Publications & Media

Federal Circuit Court Decisions For Week Ending June 19, 2020

Paltalk Holdings, Inc. v. Riot Games, Inc., Case Nos. 2019-2035, -2036, -2037, -2038, (June

16, 2020), (Non-Precedential), Patent Nos. 5,822,523; and 6,226,686

Key Point:

  • The Federal Circuit may affirm a PTAB ruling when there is a reviewable pathway to the

PTAB’s conclusion that reasonably takes both sides’ arguments into consideration and

cites support from the prior art.

In re Apple, Inc., Case Nos. 2020-127, (June 16, 2020), (Non-Precedential), U.S. Patent Nos.

8,249,204; 8,565,326; and 8,265,096

Key Point:

  • Absent a showing of a clear abuse of discretion, the Federal Circuit will not grant a writ

of mandamus to compel a district court to grant a motion to transfer venue, regardless of

whether other district courts have granted movant’s similar motions in other cases.

LiquidPower Specialty Products Inc. v. Baker Hughes, Case Nos. 2019-1838, -1839, -1840,

(June 17, 2020), (Non-Precedential), U.S. Patent Nos. 8,426,498; 8,450,249; and 8,450,250

Key Point:

  • Before the PTAB makes a finding of obviousness, it must first consider the secondary

evidence offered by the patentee.

PersonalWeb Technologies LLC v. Amazon, No. 2019-1918, (Jun 17, 2020), (Precedential),

(3-0), Patent Nos. 5,978,791; 6,928,442; 7,802,310; 7,945,544 and 8,099,420

Key point(s):

  • Kessler preclusion is triggered even in cases voluntarily dismissed (with prejudice) by the

patentee and is operable to block actions against subsequent allegations of infringement

against the original defendant and its customers.

  • Kessler preclusion bars all claims that were brought or “could have been brought” in a

prior action.

In re Seattle SpinCo, Inc., Case No. 2020-123, (June 18, 2020), (Non-Precedential), U.S.

Patent Nos. 9,971,678, 9,298,864 and 8,924,192

Key Point:

  • The Federal Circuit declined to adopt the rule that the “first-filed status” is determined by

which court first secures personal jurisdiction over the parties

Dropbox Inc. v. Synchronoss Technologies, Inc., No. 2019-1765, 2019-1767, 2019-1823, (Jun

19, 2020), (Non-Precedential), Patent Nos. 6,178,505; 6,058,399 and 7,567,541

Key point:

  • A broad description of a more economically secure way to perform a method, such as

transmit data, (i.e., “an advance”) that is not specifically tied to the claims is not enough

to constitute an inventive concept under Step 2 of Alice.