Technical Issues Affirm Patent Validity but Preclude Pre-Suit Damages
In a split decision, the US Court of Appeals for the Federal Circuit affirmed the subject matter eligibility of claims directed to collection, comparison and classification of information. The Court also unanimously found that the patent owner was not entitled to pre-suit or enhanced damages because it failed to prove pre-suit patent marking by its licensees. Packet Intelligence LLC v. Netscout Systems, Inc., Case No. 19-2041 (Fed. Cir. July 14, 2020) (Lourie, J.) (Reyna, J., dissenting in part).
This dispute began when Packet Intelligence sued Netscout for infringing three of its patents that were directed to a system and method for monitoring packets exchanged over a computer network. The case was tried before a jury, which found the patents-in-suit valid and infringed. The jury further determined that Packet Intelligence was entitled to pre-suit and post-suit damages, as well as enhanced damages. Netscout filed a motion for judgment as a matter of law that Packet Intelligence was not entitled to pre-suit damages, which the district court denied. Following a bench trial, the district court held that the claims of the patents-in-suit were not invalid under 35 USC § 101. Netscout appealed.
Netscout challenged the district court’s § 101 decision and the denial of Netscout’s motion for judgment as a matter of law on pre-suit damages. In a split panel decision, the Federal Circuit affirmed the district court’s determination on subject matter eligibility under § 101. Netscape specifically argued that the claims were directed to an abstract idea because the claims were merely directed to the collection, comparison and classification of information.
The majority reiterated that the Federal Circuit has recognized that software-based innovations may be deemed patent-eligible subject matter at Alice step 1. For example, in Enfish, the Court held that software claims were valid at step 1 because the claims were directed to a technical improvement over conventional systems. Similarly, in SRI International, the Court held that software claims were valid because the claims at issue were “necessarily rooted in computer technology in order to solve a specific problem in the realm of computer networks.” Applying these principles, the majority found that the claims were patent eligible because they presented a technical solution to a technical problem. Notably, the majority relied on the patent specification’s disclosures regarding the invention’s improvements over conventional systems.
Judge Reyna dissented. In his view, the claims were directed to an abstract idea because they lacked specific technological means for the collection, analysis and display of data. Because a concrete technical solution was absent, Reyna argued that the claims were distinguishable from the SRI International case on which the majority relied. He would have found the claims invalid under step 1 and remanded the case to the district court to fully address Alice step 2.
Regarding pre-suit damages, the Federal Circuit unanimously held that Packet Intelligence was not entitled to such damages. The primary issue was whether a Packet Intelligence licensee had properly complied with the marking requirements in order to provide the required constructive notice to support entitlement to pre-suit damages. In Artic Cat, the Federal Circuit held that after an alleged infringer puts the patentee on notice that certain licensees sold specific unmarked products that embody a patent-in-suit, the burden shifts to the patentee to prove that the products do not practice the claims. If the patentee fails to meet its burden, it cannot recover pre-suit damages. Here, it was undisputed that Netscout put Packet Intelligence on notice of a licensee’s unmarked product, thus shifting the burden to Packet Intelligence to prove that the product did not practice the asserted claims. The Federal Circuit found that Packet Intelligence had failed to present substantial evidence to the jury that the licensee’s product did not practice the claims in issue. Because a Packet Intelligence licensee failed to mark a product, the Court concluded that Packet Intelligence was not entitled to either pre-suit damages or enhanced damages.
Practice Note: Patent owners should ensure that their licensees are contractually obligated to mark any products that embody the licensed claims, and should monitor compliance with the requirement.
This post was written by Gilbert Smolenski.