The most important Federal Circuit decisions from the second half of 2024
“Between June 1 and December 1, 2024, the Federal Circuit denied all ten mandamus petitions relating to venue issues that it received.”
The last six months of 2024 saw numerous interesting, precedential decisions from the Federal Circuit on a range of patent issues. This article summarizes six of these opinions and a perceived trend in mandamus petitions. Cir. Cir. 2024), dismissing Google’s appel that the district court had abused its discretion by admitting the testimony of EcoFactor’s damages expert, M. Kennedy, in relation to evidence surrounding EcoFactor’s portfolio licenses. Id. Id. At 257. In dissenting, Judge Prost stated that “the majority opinion here at least muddles and at worst contradicts our precedent.” The dissent agreed with Google and found that the expert’s royalty rate was a product of EcoFactor’s subjective beliefs, not reliable inputs and methodology tied to the facts of the case. The dissent agreed that the expert’s royalties were a result of EcoFactors subjective beliefs, and not reliable inputs or methodology tied to the facts of this case. Cir. 2024). In 2025, the en banc will use this case to examine the standards imposed under Rule 702 (including the 2023 amendments thereto). After Google submitted its initial brief, the court issued a precedential ruling directing EcoFactor not to rely on Google’s argument that Mr. Kennedy’s proposed royalty rate was unreliablely apportioned. The court will not be addressing whether Kennedy correctly applied a running royalty amount from the lump-sum agreements, but rather whether his running royalty for just the infringed Patent is reliably allocated. It seems the Court will not provide guidance or reconciliation of its case law regarding use of portfolio agreements as benchmarks in the reasonable royalty analysis.
Revival of False Patent Marking as a Trademark Claim
In Crocs, Inc. v. Effervescent, Inc., 119 F.4th 1 (Fed. Cir. Dawgs claimed that Crocs violated Section 53(a) Lanham Act (15 U.S.C. SS 1125(a), when it created false advertisements and commercial misrepresentations in promoting its “Croslite” footwear as “patented,” “proprietary,” and “exclusive.” The district court granted summary judgment in favor of Crocs saying Dawgs’ claims were not directed to the nature, characteristics, or qualities of Crocs’ products, reasoning that any claim that a product was patented was directed to inventorship, and thus was precluded by the Supreme Court’s Dastar Corp. v. Twentieth Century Fox Film Corp. and the Federal Circuit’s Baden Sports Inc. v. Molten USA Inc. decisions.
The Federal Circuit reversed, holding that there was a cause of action against Crocs for its product advertisements. The court found that Crocs’ promotional statements went further than merely a false claim of origin, which was prohibited under the Dastar and Baden precedents, instead differentiating the Crocs’ material from other molded footwear in a way that could “deceive consumers and potential consumers into believing that all other molded footwear is made of inferior material.” Crocs, Inc, 119 F.4th at 3 (omission and citation omitted).[would]This case is interesting because it may revive “false patent marking” as something that consumer goods and other companies need to consider when promoting their products. Before the America Invents Act, in the early 2010s, a plaintiff was able to bring a claim for up to $500 per product falsely marked to practice a patent without having to show injury. The AIA changed that by requiring plaintiffs to show a competitive injury, and by limiting the recovery to “damages sufficient to compensate for infringement.” 35 U.S.C SS 284 This decision is all the more interesting because the Federal Circuit does not have exclusive jurisdiction over false advertising claims, so other circuit courts could reach a different result. And this decision is all the more interesting given that the Federal Circuit does not have exclusive jurisdiction over false advertising claims, so other circuit courts could reach a different result.[]Approval of District Court’s Inherent Powers
For the past two years, the U.S. District Court of Delaware has unveiled potential attorney and party misconduct in related patent cases as part of its policing of new disclosures of interested parties in the litigation. See Nimitz Techs. LLC v. CNET Media, Inc., No. 21-1247, 2022 WL 17338396, at * 10-12. In July, the Federal Circuit heard a case involving Backertop Licensing LLC. This plaintiff LLC was created by IP Edge & Mavexar. The Delaware District Court had ordered Ms. LaPray to testify in person regarding possible fraud on the court. 107 F.4th 1335 (Fed. Cir. 2024).
Although Backertop argued that Federal Rule of Civil Procedure (FRCP) 45 “preclude
the district court’s order requiring Ms. LaPray to appear in Delaware” because she does not fall within the 100-mile requirement, the district court denied her motion because the order to appear was rooted in its inherent powers, not FRCP 45. Id. The district court found Ms. LaPray in civil contempt and imposed a fine of $200 per day until she appeared. The district court found Ms. LaPray to be in civil contempt, and fined her $200 per day until she appeared. The Federal Circuit explained that FRCP 45 only applies to “a party’s or attorney’s attempts to subpoena a persons to attend a hearing, trial, or deposition in a 100-mile area,” and not to the District Court’s order sua sponte. Id. Id. The Federal Circuit concluded the order to force attendance was not an abuse in discretion because “it was reasonably reasonable for the district courts here to require in person testimony in furtherance to its authority to investigate attorneys and party misconduct.” This case is important because more courts and districts are considering disclosure requirements for parties (and interested persons). It is important to recognize the power that courts have to enforce those requirements. As more courts and districts are considering disclosure requirements for parties (and interested persons), this case is important to recognize the power that courts have to enforce those requirements.
In an even more recent case, the Federal Circuit affirmed another district court’s invocation of its inherent powers to sanction a plaintiff $25,000 for bad faith conduct, in addition to awarding attorney fees under Section 285. PS Products Inc. V. Panther Trading Co. 2024 WL 49996328 (Fed. Cir. 2024). The Court first affirmed that district courts have the power to impose monetary penalties under their inherent powers, in addition to awarding costs and fees under Section 285. The Court found that the district court did nothing wrong in imposing the sanctions, given the lack of merit in the claim, and the need to deterrence, due to the fact that more than twenty cases were filed in the district pursuant the wrong venue statute. The Court referred to these cases as being “meritless” and noted that many cases were dismissed prior to, or shortly after, a response pleading had been filed. The Federal Circuit concluded that “the district courts acted within their discretion by relying upon its inherent power to sanction behavior that would normally fall under Rule 11.” Id. At *11.
A new trend for Mandamus Petitions regarding Venue Issues
In the past few years, patent litigants are using the mandamus process to challenge venue decisions more frequently. Before 2008, for example, we found no evidence that the Federal Circuit had granted a petition to overturn a decision on transfer. From 2008 to 2021, however, the court granted at least a third (31%) out of the 200 mandamus requests it received about venue challenges. This increase was not surprising, given the changes to the relevant venue transfer laws from the Fifth Circuit in 2008. And the Supreme Court’s guidance in 2014 on the proper interpretation the venue patent statute. The Federal Circuit rejected all ten of the mandamus petitions it received between June 1 and December 1. The brevity and shortness of these orders makes it difficult to determine what is driving this trend. In this period, the court’s orders often revolve around the petitioner failing to show that “extraordinary relief” was needed. In re Zepp Health Corp. No. 2025-11 (Fed. Cir. Cir. 2024-136 (Fed. Cir. Jul. 8, 2024). It is possible that the court feels like the venue case law is now substantially settled and more uniformly applied so that mandamus relief is not necessary, but it will be interesting to see if this trend continues in 2025.
Standards for Anti-Suit Injunction
Unable to reach an agreement on a global cross-license to standard-essential patents (“SEPs”) relevant to the 5G wireless-communication standards, Lenovo and Ericsson took domestic and foreign legal action to enforce their respective patent rights. Telefonaktiebolaget LM Ericsson v. Lenovo (United States), Inc., 2024 U.S. App. LEXIS 26863, 12 F.4th 846, (Fed. Cir. 2024). Ericsson also initiated proceedings in Colombia and Brazil against Lenovo, seeking (and obtaining) preliminary injunctions in both jurisdictions. In North Carolina, Lenovo asked the district court for an anti-suit order that would prevent Ericsson from enforcing Ericsson’s foreign injunctions. The district court denied Lenovo’s motion based on the three-part framework established in Microsoft Corp. Cir. 2012). The district court held that the first threshold requirement that “the domestic action must be dispositive of foreign action to be enjoined” was not met, because the court stated that the particular foreign suits wouldn’t necessarily result in a worldwide cross-license. Telefonaktiebolaget, 2024 U.S. App. LEXIS 26863, at *5.[ed]On Appeal, the Federal Circuit found that the “dispositive requirement” was met and vacated district court’s decision. The Federal Circuit explained that a “dispositive requirement” does not necessarily result in a global license, but rather that it can be met if a foreign antisuit injunction resolves only a foreign order, and even if the relevant resolution depends upon the possibility that one party’s interpretation of the facts or the law prevails in a domestic suit. At *21. The Federal Circuit determined that the “dispositive requirement” was met in this case because the FRAND agreement prevented Ericsson’s ability to obtain injunctive remedies without first complying the commitment’s obligation for Ericsson to negotiate in good-faith for a license of the SEPs. Whether Ericsson actually negotiated in good faith, and, if Ericsson did not, whether Ericsson demonstrated the other two requirements of the Microsoft Corp. anti-suit injunction framework, are determinations to be made on remand at the district court.
Additional Guidance on ODP and ‘Essential Element’ Jurisprudence
In Allergan USA Inc. v. MSN Laboratories Private Ltd., 111 F.4th 1358 (Fed. Cir. Cir. 2024), the Federal Circuit addressed important issues when reviewing a final decision by the Delaware District Court which held claim forty of the 356 patent invalid due to obviousness-type patenting (“ODP”), and the 179, 291, –792, –516 patents invalid due to lack of written descriptions. Background: The ‘365 patent was the first to protect the eluxadoline chemical compound. It was filed in 2005. The ‘365 Patent received a significant Patent Term Adjustment (“PTA”) which extended the expiration date of the ‘365 Patent until June 2026. Allergan filed continuations claiming priority over the 2005 filing date. The continuation patents ‘011’ and ‘709’ did not receive a PTA and will both expire in March of 2025. The ‘179, ‘291, ‘792, and 516 patents are directed to formulations of eluxadoline and share a common specification and priority date. The ‘179’, ‘291,’792′, and ‘516’ patents are directed at formulations of eluxadoline, and they share a similar specification and priority date. The Federal Circuit reversed the ODP judgment, holding that “a first-filed, first-issued, later-expiring claim cannot be invalidated by a later filed and issued reference claim having a common priority date.” Id. The court explained that, because the ‘356 is the first patent that covers eluxadoline and it expires earlier, it would be “antithetical” to ODP to conclude that it extends Allergan’s period of exclusivity for the disclosures of reference patents. Id.
Next the Federal Circuit reversed district court’s conclusion, that the asserted patent claims ‘179’, ‘291,’792′, and ‘516’ are invalid under the 35 U.S.C. SS 112 was invalidated for lack of written descriptions by failing to include a “essential component,” namely glidant. The court explained that there is a starting presumption that no element is essential, but that courts must look for indications that a certain element is “critical”, “essential”, etc. Expert testimony on “essentiality” is relevant, but it must be sufficiently tied to the record. The Federal Circuit determined that glidant in this case was not an essential component, based on a specification that described it as “optional”, and the fact that original patent claims were written broadly without this element.
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Author: tumsasedgars
