September 17, 2021

Volume XI, Number 260

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Spotlight on Upcoming Oral Arguments – July 2021

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.

Wednesday, July 07, 2021

Gabara v. Facebook, Inc., No. 2020-2333

Gabara sued Facebook Inc. in the Southern District of New York asserting infringement of several patents relating to imaging technology. Facebook moved to dismiss, arguing the claims of the asserted patents were invalid under 35 U.S.C. § 101. The district court granted Facebook’s motion. It found at Alice Step One that the claims were directed to the abstract idea of “[m]oving the device to change one’s view of the image.” At Alice Step Two, the district court found no inventive concept, finding the patents “employ conventional computer hardware and processes, in an ordinary manner, to achieve the idea at the heart of the invention.”

On appeal, Gabara asserts the district court erred in casting his invention as a computerized implementation of the abstract idea. He argues his invention is distinguishable from existing applications, like using a portable device camera to simulate a magnifying glass, that are directed to this abstract idea. He notes that, while the claims do use physical displacement to update a device’s display, they also recite specific vector methods that consider all aspects of displacement, allowing for dynamic variations of the angle and perspective used to view the image. He argues the claims solve a problem having no real-world analogy, namely, changing a portable device display to show parts of a background image that could not otherwise be seen on a small screen.  He argues the claims recite specific implementations of kinesthetic navigation on a portable device to solve the small-screen problem. He likens the claims to those reciting user interface improvements for devices with “small screens” found eligible in Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.

Facebook responds that the district court’s analysis of the claims under Alice was correct. It argues the claims boil down to the abstract idea of moving a portable device to view different portions of an image. It argues the district court correctly reasoned that this occurs in common human activities, such as using a telescope to view different portions of the sky or using a pair of binoculars to watch different parts of a sporting event at a stadium. It argues that the image is digital rather than physical does not change the analysis. Facebook further argues the claims recite no technological improvement or other inventive concept, and the district court correctly found that both the hardware and the recited algorithmic steps were entirely conventional, the patents do not disclose any inventive concept.

Thursday, July 08, 2021

F’real Foods LLC v. Hamilton Beach Brands, Inc., Nos. 2020-1996 and -2042

F’real Foods sued Hamilton Beach in the District of Delaware asserting infringement of three patents. Prior to trial, the district court granted F’real Foods’ motion in limine to exclude a potentially invalidating reference, a Japanese Patent Office publication to Sato. The district court found it did not constitute a printed publication under 35 USC § 102 because a skilled searcher conducting a diligent search could not reasonably be expected to find Sato.

On appeal, Hamilton Beach argues the district court erroneously determined Sato did not qualify as a printed publication. It argues Sato was published by the Japanese Patent Office more than a year prior to the earliest asserted priority date of the patents-in-suit. According to Hamilton Beach, the district court’s finding contradicts longstanding precedent holding that foreign patent office publications are prior art under § 102. It argues remand is appropriate for a determination of invalidity based on Sato.

F’real Foods responds that Hamilton Beach admitted, in the form of two affidavits from patent search experts, that Sato could not “be found through a reasonably diligent search.” It argues Hamilton Beach submitted those affidavits to argue, in connection with a separate motion in limine, that estoppel under 35 U.S.C. § 315(e) was inappropriate because Sato could not have been found by a diligent search. It argues the district court relied on these affidavits to find no estoppel applied. According to F’real Foods, the doctrine of judicial estoppel should prevent Hamilton Beach from now arguing, contrary to its earlier position, that Sato should qualify as prior art under § 102.

Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd., No. 2021-1638

In 2012, Kannuu and Samsung executed a non-disclosure agreement (“NDA”) to share certain confidential information. The NDA included a forum selection clause requiring that any disputes arising out of the NDA or transactions contemplated by the NDA be brought in New York courts. In 2019, Kannuu asserted several patents against Samsung in the Southern District of New York. When Samsung petitioned for IPR, Kannuu sought in the district court to enjoin Samsung from participating in the instituted IPRs, arguing the IPRs violated the forum selection clause of the NDA. The district court denied Kannuu’s motion, finding the IPRs were outside the scope of the NDA. The district court found the validity of the asserted patents was neither a dispute arising out of the NDA nor a transaction contemplated by the NDA and was unrelated to the confidentiality of the information at issue in the NDA.

On appeal, Kannuu asserts the district court’s decision rested on too narrow a view of the NDA’s scope. It argues the forum selection clause broadly requires Samsung to bring any disputes arising out of the NDA or transactions contemplated by the NDA in New York courts, and validity of the asserted patents relates to both. It argues it has asserted willful infringement, resolution of which will require findings regarding copying that relate to the confidential information. According to Kannuu, the validity of the asserted patents is also related to transactions contemplated by the NDA because whether the patents are valid dictates whether Samsung must take a license to them. Kannuu contends that the NDA’s forum selection clause does not prevent Samsung from challenging the validity of the patents; it merely limits the forum in which Samsung may do so.

Samsung responds that the NDA’s forum selection clause is limited to disputes arising out of the NDA or transactions contemplated by the NDA, but the IPRs are neither. It argues Kannuu cannot identify any provisions in the NDA or transactions contemplated by the NDA that relate to the validity of the asserted patents and in fact expressly states the NDA does not grant any rights or impose any obligations under the parties’ patents. Samsung argues there is a public interest in ensuring parties do not lose access to the IPR proceedings created by Congress through forum selection clauses that do not contemplate this.

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 187
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About this Author

Y. Leon Lin Atlanta Patent Litigation Attorney Finnegan Henderson Farabow Garrett & Dunner LLP
Associate

Leon Lin’s practice includes patent licensing, litigation, patent prosecution, and post-grant proceedings before the U.S. Patent and Trademark Office (USPTO). He has experience in the fields of organic and inorganic chemistry, specifically in solar energy and artificial photosynthesis.

While pursuing his undergraduate degrees, Leon worked in various labs that focused on carbon capture and solar-powered water-splitting to produce hydrogen fuel. As the head research assistant, Leon managed projects that involved proton NMR, carbon NMR, and GCMS analyses of potential catalyst reagents...

404-653-6472
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