Fresh From the Bench: Latest Federal Circuit Court Case
CASE OF THE WEEK
Lite-Netics, LLC v. Nu Tsai Capital LLC, Appeal No. 2023-1146 (Fed. Cir. Feb. 17, 2023)
In an appeal from the U.S. District Court for the District of Nebraska, the Federal Circuit addressed whether the district court properly granted a preliminary injunction restricting Lite-Netics, LLC’s patent-related speech. The Federal Circuit held that the district court abused its discretion in issuing the preliminary injunction because the applicable speech-protective legal standards were not met, vacating the preliminary injunction and remanding.
Lite-Netics competes with Nu Tsai Capital, LLC d/b/a Holiday Bright Lights (“HBL”) in the market for holiday string lights. Lite-Netics’s patent at issue describes light-fixture assemblies, with each assembly having a magnetic base for easy mounting to metal surfaces. The patent is depicted with one disk magnet on the base of the light fixture assembly. HBL sells two products, both of which Lite-Netics allege infringe its patent. The first product contains a light-fixture assembly with two half-disk magnets in the base (the “Magnet Cord”). The second product is not a light-fixture assembly, but a dual-clip unit containing a single magnet that is designed to be put on the bottom of a light socket by clipping the unit to the wires coming out of the socket (the “Magnetic Clip”).
Lite-Netics brought a patent-infringement action against HBL in the U.S. District Court for the District of Nebraska related to the Magnetic Cord and Magnetic Clip. Prior to filing the lawsuit, Lite-Netics sent notices to its customers, some of which were also HBL customers, informing them of allegedly infringing competitors in the market and stating Lite-Netics’s intent to enforce its patent rights. Lite-Netics did not name HBL. After filing suit, Lite-Netics sent additional notices to its customers, this time identifying HBL as an allegedly infringing competitor. After the second notice was sent, HBL filed counterclaims, including for state-law torts, and moved for a temporary restraining order and a preliminary injunction against certain speech by Lite-Netics about its patents. The district court issued a preliminary injunction that barred Lite-Netics from suggesting that HBL is a patent infringer, that HBL has copied Lite-Netics’s lights, or that HBL customers might be sued. Lite-Netics appealed.
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ALSO THIS WEEK
SSI Technologies, LLC v. Dongguan Zhengyang Electronic Mechanical Ltd., Appeal Nos. 2021-2345, 2022-1039 (Fed. Cir. Feb. 13, 2023)
In an appeal from a district court summary judgment opinion, the Court issued a wide-ranging opinion covering a number of issues, one of which relates closely to our Case of the Week, above.
The opinion can be found here.
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By Nika Aldrich
Hawk Technology Systems, LLC v. Castle Retail, LLC, Appeal No. 2022-1222 (Fed. Cir. Feb. 17, 2023)
In this case, the Federal Circuit affirmed a Tennessee district court’s Rule 12(b)(6) dismissal of infringement claims on grounds that asserted U.S. Patent No. 10,499,091 was directed to patent-ineligible subject matter under 35 U.S.C. § 101. The district court had reached its decision after conducting a “technology briefing” at which it received argument concerning the § 101 issue, and was presented with prior art references and witness statements concerning, inter alia, the conventionality of the patent’s recited steps. Patentee Hawk argued that it was procedurally improper for the court to dismiss the claims in this posture, and that it should have converted the motion to dismiss into a motion for summary judgment under Rule 56 to permit the parties to take full discovery into factual issues underlying the court’s determination.
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The opinion can be found here.
Minerva Surgical, Inc. v. Hologic, Inc., Appeal No. 2021-2246 (Fed. Cir. Feb. 15, 2023)
In this case, the Federal Circuit affirmed a district court’s grant of summary judgment that asserted claims of Minerva Surgical’s U.S. Patent No. 9,186,208 were invalid as anticipated under the on-sale bar of pre-AIA 35 U.S.C. § 102(b). The claims were directed to devices for performing endometrial ablation (a type of uterine surgery), which the patentee had demonstrated at a trade event described as the “Super Bowl” of the industry more than one year prior to the priority date of the patent. The Court found that the undisputed facts showed the device was both “in public use” and “ready for patenting,” and so affirmed the district court’s grant of summary judgment.
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The opinion can be found here.
Chromadex, Inc. v. Elysium Health, Inc., Appeal No. 2022-1116 (Fed. Cir. Feb. 13, 2023)
In an appeal from a district court summary judgment order, the Federal Circuit affirmed that a patent directed to dietary supplements was ineligible under Section 101. The patent claimed a dietary supplement that included various ingredients found in milk plus “isolated nicotinamide riboside [NR].” While NR is found in milk, isolated NR is not. The district court found the patent ineligible for claiming a law of nature. The Federal Circuit affirmed, holding that the patent was ineligible under the Supreme Court’s decisions in Ass’n for Molecular Pathology v. Myriad Genetics, Inc. or Diamond v. Chakrabarty. The Court then discussed whether it was necessary to consider the Court’s two-step framework from Alice Corp. Pty. Ltd. v. CLS Bank Int’l, and concluded it was not, given that the Court in Myriad did not engage in that two-step analysis. But even if the two-step analysis was required, the Federal Circuit held that the patent was directed to ineligible subject matter at step one, and did not have a sufficient inventive step under step two.
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The opinion can be found here.
By Nika Aldrich
Edited by Nika Aldrich and Jason Wrubleski, Schwabe, Williamson & Wyatt