The Federal Circuit Court of Appeals has filed an opinion in TCL Communications’ appeal to the Texas Eastern District Court decision denying summary judgment and its motion for a new trial on damages and challenging the jury’s findings. The Court of Appeals will “reverse, hold that the ’510 patent claims ineligible subject matter under 35 U.S.C. § 101, and do not reach the issues of damages or willfulness.” The opinion was written by Chief Judge Prost.
Ericsson Inc. sued TCL Communication in 2015 for infringing five different patents; after inter partes review, only the ’510 patent remained. TCL Communication motioned for summary judgment that the patent claims were ineligible for a patent; this motion was denied by the district court. Upon trial, the jury found that TCL willfully infringed on the patent and awarded Ericsson damages. After the trail, TCL moved for renewed judgment and a new trial. At first, the district court agreed, but after Ericsson’s motion for reconsideration, the court reinstated the jury verdict and denied TCL’s motion for a new trial and motion for judgment. TCL appealed this decision.
The Federal Circuit determined that “[b]ased on the claim language, we conclude that claims 1 and 5 are directed to the abstract idea of controlling access to, or limiting permission to, resources.” They added that “[a]s an initial matter, the district court was incorrect to conclude that ‘[t]he claims of the ’510 patent are limited to mobile platform technology,’ and Ericsson is wrong to repeat that point…The asserted claims merely require ‘[a] system for controlling access to a platform,’ whether mobile, desktop, or otherwise. They do not mention, and are not limited to, mobile phones or a ‘resource-constrained’ environment. For the same reason, Ericsson’s reference to ‘a specific, layered software architecture,’ Appellees’ Br. 29-30, which does not appear in the claims is unavailing.” The court concluded that the patent claims do not “contain an inventive concept that would support patent eligibility.” Rather, the “allegedly novel aspect of the invention is wholly missing from claims 1 and 5.” The Court states that the district court’s conclusion only based on the PTAB’s conclusion in a related review proceeding and it “overstates the breadth of the Board’s conclusion.” The court vacated the district court’s damages verdict.
The dissenting opinion of Circuit Judge Newman is that the Court has disregarded Federal Rules and general practice for civil trials and appeals. Judge Newman states that the Court “holds that the district court’s pre-trial denial of a motion for summary judgment based on 35 U.S.C. § 101 is the same as a final decision in favor of the non-movant. That is not the general rule, and it is not the rule of the Fifth Circuit.” For example, Judge Newman states that TCL did not raise or make Section 101 claims, but Section 101 was used to determine eligibility; the Judge adds that the majority of the Court’s decision regarding Section 101 in agreement with the law and precedents. Further Ericsson “has the right to respond to TCL’s Section 101 arguments on this appeal.” Judge Newman concludes that the Court makes a mistake by holding Section 101 eligibility for the appeal and it is mistaken by stating claims 1 and 5 are ineligible for patenting.
Ericsson is represented by McCool Smith as well as MoloLamken. TCL Communication is represented by Finnegan, Henderson, Farabow, Garrett & Dunner.
