Advanced Video Technologies LLC appeals an order from the United States District Court for the Southern District of New York that dismissed its complaints for lack of standing. The district court based its decision on the ground that a co-owner of the patent was not a party to the actions, and the co-owner’s ownership interests in the patent were not transferred to Advanced Video. We affirm.
A jury found Blue Coat Systems, Inc. (“Blue Coat”) liable for infringement of four patents owned by Finjan, Inc. (“Finjan”) and awarded approximately $39.5 million in reasonable royalty damages. After trial, the district court concluded that the ’844 patent was patent-eligible under 35 U.S.C. § 101 and denied Blue Coat’s post-trial motions for judgment as a matter of law (“JMOL”) and a new trial. Blue Coat appeals.
We find no error in the district court’s subject matter eligibility determination as to the ’844 patent and agree that substantial evidence supports the jury’s finding of infringement of the ’844 and ’731 patents. However, we conclude that Blue Coat was entitled to JMOL of noninfringement for the ’968 patent because the accused products do not perform the claimed “policy index” limitation. On appeal, Blue Coat does not challenge the verdict of infringement for the ’633 patent.
With respect to damages, we affirm the award with respect to the ’731 and ’633 patents. We vacate the damages award for the ’968 patent, as there was no infringement. With respect to the ’844 patent, we agree with Blue Coat that Finjan failed to apportion damages to the infringing functionality and that the $8-per-user royalty rate was unsupported by substantial evidence.
We therefore affirm-in-part, reverse-in-part, and remand to the district court for further consideration of the damages issue as to the ’844 patent.
Congress has prohibited the Director of the United States Patent and Trademark Office from instituting inter partes review if the petition requesting that review is filed more than one year after the petitioner, real party in interest, or privy of the petitioner is served with a complaint for patent infringement. 35 U.S.C. § 315(b). Congress also provided that the Director’s determination “whether to institute an inter partes review under this section shall be final and nonappealable.” Id. § 314(d). The question before us is whether the bar on judicial review of institution decisions in § 314(d) applies to timebar determinations made under § 315(b). In Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015), a panel of this court held in the affirmative that a § 315(b) time-bar determination is final and nonappealable under § 314(d). Today, the court revisits this question en banc.
We recognize the strong presumption in favor of judicial review of agency actions. To overcome this presumption, Congress must clearly and convincingly indicate its intent to prohibit judicial review. We find no clear and convincing indication of such congressional intent. We therefore hold that the time-bar determinations under § 315(b) are appealable, overrule Achates’s contrary conclusion, and remand these cases to the panel for further proceedings consistent with this opinion.
Appellee E.I. DuPont de Nemours & Co. (“DuPont”) sought inter partes reexamination of various claims of Appellant Monsanto Technology LLC’s (“Monsanto”) U.S. Patent No. 7,790,953 (“the ’953 patent”). The U.S. Patent and Trademark Office’s (“USPTO”) Patent Trial and Appeal Board (“PTAB”) issued a final decision that affirmed an examiner’s rejection of claims 1, 7, 12–22, 24, and 27–30 (“the Asserted Claims”) as anticipated by U.S. Patent No. 6,426,448 (“Booth”), and of, inter alia, claim 2 as obvious over Booth. See E.I. DuPont de Nemours & Co. v. Monsanto Tech. LLC, No. 2015-007692, 2016 WL 4255131, at *3 (P.T.A.B. Aug. 10, 2016). Monsanto appeals. We have subject matter jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) (2012). We affirm.
Microsoft Corporation (“Microsoft”) appeals from decisions of the Patent Trial and Appeal Board (“Board”) in three separate inter partes review (“IPR”) proceedings, in which the Board found that Microsoft failed to show by a preponderance of the evidence that the challenged claims of U.S. Patent No. 8,144,182 (“’182 patent”) were anticipated or obvious. See Microsoft Corp. v. Biscotti Inc., No. IPR2014-01457, 2016 Pat. App. LEXIS 7571 (P.T.A.B. Mar. 17, 2016); Microsoft Corp. v. Biscotti Inc., No. IPR2014-01458, 2016 Pat. App. LEXIS 7572 (P.T.A.B. Mar. 17, 2016); Microsoft Corp. v. Biscotti Inc., No. IPR2014-01459, 2016 Pat. App. LEXIS 7573 (P.T.A.B. Mar. 17, 2016). Because the Board’s decisions are supported by substantial evidence and do not rely on an erroneous claim construction, we affirm.
This appeal arises from the inter partes review (IPR) of U.S. Patent No. 6,904,796 (the ’796 patent) owned by Bosch Automotive Service Solutions LLC (Bosch). The Patent Trial and Appeal Board (Board) granted the IPR petition filed by Autel U.S. Inc. and Autel Intelligent Technology Co. Ltd. (Autel) and instituted the IPR on claims 1, 4–15, and 20–22 of the ’796 patent. Bosch filed a patent owner response and a “contingent” motion to amend, seeking to substitute amended claims 23–38 for original claims 1, 4–15, and 20–22 in the event that the Board found the challenged claims unpatentable. In its final decision, the Board found all challenged claims unpatentable and also denied Bosch’s contingent motion to amend. Autel U.S. Inc. v. Bosch Auto. Serv. Sols. LLC, No. IPR2014-00183, 2015 WL 2149218 (P.T.A.B. May 5, 2015) (Final Written Decision). Bosch now appeals.1 For the reasons below, we affirm the Board’s finding of unpatentability of claims 1, 4–15, and 20–22, and we vacate and remand its denial of Bosch’s motion to amend as to proposed substitute claims 23–38.
This is the third time we have had occasion to preside over this longstanding dispute regarding whether Travel Sentry, Inc. (“Travel Sentry”) and its licensees infringe one or more claims of two patents issued to appellant David A. Tropp (“Tropp”): U.S. Patent Nos. 7,021,537 (“the ’537 patent”) and 7,036,728 (“the ’728 patent”). See Travel Sentry, Inc. v. Tropp (Travel Sentry II), 497 F. App’x 958 (Fed. Cir. 2012); Tropp v. Conair Corp., 484 F. App’x 568 (Fed. Cir. 2012). In this most recent iteration, Tropp appeals from the district court’s entry of summary judgment that Travel Sentry and its licensees do not directly infringe any of the method claims recited in the ’537 and ’728 patents under 35 U.S.C. § 271(a). See Travel Sentry, Inc. v. Tropp (Travel Sentry III), 192 F. Supp. 3d 332 (E.D.N.Y. 2016). Travel Sentry and several of its licensees cross-appeal from the district court’s denial of their motions for attorney fees brought under 35 U.S.C. § 285.
We conclude that there are genuine disputes of material fact regarding whether Travel Sentry directs or controls the performance of certain steps of the claimed methods. Accordingly, we vacate the district court’s entry of summary judgment of noninfringement in favor of Travel Sentry and its licensees and remand for further proceedings. Because Travel Sentry and its licensees are no longer “prevailing parties” to whom an award of attorney fees could be made under 35 U.S.C. § 285, we dismiss their cross-appeal as moot.
HTC Corporation and ZTE (USA), Inc. appeal a final written decision of the Patent Trial and Appeal Board in an inter partes review. Appellants argue that the Board improperly construed the claim term “message” and erred in finding that HTC failed to show that the prior art anticipated or rendered obvious the challenged claims. We find no error in the Board’s claim construction, and substantial evidence supports the Board’s patentability determination. We affirm.
Inventor Holdings, LLC (IH) sued Bed Bath & Beyond, Inc. (BBB) for infringement of U.S. Patent No. 6,381,582 (the ’582 patent) in April 2014. The Supreme Court issued its decision in Alice Corp. v. CLS Bank International in June 2014. 134 S. Ct. 2347 (2014). BBB thereafter moved for judgment on the pleadings, contending that Alice rendered the asserted claims of the ’582 patent invalid under 35 U.S.C. § 101. The district court granted BBB’s § 101 motion. See Inventor Holdings, LLC v. Bed Bath & Beyond Inc., 123 F. Supp. 3d 557, 563 (D. Del. 2015). We affirmed the district court’s § 101 decision without opinion under Federal Circuit Rule 36. See Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 643 F. App’x 1014, 1015 (Fed. Cir. 2016).
BBB moved for an award of attorney fees pursuant to 35 U.S.C. § 285, arguing that, once Alice issued, IH should have reevaluated its case and dismissed the action. The district court granted BBB’s fees motion, holding that, “following the Alice decision, IH’s claims were objectively without merit.” Inventor Holdings, LLC v. Bed Bath & Beyond Inc., No. 14-CV-448, 2016 WL 3090633, at *3 (D. Del. May 31, 2016). The district court awarded BBB its attorney fees beginning from the date of the Alice decision, including fees incurred during the § 101 appeal. See id. at *4. IH appeals the district court’s fees decision. We affirm.
Bombardier Recreational Products Inc. and BRP U.S. Inc. (collectively, “BRP”) appeal from the United States District Court for the Southern District of Florida’s denial of judgment as a matter of law that the asserted claims of U.S. Patent Nos. 6,568,969 (“’969 patent”) and 6,793,545 (“’545 patent”) would have been obvious, that Arctic Cat Inc. (“Arctic Cat”) failed to mark patented products, that the jury’s royalty award was based on improper expert testimony, and that BRP did not willfully infringe the asserted claims. BRP also appeals the district court’s decision to treble damages and its award of an ongoing royalty to Arctic Cat. We affirm the district court’s denial of judgment as a matter of law as to obviousness, the jury’s royalty rate, and willfulness. We affirm the district court’s decision to treble damages and award an ongoing royalty to Arctic Cat. We vacate the court’s denial of judgment as a matter of law as to marking and remand for further consideration limited to that issue.