld the jury verdict in Amazon’s favor, the Court also briefly addressed Amazon’s cross-appeal from the district court’s bench ruling that rejected its inequitable conduct defense.  Amazon had argued that an ancestor application to the ’153 patent had sat abandoned for around five years before being revived by Freshub to generate new claims.  In reviving the application, Freshub’s counsel had been required to certify that the delay in prosecution had been unintentional.  Amazon argued that the abandonment had been intentional, and that the certification by Freshub’s counsel had thus been a falsehood.  While acknowledging the sparsity of evidence on this point resulting from Freshub’s assertions of the attorney-client privilege, the Federal Circuit agreed with the district court that Amazon had failed to carry its burden to show by clear and convincing evidence that Freshub’s prosecuting counsel had deliberately misrepresented Freshub’s intent.

The opinion can be found here.

By Nika Aldrich

This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.

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