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.
Today we decide three appeals in companion cases from final written decisions of the United States Patent and Trademark Office (“PTO”) Patent Trial and Appeal Board’s (“Board”) inter partes reviews (“IPRs”) of U.S. Patent No. 7,191,233 (“the ’233 patent”), owned by CRFD Research, Inc. (“CRFD”). Iron Dome LLC v. CRFD Research, Inc., No. IPR2015-00055, 2016 Pat. App. LEXIS 6855 (P.T.A.B. Apr. 22, 2016) (hereinafter “Iron Dome Final Written Decision,” Appeal No. 16-2198); DISH Network Corp. v. CRFD Research, Inc., No. IPR2015- 00627, 2016 Pat. App. LEXIS 7567 (P.T.A.B. June 1, 2016) (hereinafter “DISH Final Written Decision,” Appeal No. 16-2298); Hulu, LLC v. CRFD Research, Inc., No. IPR2015-00259, 2016 Pat. App. LEXIS 4340 (P.T.A.B. June 1, 2016) (hereinafter “Hulu Final Written Decision,” Appeal No. 16-2437). For the reasons stated below, we affirm the Iron Dome and DISH Final Written Decisions, but we reverse the Board’s determination on obviousness in the Hulu Final Written Decision.
Presidio filed suit against American Technical Ceramics Corp. (“ATC”) for patent infringement in the District Court for the Southern District of California. After separate jury and bench trials, the district court held the asserted claims were infringed and not invalid, and granted a permanent injunction. The district court limited damages due to intervening rights.
We affirm the district court’s holdings that the claims are not indefinite and that ATC is entitled to absolute intervening rights because a substantive amendment was made during reexamination. We conclude that the evidence does not support an award of lost profits and, therefore, reverse the award of lost profits and remand for determination of a reasonable royalty. We conclude that the district court did not abuse its discretion in declining to award enhanced damages. We vacate the permanent injunction, and remand for further proceedings with respect to the injunction.
BASF Corporation owns U.S. Patent No. 8,524,185, which describes and claims systems for performing catalytic conversion of nitrogen oxides (NOx) in an exhaust gas stream. As relevant here, the patent claims a partly-duallayer arrangement of coatings on a substrate over which exhaust gas passes—a coat along the full length of the substrate containing “a material composition B effective to catalyze selective catalytic reduction (SCR) of NOx”; and beneath part of that coat, on the outlet end of the gas passage, a partial-substrate undercoat containing “a material composition A effective for catalyzing NH3 oxidation” (ammonia oxidation, or AMOx). ’185 patent, col. 19, lines 40–55 (claim 1); see also id., col. 20, lines 3–5 (dependent claim 5, similar); id., col. 20, lines 42–62 (independent claim 17, similar, but adding restrictions concerning precious metals). In 2014, BASF sued its competitor, Johnson Matthey Inc., for infringement of the ’185 patent. The district court held that the “effective for catalyzing”/“effective to catalyze” language is indefinite and entered judgment of invalidity of all claims on that basis.
BASF appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1). We reverse the judgment of invalidity for indefiniteness. We remand for further proceedings in accordance with this opinion.