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Read the Fine Print: Covenant Not to Sue “At Any Time” Terminated Upon License Expiration

by Karen Gover | Mar 14, 2024 | Patents

Illustrating the importance of carefully drafting and reviewing language in a covenant not to sue, the US Court of Appeals for the Federal Circuit found that the plain language of a covenant permitted a licensor to sue a licensee for breach of contract only after termination of the contract. AlexSam, Inc. v. MasterCard Int’l., Inc., Case No. 22-2046 (Fed. Cir. Feb. 28, 2024) (Lourie, Chen, Stoll, JJ.) (non-precedential).

In 2005, AlexSam and MasterCard entered into a patent licensing agreement that guaranteed AlexSam ongoing royalties under two of its patents that involved pre-paid cards used with point-of-sale devices. The agreement included a covenant not to sue, in which AlexSam agreed to “not at any time initiate, assert, or bring any claim . . . against MasterCard . . . relating to Licensed Transactions arising or occurring before or during the term of this Agreement.” The agreement also included a Term and Termination provision, which recited that the agreement would remain in full force for the life of the licensed patents unless a party breached, at which time, if the party failed to cure, the non-breaching party would have the right to terminate the agreement. The patents expired on July 10, 2017.

In May 2015, two years before the licensed patents expired, AlexSam sued MasterCard for breach of contract in the district court, claiming that MasterCard had not properly paid the royalties per transaction under the agreement. Separately, in March 2017, MasterCard filed a petition for Covered Business Method (CBM) Review, asking the Patent Trial & Appeal Board to review the patentability of the licensed patents. AlexSam argued that MasterCard lacked standing under 37 C.F.R. § 42.302(a), which required that MasterCard first be sued or charged with infringement of the patent on which it sought review. The Board determined that MasterCard lacked standing to bring the review. The Board also noted that it “need not, and do[es] not, address the question of whether [AlexSam’s] breach of contract claim in the New York Action itself violates the covenant not to sue.”

MasterCard moved for and was granted summary judgment in the district court on the grounds that AlexSam’s arguments before the Board regarding the covenant not to sue judicially estopped it from asserting its breach of contract claims. AlexSam filed its first appeal, and the Federal Circuit reversed the district court’s ruling, finding that it had abused its discretion in crediting AlexSam with a position it never actually took before the Board. The Court remanded the case for the district court to determine whether the covenant not to sue prohibited a claim for royalties. MasterCard again moved for summary judgment. The district court granted the motion, finding that the covenant not to sue barred AlexSam’s claim for unpaid royalties. AlexSam again appealed.

In this second appeal, AlexSam argued that the covenant not to sue in the 2005 License Agreement did not bar suit for breach of nonpayment of royalties since AlexSam would then have no remedy against a failure by MasterCard to pay [...]

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Optimizing Obviousness: Routine Optimization Can Fill in Prior Art Gaps

by Alexander Piala, PhD | Mar 14, 2024 | Life Sciences, Patents

In an appeal from a Patent Trial & Appeal Board finding of invalidity, the US Court of Appeals for the Federal Circuit held that the result-effective variable doctrine can apply even when there is no overlap between a claimed range and a prior art range. The Court also held that before denying a motion to amend, the Board must address every element of proposed claims, and that a party cannot challenge the US Patent & Trademark Office (PTO) Director Review procedure if it cannot show prejudice. Pfizer Inc. v. Sanofi Pasteur, Inc., Case No. 19-1871 (Fed. Cir. Mar. 5, 2024), (Lourie, Bryson, Stark, JJ.)

Sanofi filed five inter partes review (IPR) petitions targeting a patent owned by Pfizer and directed to immunogenic glycoconjugates of Streptococcus antigens (i.e., combinations of sugar molecules found on the surface of Streptococcus bacteria capable of provoking an immune response). The challenged independent claim recited conjugates having a sugar from the 22F Streptococcus serotype and a molecular weight falling within a claimed range. Dependent claims further limited the independent claim by requiring combinations of specific sugars.

Sanofi challenged the claims based on a combination of two references: GSK-711 and Merck-086. GSK-711 described vaccines using sugars from 22F, and Merck-086 described immunogenic compositions using Streptococcus sugar conjugates. While neither reference disclosed the molecular weight of a 22F conjugate, the Board found that the molecular weight of a conjugate was a “result-effective variable” – i.e., a variable that affected the efficacy of the result – and thus it would have been obvious for a person of ordinary skill in the art (POSITA) to optimize the molecular weight of a 22F-based conjugate to achieve the claimed molecular weight range. The Board also found that the dependent claims would have been obvious, as GSK-711 disclosed the additionally claimed sugars. Pfizer filed a motion to amend to add new claims, but the Board denied the motion. Pfizer also requested Director Review of the Board’s decision, but the Director denied the request.

Pfizer appealed to the Federal Circuit alleging that the Board improperly applied the result-effective variable doctrine, that the Board improperly denied Pfizer’s request to amend the claims, and that the Director’s denial of review violated the Administrative Procedure Act (APA). The Federal Circuit affirmed the Board’s finding of invalidity, affirmed in part and remanded in part the issue of the proposed claim amendment, and finally held that any violation of the APA was harmless.

The Federal Circuit started with an analysis of the result-effective variable doctrine. Pfizer argued that the result-effective variable doctrine could not apply when there was no disclosure of an effective range in the prior art. Therefore, because neither GSK-711 nor Merck-086 disclosed an effective molecular weight range for a 22F conjugate, and because the relationship between molecular weight and efficacy was unpredictable, the independent claim was not obvious. The Court disagreed.

The Federal Circuit explained that, when there is a gap between the prior art and the claims, the relevant [...]

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That’s So Metal: Narrow Limitation Doesn’t Contradict Broader One

by Brennen Baylor | Mar 14, 2024 | Patents

The US Court of Appeals for the Federal Circuit reversed a district court’s indefiniteness determination, finding that two claim limitations – one broad and one narrow – were not contradictory since it was possible to meet the requirements of both. Maxell, Ltd. v. Amperex Technology Limited, Case No. 23-1194 (Fed. Cir. Mar. 6, 2024) (Prost, Taranto, Chen, JJ.)

Maxell owns a patent directed to a rechargeable lithium-ion battery. Maxell filed suit against Amperex alleging infringement. Following claim construction proceedings, the district court found the claims to be indefinite based on two limitations in the independent claim that recited the variable M1. The relevant claim limitations read:

1- wherein M1 represents at least one transition metal element selected from Co, Ni and Mn, [. . .]

2- wherein the content of Co in the transition metal M1 of the formulae (1) and (2) is from 30% by mole to 100% by mole[.]

The district court found that these two limitations contradicted each other because limitation 1 recited Co (cobalt) as an optional transition metal selected from a Markush group for M1, whereas limitation 2 recited a minimum Co content of 30% in M1. The district court reasoned that the claims were indefinite because limitation 1 did not require the presence of cobalt, whereas limitation 2 did. In its claim construction order, the district court stated that simultaneous recitation that a claim element is both optional and required is a “contradiction on its face.” Maxell appealed.

The Federal Circuit found no contradiction between the two limitations, explaining that “[i]t is perfectly possible for a selected [M1] to satisfy both of these limitations.” The Court reasoned that in the context of Maxell’s patent, it was of no import that the two requirements (i.e., that M1 must comprise cobalt, nickel (Ni) or manganese (Mn), and that M1 must comprise at least 30% cobalt) were recited in separate clauses. It was enough that both limitations could be simultaneously satisfied. The Court further reasoned that the inclusion of two requirements in a claim did not create an otherwise nonexistent contradiction because the claim language must be read as a whole and not merely on a limitation-by-limitation basis. The Court also looked to the prosecution history to provide context for the ordering of the claim limitations at issue and explained that limitation 2 was added during prosecution to overcome a prior art reference that primarily used nickel as a transition metal.

The Federal Circuit explained that contrary to the district court’s characterization, the subject claim limitations did not grant options. Instead, they stated requirements that must be met to fall within the scope of the claimed invention. The Court noted that, rather than contradicting limitation 1, limitation 2 narrowed it. If limitation 2 had been recited in a dependent claim, there would be no contradiction, notwithstanding that proper construction of a dependent claim requires importation of all limitations from the claims from which it depends. The same conclusion applied when both limitations were [...]

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Gentlemen, Start Your Engines: Even Bland Works Support Copyright

by Kathleen Lynch | Mar 7, 2024 | Copyrights

The US Court of Appeals for the Sixth Circuit affirmed an award of profit disgorgement and attorneys’ fees in a copyright infringement case, holding that even “workaday” or “humdrum” subject matter can support a valid copyright. Premier Dealer Servs. Inc. v. Allegiance Adm’rs LLC, Case No. 23-3394 (6th Cir. Feb. 26, 2024) (Sutton, C.J.; Clay, Bloomekatz, JJ.)

Premier and Allegiance both administered car dealers’ loyalty programs. Customers enrolled in these programs were required to meet certain conditions (such as changing the car’s oil at predetermined intervals), and if a part under warranty broke, the dealer would help the car owner initiate a claim through the loyalty program administrator. In conjunction with administering these programs, Premier created a loyalty certificate. The certificate collected the customer’s personal information and provided the program’s terms and conditions. Premier registered its certificate for copyright protection in 2008.

In 2018, Tricolor – one of Premier’s large, long-standing customers – switched its program to Allegiance. When Allegiance took over, it repurposed Premier’s loyalty certificate by simply updating the administrator’s contact information. Allegiance and Tricolor continued to use the otherwise unaltered certificate. Premier sued for copyright infringement.

The district court found that the certificate’s “dull” subject matter did not preclude copyright protection, enjoined Allegiance from further copyright infringement, and awarded Premier disgorgement of Allegiance’s profits as well as attorneys’ fees, totaling more than $1 million. Allegiance appealed, challenging the certificate’s copyrightability and the damages calculations.

As to the copyrightability of the certificate, the Sixth Circuit explained that while copyright requires originality, it is a low threshold that can be shown by making “non-obvious choices” or evidencing some creative spark. “[A]rtistic merit” is not necessarily required. The Court noted three categories that copyrights will not cover:

Facts that already exist in the world (although the expression of facts may be copyrightable)
Merger, “when there is only a single way to express a given set of facts” and
Scenes a faire, in which industry norms require expressing facts in a particular way.

Premier’s copyright was registered and therefore presumed valid, meaning the burden was on Allegiance to rebut that presumption. The Sixth Circuit rejected Allegiance’s challenge to the originality of Premier’s copyright, primarily because copyrights “protect all manner of works – mundane or lofty . . . so long as they satisfy the modest imperatives of originality.” Allegiance argued that Premier’s forms collected client information in a way that was unoriginal, because there was only one way to collect the information (merger) and because the layout was typical for the industry (scenes a faire). The Court looked to areas in which Premier indicated creativity, noting that its forms differed from other loyalty program certificates in evidence. Further, Premier made the creative choice to allow program members to select from various schedules for oil changes, instead of a single predetermined timetable. This and other evidence suggested choice, ideas and creativity, despite the functionality of the loyalty certificates.

The Sixth Circuit hinted at how Allegiance might have better established the [...]

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Rock On: Clichéd Song Themes Don’t Infringe Copyright

by Karen Gover | Mar 7, 2024 | Copyrights

The US Court of Appeals for the Fifth Circuit affirmed a district court’s summary judgment grant to an alleged song copier, finding neither evidence of factual copying nor striking similarity between the two songs. Kirk Johnston v. Chad Kroeger et al., Case No. 23-50254 (5th Cir. Feb. 19, 2024) (Jones, Haynes, Douglas, JJ.) (per curiam) (non-precedential).

Kirk Johnston is a musician and songwriter who plays guitar for the Texas rock band Snowblind (now called Snowblind Revival). In 2001, he wrote a song called “Rock Star.” Four years later, the Canadian rock band Nickelback released a song called “Rockstar” that became one of its most popular singles. In 2020, Johnston sued Nickelback, its record label and its music publishing company for copyright infringement. Nickelback moved for summary judgment, and the district court referred the motion to a magistrate judge. The judge recommended summary judgment in favor of Nickelback, finding no genuine dispute of material fact as to factual copying and finding that the two songs did not sound alike. The district court accepted the magistrate judge’s recommendation and dismissed Johnston’s infringement claim. Johnston appealed.

The Fifth Circuit reviewed the motion of summary judgment de novo. With respect to the element of factual copying, Nickelback’s members and executives claimed that they had never even heard of Johnston’s song. The Court found Johnston’s circumstantial evidence that Nickelback had access to his song unpersuasive. Johnston said that access could be inferred from the fact that the two bands were “moving in relatively the same circles” and that executives associated with Nickelback likely attended Snowblind’s shows. The Court said that Johnston’s arguments regarding the likelihood that Nickelback had access to his song “Rock Star” required “leaps of logic” not supported by the record and were “mere speculation.”

Johnston also unsuccessfully argued that the district court erred by not applying the “more discerning ordinary observer test” and by considering all versions of the songs on the record rather than just the “stripped down” versions. The Fifth Circuit pointed out that those standards only apply under a substantial similarity analysis, which requires a plaintiff to establish factual copying. Because there was no proof of access, much less copying, Johnston had to show a “striking similarity” between his song and Nickelback’s hit.

Johnston argued that his expert demonstrated that there were clear lyrical and musical similarities between the hooks of the songs, both of which concern the desire to be a rock star. However, the Fifth Circuit noted that the expert’s analysis was unpersuasive as to both the musical and lyrical similarities; concluding that neither was sufficiently similar to preclude all explanations but copying. The other themes in the song that Johnston pointed to as strikingly similar were “making lots of money,” “connections to famous people” and “references to sports.” The Court pointed out that as a general matter, those categories “are mere clichés of being a rockstar that are not unique to the rock genre.” As the Court put it, “[s]inging about being a rockstar is not [...]

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I Hear Ya – No Intent to Deceive, No Inequitable Conduct

by Kyle Sorenson, PhD | Mar 7, 2024 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court’s finding that the asserted patents were not unenforceable for inequitable conduct, determining that statements made by counsel to the US Patent & Trademark Office (PTO) to revive an abandoned application were not shown to have been made with deceptive intent. Freshub, Inc. v. Amazon.com, Inc., Case No. 2022-1391 (Fed. Cir. Feb. 26, 2024) (Reyna, Taranto, Chen, JJ.)

Freshub sued Amazon for infringement of patents directed to voice processing technology. Amazon denied infringement and defended on the basis that the patents should be declared unenforceable based on inequitable conduct by Freshub’s parent company, Ikan Holdings, during prosecution of the application at the PTO. Amazon alleged that Ikan improperly revived an earlier-abandoned parent application from which the asserted patents descend.

The predicate facts are as follows: In June 2011, the PTO issued a final office action rejecting the claims of the parent application. Ikan failed to respond to the office action, rendering the application abandoned in January 2012. In January 2017, Ikan petitioned the PTO to revive the application. In support of its revival petition, Ikan’s counsel asserted that “[t]he entire [five-year] delay in filing the required reply . . . was unintentional.” “[R]elying on petitioner’s duty of candor and good faith,” the PTO granted the petition, eventually resulting in issuance of the three patents-in-suit.

At trial, a jury found that Amazon did not infringe the asserted patents. The district court subsequently conducted a bench trial on inequitable conduct and found that Amazon had failed to prove inequitable conduct by clear and convincing evidence. Freshub appealed, arguing that it was entitled to judgment as a matter of law that Amazon infringed. Amazon cross-appealed, seeking reversal of the district court’s inequitable conduct ruling.

The Federal Circuit affirmed the district court’s determination of failure to prove inequitable conduct, finding that Amazon had not shown by clear and convincing evidence that Ikan misrepresented or omitted material information with the specific intent to deceive the PTO. The Court focused its analysis on deceptive intent, finding that the district court did not commit clear error in rejecting Amazon’s inequitable conduct defense.

The Federal Circuit noted that the record was minimal due to the passage of time and the limited testimonial and documentary evidence available, as well as the many unchallenged claims of attorney-client privilege. Nevertheless, both parties presented evidence concerning Ikan’s intent between 2012 and 2017.

To support its position, Freshub relied on the 2017 statement by Ikan’s counsel asserting that Ikan’s delay in filing its reply to the PTO’s final office action was unintentional. The Federal Circuit found this evidence probative, even without the presentation of additional evidence to further explain why the period of non-response was so long. On the other hand, Amazon presented specific evidence that it contended demonstrated deceptive intent. For example:

The 2017 statement to revive the parent application was made by the same counsel that prosecuted the application at the time of its 2012 abandonment.
Ikan’s counsel [...]

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Yo-Ho-No Vicarious Liability for Online Piracy Without Financial Benefit

by Karen Gover | Feb 29, 2024 | Copyrights

The US Court of Appeals for the Fourth Circuit reversed-in-part, vacated-in-part and affirmed in part a district court decision that found an internet service provider liable for $1 billion in damages for vicarious and contributory copyright infringement. Sony Music Entm’t., et al. v. Cox Commc’ns, Inc., Case No. 21-1168 (4th Cir. Feb. 20, 2024) (Harris, Rushing, JJ., Floyd, Sr. J.) (per curiam).

Sony Music along with 52 other music companies filed suit against Cox Communications in July 2018, alleging both contributory and vicarious liability based on copyright infringement by Cox’s customers. Sony argued that Cox knew that some of its customers used its service to download or distribute songs over the internet without permission but chose not to cancel their subscriptions. The Digital Millennium Copyright Act (DMCA) created a safe harbor for internet service providers in such circumstances but a prior case against Cox held that it did not qualify for the safe harbor because “its repeat infringer policy as implemented was inadequate under the DMCA.” In the present case, the jury found Cox liable for vicarious and contributory infringement of all 10,017 copyrighted works alleged to have been infringed and found that Cox’s infringement was willful. The jury awarded Sony more than $99,000 per work infringed, totaling $1 billion in statutory damages. Cox appealed.

The appeal garnered noteworthy amici in support of both sides. Cox was supported by the Electronic Frontier Foundation, the American Library Association and the Center for Democracy and Technology, among others. Sony was supported by the National Music Publishers’ Association, the Songwriters of North America, the Nashville Songwriters Association International and the Copyright Alliance.

Cox raised many questions of law concerning the scope of secondary liability and what constitutes a compilation or derivative work in the digital age. The Fourth Circuit upheld the jury verdict finding Cox liable for contributory copyright infringement, rejecting Cox’s arguments that its service was also used for lawful activity and that its contribution must amount to aiding and abetting the infringement. The Court explained that “supplying a product with knowledge that the recipient will use it to infringe copyrights is exactly the sort of conduct sufficient for contributory infringement.” The Court concluded that the jury saw sufficient evidence that Cox knew specific users were repeatedly infringing but chose not to terminate their service.

The Fourth Circuit, however, reversed the jury’s verdict of vicarious liability, finding that Cox did not profit from its subscribers’ acts of infringement and so did not meet the legal prerequisite for that form of secondary liability. Reviewing landmark cases on vicarious liability, the Court explained that “the crux of the financial benefit inquiry is whether a causal relationship exists between the infringing activity and a financial benefit to the defendant . . . the financial benefit to the defendant must flow directly from the third party’s acts of infringement to establish vicarious liability.” Since Sony failed to show that Cox profited from its subscribers’ infringing activity, it failed to establish vicarious liability.

The [...]

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Consider Invention When Assessing Support for Claimed Range

by Art Dykhuis | Feb 29, 2024 | Patents

The US Court of Appeals for the Federal Circuit affirmed in part and vacated in part a Patent Trial & Appeal Board finding that the claims at issue were either invalid under 35 U.S.C. §112 as unsupported by written description or obvious under 35 U.S.C. §103. RAI Strategic Holdings, Inc. v. Philip Morris Products S.A., Case No. 22-1862 (Fed. Cir. Feb. 9, 2024) (Chen, Stoll, Cunningham, JJ.)

RAI owns a patent with claims directed to “electrically powered smoking devices that provide an inhalable vapor by heating tobacco or other substances without significant combustion.” Philip Morris challenged the patent in a post-grant review (PGR).

The Board issued a final written decision concluding that two dependent claims, which recited limitations requiring a heating member with “a length of about 75% to about 85% of a length of the disposable aerosol forming substance,” lacked § 112 written description support. The specification disclosed ranges of 75% – 125%, 80% – 120%, 85% – 115% and 90% – 110%. The Board explained that written description support was lacking because “the claimed range is different from and substantially narrower than the specific ranges disclosed in the specification.”

The Board found that the remaining claims were unpatentable as obvious based on a combination of prior art references where the heater found in one reference, Robinson, was replaced with the heater from another, Greim. Robinson explained that its heating element could be altered and acknowledged design choices, thus inviting skilled artisans to select an alternate appropriate heating element. Greim disclosed certain advantages to its heater. Thus, the Board found that a skilled artisan would have been motivated to replace Robinson’s heater with that of Greim, rendering the claims obvious. RAI appealed.

Citing its expert, RAI argued that the ranges disclosed in the specification all centered around 100%, so that a person of ordinary skill in the art (POSITA) would not “conclude that the inventors possessed a range that went no higher than 85%[.]” The Federal Circuit began by summarizing a line of numerical range cases, including:

In re Wertheim (CCPA 1976), which found that a described range of 25% – 60%, with examples of 36% and 50%, supported a claim directed to a range of 35% – 60%.
In re Blaser (CCPA 1977), which found that a described range of 60° – 200° C supported a claim reciting a range of 80° – 200° C.
Kolmes v. World Fibers Corp. (Fed. Cir. 1997), which found that a described range of 4 – 12 turns per inch, and preference for 8 turns per inch, supported claims directed to 8 – 12 turns per inch.
In re Baird (CCPA 1965), which found that a relatively unexplained disclosure of 32 – 176° F did not support claims directed to a range from 40° to “at least as low as” 60° F.
Indivior UK v. Dr. Reddy’s Laboratories (Fed. Cir. 2021), which found that:
- Disclosure of ranges of at least 25%, at least 50% and “any” value [...]
  
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Badgerow Enforced: District Court Lacks Independent Jurisdiction to Enforce Arbitration Award

by Kavya Rallabhandi | Feb 29, 2024 | Trade Secrets

The US Court of Appeals for the Fourth Circuit reversed and remanded a district court’s arbitration award because the district court lacked proper subject matter jurisdiction, independent from the Federal Arbitration Act (FAA), to enforce the award. SmartSky Networks, LLC v. DAG Wireless, LTD, Case No. 22-1253 (4th Cir. Feb. 13, 2024) (Diaz, Thacker, Rubin, JJ.)

SmartSky Networks filed suit in the district court against Wireless Systems Solutions and related companies and individuals over alleged breach of contract, trade secret misappropriation and deceptive trade practices. The parties entered into a business relationship regarding wireless communications in 2017. The relationship was governed by several agreements in the form of statements of work, purchase orders and a teaming agreement.

After filing suit in the district court, SmartSky submitted an arbitration demand against Wireless Systems. The related companies and individuals voluntarily agreed to submit to arbitration with respect to SmartSky’s claims filed against them. Wireless Systems moved to stay the district court action pending arbitration. The arbitration tribunal found in favor of SmartSky and issued an award, which included monetary damages in favor of SmartSky and a permanent injunction against the other parties. Thereafter, SmartSky filed a motion to enforce the award, and the district court confirmed the award. Wireless Systems and the related entities appealed.

The threshold question on appeal was whether the district court had subject matter jurisdiction to confirm the arbitration award. Wireless Systems argued that the 2022 Supreme Court decision in Badgerow v. Walters dictated that the district court lacked subject matter jurisdiction to enforce the arbitration award. In Badgerow, the Supreme Court held that a federal district court faced with an application to enforce or vacate an arbitration award under Sections 9 or 10 of the FAA must have a basis for subject matter jurisdiction independent from the FAA and apparent on the face of the application. The Supreme Court further held that “look-through” jurisdiction (when a court looks beyond a petition to compel arbitration to the underlying controversy to determine whether subject matter jurisdiction exists) only applies to petitions to compel arbitration under Section 4 of the FAA, and that such jurisdiction is not available for Section 9 and 10 applications to confirm, vacate or modify arbitration awards.

Reviewing the district court ruling de novo, the Fourth Circuit reversed and remanded. The Court reasoned that at the time the parties filed their respective Section 9 and 10 applications, the dispute focused on the enforceability of the arbitral award and not on the issues and claims already resolved by the tribunal. For the district court to find that it had jurisdiction over the contract dispute between the parties, the district court had to “look through” to the civil lawsuit and determine that a federal claim existed. Ruling consistently with Badgerow, the Court determined that “look-through” jurisdiction is not available for Section 9 and 10 applications. The Court reasoned that once the tribunal ordered that all claims between SmartSky and Wireless Systems be arbitrated and the related companies and [...]

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I Hear Ya: Claim Terms Not as Narrow as Features in Specification

by Ashley T. Brzezinski | Feb 29, 2024 | Patents

The US Court of Appeals for the Federal Circuit vacated a district court’s final judgment of noninfringement, finding that the district court improperly narrowed the constructions of certain claim terms to particular features recited in the specification. Promptu Sys. Corp. v. Comcast Corp., Case No. 22-1939 (Fed. Cir. Feb. 16, 2024) (Moore, Prost, Taranto, JJ.)

Promptu filed a lawsuit against Comcast alleging infringement of two patents. The patents describe and claim subject matter generally related to voice recognition but have materially different specifications. The first patent describes using remote voice recognition systems to deliver content in response to a user’s speech request (content delivery patent), while the second patent describes using remote voice recognition systems to control a user’s television set based on a user’s speech command (control patent).

The content delivery patent’s representative claim recites a method for using a “back channel containing a multiplicity of identified speech channels from a multiplicity of user sites presented to a speech processing system at a wireline node in a network supporting at least one of cable television delivery and video delivery” as well as a “method of operating at least part of a speech recognition system coupled to a wireline node in a network [for] processing a multiplicity of received identified speech channels to create a multiplicity of identified speech content.” Meanwhile, the claim of the control patent recites “a centralized multi-user voice operated television control system, comprising . . . a centralized processing station configured to receive and process second output from a multitude of television set top boxes by applying voice recognition.”

During the underlying district court proceeding, the district court adopted claim constructions proposed by Comcast. Based on those claim constructions, Promptu stipulated to and moved for entry of a final judgment of no infringement. After the district court granted Promptu’s motion, Promptu appealed.

Promptu challenged the district court’s construction of three claim limitations from the content delivery patent (“back channel,” “multiplicity of received identified speech channels” and “speech recognition system coupled to a wireline node”) and one claim limitation from the control patent (“centralized processing station”). In accordance with long-standing precedent, the Federal Circuit reviewed claim construction by affording the words of the claims their ordinary meaning in the context of the claims and specification.

The Federal Circuit concluded that the district court erred by narrowly construing “back channel” in the content delivery patent as being limited to a “fixed band of frequencies or time slot(s) for transmitting signals to a speech processing system or engine” because nothing in the claim language or the specification required limitation to a “fixed band of frequencies or time slot.” To the contrary, the specification of the patent disclosed the back channel broadly while recognizing the possibility of using different protocols and formats along different subsections of the path or route from user site to speech recognition system. Given the breadth of the techniques for the back channel disclosed in the specification, the Court found no reason to narrow the claims [...]

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