Posts in Federal Circuit

Federal Circuit Reverses PTAB’s Invalidity Decision Regarding a Wireless Communications Patent

In November, the Federal Circuit issued an opinion reversing the Patent Trial and Appeal Board’s (the PTAB or the Board) decision that claim 8 of IPR Licensing Inc.’s (IPRL) wireless communications patent—U.S. Patent No. 8,380,244 (the ‘244 Patent)—was unpatentable as obvious. The Board’s obviousness finding as to claim 8 was erroneous as it relied on a prior art reference that IPRL could neither anticipate nor rebut. Furthermore, its finding was, for the second time, unsupported by substantial evidence. See In re IPR Licensing, Inc. (Fed Cir. Nov. 22, 2019) (Before Newman, O’Malley, and Taranto, Circuit Judges) (Opinion for the Court, O’Malley, Circuit Judge).

Industry Experts Weigh in on Thryv v. Click-to-Call Oral Argument

The Supreme Court heard oral arguments on Monday in Thryv, Inc. v. Click-to-Call Technologies. The case asks the nation’s highest court whether 35 U.S.C. § 314(d)—which states that decisions to institute inter partes review (IPR) proceedings shall not be appealable—permits appeals of PTAB institution decisions based upon 35 U.S.C. § 315(b)— which states that IPRs won’t be instituted if the patent owner served the petitioner with a complaint for patent infringement more than one year prior to the petition. The U.S. Court of Appeals for the Federal Circuit ruled in August 2018 in a panel rehearing that the Patent Trial and Appeal Board (PTAB) had “committed legal error” in rendering its determination that an IPR petition challenging claims of Click-to-Call’s patent was not time-barred under Section 315(b). All 12 judges joined a footnote finding that the Section 315(b) time bar applies even when the earlier infringement action had been voluntarily dismissed without prejudice. Here is what those who have reviewed the transcript of Monday’s oral arguments had to say

Federal Circuit Upholds District of Delaware’s Summary Judgment Ruling for Donghee

Last week, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential public opinion affirming the District Court for the District of Delaware’s grant of summary judgment of noninfringement for Donghee America, Inc. and Donghee Alabama, LLC (Donghee). The CAFC held that the summary judgment ruling was consistent with the claim construction and supported by the facts on the record. A sealed opinion was delivered on November 21.

The plaintiff, Plastic Omnium Advanced Innovation and Research (Plastic Ominum), owns two patents for blow molding plastic fuel tanks, U.S. Patent Nos. 6,814,921 (‘921) and 6,866,812 (‘812). The patents outline a system to manufacture the tanks in a manner that allows accessory components to be installed without damaging or removing part of the tank’s wall. The ‘812 patent describes a method in which a hollow plastic tube, called a parison, is extruded, formed, and then cut by a blade at the exit of the extruder. The dispute arises out of the ‘921 patent’s description of an “extruded parison” limitation.

Athena Tells SCOTUS That Mayo’s Key Argument “Collapses” Under Federal Circuit Split

Athena Diagnostics today filed its reply brief to Mayo Collaborative Services at the Supreme Court in the closely-watched petition asking the High Court to clarify U.S. patent eligibility law. The reply reiterates the points made in Athena’s petition for certiorari and dismisses Mayo’s argument in November that “any further action regarding the patentability of medical diagnostic claims such as Athena’s that employ conventional, known techniques should and does rest with Congress.” The reply comes three days after the United States Solicitor General recommended that SCOTUS grant cert in Athena or “another such case”, rather than in Hikma Pharmaceuticals v. Vanda Pharmaceuticals.

Solicitor General Recommends Against Cert in Vanda, Perhaps Bolstering Athena’s Bid for Review

The United States Office of the Solicitor General has filed its brief in response to the Supreme Court’s March request for views in Hikma Pharmaceuticals v. Vanda Pharmaceuticals. The December 6 brief says that the Federal Circuit correctly held the relevant claims of Vanda’s patent-in-suit eligible, and that the case “is not an optimal vehicle for bringing greater clarity” on the topic of Section 101 law since the CAFC arrived at the correct result. Instead, the High Court should grant certiorari in a case like Athena Diagnostics v. Mayo Collaborative Services, in which the order denying en banc rehearing “was accompanied by multiple separate opinions articulating different understandings of Mayo and seeking clarification from this Court.”

A Look at the Briefs in Thryv v. Click-to-Call Before Supreme Court Oral Arguments

On Monday, December 9, the U.S. Supreme Court will hear oral arguments in Thryv, Inc. v. Click-to-Call Technologies, LP. The case, which has gone through multiple name changes since its original appeal from the Patent Trial and Appeal Board (PTAB), will ask the nation’s highest court whether 35 U.S.C. § 314(d), which states that decisions to institute inter partes review (IPR) proceedings shall not be appealable, permits appeals of PTAB institution decisions based upon 35 U.S.C. § 315(b). Section 315(b) states that IPRs won’t be instituted if the patent owner served the petitioner with a complaint for patent infringement more than one year prior to the petition. To summarize the lower court proceedings in this case, the patent-at-issue was first asserted against Keen Inc. by Inforocket.com in 2001 in a case that was voluntarily dismissed. Click-to-Call acquired the patent and asserted it in 2012 against Ingenio, a company formed through a merger of Keen and Inforocket.com. Ingenio filed for an IPR petition and Click-to-Call challenged it based on the Section 315(b) time-bar and the former suit against Ingenio’s predecessor. The appeal reached the Supreme Court, where it was remanded in June 2016 in light of Cuozzo Speed Technologies v. Lee. Most recently, the U.S. Court of Appeals for the Federal Circuit rendered a decision last August where all 12 Federal Circuit judges joined a footnote finding that the Section 315(b) time bar applies even when the earlier infringement action had been voluntarily dismissed without prejudice.