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Got Pillaged? Not If You Didn’t Follow the APA and FTCA

by Christian Tatum | Oct 10, 2024 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court decision dismissing claims under the Administrative Procedure Act (APA) and Federal Tort Claims Act (FTCA) against the US Patent & Trademark Office (PTO) relating to “pillaged patents.” The Federal Circuit found that dismissal was appropriate because the plaintiff failed to exhaust administrative remedies and the claims were barred under collateral estoppel. Winfrey v. Dep’t of Com., Case No. 24-1260 (Fed. Cir. Sept. 25, 2024) (Prost, Hughes, Cunningham, JJ.) (per curiam).

Eula Winfrey filed a pro se complaint in district court seeking “relief for the issue of two pillaged patents,” one of which was directed to a “step-up diaper” and the other to a “stroller buddy.” Winfrey claimed that the PTO “improperly denied her two patent applications and wrongfully deemed the applications to be abandoned,” and that she was the true inventor of Huggies Pull-Ups diapers. Interpreting Winfrey’s requests for relief as claims under the FTCA and the APA, the district court dismissed the claims related to the step-up diaper patent application for failure to exhaust administrative remedies. The district court found that Winfrey never presented an administrative claim to the PTO as required by the FTCA and that she did not file a petition to revive the application after the PTO deemed it abandoned. The district court also dismissed Winfrey’s APA claim related to the stroller buddy patent application based on collateral estoppel because Winfrey had previously litigated that claim. Winfrey appealed.

Applying Eleventh Circuit law, the Federal Circuit affirmed the district court’s dismissal of all of Winfrey’s claims. Addressing the FTCA claim first, the Court noted that “nowhere in any of her extensive filings before this court do we find evidence that Ms. Winfrey filed the requisite administrative claim to bring a claim for money damages against the USPTO.” The Federal Circuit also affirmed the district court’s dismissal of claims related to the stroller buddy application based on collateral estoppel, finding that Winfrey had brought the claim unsuccessfully three times. Finally, with respect to the APA claim for the step-up diaper patent application, the Court affirmed the district court’s dismissal for failure to exhaust administrative remedies after finding that Winfrey failed to “present any evidence that she filed a petition with the USPTO to revive her application or challenge its abandonment determination.”

Chickening Out: Reason for Trademark Abandonment Irrelevant Without Proof of Intent to Resume

by Karen Gover | Oct 3, 2024 | Trademarks

The US Court of Appeals for the First Circuit affirmed a district court’s summary judgment decision finding that the prior owner of a trademark for fresh chicken had abandoned the mark by failing to use it for three years and failing to show an intent to resume use of the mark. To-Ricos, Ltd. v. Productos Avícolas Del Sur, Inc., Case No. 22-1853 (1st Cir. Sept. 19, 2024) (Montecalvo, Lipez, Thompson, JJ.)

PAS, a Puerto Rico corporation, sold Pollo Picú branded chicken from 2005 to 2011. The Picú trademark consists of a cartoon chicken with the phrase “Pollo Picú” underneath it:

While Pollo Picú was once a well-recognized brand in Puerto Rico, PAS encountered administrative and financial challenges. In 2006 and 2009, it failed to file declarations with the US Patent & Trademark Office (PTO) attesting to the use of the mark as required by Section 8 of the Lanham Act. The PTO therefore canceled the Picú trademark registration. PAS stopped selling chicken bearing the mark after its bank froze PAS’s financing in 2011. The bank filed suit in January 2012 under a preexisting loan agreement in which PAS had granted the bank a lien over PAS’s assets, including the Picú mark. PAS offered to sell the company to To-Ricos, PAS’s main competitor, but no sale occurred.

In October 2014, PAS and the bank signed a settlement agreement requiring PAS to pay a stipulated sum by December 2014 or the bank would foreclose on most of PAS’s assets, but not the Picú mark. The agreement provided that the bank would retain its lien over the mark until the foreclosure proceedings concluded. PAS failed to make the payment, but the bank did not exercise its foreclosure rights. In June 2017, PAS moved for the Commonwealth Court to order the bank to foreclose on PAS’s assets or declare PAS free of its obligations to the bank. The Commonwealth Court granted the motion in November 2019.

In April 2016, To-Ricos applied to register the Picú mark with the PTO. Three months later, PAS applied to re-register the same mark and filed an opposition to To-Ricos’s application. A year later, PAS licensed the right to use the Picú mark in the United States to IMEX. IMEX sold chicken under the mark for a few months but stopped after To-Ricos sent cease and desist letters.

In June 2019, To-Ricos began selling Picú branded chicken. It also filed a lawsuit against PAS, seeking a declaratory judgment establishing To-Ricos as the legal owner of the Picú mark. To-Ricos moved for summary judgment, arguing that PAS had abandoned its mark. PAS opposed. The district court agreed with To-Ricos, noting that PAS admitted to not having used the mark in commerce for at least three consecutive years prior to To-Ricos’s application, and that PAS had not demonstrated its intent to resume use of the mark within that period. PAS appealed.

PAS [...]

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Rewind: Federal Circuit Grants En Banc Rehearing Over Royalty Damages

by Keval Amin | Oct 3, 2024 | Patents

The en banc US Court of Appeals for the Federal Circuit issued a per curiam order vacating its previous panel decision upholding a district court’s denial of the defendant’s motion for a new trial on damages. In that decision, the Federal Circuit found that the plaintiff’s damages expert adequately demonstrated the economic comparability of prior license agreements to a hypothetical negotiation between the parties. Now, the Court has granted the defendant’s petition for rehearing en banc. EcoFactor, Inc. v. Google LLC, Case No. 23-1101 (Fed. Cir. Sept. 25, 2024) (per curiam) (Moore, C.J.; Lourie, Dyk, Prost, Reyna, Taranto, Chen, Hughes, Stoll, Stark, JJ.) Judge Prost dissented in part in the original panel decision.

EcoFactor sued Google over Nest thermostats allegedly infringing EcoFactor’s HVAC patent. The initial appeal revolved around the validity of the patent, the infringement verdict, and the damages awarded. Google argued that the patent was directed to an abstract idea and therefore was patent ineligible under 35 U.S.C. §101. Google also argued that the district court erred in its rulings on noninfringement and damages. The Federal Circuit majority upheld the district court’s decisions, finding genuine issues of material fact on patent validity, substantial evidence of infringement, and admissible expert testimony supporting the damages award. The Court dismissed Google’s challenge to the expert’s use of license agreements for calculating royalties, as the Court found the methodology reasonable. However, Judge Prost’s dissent in the original panel decision criticized the damages calculation, arguing that the expert’s methodology lacked rigor, particularly for failing to apportion the patented technology’s value from other licensed patents.

The en banc Federal Circuit will now reconsider the practice of using a patent owner’s prior license agreements to determine royalty rates, a method that can become complicated when the scope of licenses varies or when lump sums and royalties are not clearly apportioned.

The en banc order directed the parties to file new briefs limited to the issue of whether “the district court[] adhere[d] to Federal Rule of Evidence 702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993), in its allowance of testimony from EcoFactor’s damages expert assigning a per-unit royalty rate to the three licenses in evidence in this case.”

No Boundaries? European UPC Confirms Its International Jurisdiction

by Bianca Zagatta | Oct 3, 2024 | EU Update, Patents

The Court of Appeal (CoA) of the Unified Patent Court (UPC) ruled that the UPC has international jurisdiction for alleged infringement actions that originate outside the UPC’s Member States. Dish and Sling v. AYLO, Case No. UPC-CoA-188/2024 (CoA UPC Sept. 3, 2024) (Grabinski, Pres. CoA; Barutel, Blok, JJ.)

In its ruling, the CoA upheld the order of the Court of First Instance Local Division Mannheim. In the main proceedings, Dish and Sling brought an infringement action against AYLO. The patent in dispute concerned a method for presenting rate adaptive streams from a media player. AYLO was accused of indirectly infringing the patent in numerous UPC Member States, including Germany, by offering and supplying the video files made available for streaming and the media players for streaming videos. AYLO lodged a preliminary objection requesting that the infringement action be dismissed for lack of UPC jurisdiction, Rule 19.1(a) of the UPC Rules of Procedure. After the preliminary objection was rejected, AYLO lodged an appeal against the order of the Local Division Mannheim.

AYLO argued that the UPC does not have international jurisdiction on the basis of Article 7(2) in conjunction with Article 71b(1) of the Brussels I Recast Regulation because the harmful event would not occur in a UPC Member State since AYLO’s servers are located in the United States. The CoA disagreed, explaining that the Article 7(2) phrase “place where the harmful event occurred or may occur” is intended to cover both the place where the damage occurred and the place of the event giving rise to the damage. Consequently, the alleged infringer can be sued in either place.

The UPC has international jurisdiction with respect to an infringement action under two conditions:

The European patent in suit has effect in at least one contracting Member State.
The alleged damage may occur in that particular Member State.

Therefore, irrespective of the location of AYLO’s server, the UPC had jurisdiction over the infringement action because AYLO’s websites are accessible in Germany where the patent has effect. This access was sufficient to satisfy the likelihood of damage, which was allegedly caused via the internet. Users in Germany can obtain means (media players and video files) that allegedly relate to an essential element of the patented invention and are suitable and intended for putting the invention into practice. The CoA clarified that it is not necessary for a website to be directed at users in the territory of the concerned Member State. The actual availability of access to the website and damage to the European patent owner in a Member State are decisive.

Practice Notes:

While UPC courts may consider infringement allegations in a case when evaluating UPC jurisdiction, that consideration is limited to the context of what the patent owner must prove to establish its allegations. Argument as to the specific requirements of the infringement allegations is not necessary. In the reported case, which was based on allegations of indirect infringement, it was not necessary to determine whether AYLOS’s alleged [...]

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Creative License: Fair Use Defense Paints Over Infringement Battle

by Kyle Sorenson, PhD | Oct 3, 2024 | Copyrights, Trademarks

Affirming the application of the fair use defense to copyright infringement, the US Court of Appeals for the Fifth Circuit determined that a district court’s sua sponte invocation of a fair use defense to parallel trademark claims was harmless error. The Court also affirmed that the district court did not abuse its discretion in awarding attorneys’ fees based on the prevailing party standard for copyright claims. Keck v. Mix Creative Learning Ctr., L.L.C., Case No. 23-20188 (5th Cir. Sept. 18, 2024) (Jones, Smith, Ho, JJ.)

Michel Keck, a multimedia artist, sued Mix Creative Learning Center, a Texas-based art studio, for copyright and trademark infringement after Mix Creative sold art kits featuring Keck’s dog-themed artwork and a brief biography, intended for at-home learning during the pandemic. Keck had registered her Dog Art series (in the form of decorative works) with the US Copyright Office and her name as a trademark with the US Patent & Trademark Office. Keck claimed that Mix Creative’s art kits violated her rights. After receiving notice of the lawsuit, Mix Creative promptly ceased selling its kits.

Following discovery, both parties filed cross-motions for summary judgment. The district court granted summary judgment in favor of Mix Creative on Keck’s copyright claim, finding fair use, and also granted summary judgment on the trademark claim sua sponte, as both parties had agreed that the fair use defense applied to both claims. The district court further awarded Mix Creative more than $100,000 in attorneys’ fees and costs, although it declined to hold Keck’s attorneys jointly and severally liable.

Keck appealed, challenging the copyright fair use finding and the district court’s sua sponte application of the fair use defense to the trademark claim. Mix Creative challenged the district court’s refusal to hold Keck’s attorneys jointly and severally liable for fees.

The Fifth Circuit affirmed the district court’s application of the fair use defense to Keck’s copyright claims. The Court focused on the first and fourth factors of the fair use defense (respectively, the purpose and character of the use and the effect of the use on the potential market for or value of the original work), noting that the courts typically give these two factors special attention.

On the first factor, the Fifth Circuit found Mix Creative’s use to be transformative. Although Mix Creative is a commercial enterprise, the art kits served an educational purpose, distinct from the decorative purpose of Keck’s original works. As a result, the likelihood of Mix Creative’s kits serving as a substitute for Keck’s original works in the market was low.

The fourth factor also favored Mix Creative, as the Fifth Circuit found no evidence that Mix Creative’s kits would harm the market value of Keck’s original decorative works. In fact, the Court suggested that the kits might enhance Keck’s reputation and sales by providing her with free advertising. Furthermore, Mix Creative operated in a different market (educational rather than decorative), and Keck had not demonstrated any history of selling derivative works for children’s art lessons. The [...]

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When Can Same Claim Limitation Have Different Meanings? When It’s Functional, Of Course

by Sydney E. McDermott | Sep 26, 2024 | Patents

Addressing for the first time whether a functional limitation must carry the same meaning in all claims, the US Court of Appeals for the Federal Circuit determined that it need not, vacating a district court decision to the contrary. Vascular Sol. LLC v. Medtronic, Inc., Case No. 2024-1398 (Fed. Cir. Sept. 16, 2024) (Moore, Prost, JJ.; Mazzant, Dist. J., by designation).

The seven patents asserted by Teleflex syin this case all come from a common application and are directed to a “coaxial guide catheter that is deliverable through standard guide catheters by utilizing a guidewire rail segment to permit delivery without blocking use of the guide catheter.” The asserted patents all share a common specification. However, the asserted claims differ in how they refer to the “side opening.” Some claims include the side opening as part of the “substantially rigid portion/segment” while other claims recite that the side opening is separate and distal to the “substantially rigid portion/segment.”

This case has a long procedural history involving an initial preliminary injunction motion and multiple inter partes reviews (IPRs). At the second preliminary injunction stage, Medtronic and the district court grouped the asserted limitations into two mutually exclusive groups:

Group One, which included the “substantially rigid portion/segment” claim limitation.
Group Two, which “required that the side opening not be in the substantially rigid portion” (emphasis supplied).

In denying Medtronic’s preliminary injunction motion, the district court questioned “how a skilled artisan could possibly be expected to understand the scope of a patent when the same device could simultaneously infringe two mutually exclusive claims within that patent.”

The district court then proceeded to claim construction. It rejected both parties’ initial constructions and appointed an independent expert – former US Patent & Trademark Office Director Andrei Iancu – to propose a construction. Teleflex argued that Iancu should adopt a split construction (i.e., one construction for the Group One limitations and another construction for the Group Two limitations). Medtronic argued that the claims were indefinite. Iancu rejected both proposed constructions but agreed with the district court on the mutual exclusivity of the two groups. The district court determined that all claims that included the “substantially rigid portion/segment” were indefinite, and since all the asserted claims included that term, the parties stipulated to final judgment. Teleflex appealed.

Teleflex argued that the district court erred in determining that the boundary of the substantially rigid portion must be the same for all claims. Medtronic argued that the claims were indefinite.

The Federal Circuit concluded that the district court erred when it determined that the Group One and Group Two limitations were mutually exclusive and indefinite. The Federal Circuit cautioned that affirming the district court’s conclusion would mean that claims in a patent cannot vary in how they claim the disclosed subject matter and that independent claims must be entirely consistent with other independent claims, neither of which is a restriction in how patentees may claim subject matter. The Federal Circuit explained that at the claim construction stage [...]

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A New Vision: Collateral Estoppel Doesn’t Extend to Related Claims

by Alexander P. Ott | Sep 19, 2024 | Patents

The US Court of Appeals for the Federal Circuit reversed a district court order excluding expert validity testimony based on collateral estoppel stemming from an inter partes review (IPR) proceeding of a related patent, finding that an unpatentability decision in an IPR does not collaterally estop a patentee from making validity arguments about related claims in a district court litigation. ParkerVision, Inc. v. Qualcomm Inc., Case Nos. 22-1755; 24-2221 (Fed. Cir. Sept. 6, 2024) (Lourie, Mayer, Stark, JJ.)

This case has a long and complicated history. In 2011, ParkerVision sued Qualcomm for alleged infringement of eight patents related to wireless communications technology. In October 2013, a jury returned verdicts rejecting Qualcomm’s invalidity defense, finding 11 claims across four patents to be infringed by Qualcomm, and awarded $172 million in damages to ParkerVision.

In June 2014, the district court granted Qualcomm’s motion for a judgment as a matter of law on noninfringement, which the Federal Circuit affirmed in late 2015. Meanwhile, ParkerVision filed a second case against Qualcomm in May 2014 alleging infringement of 11 more patents. That case was stayed in favor of a Section 337 investigation that ParkerVision filed against Qualcomm at the International Trade Commission.

Qualcomm then filed 10 petitions for IPR, six of which targeted one of ParkerVision’s patents. While the challenged apparatus claims of that patent were found unpatentable during the IPR, the challenged method claims survived. The district court statutory stay (during the Commission proceeding) was lifted in December 2018. Prior to trial, the district court granted Qualcomm’s Daubert motions seeking to exclude ParkerVision’s expert’s testimony on invalidity due to collateral estoppel arising from the IPRs, and the expert’s testimony on infringement for being unreliable. The district court granted Qualcomm’s motion for summary judgment of noninfringement based on its finding that the asserted claims were materially similar to the claims from the first case. ParkerVision appealed.

In July 2024, after the briefing was completed and the Federal Circuit held oral argument, the Court dismissed the appeal for lack of appellate jurisdiction and returned it to the district court because Qualcomm’s invalidity counterclaims had not been adjudicated. The parties then filed a joint motion at the district court seeking entry of a final judgment, which was granted in August 2024. ParkerVision appealed again.

The Federal Circuit reinstated ParkerVision’s initial appeal and reversed the district court’s determination. On the summary judgment of noninfringement, the Court rejected the collateral estoppel finding because the district court failed to conduct claim construction to determine whether the scope of the claims was the same as in the first case. As for the district court’s exclusion of expert validity testimony due to the IPRs, the Federal Circuit concluded that because of the different legal standards for proving invalidity (preponderance versus clear and convincing), a finding underlying an unpatentability decision in an IPR does not collaterally estop a patentee from making validity arguments regarding related claims in district court litigation.

Finally, the Federal Circuit concluded that the district court had abused its discretion [...]

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Back to the Future: Expert Can Be Skilled Artisan Based on Later-Acquired Knowledge

by Amol Parikh | Sep 12, 2024 | Patents

The US Court of Appeals for the Federal Circuit clarified that a technical expert does not need to have been a person of ordinary skill in the art (POSITA) at the time of the invention. Instead, they may rely on later-acquired knowledge to offer testimony from the vantage point of a skilled artisan at the time of the invention. Osseo Imaging, LLC v. Planmeca USA Inc., Case No. 23-1627 (Fed. Cir. Sept. 4, 2024) (Dyk, Clevenger, Stoll, JJ.)

Osseo owns patents related to orthopedic imaging systems that use X-ray beam techniques to create tomographic and/or densitometric models of a scanned object. The alleged invention date of the patents was 1999. Osseo sued Planmeca for infringement of dental imaging systems that generate and display 3D models to a user.

At trial, the jury was instructed to determine the requisite level of ordinary skill and was told that a POSITA would have a bachelor’s degree in electrical or computer engineering, plus three to five years’ experience working in a diagnostic imaging environment that uses the techniques described in the asserted patents. During cross-examination, Planmeca sought to demonstrate that Osseo’s technical expert did not have the requisite experience in 1999, the alleged date of invention. The jury returned a verdict that Planmeca infringed the asserted patents.

After trial, Planmeca moved for judgment as a matter of law (JMOL), arguing that Osseo’s expert’s testimony should be disregarded because he was not a POSITA at the time of the patents’ alleged date of invention in 1999. The district court denied the motion as legally incorrect. Planmeca appealed.

Planmeca argued that the district court erred in denying JMOL because although Osseo’s expert became a POSITA eight to 10 years after the time of the invention, he was not so skilled at the time of the invention, and thus the verdict could not be supported by his testimony. The Federal Circuit reiterated that “[to] offer expert testimony from the perspective of a skilled artisan in a patent case – like for claim construction, validity, or infringement – a witness must at least have ordinary skill in the art.” The Court rejected Planmeca’s argument to add a timing requirement that the expert must have possessed the requisite ordinary skill in the art at the time of the invention. Instead, the expert must be qualified to offer testimony from the vantage point of a skilled artisan.

The Federal Circuit explained that it made little sense to add a timing requirement because an expert could acquire the necessary skill level later and develop an understanding of what a POSITA knew at the time of the invention. The Court noted that the fact that the expert was not a POSITA at the time of the invention may well be used during cross-examination to undermine the credibility of the expert but also noted that an expert could avoid such potential damage by explaining how they gained the perspective of a POSITA at the time of the invention.

Accordingly, the Federal Circuit affirmed [...]

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Lower the Red Flags: Flawed Fee Award Flops

by Keval Amin | Sep 5, 2024 | Patents

The US Court of Appeals for the Federal Circuit vacated and remanded a district court decision awarding attorneys’ fees, finding that the district court abused its discretion by failing to properly explain its basis for the fee award. Realtime Adaptive Streaming L.L.C. v. Sling TV, L.L.C., Case No. 23-1035 (Fed. Cir. Aug. 23, 2024) (Albright, Dist. J., sitting by designation; Moore, Lourie, JJ.)

Realtime Adaptive Streaming sued Sling and DISH for patent infringement related to digital data compression. The district court granted DISH’s motion for summary judgment of invalidity. While the invalidity finding was on appeal, the district court granted DISH’s motion for attorneys’ fees based on six so-called “red flags” that it found should have served as warning signs to Realtime that its case was fatally flawed.

The district court explained that the first red flag was two prior court decisions against Google and Netflix, which found similar claims of Realtime’s patent ineligible as abstract ideas under 35 U.S.C. § 101. Despite these decisions, Realtime pursued its claims. The second red flag came when the Federal Circuit ruled against Realtime in a related case. The third occurred when an inter partes review (IPR) proceeding invalidated key claims of Realtime’s patent. Following a nearly two-year stay, the district court identified the fourth and fifth red flags: a non-final office action from the US Patent & Trademark Office rejecting a key claim of the remaining patent, and a letter from DISH indicating its intention to seek attorneys’ fees if Realtime continued the case. The sixth red flag was an expert declaration from DISH that addressed invalidity of the claims at issue, and which was unfavorable to Realtime. Realtime appealed the district court’s attorneys’ fees award.

The Federal Circuit concluded that the district court erred by relying on the six so-called red flags without explaining the weight for each. Addressing the first flag, the Federal Circuit agreed with the district court’s reliance on the Google and Netflix decisions because they involved a patent with a virtually identical specification and essentially the same claims. The Court disagreed with the remaining red flags. The Court found that the second red flag related to a different technology and should not have put Realtime on notice that its patent claims were meritless. With respect to the third, fourth, and fifth flags, the Federal Circuit found that the district court did not adequately explain why these decisions supported exceptionality.

With regard to the sixth flag (the expert opinion), the Federal Circuit found that the district court’s analysis was insufficient. The Court explained that it is typical in a patent infringement case for the parties’ experts to disagree on invalidity issues. The Court found that Realtime and its expert developed critiques and counterarguments to DISH’s expert’s opinions, demonstrating that Realtime did not fail to give “serious consideration” to invalidity. While the district court may have found DISH’s expert more persuasive, that fact alone should not have put Realtime on notice that its claims lacked merit.

Accordingly, the Federal [...]

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Blurred Vision: Appeal Dismissed for Lack of Standing

by Lillian Spetrino | Aug 29, 2024 | Patents

The US Court of Appeals for the Federal Circuit dismissed a patent challenger’s appeal in an inter partes review (IPR) because the challenger could not meet the injury-in-fact requirement for Article III standing. Platinum Optics Tech. Inc. v. Viavi Solutions Inc., Case No. 23-1227 (Fed. Cir. Aug. 16, 2024) (Moore, Taranto, JJ.; Checchi, Dist. J, sitting by designation).

Viavi Solutions owns a patent directed to optical filters that include layers of hydrogenated silicon and to sensor systems comprising such optical filters. Platinum Optics Technology (PTOT) petitioned for IPR. The Patent Trial & Appeal Board found that PTOT had failed to establish that the challenged claims were unpatentable. PTOT appealed.

The Federal Circuit dismissed the appeal, finding that PTOT did not have Article III standing. The Court explained that while Article III standing is not required to appear before an administrative agency (such as the US Patent & Trademark Office), such standing is required once a party seeks judicial review in an Article III federal court. PTOT argued it had standing because of potential infringement liability due to its continued distribution of a product previously accused of infringing the patent and its development of new models of the previously accused product. The Court rejected both arguments.

First, PTOT asserted that it suffered an injury in fact because there was a likelihood that Viavi would sue again. PTOT relied on a letter from Viavi stating that it did not believe PTOT could fulfill its supply agreements with noninfringing products. The Federal Circuit disagreed with PTOT’s assertion, concluding that mere speculation about the possibility of suit, without more, is insufficient to confer Article III standing. Moreover, the Court noted that Viavi’s letter was sent prior to the patent infringement suits, which were dismissed with prejudice. Thus, the Court found that PTOT had not established an injury in fact based on potential infringement liability due to its continued distribution of a previously accused product.

Second, PTOT asserted that it suffered an injury in fact based on its development of new models of the previously accused product. PTOT’s argument was supported by a declaration from a Deputy Director of Operation Management at PTOT and the same letter from Viavi threatening future suit. The Federal Circuit did not find the declaration testimony compelling. It explained that the declaration, which generally alleged that PTOT continued to develop new models of the previously accused product, did not identify any specific concrete plans for PTOT to develop a product that might implicate the patent. The declaration did not explain the particulars of these new models or how the models might relate to the patent. The Court found that the declaration was insufficient to establish that PTOT’s development activities created a substantial risk of infringement or were likely to cause Viavi to assert infringement. The Court noted that the letter from Viavi did not specifically address models in development or foreclose PTOT’s ability to develop a noninfringing product.

Thus, the Federal Circuit concluded that PTOT failed to establish an injury [...]

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