Freshub, Inc., Freshub, Ltd. v. Amazon.com, Inc., Prime Now, LLC, Whole Foods Market Services, Inc., Amazon.com…

United States Court of Appeals
for the Federal Circuit
______________________
FRESHUB, INC., FRESHUB, LTD.,
Plaintiffs-Appellants
v.
AMAZON.COM, INC., PRIME NOW, LLC, WHOLE
FOODS MARKET SERVICES, INC., AMAZON.COM
SERVICES LLC,
Defendants-Cross-Appellants
______________________
2022-1391, 2022-1425
______________________
Appeals from the United States District Court for the
Western District of Texas in No. 6:21-cv-00511-ADA, Judge
Alan D. Albright.
______________________
Decided: February 26, 2024
______________________
P AUL J. ANDRE, Kramer Levin Naftalis & Frankel LLP,
Redwood Shores, CA, argued for plaintiffs-appellants. Also
represented by J AMES R. HANNAH , L ISA K OBIALKA;
CRISTINA MARTINEZ, New York, NY.
J. D AVID HADDEN , Fenwick & West LLP, Mountain
View, CA, argued for defendants-cross-appellants. Also
represented by RAVI RAGAVENDRA RANGANATH , SAINA S.
SHAMILOV; T ODD RICHARD G REGORIAN, ERIC YOUNG, San
Francisco, CA.
Case: 22-1391 Document: 70 Page: 1 Filed: 02/26/2024

-- 1 of 18 --

FRESHUB, INC. v. AMAZON. COM , INC. 2
______________________
Before REYNA, T ARANTO, and CHEN, Circuit Judges.
T ARANTO, Circuit Judge.
Freshub, Ltd. and United States subsidiary Freshub,
Inc. (together, Freshub) sued Amazon.com, Inc. and several
of its subsidiaries (together, Amazon) in the Western Dis-
trict of Texas, asserting infringement of Freshub’s patents
on voice-processing technology, including U.S. Patent No.
9,908,153. As relevant here, Amazon denied infringement
and also asserted, as a defense, that the patent should be
declared unenforceable based on inequitable conduct as-
sertedly committed by Freshub’s parent company, Ikan
Holdings LLC, in the Patent and Trademark Office—spe-
cifically, in its successful petition to revive the earlier-
abandoned U.S. Patent Application No. 11/301,291, from
which all of Freshub’s asserted patents descend. A jury
found that Amazon did not infringe the asserted claims of
Freshub’s three asserted patents, while rejecting Amazon’s
invalidity challenge—specifically, invalidity for lack of ad-
equate written description. J.A. 6–14. The district court
later denied Freshub’s post-trial motions challenging the
verdict. Freshub, Inc. v. Amazon.com Inc., 576 F. Supp. 3d
458, 461 (W.D. Tex. 2021) (Post-Trial Opinion). Between
the jury trial and the ruling on those post-trial motions, the
court conducted a bench trial, in which no live testimony
was presented, and found that Amazon had failed to prove
the asserted inequitable conduct by clear and convincing
evidence. Freshub, Inc. v. Amazon.com, Inc., No. 21-cv-511
(W.D. Tex. Aug. 3, 2021), ECF No. 272 (Inequitable Con-
duct Opinion).
Freshub timely appealed. It argues that it is entitled
to judgment as a matter of law that Amazon infringed the
’153 patent, and it seeks a new trial overall because of as-
sertedly prejudicial statements by Amazon at trial. Ama-
zon timely cross-appealed. It seeks reversal of the district
Case: 22-1391 Document: 70 Page: 2 Filed: 02/26/2024

-- 2 of 18 --

FRESHUB, INC. v. AMAZON. COM , INC. 3
court’s finding that it failed to prove inequitable conduct.
We have jurisdiction under 28 U.S.C. § 1295(a)(1). We af-
firm.
I
A
The ’153 patent claims a voice-processing system that
receives “user spoken words” and adds items to lists based
on those words. ’153 patent, col. 14, line 46, through col.
15, line 12. The specification discloses a variety of systems
for shopping-list management, some of which use voice-
processing technology. Id., col. 8, lines 17–55. For exam-
ple, in one embodiment, the system, in response to a “ver-
bal[] order[]” for “a cereal by name,” “translates the name
into text or other computer readable form, and matches the
text with text stored in association with a SKU [Stock
Keeping Unit] (or other identifier) to locate the correct
SKU.” Id., col. 8, lines 49–55.
Claim 1, the sole independent claim, reads:
1. A voice processing system comprising:
a first system configured to receive user spoken
words comprising:
a microphone;
a wireless network interface;
a digitizer coupled to the microphone,
wherein the digitizer is configured to con-
vert spoken words into a digital represen-
tation;
a first computer;
non-transitory memory that stores instruc-
tions that when executed by the first com-
puter cause the first system to perform
operations comprising:
Case: 22-1391 Document: 70 Page: 3 Filed: 02/26/2024

-- 3 of 18 --

FRESHUB, INC. v. AMAZON. COM , INC. 4
receive via the digitizer a verbal or-
der, comprising at least one item,
from a user, wherein the verbal or-
der was captured by the micro-
phone and digitized by the
digitizer;
immediately transmit, using the
wireless network interface, the dig-
itized order to a computer system
remote from the first system;
the computer system, the computer system com-
prising:
a networks interface;
a second computer;
non-transitory memory that stores instruc-
tions that when executed by the second
computer cause the computer system to
perform operations comprising:
receive, using the network inter-
face, the digitized order from the
first system;
translate at least a portion of the
digitized order to text;
identify an item corresponding to
the text;
add the identified item to a list as-
sociated with the user;
enable the list, including the iden-
tified item, to be displayed via a
user display.
Id., col. 14, line 46, through col. 15, line 12 (emphasis added
to highlight claim language chiefly at issue on appeal).
Case: 22-1391 Document: 70 Page: 4 Filed: 02/26/2024

-- 4 of 18 --

FRESHUB, INC. v. AMAZON. COM , INC. 5
Amazon sells consumer devices, such as the Amazon
Echo, into which a user can speak to connect to a respon-
sive voice service (called Alexa) that can perform a variety
of voice-processing tasks. Amazon’s Response Br. at 11–
12. Among the voice-processing tasks is the maintenance
of a shopping list, using user-provided prompts to modify a
stored “shopping list” associated with the user. Id. at 14.
Freshub accuses Amazon of infringing the ’153 patent by
its offering of the Echo and other devices for use with this
shopping-list feature. Freshub’s Opening Br. at 12; J.A.
575 (testimony by Freshub’s expert mapping the ’153 pa-
tent claims to the “Shopping List functionality”).
B
After trial in June 2021, the jury returned a verdict of
noninfringement of all asserted claims, including those of
the ’153 patent. Freshub sought judgment as a matter of
law of infringement under Federal Rule of Civil Procedure
50(b), arguing that the jury’s verdict was not supported by
substantial evidence. The district court disagreed. With
respect to the ’153 patent, the court concluded, among
other things, that substantial evidence supported a finding
that the accused Amazon features did not meet the claim
requirement—which was not the subject of any requested
or issued claim construction—that the system “identify an
item corresponding to the text.” Post-Trial Opinion, 576 F.
Supp. 3d at 463. The court noted the testimony of Ama-
zon’s expert that, although the Alexa shopping-list feature
adds text to a user’s shopping list, it does not add “an item
corresponding to the text,” as the claim requires. Id.
Freshub also sought a new trial under Federal Rule of
Civil Procedure 59(a) on the ground that Amazon had made
certain prejudicial statements at trial, the “main basis” be-
ing references to the fact that Freshub is an Israeli com-
pany. Id. at 465; see J.A. 17411–16. Citing the absence of
objection during trial and the standard requiring a “seri-
ous[ effect on] the fairness, integrity, or public reputation
Case: 22-1391 Document: 70 Page: 5 Filed: 02/26/2024

-- 5 of 18 --

FRESHUB, INC. v. AMAZON. COM , INC. 6
of judicial proceedings,” Post-Trial Opinion, 576 F. Supp.
3d at 466 (quoting Reese v. Mercury Marine Division of
Brunswick Corp., 793 F.2d 1416, 1429 (5th Cir. 1986)), the
district court concluded that Freshub’s allegations were
“baseless” and denied the motion. Id. at 466–67. The dis-
trict court did not separately discuss certain other argu-
ments about prejudicial statements warranting a new
trial—e.g., statements that Freshub filed the application
that became the ’153 patent after Amazon announced rele-
vant products, so that finding for Freshub would offend the
Constitution’s patent policy, and that Freshub initially
abandoned the ancestor application, J.A. 17416–20. Ear-
lier, Freshub had filed a motion in limine to preclude refer-
ence to the filing dates, but the court denied the motion.
Freshub, Inc. v. Amazon.com Inc., No. 21-cv-511, 2021 WL
2587713, at *1 (W.D. Tex. Jun. 13, 2021). And during trial,
after initially allowing the mention of abandonment, the
court excluded the evidence and gave a curative instruction
at Freshub’s request. See J.A. 17419–20, 17420 n.3 (noting
curative instruction).
C
Amazon asserted, as an affirmative defense to infringe-
ment, that inequitable conduct in the prosecution of the
’291 application, from which all of the asserted patents
here descend, rendered the asserted patents unenforcea-
ble. In June 2011, when Ikan Technologies Inc. was the
assignee of the ’291 application, the United States Patent
and Trademark Office (PTO) issued a final office action re-
jecting the claims. J.A. 17056–65. On January 3, 2012,
after Ikan Technologies failed to respond in the time al-
lowed, the PTO sent counsel for Ikan Technologies a notice
of abandonment of the application. J.A. 17067–68. On De-
cember 4, 2012, Ikan Technologies assigned a number of
Case: 22-1391 Document: 70 Page: 6 Filed: 02/26/2024

-- 6 of 18 --

FRESHUB, INC. v. AMAZON. COM , INC. 7
patent interests, including the interest in the ’291 applica-
tion, to Ikan Holdings. J.A. 17070–72.1
On January 20, 2017, counsel for Ikan petitioned the
PTO to revive the ’291 application under 37 C.F.R.
§ 1.137(a). J.A. 17079–80. Reflecting a prerequisite to re-
vival, the pre-printed PTO form for the petition, referring
to the period reaching back to the due date of the reply to
the final office action, contained the following
STATEMENT: The entire delay in filing the re-
quired reply from the due date for the required re-
ply until the filing of a grantable petition under 37
CFR 1.137(a) was unintentional. [NOTE: The
United States Patent and Trademark Office may
require additional information if there is a question
as to whether either the abandonment or the delay
in filing a petition under 37 CFR 1.137(a) was un-
intentional (MPEP 711.03(c), subsections (III)(C)
and (D)).]
J.A. 17080. Ikan’s attorney signed the form, thus making
the above-quoted statement. Id. On April 20, 2017, the
PTO granted the petition, J.A. 17074–76, stating that it
was “relying on petitioner’s duty of candor and good faith
and accepting the statement that ‘the entire delay in filing
the required reply from the due date for the reply until the
filing of a grantable petition pursuant to 37 CFR 1.137 was
unintentional,’” J.A. 17075 (citation omitted).
Amazon alleged and sought to prove that Ikan had in-
tentionally misrepresented to the PTO that the ’291 appli-
cation had been unintentionally abandoned when it had
instead been intentionally abandoned. J.A. 17127–37. The
district court conducted a bench trial on that issue, in
1 Following the usage of the parties and the district
court, we hereafter use “Ikan” to refer to the two Ikan en-
tities without distinction, unless otherwise indicated.
Case: 22-1391 Document: 70 Page: 7 Filed: 02/26/2024

-- 7 of 18 --

FRESHUB, INC. v. AMAZON. COM , INC. 8
which the evidence consisted of documents and deposition
excerpts. J.A. 26–27. Although the evidence was limited
for various reasons, including the invocation of attorney-
client privilege, no issue is raised on appeal about the scope
of the record.
Upon concluding that Amazon had failed to prove ineq-
uitable conduct by the requisite clear and convincing evi-
dence, the district court granted Freshub partial judgment
rejecting the inequitable-conduct defense. Inequitable
Conduct Opinion at 14.2 Specifically, the district court
found that, while the parties did not dispute the material-
ity of the representation that the application had been un-
intentionally abandoned, Amazon had not offered clear and
convincing evidence that the representation was actually
false—i.e., that Ikan had in fact intentionally abandoned
the ’291 application. Id. at 9–10. The district court also
found that, even if the representation had actually been
false (i.e., even if Ikan had intentionally abandoned the ap-
plication), Amazon had not offered clear and convincing ev-
idence that the “single most reasonable inference” from the
evidence, as required by Therasense, Inc. v. Becton, Dickin-
son and Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011) (en banc),
was that either Ikan or its attorney had specifically in-
tended to deceive the PTO with the STATEMENT in the
petition to revive the application in 2017. Inequitable Con-
duct Opinion at 11–12.
2 The district court initially issued findings of fact and
conclusions of law after its bench trial. Freshub, Inc. v.
Amazon.com, Inc., No. 21-cv-511, 2021 WL 8945738, (W.D.
Tex. Jul. 30, 2021); J.A. 15–24. It later vacated that order,
Freshub, Inc. v. Amazon.com, Inc., No. 21-cv-511 (W.D.
Tex. Aug. 9, 2021), ECF No. 274; J.A. 39, and instead
granted Freshub’s motion for judgment on partial findings,
using much of the language that appeared in the vacated
order. Inequitable Conduct Opinion at 1.
Case: 22-1391 Document: 70 Page: 8 Filed: 02/26/2024

-- 8 of 18 --

FRESHUB, INC. v. AMAZON. COM , INC. 9
II
We review denials of motions for judgment as a matter
of law and for a new trial under regional circuit law. Ray-
theon Co. v. Indigo Systems Corp., 895 F.3d 1333, 1338
(Fed. Cir. 2018). Here, under Fifth Circuit law, we review
the judgment as a matter of law under the de novo stand-
ard, here asking if the underlying jury findings were sup-
ported by substantial evidence, see Bear Ranch, L.L.C. v.
Heartbrand Beef, Inc., 885 F.3d 794, 801 (5th Cir. 2018),
and we review the denial of the motion for a new trial for
abuse of discretion, Encompass Office Solutions, Inc. v.
Louisiana Health Service & Indemnity Co., 919 F.3d 266,
273 (5th Cir. 2019).
A
In arguing for judgment as a matter of law, Freshub
focuses on the three claim limitations whose coverage of
the accused systems it says Amazon disputed at trial (for
the first two) or after trial (for the third): (1) the require-
ment that, upon receiving spoken words and translating
them to text, the system “identify an item corresponding to
the text” and “add the identified item to a list,” ’153 patent,
col. 15, lines 1–10; (2) the requirement that, upon receiving
a “verbal order,” the system create and transmit a “digit-
ized order,” id., col. 14, lines 58–64; and (3) the requirement
that the claimed “voice processing system” comprise “the
computer system . . . comprising . . . a second computer”
with a “non-transitory memory,” id., col. 14, line 46,
through col. 15, line 1. Freshub argues that substantial
evidence does not support a finding adverse to it with re-
spect to any of those limitations. We agree with Amazon,
however, that substantial evidence supports a finding of
noninfringement because of the first limitation. That con-
clusion suffices to uphold the jury verdict; we need not ad-
dress the other two limitations.
The claim limitation comes to us without a claim con-
struction and without any argument from Freshub that
Case: 22-1391 Document: 70 Page: 9 Filed: 02/26/2024

-- 9 of 18 --

FRESHUB, INC. v. AMAZON. COM , INC. 10
there should have been a claim construction. See J.A. 4487,
4573. For example, there is no claim construction of “item.”
Nor is there a claim construction indicating that a system
comes within the claim as long as the actions taken upon
execution of the system instructions even sometimes
amount to performance of the claim-required operations.
Moreover, Freshub’s argument is only that the jury had to
find literal infringement; it presents to us no argument
about infringement under the doctrine of equivalents. The
substantial-evidence question is whether the jury could
reasonably have found the claim limitation not to be met,
considering the facts and the unconstrued limitation. See
Avid Technology, Inc. v. Harmonic, Inc., 812 F.3d 1040,
1048–49 (Fed. Cir. 2016); Hewlett-Packard Co. v. Mustek
Systems, Inc., 340 F.3d 1314, 1320–21 (Fed. Cir. 2003).
The determinative issue concerns the requirement that
the system “identify an item.” Freshub contends that the
shopping-list feature of Amazon’s accused products, when
used, sometimes ends up adding “items” to shopping lists
because it translates user speech to text (“add bananas to
my shopping list”), extracts a keyword (“bananas”), and ap-
pends the word “bananas” to the user’s shopping list, re-
sulting in a new “item” on the list. See Freshub’s Opening
Br. at 33–39. But there was evidence from which the jury
could reasonably find the claim limitation, when given its
ordinary meaning in the context of the patent, not to be met
by the instructions for Amazon’s shopping-list feature.
Amazon’s expert testified that the Alexa shopping-list
feature was programmed to add words to the list whether
or not there exists a purchasable product corresponding to
the text based on the user’s words. J.A. 1236–37. That
expert and a knowledgeable fact witness testified that, af-
ter “translat[ing] at least a portion of the order to digitized
text,” ’153 patent, col. 15, lines 6–7, the shopping-list fea-
ture does not engage in any searching or matching before
adding the translated text to the relevant list. J.A. 1091–
93, 1235–37. Thus, there was evidence that Alexa would
Case: 22-1391 Document: 70 Page: 10 Filed: 02/26/2024

-- 10 of 18 --

FRESHUB, INC. v. AMAZON. COM , INC. 11
add “sad” or “unicorns in a can” to a shopping list when the
user spoke such words. J.A. 1063, 1235–36. Amazon notes
that, in its view, a distinct (“shopping cart”) feature of
Alexa does undertake the additional, explicit step of “iden-
tifying an item” that corresponds to the text. Amazon’s Re-
sponse Br. at 14 & n.3, 29. But Freshub did not accuse the
shopping-cart feature as a basis for alleging infringement
of the asserted ’153 patent claims, and the accused shop-
ping-list feature is different.
The jury could reasonably rely on that evidence to find
noninfringement. One reasonable understanding of the
“identify an item” claim language, in the context of the pa-
tent, is that it refers to a specific, purchasable item. The
claim specifies adding an “item corresponding to the text,”
not the text itself, to the list. ’153 patent, col. 15, lines 8–
10. The claim requires an intermediate action, between the
system’s generating text and the system’s adding an “item”
to a list, and that requirement is reasonably understood to
demand a choice from a known set of options—an under-
standing supported by the focus on “stored items” in the
Abstract and Summary of the Invention. ’153 patent, Ab-
stract; id., col. 1, lines 35–44. With no claim construction
narrowing the meaning of the language, the jury was free
to find that the shopping-list feature, unlike the shopping-
cart feature, does not “identify an item corresponding to the
text” and therefore does not come within the asserted
claims of the ’153 patent.
This conclusion suffices to reject Freshub’s argument
for judgment as a matter of law. We do not reach Freshub’s
arguments about other claim limitations.
B
Regarding the district court’s denial of its motion for a
new trial, Freshub primarily argues that the district court
should have granted a new trial because Amazon invoked
the filing dates of the asserted patents in a prejudicial
Case: 22-1391 Document: 70 Page: 11 Filed: 02/26/2024

-- 11 of 18 --

FRESHUB, INC. v. AMAZON. COM , INC. 12
manner. Freshub’s Opening Br. at 44–54.3 Freshub had
argued in a motion in limine that Amazon would, at trial,
use the dates to suggest that Freshub had filed the appli-
cations for the asserted patents specifically to target Alexa
unfairly, J.A. 14404–06, but the court denied the motion,
J.A. 4. Freshub now argues that Amazon did just that at
trial, and that the district court therefore abused its discre-
tion in denying the motion in limine and in denying a new
trial.
Freshub has shown no abuse of discretion in denying a
new trial on this ground. Freshub failed to object properly
to the mention of the filing dates, as required in this con-
text by Fifth Circuit law. See C. P. Interests, Inc. v. Cali-
fornia Pools, Inc., 238 F.3d 690, 701 (5th Cir. 2001) (holding
that a party’s motion in limine was insufficient to preserve
the issue of admission of evidence for appeal when the
party did not object to the evidence at trial) (citing Wilson
v. Waggener, 837 F.2d 220, 222 (5th Cir. 1988)). Freshub
has pointed to no objection at trial to the use of the filing
dates. See Freshub’s Reply Br. at 36 (citing objections only
to Amazon’s remarks about Ikan’s abandonment of the an-
cestor patent application). Freshub also has not shown
that, at the pretrial stage, the filing dates could not reason-
ably have been deemed to meet the threshold standard of
relevance under Federal Rule of Evidence 401—e.g., for ar-
guing the inadequacy of the written description and for de-
fending against Freshub’s allegations of willful
3 Freshub presents a one-paragraph argument for a
new trial on the ground that the verdict was against the
great weight of the evidence. Freshub Opening Br. at 47.
The paragraph includes no discussion of evidence. Nothing
in the paragraph warrants any discussion separate from
the evidentiary discussion supra and the discussion in this
section of Freshub’s new-trial argument concerning preju-
dicial evidence or statements at trial.
Case: 22-1391 Document: 70 Page: 12 Filed: 02/26/2024

-- 12 of 18 --

FRESHUB, INC. v. AMAZON. COM , INC. 13
infringement—or, even, the standard of Federal Rule of Ev-
idence 403 focused on comparing probative value against
prejudice. The pretrial ruling did not foreclose considera-
tion at trial of whether uses actually being made of the in-
formation were running afoul of the evidentiary standards.
But the just-cited Fifth Circuit authority indicates that it
is broadly up to the litigant seeing prejudice to object in a
timely fashion to identify such uses, so they may be evalu-
ated in the context of the unfolding evidence and argument,
and prevented or corrected. Freshub, which made no such
objection, has not shown an abuse of discretion.
Freshub also briefly argues that Amazon made preju-
dicial statements at trial by referring to the United States
Constitution and making “us versus them” arguments that
appeal to “community conscience,” necessitating a new
trial. Freshub’s Opening Br. at 54–58. Freshub’s charge
that Amazon invoked a foreign-v.-domestic (or other
grossly improper) theme was the primary basis for
Freshub’s new-trial motion in the district court, which re-
jected the contention because it was unsupported by any
concrete examples of the asserted misconduct and (relat-
edly) Freshub never objected on this ground at trial. See
Post-Trial Opinion, 576 F. Supp. 3d at 465–67; J.A. 17659–
60 (colloquy with Freshub counsel). We see no abuse of dis-
cretion in the district court’s conclusion on this point. And
we draw the same conclusion about Freshub’s criticism of
some remarks by Amazon’s counsel simply about the pur-
pose of the patent system, which we do not read as so dis-
tinctly asking the jury to make policy judgments outside its
legitimate role (in the face of unchallenged jury instruc-
tions) that a new trial is required.
We conclude that the district court did not abuse its
discretion in denying a new trial.
III
In its cross-appeal, Amazon seeks reversal of the dis-
trict court’s rejection of its inequitable-conduct defense.
Case: 22-1391 Document: 70 Page: 13 Filed: 02/26/2024

-- 13 of 18 --

FRESHUB, INC. v. AMAZON. COM , INC. 14
Specifically, Amazon argues that the district court clearly
erred in its factual findings regarding the statement made
to the PTO in 2017 by Ikan’s counsel—who was Ikan’s pros-
ecuting attorney from the 2011–12 events at issue through
the 2017 events at issue—in order to obtain revival of the
’291 application, from which the three patents asserted in
this case descend. We conclude that Amazon has not
shown reversible error.
“To prevail on the defense of inequitable conduct, the
accused infringer must prove that the applicant misrepre-
sented or omitted material information with the specific in-
tent to deceive the PTO.” Therasense, 649 F.3d at 1287.
The proof must be by clear and convincing evidence. Id.
Here, the assertedly false and material statement was the
denial by Ikan’s counsel that “Ikan abandoned the ’291 ap-
plication intentionally” during the 2012–17 non-response
period. Amazon’s Response Br. at 55. And for the decep-
tive-intent issue, Amazon focuses entirely on the intent of
Ikan’s counsel, which it then attributes to Ikan, rather
than on any intent on Ikan’s part separate from that of its
counsel. Id. at 58–63. When reviewing an inequitable-con-
duct ruling, we “review the underlying factual determina-
tions of materiality and intent for clear error, and we
review the ultimate decision as to inequitable conduct for
an abuse of discretion.” American Calcar, Inc. v. American
Honda Motor Co., 651 F.3d 1318, 1334 (Fed. Cir. 2011).
Here, the district court applied the proper legal stand-
ards. The district court found, and it is not disputed, that
the 2017 Ikan statement was material to the PTO’s revival
of the application and, hence, to the issuance of the three
patents at issue here. The district court also found, how-
ever, that Amazon did not prove, by clear and convincing
evidence, that the statement was a misrepresentation
made with the required deceptive intent. Inequitable Con-
duct Opinion at 9–12. We review that finding for clear er-
ror, which we may deem present only if we have a “definite
and firm conviction that a mistake has been committed” by
Case: 22-1391 Document: 70 Page: 14 Filed: 02/26/2024

-- 14 of 18 --

FRESHUB, INC. v. AMAZON. COM , INC. 15
the district court in finding Amazon’s failure of proof. In-
wood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S.
844, 855 (1982) (internal quotation marks omitted); see
Blue Gentian, LLC v. Tristar Products, Inc., 70 F.4th 1351,
1362–1363 (Fed. Cir. 2023); Nilssen v. Osram Sylvania,
Inc., 504 F.3d 1223, 1229 (Fed. Cir. 2007).
It suffices for decision in this matter to focus on the re-
quirement of deceptive intent on counsel’s part in making
the 2017 statement. We need not explore the standards for
when, as a matter of law, counsel’s intent is attributable to
the client. We cannot disturb the district court’s rejection
of the inequitable-conduct defense unless we have the def-
inite and firm conviction that the evidence required the dis-
trict court to find that Amazon proved, clearly and
convincingly, that the “single most reasonable inference”
from the record, Therasense, 649 F.3d at 1290, was that
Ikan’s counsel, when making his 2017 statement to the
PTO, in fact believed that Ikan had intentionally aban-
doned the ’291 application for the 2012–17 period of non-
response to the PTO. We do not so conclude.
The subject of the belief at issue in 2017 was Ikan’s in-
tent from 2012 through the end of the period of non-re-
sponse in 2017, so the evidence regarding Ikan’s intent for
that period is important to the ultimate ruling on the de-
ceptive-intent issue. For various reasons, including the
passage of time and the limited testimonial and documen-
tary evidence available—the latter due in part to invoca-
tions of attorney-client privilege not challenged on
appeal—the record of what actually occurred at relevant
times was thin. On that record, the district court found
that Amazon did not clearly and convincingly prove Ikan’s
intentional abandonment. Inequitable Conduct Opinion at
9–10. We need not rule on the correctness of that finding.
We consider the record for the different but obviously re-
lated question of what Ikan’s counsel believed in 2017
about whether Ikan intentionally abandoned the ’291 ap-
plication.
Case: 22-1391 Document: 70 Page: 15 Filed: 02/26/2024

-- 15 of 18 --

FRESHUB, INC. v. AMAZON. COM , INC. 16
Counsel’s statement to the PTO was, in substance, that
the abandonment was not intentional on Ikan’s part, an as-
sertion that the court could properly understand to have
been reaffirmed, and not at all disclaimed, when counsel
was examined by Amazon in a deposition for this litigation.
See, e.g., J.A. 16999–17000. That statement itself can
weigh in the evidentiary calculus even when it is not
backed up affirmatively with a more granular and concrete
account of how the five-year non-response to the PTO oc-
curred—an account that might detail, for example,
whether communications from counsel in 2012 failed to
reach or inform the relevant decisionmaker at Ikan and
whether years of inattention to this particular matter en-
sued because the attention of the company and counsel was
elsewhere. Of course, the absence of such an account, due
to unavailability of witnesses or invocations of attorney-cli-
ent privilege or other reasons, might well lead a factfinder
to find false, or even knowingly false, the assertion that the
abandonment was unintentional on Ikan’s part. But that
hardly means that the absence of such an account always
compels such a finding.
Amazon’s arguments for drawing the necessary ad-
verse inferences leave gaps. Amazon points to deposition
testimony from Ikan’s counsel that he was aware of the
PTO-sent notices in 2011–12, including the January 2012
Notice of Abandonment, and that it was his typical practice
to communicate such developments to clients. J.A. 16990,
17000. That testimony need not be taken to establish that
the relevant Ikan decisionmaker received and understood
the communications and knowingly authorized the aban-
donment—or that Ikan’s counsel knew that the relevant
decisionmaker had done so. See Inequitable Conduct Opin-
ion at 12 (finding that the Ikan principal “was not included
in the 2012 communications between [counsel] and Ikan
personnel [other inventors] after the PTO’s notice of aban-
donment”); id. at 5 (identifying Ikan principal); J.A. 16994,
16996. Amazon also notes that, in December 2012, the
Case: 22-1391 Document: 70 Page: 16 Filed: 02/26/2024

-- 16 of 18 --

FRESHUB, INC. v. AMAZON. COM , INC. 17
Ikan principal signed an assignment agreement, prepared
by the prosecuting attorney, that lists the ’291 application
as “Inactive/Abandoned/Expired.” J.A. 17070–72. But the
’291 application was just one of several patent interests
listed in a document merely making a general assignment
from one Ikan entity to another, with no apparent decision
to be made about the PTO status of the ’291 application,
and even the triple-alternative category does not declare
that application abandoned. Amazon further points to sev-
eral entries in a privilege log indicating that the prosecut-
ing attorney communicated with Ikan regarding the ’291
application immediately after the final office action to
which Ikan did not respond.4 J.A. 16991–92, 17020–21.
But those entries do not say that the key Ikan principal
received the communications.
The evidence clearly shows that Ikan’s counsel knew
that the application had been abandoned, as he testified,
J.A. 17000. But whether he made his 2017 statement with
deceptive intent depends on what he believed about the
subject of his statement, namely, the intent behind the
abandonment. And as to the latter, he testified that “[t]he
intent does not go to my intent. It goes to intent of the
applicant.” J.A. 16999. The district court could find that
counsel genuinely so believed, whether or not the belief was
legally correct, and that counsel did not think that Ikan
had the intent to abandon during the 2012–17 non-re-
sponse period. Inequitable Conduct Opinion at 10–12.
That finding was not clearly erroneous, in light of the facts
we have already recited. The court could therefore reason-
ably hold deceptive intent not proven under the governing
legal standard.
4 On appeal, Amazon does not challenge the district
court’s finding that privilege was not waived as to the doc-
uments to which those privilege-log entries refer.
Case: 22-1391 Document: 70 Page: 17 Filed: 02/26/2024

-- 17 of 18 --

FRESHUB, INC. v. AMAZON. COM , INC. 18
Accordingly, we hold that Amazon has not shown re-
versible error in the district court’s rejection of the defense
of inequitable conduct.
IV
We have considered Freshub’s and Amazon’s other ar-
guments, and we find them unpersuasive. For the forego-
ing reasons, we affirm the district court’s denial of
judgment as a matter of law, denial of Freshub’s motion for
new trial, and grant of judgment on partial findings of no
inequitable conduct.
The parties shall bear their own costs.
AFFIRMED
Case: 22-1391 Document: 70 Page: 18 Filed: 02/26/2024

-- 18 of 18 --