Patent Case Summaries | Week Ending March 1, 2024 | Alston & Bird
Freshub, Inc., et al. v. Amazon.com, Inc., et al., Nos. 2022-1391, -1425 (Fed. Cir. (W.D. Tex.) Feb. 26, 2024). Opinion by Taranto, joined by Reyna and Chen.
Freshub sued Amazon for infringement of a patent on voice-processing technology. Amazon denied infringement, challenged the patent’s validity, and asserted that the patent should be declared unenforceable based on inequitable conduct. A jury found that Amazon did not infringe and rejected Amazon’s assertion of invalidity for lack of adequate written description. The district court then held a separate bench trial on Amazon’s inequitable conduct defense and found that Amazon failed to prove inequitable conduct. After denying the parties’ post-trial motions, the court entered final judgment.
Freshub appealed, asserting entitlement to judgment as a matter of law (JMOL) on infringement and entitlement to a new trial overall because of prejudicial statements by Amazon at trial. Amazon cross-appealed, seeking reversal of the finding that it failed to prove inequitable conduct.
In arguing for JMOL on infringement, Freshub focused on three claim limitations, arguing that substantial evidence does not support a finding adverse to it for any of those limitations. The Federal Circuit determined that substantial evidence supports noninfringement under the first limitation—which requires that the system “identify an item”—and thus the court did not reach the other two.
The Federal Circuit held that “there was evidence from which the jury could reasonably find the claim limitation, when given its ordinary meaning in the context of the patent, not to be met by the instructions for Amazon’s [accused] shopping-list feature.” No party requested a claim construction for the claim limitation, and Freshub did not argue that there should have been a claim construction. The Federal Circuit thus ruled that, “with no claim construction narrowing the meaning of the language, the jury was free to find that the shopping-list feature” did not come within the scope of the claims.
The Federal Circuit next concluded that the district court did not abuse its discretion in denying Freshub’s motion for a new trial. Freshub argued that Amazon made prejudicial statements at trial, but the Federal Circuit held that “Freshub failed to object properly” under the applicable Fifth Circuit law.
Lastly, turning to Amazon’s cross-appeal, the Federal Circuit ruled that Amazon failed to show reversible error. The statement underlying Amazon’s allegation of inequitable conduct occurred when counsel for the patent applicant sought to revive the parent application, which had been abandoned. Counsel had stated to the PTO that the application had been unintentionally abandoned. Amazon argued that this was false and constituted an intentional misrepresentation with intent to deceive the PTO.
The Federal Circuit focused on the requirement of deceptive intent. Noting that “the record of what actually occurred at relevant times was thin,” the court upheld the district court’s finding of no inequitable conduct because “Amazon’s arguments for drawing the necessary adverse inferences leave gaps.” Based on the record evidence, the district court could “reasonably hold deceptive intent not proven.” Thus, the Federal Circuit upheld the district court’s rejection of Amazon’s inequitable conduct defense.
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