Other Barks & Bites for Friday, August 28: CCIA Urges SCOTUS to Take Up ‘Patent Troll’ Case; Federal Circuit Transfers T-Mobile Contract Case to Fifth Circuit; and Another Drugmaker Challenge to IRA’s Negotiation Program Fails

Want to have your doggie(s) featured in one of our future Barks & Bites Columns? Send your dogs photo(s) along with their name, breed (if you know it) and their age to dogwall@ipwatchdog.com. All photos will be added to the IPWatchdog Dog Wall at IPWatchdog Studios and will be added to the queue of images we select from each week.  

Morgan Connell’s two- year-old French Bulldog , Ferg.

This week in Other Barks & Bites: the Fifth Circuit nixes an appeal lodged by PhRMA and other drugmaker industry organizations against the Medicare drug negotiation program under the Inflation Reduction Act; the Ninth Circuit finds that Boeing’s patent inventorship claims are not compulsory to Zunum Aero’s trade secret misappropriation case; the U.S. Patent and Trademark Office announces that it will adopt Nice Classification trademark system updates next year; the Computer & Communications Industry Association calls on the U.S. Supreme Court to stop “patent trolls” by ensuring that the Patent Trial and Appeal Board adheres to the statutory framework of the America Invents Act; the Federal Circuit finds that it lacks appellate jurisdiction over T-Mobile’s appeal of KAIFI’s counterclaims regarding unpaid patent royalties; and the D.C. Circuit corrects the U.S. Food & Drug Administration’s causation standard applied for determining whether changing agency guidance was a cause for Actavis’ failure to timely obtain market approval for its generic version of Xifaxan.

Bites

CAFC Transfers T-Mobile Royalty Payment Case to Fifth Circuit – On Friday, August 28, the U.S. Court of Appeals for the Federal Circuit issued a precedential ruling in T-Mobile US Inc. v. KAIFI LLC transferring to the Fifth Circuit T-Mobile’s appeal from the Eastern District of Texas’ grant of summary judgment on KAIFI’s breach of contract counterclaims against T-Mobile for failure to make royalty payments under a settlement agreement as to patent claims that survived ex parte reexamination (EPR) proceedings at the U.S. Patent and Trademark Office. The Federal Circuit ruled that it lacked appellate jurisdiction to hear T-Mobile’s appeal to KAIFI’s counterclaim because it sounded in state contract law without arising under federal law under the requirements of Gunn v. Minton (2013) because the determination of whether the claims “survive[d] the EPR” under the agreement does not necessarily raise a patent law issue, and because the federal issue in the case was not substantial enough to be dispositive to the case or control numerous other cases.

CAFC Finds No Abuse of Discretion in Deciding Patent Ineligibility With Venue Dismissal – On Friday, August 28, the Federal Circuit issued a precedential ruling in AML IP, LLC v. Bath & Body Works Direct, Inc. affirming the Eastern District of Texas’ dismissal of AML’s complaint for patent infringement both due to improper venue due to AML’s failure to allege the defendants’ residency or acts of infringement within the district, and for failure to state a claim upon which relief can be granted due to the ineligibility of the patent claims directed to e-commerce methods utilizing a bridge computer to facilitate interactions between different service providers. The Federal Circuit dismissed AML’s arguments that the district court should not have considered patentability once the case was dismissed for venue, finding that the relevant case law shows that subject matter eligibility claims are routinely addressed on a motion to dismiss before venue issues, and that judicial economy considerations favor the district court’s approach given that the court had conducted initial briefing on both issues.

CCIA Urges SCOTUS Grant Cert to Tesla’s “Patent Troll” Case – On Friday, August 28, several industry organizations, including the Computer & Communications Industry Association (CCIA), Alliance for Automotive Innovation and National Retail Foundation, jointly filed an amicus brief urging the U.S. Supreme Court to grant cert in Tesla v. Granite Vehicle Ventures, a case challenging discretionary denial considerations at the PTAB that CCIA insists will address so-called “patent trolls.”

CAFC Reverses PTAB for Failing to Consider Motivation to Combine Arguments Against Apple – On Thursday, August 27, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a pair of rulings on appeals filed by Apple challenging the Patent Trial and Appeal Board’s (PTAB) finding that Smart Mobile Technologies’ patent claims to mobile wireless devices were not unpatentable. In the first ruling, the CAFC agreed with the PTAB that the claim limitation “multiplexed signals” should be implicitly construed to mean “combining multiple signal streams into one,” and agreed with Smart Mobile on cross-appeal that the PTAB should have considered Smart Mobile’s motivation-to-combine arguments raised in relation to claim 1, which included the “multiplexed signals” limitation, to claim 17 which was challenged on the same grounds by Apple. In the other ruling, the CAFC applied its finding regarding the proper construction of “multiplexed signals” supported the PTAB’s consistent finding in separate inter partes review (IPR) proceedings challenging Smart Mobile’s patent claim to “an IP-enabled communication device for multiplexing signals.”

Drugmaker Associations’ Constitutional Arguments Against IRA Fail at Fifth Circuit – On Wednesday, August 26, the U.S. Court of Appeals for the Fifth Circuit issued a ruling in National Infusion Center Association v. Kennedy affirming the Western District of Texas’ granting the U.S. federal government’s motion for summary judgment eliminating several constitutional claims raised by several medical trade organizations including the Pharmaceutical Research and Manufacturers of America (PhRMA) against the Medicare drug pricing program established by the Inflation Reduction Act (IRA). This latest failed challenge to the IRA’s drug negotiation program comes after the Fifth Circuit found that the IRA does not violate non-delegation doctrine under the intelligible principle test, or under a combination theory due to lack of judicial review and notice-and-comment rulemaking, that the IRA’s excise tax is not an excessive fine violating the Eighth Amendment, and that the program does not violate any protected property interest held by drugmakers in violation of the Fifth Amendment.

Ninth Circuit Nixes Boeing’s Attempt to Transfer Trade Secret Case to CAFC – On Wednesday, August 26, the U.S. Court of Appeals for the Ninth Circuit issued an opinion in Zunum Aero, Inc. v. The Boeing Co. denying Boeing’s petition for rehearing following an earlier panel decision reversing the Western District of Washington’s entry of judgment as a matter of law (JMOL) that nixed a $92 million trade secret misappropriation verdict for Zunum Aero, which had claimed that Boeing misappropriated trade secrets that were then incorporated into its patent application filings. The Ninth Circuit dismissed Boeing’s challenge to its appellate jurisdiction, raised for the first time in its rehearing petition, after finding that patent inventorship claims raised by Boeing as counterclaims were not compulsory and therefore did not require transfer due to the exclusive jurisdiction of the Federal Circuit over patent law matters.

D.C. Circuit Says FDA Used Wrong Causation Standard in Assessing Failure to Market Generic – On Tuesday, August 25, the U.S. Court of Appeals for the D.C. Circuit issued a ruling in Norwich Pharmaceuticals, Inc. v. Kennedy reversing-in-part the D.C. District Court’s grant of summary judgment upholding the U.S. Food & Drug Administration’s (FDA) determination that drugmaker Actavis did not forfeit market exclusivity for its generic version of Xifaxan to a follow-on abbreviated new drug application (ANDA) filed by Norwich. Although the D.C. Circuit agreed that Actavis had not forfeited exclusivity for any failure to timely market generic rifaximin, finding that triggering events had not occurred for each Paragraph IV certification in Actavis’ ANDA, which includes a certification for 550 mg rifaximin to treat hepatic encephalopathy, but found that the FDA improperly applied an exception to the but-for causation standard used to determine whether Actavis failed to timely obtain tentative approval for its ANDA based on delays caused by changing FDA guidance related to rifaximin studies.

Barks

USPTO Starts Info Collection on Trademark Submissions, PTAB Appeals – On Thursday, August 27, the U.S. Patent and Trademark Office (USPTO) announced a pair of information collections being conducted by the agency, one reviewing substantive submissions made by trademark applicants during the prosecution of their applications, the other focused on ex parte reexamination requests as well as ex parte and inter partes reexamination appeals conducted at the PTAB.

Cross-License Agreement Gives HP Access to Huawei WiFi Patents – On Wednesday, August 26, Chinese information communications company Huawei announced that it had entered into a multiyear cross-license agreement with American computer and peripherals maker HP Inc. which will give HP access to Huawei’s portfolio of WiFi patents.

KMCA Holds AI-Generated Music Registrations Until Broader Conversation in Korea – On Tuesday, August 25, the Korean Music Copyright Association (KMCA) announced that it was withdrawing a rule allowing the registration of music generated with the use of artificial intelligence following recommendations from the Korean government urging reversal of the rule until a broader discussion on the role of AI-assisted music can be had in Korea’s cultural sector.

USPTO to Adopt Changes to Nice Classification in 2027 – On Tuesday, August 25, the USPTO announced that next year, the agency would be incorporating updates to the international trademark filing classification system operated under the Nice Agreement, including the amendment of two headings in Class 6 and Class 9 to more clearly define goods appropriate to those classes.

NFL’s Washington Commanders Cite Trademark Reasoning Behind “Redskins” Merch Sales – On Tuesday, August 25, Washington, D.C.-area news outlet WUSA9 reported that executives with the National Football League’s Washington Commanders cited the need to prevent abandonment of franchise trademarks in responding to backlash over the team’s decision to sell merchandise under the team’s former “Redskins” nickname.

This Week on Wall Street

Nvidia Quarterly Earnings Beat Improves Confidence in AI Market – On Wednesday, August 26, American chipmaker Nvidia Corporation reported earnings for the second quarter of 2026 showing that the company earned $96.2 billion in revenues, an increase of 106% over the same period last year, with AI market confidences being boosted by comments by Nvidia Founder and CEO Jensen Huang that “AI has reached its inflection point” buoyed by increasing demand in graphics processing unit (GPU) clusters for AI applications.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2025 are announcing quarterly earnings next week (2025 rank in parentheses):

• Monday: None
• Tuesday: Dell Technologies Inc. (10th); Medtronic plc (36th); Palo Alto Networks, Inc. (t-273rd)
• Wednesday: Broadcom Inc. (125th); Hewlett Packard Enterprise Co. (80th); NetApp, Inc. (t-280th)
• Thursday: None
• Friday: None