Look Behind the Words: Federal Circuit Gives Partial Credit to District Court’s Finding of Invalidity

In ADASA Inc. v. Avery Dennison Corp., No. 2022-1092 (Fed. Cir. Dec. 16, 2022), the Federal Circuit affirmed in part the district court’s grant of summary judgment in favor of ADASA under 35 U.S.C. § 101, but reversed the determination that the claim-at-issue is neither anticipated nor obvious.

Claim 1 of U.S. Patent No. 9,798,967 is directed to a system for commissioning RFID tags for unique object identification and tracking. The Federal Circuit held that the claim is not directed to an abstract idea, but rather to a specific, hardware-based data structure improving upon RFID encoding. However, the Federal Circuit reversed the district court’s grant of summary judgment based on lack of anticipation and non-obviousness, holding that the district court read the prior art too narrowly. Even though the prior art references discussed the claimed concepts differently, their disclosures were sufficient to create a genuine dispute of fact. The Federal Circuit affirmed the district court’s decision not to include a lumpsum option for damages in the jury verdict form and to exclude Avery’s licenses and expert testimony from evidence. The Federal Circuit also vacated discovery sanctions against Avery.