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

______________________ 

PAUL J. ANDRE, Kramer Levin Naftalis & Frankel LLP, 

Redwood Shores, CA, argued for plaintiffs-appellants. Also 

represented by JAMES R. HANNAH, LISA KOBIALKA; 

CRISTINA MARTINEZ, New York, NY. 

 J. DAVID HADDEN, Fenwick & West LLP, Mountain 

View, CA, argued for defendants-cross-appellants. Also 

represented by RAVI RAGAVENDRA RANGANATH, SAINA S.

SHAMILOV; TODD RICHARD GREGORIAN, ERIC YOUNG, San 

Francisco, CA. 

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2 FRESHUB, INC. v. AMAZON.COM, INC. 

 ______________________ 

Before REYNA, TARANTO, and CHEN, Circuit Judges.

TARANTO, 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 District 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 assertedly committed by Freshub’s parent company, Ikan

Holdings LLC, in the Patent and Trademark Office—specifically, in its successful petition to revive the earlierabandoned 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 adequate 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 Conduct 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 assertedly prejudicial statements by Amazon at trial. Amazon timely cross-appealed. It seeks reversal of the district 

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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 affirm. 

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 voiceprocessing technology. Id., col. 8, lines 17–55. For example, in one embodiment, the system, in response to a “verbal[] 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 convert spoken words into a digital representation;

a first computer;

non-transitory memory that stores instructions that when executed by the first computer cause the first system to perform 

operations comprising:

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4 FRESHUB, INC. v. AMAZON.COM, INC. 

receive via the digitizer a verbal order, comprising at least one item, 

from a user, wherein the verbal order was captured by the microphone and digitized by the 

digitizer;

immediately transmit, using the 

wireless network interface, the digitized order to a computer system 

remote from the first system;

the computer system, the computer system comprising:

a networks interface;

a second computer;

non-transitory memory that stores instructions that when executed by the second 

computer cause the computer system to

perform operations comprising:

receive, using the network interface, 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 associated with the user; 

enable the list, including the identified 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). 

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Amazon sells consumer devices, such as the Amazon 

Echo, into which a user can speak to connect to a responsive 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 patent 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 Amazon’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” being references to the fact that Freshub is an Israeli company. Id. at 465; see J.A. 17411–16. Citing the absence of 

objection during trial and the standard requiring a “serious[ effect on] the fairness, integrity, or public reputation 

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6 FRESHUB, INC. v. AMAZON.COM, INC. 

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 district court did not separately discuss certain other arguments about prejudicial statements warranting a new 

trial—e.g., statements that Freshub filed the application 

that became the ’153 patent after Amazon announced relevant 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. Earlier, Freshub had filed a motion in limine to preclude reference 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 infringement, that inequitable conduct in the prosecution of the 

’291 application, from which all of the asserted patents 

here descend, rendered the asserted patents unenforceable. 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 rejecting the claims. J.A. 17056–65. On January 3, 2012,

after Ikan Technologies failed to respond in the time allowed, the PTO sent counsel for Ikan Technologies a notice 

of abandonment of the application. J.A. 17067–68. On December 4, 2012, Ikan Technologies assigned a number of 

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FRESHUB, INC. v. AMAZON.COM, INC. 7

patent interests, including the interest in the ’291 application, 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 revival, 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 required reply from the due date for the required reply 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 unintentional (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 intentionally misrepresented to the PTO that the ’291 application 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 entities without distinction, unless otherwise indicated.

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8 FRESHUB, INC. v. AMAZON.COM, INC. 

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 attorneyclient privilege, no issue is raised on appeal about the scope 

of the record.

Upon concluding that Amazon had failed to prove inequitable conduct by the requisite clear and convincing evidence, 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 materiality of the representation that the application had been unintentionally 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 application), Amazon had not offered clear and convincing evidence that the “single most reasonable inference” from the 

evidence, as required by Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011) (en banc), 

was that either Ikan or its attorney had specifically intended to deceive the PTO with the STATEMENT in the 

petition to revive the application in 2017. Inequitable Conduct 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.

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II

We review denials of motions for judgment as a matter 

of law and for a new trial under regional circuit law. Raytheon 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 standard, here asking if the underlying jury findings were supported 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 requirement 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 “digitized 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 respect to any of those limitations. We agree with Amazon, 

however, that substantial evidence supports a finding of

noninfringement because of the first limitation. That conclusion suffices to uphold the jury verdict; we need not address the other two limitations. 

The claim limitation comes to us without a claim construction and without any argument from Freshub that 

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10 FRESHUB, INC. v. AMAZON.COM, INC. 

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 appends the word “bananas” to the user’s shopping list, resulting 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, after “translat[ing] at least a portion of the order to digitized 

text,” ’153 patent, col. 15, lines 6–7, the shopping-list feature 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 

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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 “identifying an item” that corresponds to the text. Amazon’s Response 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 shopping-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 patent, 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 understanding supported by the focus on “stored items” in the 

Abstract and Summary of the Invention. ’153 patent, Abstract; 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 shoppingcart 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 

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12 FRESHUB, INC. v. AMAZON.COM, INC. 

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 applications 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 discretion 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 context by Fifth Circuit law. See C. P. Interests, Inc. v. California 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 ancestor patent application). Freshub also has not shown 

that, at the pretrial stage, the filing dates could not reasonably have been deemed to meet the threshold standard of 

relevance under Federal Rule of Evidence 401—e.g., for arguing the inadequacy of the written description and for defending 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 prejudicial evidence or statements at trial. 

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infringement—or, even, the standard of Federal Rule of Evidence 403 focused on comparing probative value against 

prejudice. The pretrial ruling did not foreclose consideration at trial of whether uses actually being made of the information 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 evaluated 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 prejudicial 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 rejected the contention because it was unsupported by any 

concrete examples of the asserted misconduct and (relatedly) 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 discretion 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 purpose of the patent system, which we do not read as so distinctly asking the jury to make policy judgments outside its 

legitimate role (in the face of unchallenged jury instructions) 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 district court’s rejection of its inequitable-conduct defense. 

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14 FRESHUB, INC. v. AMAZON.COM, INC. 

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 prosecuting 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 misrepresented or omitted material information with the specific intent 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 application intentionally” during the 2012–17 non-response 

period. Amazon’s Response Br. at 55. And for the deceptive-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-conduct ruling, we “review the underlying factual determinations 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 standards. 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, however, that Amazon did not prove, by clear and convincing 

evidence, that the statement was a misrepresentation 

made with the required deceptive intent. Inequitable Conduct Opinion at 9–12. We review that finding for clear error, which we may deem present only if we have a “definite 

and firm conviction that a mistake has been committed” by 

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the district court in finding Amazon’s failure of proof. Inwood 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 requirement 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 definite and firm conviction that the evidence required the district 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 abandoned the ’291 application for the 2012–17 period of nonresponse to the PTO. We do not so conclude.

The subject of the belief at issue in 2017 was Ikan’s intent from 2012 through the end of the period of non-response in 2017, so the evidence regarding Ikan’s intent for 

that period is important to the ultimate ruling on the deceptive-intent issue. For various reasons, including the 

passage of time and the limited testimonial and documentary evidence available—the latter due in part to invocations 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 related question of what Ikan’s counsel believed in 2017 

about whether Ikan intentionally abandoned the ’291 application. 

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16 FRESHUB, INC. v. AMAZON.COM, INC. 

Counsel’s statement to the PTO was, in substance, that 

the abandonment was not intentional on Ikan’s part, an assertion 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 occurred—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 ensued 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-client 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 adverse 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 abandonment—or that Ikan’s counsel knew that the relevant 

decisionmaker had done so. See Inequitable Conduct Opinion 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 abandonment”); id. at 5 (identifying Ikan principal); J.A. 16994, 

16996. Amazon also notes that, in December 2012, the 

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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 several entries in a privilege log indicating that the prosecuting 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-response 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 reasonably 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 documents to which those privilege-log entries refer. 

Case: 22-1391 Document: 70 Page: 17 Filed: 02/26/2024
18 FRESHUB, INC. v. AMAZON.COM, INC. 

Accordingly, we hold that Amazon has not shown reversible error in the district court’s rejection of the defense 

of inequitable conduct. 

IV

We have considered Freshub’s and Amazon’s other arguments, and we find them unpersuasive. For the foregoing 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