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In the Weeds? Humira “Patent Thicket” Isn’t an Antitrust Violation

by | Aug 11, 2022 | ,

The US Court of Appeals for the Seventh Circuit affirmed that welfare benefit plans that bought the drug Humira did not have valid antitrust claims against the patent owner. The Court found that amassing patents by itself is not enough to give rise to an antitrust claim, and that the welfare benefit plans would need to prove that the patents were invalid. Mayor and City Council of Baltimore, et al. v. AbbVie Inc., et al., Case No. 20-2402 (7th Cir. Aug. 1, 2022) (Easterbrook, Wood, Kirsch, JJ.)

AbbVie owns a patent covering Humira, which is a drug used to treat arthritic and inflammatory diseases. Humira is not covered by the Hatch-Waxman Act because it is a biologic drug, rather than a synthetic drug. Biologics are covered by the Biologics Price Competition and Innovation Act (BPCIA), under which a competitor must ask the US Food and Drug Administration for permission to sell a “biosimilar” drug based on certain guidelines. From the first sale of the original drug, the competitor must wait 12 years to enter the market. If the original drug seller believes that a patent blocks competition and initiates litigation, the competitor is still free to sell its biosimilar drug. The competitor sells at risk of an adverse outcome in the litigation.

The original Humira patent expired in 2016, but AbbVie obtained 132 additional patents related to the drug. After the 12-year BPCIA requirement passed, none of AbbVie’s competitors chose to launch a biosimilar. Instead, competitors settled with AbbVie on terms to enter the US market in 2023. In exchange, AbbVie agreed that enforcement of all 132 of its patents would end in 2023 even if they were not set to expire.

Welfare benefit plans that pay for Humira on behalf of covered beneficiaries accused AbbVie of violating Sections 1 and 2 of the Sherman Antitrust Act. The payors argued that AbbVie’s settlements with potential competitors established a conspiracy that restrained competition in violation of Section 1, and that AbbVie’s “patent thicket” allowed AbbVie to reap unlawful monopoly profits from Humira after expiration of the original patent in violation of Section 2. The district court dismissed the complaint. The payors appealed.

The issue on appeal with respect to Section 2 was whether the payors had to prove that all of AbbVie’s Humira-related patents were invalid. Under the Walker Process antitrust doctrine, a party may be liable for an antitrust violation if it knowingly asserts a fraudulently procured patent in an attempt to monopolize a market. The payors did not argue that all 132 of AbbVie’s patents were fraudulent. The Seventh Circuit reasoned that because the patent laws do not set a cap on the number of patents a person (or company) can hold, the payors would need to prove that each of AbbVie’s 132 Humira-related patents were invalid to succeed in showing a violation under Section 2. Not only did the payors fail to prove that all 132 patents were invalid, but they did not even offer to do so. [...]

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Argument Forfeit in Remand Notwithstanding Modified Claim Construction

by | Aug 4, 2022 |

In the second appeal arising from an inter partes review (IPR), the US Court of Appeals for the Federal Circuit found that its revised claim construction from the first appeal did not permit the patent challenger to raise a new argument in a remand proceeding at the Patent Trial & Appeal Board (Board) since the patent owner’s response in the original proceeding had sufficiently put the challenger on notice of the claim construction that was adopted in the first appeal. Wireless Protocol Innovations, Inc. v. TCT Mobile, Inc., Case No. 21-2112 (Fed. Cir. July 19, 2022) (Prost, Taranto, Chen, JJ.)

Wireless Protocol Innovations (WPI) owns a patent related to controlling data flow in a point-to-multipoint communications system. WPI filed a district court complaint in 2015 asserting the patent against TCT. In response, TCT filed IPR petitions challenging certain claims of the patent. The petition presented three grounds of unpatentability, one of which relied on a reference by Sen. TCT’s petition did not propose constructions for any claim terms and argued that Sen taught the “grant pending absent state” limitation of the challenged patent. WPI argued that Sen failed to disclose “transitioning” between the “grant pending absent” and “grant pending” states after a “subsequent bandwidth grant,” as required by the claims. In its reply, TCT maintained that Sen taught the limitation but never argued that Sen could be readily modified to include a “grant pending absent state.” The Board found all of the challenged claims to be unpatentable on two grounds, one of which relied on Sen. WPI appealed.

The Federal Circuit reversed the Board’s decision with respect to the first ground, vacated the Board’s decision relying on Sen because the Board applied a flawed claim construction of “grant pending absent state,” and remanded the IPR for the Board to reconsider in view of the Court’s new claim construction. The Court also specifically declined to “prejudge what arguments TCT has properly preserved or should now be permitted to advance or what determinations as to Sen, Rydnell, and admitted prior art are supported by the evidence.”

On remand, the Board allowed the parties to submit additional briefing and expert testimony limited to the issue of whether Sen described operating a consumer premises equipment (CPE) in a “grant pending absent state” as interpreted by the Federal Circuit. TCT maintained its argument that Sen disclosed a grant pending absent state and argued for the first time that, in the alternative, it would have been obvious to a person skilled in the art to modify Sen to meet the limitation. The Board issued a remand decision finding the challenged claims unpatentable. Again, WPI appealed.

The Federal Circuit found that TCT had failed to preserve its new claim construction and obviousness argument and that “failure to timely assert a right or raise an argument constitutes forfeiture.” The Court explained that TCT acknowledged that it understood, prior to its reply, that WPI sought to distinguish the claimed “grant pending absent state” from Sen because Sen involved some [...]

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Seeing Starz: No Damages Bar in Copyright Discovery Rule Case

by | Aug 4, 2022 |

The US Court of Appeal for the Ninth Circuit affirmed a district court’s denial of a motion to dismiss copyright infringement claims as barred by the statute of limitations, affirming the copyright owner’s right to sue even though more than three years had passed since the alleged infringement occurred. Starz Entertainment, LLC v. MGM Domestic Television Distribution, LLC, Case No. 21-55379 (9th Cir. July 14, 2022) (Wardlaw, Ikuta, Bade, JJ.)

Starz entered into licensing agreements for movies and television series episodes with MGM in 2013 and 2015. Under the agreements, MGM granted Starz the exclusive right to exhibit the movies and television series episodes for specified time periods. MGM agreed that it would not exhibit or license the content to any third parties during such specified time periods. From 2019 to 2020, Starz discovered that certain content it licensed from MGM was available on other streaming platforms.

Starz sued MGM in May 2020, asserting 340 claims of direct, contributory and vicarious copyright infringement, among other claims. MGM moved to dismiss, arguing that Starz’s copyright infringement claims were barred by the Supreme Court’s 2014 decision in Petrella v. MGM. MGM asserted that Petrella imposes a strict bar to collecting any damages for copyright infringement that occurs more than three years prior to the filing of the complaint. The district court determined that Petrella did not affect the discovery rule (i.e., that under the Copyright Act there exists a three-year damages bar) except when the plaintiff reasonably was not aware of the infringements at the time they occurred. MGM filed an interlocutory appeal.

The Copyright Act states: “No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.” The issue on appeal here was when a copyright infringement claim accrues. The Ninth Circuit noted that it, and every other circuit, has an exception to the infringement rule, known as the “discovery rule,” which starts the clock when a copyright holder knows or reasonably should know that an infringement occurred. The Court disagreed with MGM that Petrella did away with the discovery rule. Instead, the discovery rule of accrual copyright claims is alive and well, and thus the Court affirmed the district court’s finding that Starz was not barred by Petrella from bringing a lawsuit.

The Ninth Circuit next addressed the issue of whether Petrella imposed a damages bar separate from the statute of limitations. MGM argued that Petrella created a separate damages bar that limits damages to damages arising from acts of infringement within the three-year window. The Court found that a three-year lookback period would eviscerate the discovery rule and explained that MGM’s approach is a textbook example of the absurdity of such a rule. The agreements between Starz and MGM covered hundreds of titles under separate time periods, and under MGM’s approach, damages could only be recovered for a 2013 infringement if the complaint was filed by 2016. In this case, Starz did not discover [...]

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Holdover Trademark Licensee Status Can’t Do Heavy Lifting on “Exceptionality”

by | Aug 4, 2022 |

The US Court of Appeals for the Sixth Circuit addressed issues of enhanced remedies in a dispute regarding the sale of weightlifting equipment beyond the expiration of a licensing agreement between the involved parties. Pointing to the different standard required to prove a violation and damages, the Court ultimately reduced a trademark infringement award to about a quarter of the amount initially awarded. Max Rack, Inc. v. Core Health & Fitness, LLC, et al., Case No. 20-3598 (6th Cir. July 14, 2022) (Cole, Rogers, Murphy, JJ.)

In 2006, Max Rack exclusively licensed its patents and trademarks relating to weightlifting racks to Star Trac Strength. Core Health subsequently acquired Star Trac and its licensing agreements. The final patent covering the Max Rack equipment expired on November 21, 2015, thereby terminating the licensing agreements between Max Rack and Core Health. The agreements permitted Core Health to sell any remaining Max Rack units for six months following expiration of the license.

Following expiration of the licensing agreements, Max Rack learned that Core Health failed to update web pages, marketing materials and owner’s manuals to reflect the termination of Core Health’s affiliation with Max Rack. Core Health’s failure to scrub references to “Max Rack” extended to third-party sellers’ websites advertising Core Health’s competing “Freedom Rack” product using the Max Rack name. Core Health also sold 271 more units manufactured as Max Racks after the license expired, 238 of which were sold during the six-month grace period. Of the remaining 33 units, 24 were sold after the six-month window had closed, and nine were alleged to have had their labels changed from Max Rack to Core Health’s Freedom Rack. Core Health further failed to pay Max Rack royalties for any of the 271 sales made after the license expired.

Max Rack brought two federal claims under 15 U.S.C. §§ 1114(1)(a) and 1125(a)(1)(A), alleging trademark infringement and unfair competition. Max Rack also brought three claims under Ohio’s Deceptive Trade Practices Act, alleging that Core Health passed off the Max Rack as its own machine and caused a likelihood of confusion regarding the source of the machine and regarding Core Health’s affiliation with the Max Rack trademark. The jury awarded Max Rack $1 million in damages and $250,000 in Core Health’s profits. Ruling on post-trial motions, the district court overturned the $1 million damages award for lack of evidence of any consumer confusion but enhanced the $250,000 award to $500,000 and further awarded Max Rack attorneys’ fees. Both parties appealed.

The Sixth Circuit sidestepped the fact-laden analysis to determine whether Core Health’s actions created a likelihood of consumer confusion, reasoning that the dispute related to the “holdover licensee.” Citing its own precedent and precedent from the Third, Fifth, Seventh and Eleventh Circuits, the Court applied a much more objective standard, finding that unauthorized use of a licensed trademark by a licensee after the license has expired is by itself sufficient to establish a likelihood of confusion in the mind of the consumer.

Although the Sixth Circuit used [...]

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Claim Construction Error Fuels Remand

by | Aug 4, 2022 |

The US Court of Appeals for the Federal Circuit vacated and remanded a district court’s noninfringement decision, finding that the district court improperly construed the asserted claims as requiring a dual-fuel system. Ethanol Boosting Sys., LLC v. Ford Motor Co., Case No. 21-1949 (Fed. Cir. July 18, 2022) (Moore, Hughes, JJ.) (Newman, J., dissenting) (non-precedential).

Ethanol Boosting Systems (EBS) filed suit against Ford for infringement of three patents relating to fuel management systems for spark ignition engines that include both a direct injection and a port fuel injection fueling system. During claim construction, Ford argued that the direct injection fuel system required “a fuel that contains an anti-knock agent . . . that is different from the fuel used for port injection.” The district court agreed with Ford, relying on the patents’ titles, figures and background sections. The district court noted that no figures depicted a single fuel engine, and that the specification repeatedly referenced direct injection of a non-gasoline fuel, such as ethanol, into a gasoline engine. The district court acknowledged that the specification made a singular reference to a 100% ethanol embodiment but found that this disclosure did not teach a single fuel engine and that it was in the context of a dual-fuel engine. In view of this construction, the parties stipulated to judgment of noninfringement. EBS appealed.

Reviewing claim construction de novo, the Federal Circuit found that nothing in the asserted claim language required the use of different fuels in the direct-injection and port-injection systems. The Court also found that the specification imposed no such requirement, relying on one embodiment that disclosed “100% of the fuel . . . come[s] from ethanol with a smaller fraction being port injected.” The Court rejected Ford’s citation to multiple passages requiring the use of two fuels, finding that those statements could not describe the invention as a whole because they did not describe all embodiments (namely, the aforementioned 100% ethanol embodiment). Ford also cited to an earlier Federal Circuit decision in which family members of the asserted patents were construed to require dual fuels. The Court disagreed, concluding that those patents had different specifications that did not disclose the 100% ethanol embodiment. The Court finally turned to the prosecution history of a different patent family member that has the same specification as the asserted patents. In that application’s prosecution history, the patent holder distinguished a prior art reference on the ground that it only used a single fuel type. The Court declined to import such a limitation from a statement made in that prosecution history because it did not reflect the claim language. The Court concluded that the district court erred in construing the claims to require a dual-fuel system and remanded the case for further proceedings.

Judge Newman issued a stinging dissent, taking the panel majority to task for departing from what she regarded as settled claim construction law. She agreed with the district court that the 100% ethanol example, considered in context, was “merely discussing how this [...]

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Fee Award Appropriate for Trying to Refresh and Replay Case

by | Aug 4, 2022 |

The US Court of Appeals for the Federal Circuit upheld an attorneys’ fees award after the patent owner brought successive patent infringement suits attempting “to refile to wipe the slate clean” after the first court was poised to issue an adverse merits ruling. Realtime Adaptive Streaming, LLC v. Netflix, Inc., Netflix Streaming Services, Inc., Case Nos. 21-1484; -1485; -1518; -1519 (Fed. Cir. July 27, 2022) (Newman, Chen, JJ.) (Reyna, J., concurring-in-part, dissenting-in-part).

Realtime brought three patent infringement suits against Netflix alleging infringement of six different patents and the same accused products. Realtime first sued in Delaware, and Netflix moved to transfer to California for convenience (which Realtime vehemently opposed as an unfair burden) and to dismiss for failure to state a claim, arguing that four of the six patents were ineligible under 35 U.S.C. § 101 for being directed to an ineligible abstract idea. After briefing, the magistrate judge issued a report and recommendation finding the four patents ineligible under § 101. The court also denied the motion to transfer. Meanwhile, Netflix filed corresponding petitions for inter partes review (IPR) of the asserted patents, all of which were instituted by the Patent Trial & Appeal Board. Realtime moved to amend its complaint—for support pointing to five related patents that were subsequently found invalid under § 101 by the same judge—then voluntarily dismissed the Delaware action before the district court judge could rule on the magistrate judge’s report and recommendation.

The very next day, Realtime filed two new suits against Netflix in California asserting the same six patents, divvying up the four § 101-challenged patents as separate from the other two. Netflix moved to transfer both cases back to Delaware and moved for attorneys’ fees. Realtime opposed, this time arguing that California was more convenient than Delaware. However, before the California court could rule on the motion to dismiss, Realtime again voluntarily dismissed the California actions without prejudice.

Netflix renewed its motion for attorneys’ fees for the California actions, IPRs and related Delaware action. The district court awarded attorneys’ fees for the California actions under § 285 and, in the alternative, the court’s equitable powers. The district court declined to award attorneys’ fees for the related actions, IPRs or costs under Fed. R. Civ. P. 41(d). Realtime appealed the fee award, and Netflix cross-appealed the denial of fees for related proceedings.

The Federal Circuit affirmed, finding no abuse of discretion in awarding fees pursuant to equitable powers or in denying fees for related proceedings. Because the district court’s “inherent power to impose sanctions in the form of attorneys’ fees is not a substantive patent question,” the Federal Circuit considered the issue under the Ninth Circuit’s framework that “the court must find that the sanctioned behavior ‘constituted or was tantamount to bad faith.’” As for fees under § 285, “a district court ‘may award’ attorneys’ fees to ‘the prevailing party’ in ‘exceptional cases’”—an analysis unique to patent law and therefore governed by Federal Circuit precedent.

In affirming the award of fees, the [...]

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Purposeful Direction in a Forum Activates the Long Arm of the Law

by | Jul 28, 2022 |

The US Court of Appeals for the Ninth Circuit again vacated the US District Court for the Central District of California’s dismissal of a case for lack of personal jurisdiction, applying Fed. R. Civ. Proc. 4(k)(2) and concluding that the copyright infringement claims involving a foreign defendant were properly litigated in the United States. Lang Van, Inc. v. VNG Corporation, Case No. 19-56452 (9th Cir. Jul. 21, 2022) (Bybee, Bennett, JJ.; Bataillon, Distr. J., sitting by designation).

Lang Van, Inc. (LVI) is a California corporation that produces and distributes Vietnamese music and entertainment and owns copyrights to more than 12,600 songs and original programs. LVI sued VNG Corporation, a Vietnamese company that makes copyrighted music available for download worldwide through its Zing MP3 website and mobile applications. LVI served discovery requests on VNG, but instead of supplying substantive information or documents, VNG moved to dismiss for lack of personal jurisdiction. The district court granted the motion, and LVI appealed to the Ninth Circuit, which vacated and remanded the case to the district court with instructions that LVI be permitted to undertake jurisdictional discovery.

On remand, LVI took third-party discovery and argued that the evidence showed that VNG intentionally chose to release its applications in the United States; consented to jurisdiction, choice of law and venue in California; and allowed hundreds of thousands of iOS downloads and tens of thousands of Android downloads.

VNG filed a renewed motion to dismiss LVI’s (now amended) complaint, arguing a lack of personal jurisdiction, forum non conveniens (that there is another, more appropriate, forum) and failure to state a claim. The district court granted VNG’s motion after finding that there was no specific personal jurisdiction over VNG in California under the Ninth Circuit’s specific personal jurisdiction test. The district court did not address the second and third arguments (forum non conveniens and failure to state a claim) and did not address the issue of long-arm jurisdiction over VNG under Rule 4(k)(2). Again, LVI appealed.

The Ninth Circuit assessed jurisdiction under Rule 4(k)(2), which provides for jurisdiction over foreign defendants that have ample contacts within the United States as a whole, but whose contacts are so scattered among states that no single state would have jurisdiction. The test requires proof that (1) the claim at issue arises from federal law and (2) the defendant is not subject to any state’s courts of general jurisdiction, such that (3) invoking jurisdiction upholds due process, with the burden shifting to the defendant to show that application of jurisdiction under the third prong would be unreasonable.

The Ninth Circuit found that the first prong was met because the case involved claims of copyright infringement under federal law, and that the second prong was met because VNG asserted that it was not subject to the personal jurisdiction of any state court of general jurisdiction in the United States.

As for the third prong, the Ninth Circuit explained that when jurisdiction is challenged, the plaintiff must show (1) purposeful activities or transactions [...]

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New WDTX Order Shakes Up Initial Judge Assignments

by | Jul 28, 2022 |

A recent order from Chief Judge Garcia of the US District Court for the Western District of Texas (WDTX) changes how judges are initially assigned to cases filed in its Waco Division. As of July 25, 2022, patent cases filed in the Waco Division shall be randomly assigned to one of 12 judges. The list includes at least one judge from each of the district’s seven divisions. The order states that the new practice is due to “consideration of the volume of new patent cases assigned to the Waco Division, and in an effort to equitably distribute those cases.”

It’s no secret that the Waco Division has been a magnet for patent lawsuits in the last four years. The only judge in Waco—Judge Alan D. Albright—has presided over more than 2,500 patent cases since September 2018. Those 2,500 patent cases account for about 17% of all patent cases filed nationally in district courts in that timeframe. Plaintiffs’ preference to file in Waco is due in part to Judge Albright’s knowledge of patent cases, his interest in patent cases and his promulgation of local patent rules aiming for a predictable and quick path to trial.

Although Waco cases may now initially be assigned to other judges, whether they choose to keep the assignments remains to be seen. The recent order contains a footnote stating that its previous order for assigning judges “remains in full force and effect.” That previous order allows judges to reassign any case “by mutual consent.” (See Item XVIII(a).) Thus, judges may self-select out of these cases. A large criminal docket is one example of why a judge might self-select out of a patent case.

Even if another judge is assigned and decides to keep a Waco patent case, it remains to be seen whether they will adopt Judge Albright’s local patent rules. Judge Albright has put extensive efforts into the local rules, including procedures related to discovery disputes, pre-Markman discovery, Markman hearings, infringement and invalidity contentions, US Patent & Trademark Office inter partes review effects and more. His cases have averaged about eight months to a Markman hearing and about 24 months to trial. Other judges may decide to make use of that framework to save time and effort or to avoid inconsistencies within the division.

Stay tuned for updates as this new assignment practice unfolds and more patent cases are assigned.



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Breach of Confidentiality Claim Survives Motion to Dismiss under Anti-SLAPP Law

by | Jul 28, 2022 |

The Court of Appeals of Texas (Fourth District) upheld a trial court’s order denying a motion to dismiss a breach of confidentiality agreement claim pursuant to the Texas Citizens Participation Act (TCPA), which is designed to protect people from strategic lawsuits against public participation (SLAPP). Harper v. Crédito Real Bus. Cap., Case No. 21-0212 (Tex. App. July 20, 2022) (Martinez, Chapa, Watkins, JJ.)

Crédito Real Business Capital (CRBC) leases equipment and provides financing services to companies in the construction industry. CRBC provides its services through two limited liability companies: CR-FED and CR-FED Leasing. Earl Harper previously worked for CRBC as executive vice president and was required to sign a confidentiality agreement with CR-FED stipulating that he would not share its confidential information with third parties.

CRBC advanced money and leased equipment to Ontrack Site Services, a site grading contractor and customer with whom Harper worked. As part of his employment, Harper was provided with confidential information regarding CRBC’s plans and projections for its relationship with Ontrack, including CRBC’s willingness to extend additional financing or leasing services to the contractor. Harper allegedly used this information to help Ontrack negotiate better lease rates and financing terms to CRBC’s detriment. CRBC terminated Harper’s employment. Harper subsequently joined a new company and advised Ontrack to obtain financing from that company instead of CRBC.

CRBC sued Harper for breach of fiduciary duty and breach of contract for misappropriating CRBC’s trade secrets and breaching the confidentiality agreement. Harper filed a motion to dismiss the breach of contract claim pursuant to the TCPA, under which a party can file a motion to dismiss a lawsuit if it “is based on or is in response to a party’s exercise of the right of free speech, right to petition, or right of association.” The trial court denied the motion. Harper appealed, contending the following:

  • CRBC’s breach of contract claim related to Harper’s exercise of free speech.
  • CRBC did not establish a prima facie case of its breach of contract claim.
  • The trial court improperly considered CRBC’s amended petition.

A motion to dismiss pursuant to the TCPA is evaluated under a three-step burden shifting framework:

  • The movant must first demonstrate that the legal action is based on the movant’s exercise of the right to free speech, the right to petition or the right to association.
  • The nonmovant must then establish a prima facie case of its claim.
  • If the nonmovant satisfies its burden, the action must still be dismissed if the movant establishes grounds on which it is entitled to judgment as a matter of law.

The Texas Court of Appeals first addressed whether the trial court was permitted to consider CRBC’s amended petition when it ruled on the motion to dismiss. CRBC’s amended petition merely clarified that “CRBC” was the assumed name for both CR-FED and CR-FED Leasing, rather than just CR-FED. Because the amended petition was filed well before the hearing date and did not include any element of surprise, the Court concluded that [...]

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Court to Counsel: Be Frivolous at Your Own Risk

by | Jul 28, 2022 |

The US Court of Appeals for the Federal Circuit may “award just damages and single or double costs to the appellee” under the Federal Rule of Appellate Procedure 38 if an appeal is frivolous as filed or as argued. In a non-precedential decision, the Court granted-in-part and denied-in-part a party’s motion for sanctions and request to hold the opposing party’s counsel jointly and severally liable. Pop Top Corp. v. Rakuten Kobo Inc., Case No. 21-2174 (Fed. Cir. July 14, 2022) (Moore, C.J.; Newman, Stoll, JJ.) (per curiam). (Newman, J., dissenting). The Court granted attorneys’ fees and double costs, although it lowered the requested amount for attorneys’ fees.

Pop Top owns a patent describing methods and systems related to enabling highlighter functionality on web pages. The patent’s claim requires an “internet document [that] includes code for invoking a highlighting service to operate with the internet document.” Pop Top alleged that Kobo’s e-books on an app infringed as they are “highlightable” and “include code.” Kobo explained that all highlighting-related code was in the app, not the e-books, an assertion supported by a declaration from its chief technology officer. The district court granted summary judgment of noninfringement.

Pop Top appealed, arguing that the district court erred by not resolving the parties’ alleged claim construction dispute regarding the limitation “code for invoking,” and by deciding that Pop Top’s citation of the Kobo declaration and the infringement contentions (for the first time on appeal) was insufficient evidence of infringement to survive summary judgment.

An appeal is frivolous as filed if “the judgment by the tribunal below was so plainly correct and the legal authority contrary to appellant’s position was so clear that there really is no appealable issue.” The Federal Circuit decided that the appeal was frivolous as filed, explaining that there was no reasonable basis to appeal the summary judgment. The district court had determined that Pop Top offered “no evidence whatsoever” that the e-books included “code for invoking a highlighting service” but relied solely on the Kobo declaration, which stated that the app, not the e-books, contained the highlighting functionality.

An appeal is frivolous as argued if “the appellant engages in misconduct in arguing the appeal.” The Federal Circuit decided that Pop Top’s appeal was frivolous as argued because it “blatantly misconstrue[d] Kobo’s position” when arguing disputed scope for “code for invoking.” Kobo explained that there was no dispute; even under Pop Top’s construction, there was no infringement because the e-books do not contain code invoking the highlighting service. Pop Top further compounded its misconduct in arguing that it presented sufficient evidence to survive summary judgment, failing to explain how any cited evidence, such as the Kobo declaration, showed that Kobo’s e-books contain code related to highlighting.

The Federal Circuit explained that it may hold that counsel be jointly and severally liable for a sanctions award if “an appeal is frivolous due to the nature of the advocacy in support of it.” Because Pop Top’s appeal was frivolous “entirely because of the baseless [...]

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