CAFC Affirms Albright Rulings in Alexa Shopping List Patent Suit

On February 26, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Freshub, Ltd. v. Amazon.com, Inc., affirming a ruling by U.S. District Judge Alan Albright of the Western District of Texas in the face of appeals from both parties to the case. The Federal Circuit left the lower ruling intact after finding that the record developed at trial did not establish clear error with regards either to Freshub’s patent infringement allegations or Amazon’s inequitable conduct defense.

Lack of Claim Construction at District Court Extinguishes Appeal on Noninfringement

In June 2019, Freshub filed a lawsuit asserting several voice processing patents against Amazon that were allegedly infringed by the tech giant’s Alexa personal digital assistant service. At trial two years later, Freshub alleged literal infringement of U.S. Patent No. 9908153, Systems and Methods for Scaling Information from Storage Area Contents, by shopping list building and modification functions performed by Alexa. Claims of the ‘153 patent cover methods for translating verbal commands into computer-readable form and matching that text with stock identifiers to create or add to a list.

The jury returned a noninfringement verdict in favor of Amazon on each of Freshub’s asserted patents. Following Freshub’s post-trial motion for judgment as a matter of law (JMOL), Judge Albright found substantial evidence that the accused Alexa feature did not meet the requirement that the system “identify an item corresponding to the text,” a claim limitation from the ‘153 patent; Freshub. Judge Albright also nixed Freshub’s arguments that Amazon identified Freshub as an Israeli company in a manner that prejudiced the court proceedings. Following Freshub’s appeal of the post-trial ruling to the Federal Circuit, Amazon cross-appealed a partial summary judgment ruling for Freshub on Amazon’s claims that the original assignee of the ‘153 patent, Ikan Holdings, made a false representation to the U.S. Patent and Trademark Office (USPTO) that the patent application was not intentionally abandoned.

After reviewing Freshub’s claim construction arguments on appeal, the Federal Circuit quickly noted that Freshub had not requested any construction of those claim limitations at the district court. “The determinative issue concerns the requirement that the system ‘identify an item,’” wrote Circuit Judge Richard Taranto, who authored the opinion. The appellate court found that the jury could reasonably rely on expert testimony provided at trial by Amazon, which established Amazon’s argument that the infringing feature identifying shopping list items from verbal commands occurs in a system outside the scope of Freshub’s infringement claims. Without claim construction narrowing the “identify an item” limitation, the jury could reasonably rely on Amazon’s expert testimony to find noninfringement of the ‘153 patent.

Applying Fifth Circuit standards on abuse of discretion, the Federal Circuit also found no basis for overturning Judge Albright’s denial of post-trial JMOL on Freshub’s motion for a new trial. Before trial, Freshub had obtained a motion in limine preventing Amazon from presenting evidence that Ikan Holdings’ patent application filing happened around the time that Amazon announced the accused Alexa features. However, the Federal Circuit found that Freshub did not properly object to Amazon’s introduction of the filing dates during trial as required by Fifth Circuit case law. Freshub’s post-trial arguments also argued that Amazon made other prejudicial statements about citizenship to make “‘us versus them’ arguments that appeal to ‘community conscience,’” but again the Federal Circuit found that Freshub did not properly object to those statements at trial to preserve the issue at JMOL.

Amazon Didn’t Establish that Patent Applicant’s Principal Acted with Intent to Deceive

Moving on to Amazon’s cross-appeal, the Federal Circuit found that the district court did not clearly err on factual findings related to statements made by counsel for Ikan Holdings when a petition to revive the patent application leading to the ‘153 patent was filed at the USPTO. Citing the standard from the CAFC’s 2011 holding in Therasense v. Becton, Dickinson and Co., the appellate court stated that Amazon was required to prove that Ikan’s counsel “misrepresented or omitted material information with the specific intent to deceive the [USPTO]” when counsel petitioned the USPTO to revive the patent application leading to the ‘153 patent. In a petition filed in 2017 with the USPTO under 37 CFR § 1.137(a), Ikan’s counsel stated that Ikan’s delay in filing a reply to a final office action in 2011 was unintentional. The USPTO granted the petition based on good faith in this statement.

While it was undisputed that Ikan’s counsel knew that the patent application had been abandoned, the Federal Circuit found that Amazon had not established that counsel had materially misrepresented Ikan’s intent in abandoning the application. Amazon introduced evidence from depositions and a privilege log showing that Ikan was non-responsive to communications from the prosecuting attorney following the final office action, but the Federal Circuit found nothing establishing that Ikan’s counsel knew that Ikan’s principal had received the communications and intended to abandon the patent application.

The Federal Circuit found remaining arguments from Freshub and Amazon to be unpersuasive. The appellate court affirmed each aspect of Judge Albright’s rulings that were challenged and ordered the parties to bear their own costs for the appeal.

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