Posts in Federal Circuit

The latest ruling involving patent eligibility of medical diagnostics comes from Chief Judge Connolly of the United States District Court for the District of Delaware in a consolidated case brought by CareDx, Inc. and the Board of Trustees of the Leland Stanford Junior University against Natera, Inc. (Civil Action No. 19-0567-CFC-CJB) and Eurofins Viracor, Inc. (Civil Action No. 19-1804-CFC-CJB). After initially denying the Defendants’ motions for summary judgment of invalidity of the asserted patents under 35 U.S.C. §101 in December 2020, the Court then later denied certification motions for interlocutory appeal and instead ruled sua sponte to reconsider its own denial of summary judgment. Following an evidentiary hearing during which expert testimony was heard, the Court reversed its previous ruling to find all claims of the asserted patents invalid as a matter of law under §101.

Last week, the Federal Circuit Court reversed the Patent Trial and Appeal Board decision in In re Surgisil, L.L.P., overturning the Board’s ruling that a design for a rolled-paper art tool for blending anticipated Surgisil’s (Applicant) claimed lip implant. In re Surgisil, L.L.P., No. 2020-1940, 2021 WL 4515275 (Fed. Cir. Oct. 4, 2021). Although the “stump” art tool cited as prior art in Surgisil resembled Applicant’s lip implant (see below), the Federal Circuit found that Applicant’s “claim is limited to lip implants and does not cover other articles of manufacture.” From this finding, the Surgisil court appears to extrapolate a symmetry by which a design for an artist’s stump is both ineligible for citation against Applicant’s lip implant in patent prosecution and also not covered in a putative enforcement of Applicant’s design.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today held in a precedential decision authored by Judge Chen that a non-disclosure agreement’s (NDA’s) forum selection clause barring lawsuits to be brought outside of the New York court system did not apply to inter partes review (IPR) proceedings at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). Judge Newman dissented. Kannuu Pty Ltd. appealed to the CAFC asking that the court compel Samsung Electronics to seek dismissal of its instituted IPR proceedings at the PTAB seeking to invalidate Kannuu’s patents. Kannuu’s appeal was based on the terms of an NDA entered into between the companies during business negotiations in 2012.

On October 5, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed a decision by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that Snyders Heart Valve LLC’s (Snyders) patent claims for an artificial heart valve were unpatentable. The court said the PTAB relied on an erroneous claim construction. The CAFC previously vacated and remanded the appeal after only reaching Snyders’ argument under the Appointments Clause following its decision in Arthrex, Inc. v. Smith & Nephew, Inc. The U.S. government sought certiorari to challenge the remand, and after its decision in United States v. Arthrex Inc. (U.S. Supreme Court, 2021), the Supreme Court vacated the decision of the CAFC and remanded the matter back. Snyders waived the Appointments Clause challenge and asked the CAFC to consider the merits of the case on remand.

On October 4, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed-in-part the claim construction and summary judgment of non-infringement ruling made by the U.S. District Court for the District of Delaware and dismissed-in-part Acceleration Bay LLC’s appeal against the makers of the Grand Theft Auto video game as moot. In July of 2000, Acceleration Bay filed four patents: U.S. Patent Nos. 6,701,344 (the ‘344 patent), 6,714,966 (the ‘966 patent), 6,910,069 (the ‘069 patent) and 6,920,497 (the ‘497 patent). The patents are unrelated but share a similar specification disclosing a networking technology that allegedly improves upon prior methods of communication. Specifically, the patents disclose a “broadcasting technique in which a broadcast channel overlays a point-to-point communication network.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) today reversed a district court decision that patent claims directed to an “authentication method” were ineligible as abstract under Section 101. The CAFC said that the claims at issue satisfied Alice step two because they “recite a specific improvement to a particular computer-implemented authentication technique” and were thus eligible for patenting. The opinion was authored by Judge Stoll and a concurring opinion was filed by Judge Reyna.

On Friday, October 1, the U.S Court of Appeals for the Federal Circuit (CAFC) ordered the latest in a series of recent grants of petitions for writ of mandamus, ordering Judge Alan Albright’s court to vacate its decision to re-transfer a case between Apple and Fintiv  from Austin, Texas back to Waco, Texas. Fintiv originally filed the case in the Waco division of the U.S. Court of Appeals for the Western District of Texas in December 2018, and in September 2019 the district court granted-in-part Apple’s motion to transfer the case to Austin. The court denied Apple’s request to transfer the case to the Northern District of California, but agreed that Austin was more convenient. The trial was scheduled to begin in October 2021, but in September, the court ordered transfer back to Waco, explaining that the COVID-19 pandemic had suspended jury trials for the forseeable future.

While there are any number of reasons to question the continued viability, value and necessity of the Federal Circuit, the court’s continued use of mandamus is extremely troubling. Much of the time, it seems the Federal Circuit is using this extraordinary remedy to control the docket of Judge Alan Albright of the Western District of Texas, ordering him to transfer cases. Reading these decisions is becoming nauseating. The resentment of the Federal Circuit built up toward Judge Albright is palpable, yet at the same time the Federal Circuit ignores first principles and well-established law in an attempt to move patent cases from the forum selected by the patent owner plaintiff to a forum decidedly in favor of the defendants.

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled today in a precedential opinion that Alarm.com, which was denied institution on three inter partes review (IPR) petitions it filed against patents owned by Vivint, Inc., could not simply “repackage” arguments raised in its IPR petition to challenge the same patent via ex parte reexamination. The opinion was authored by Chief Judge Moore. In so ruling, the CAFC said that it was “arbitrary and capricious” and an abuse of discretion for the U.S. Patent and Trademark Office (USPTO) to grant the reexamination request after it had denied the IPRs under 35 U.S.C. § 325(d).

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential opinion reversing a district court’s denial of SRI International’s motion to reinstate the jury’s willfulness verdict against Cisco Systems, Inc., restoring the district court’s award of enhanced damages, and affirming an award of attorney fees for SRI. The CAFC specifically clarified that its reference to language in the Supreme Court’s ruling in Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1934 (2016) on a first appeal in the case was not meant to create a heightened requirement for willful infringement. Judge Lourie authored the opinion.

On Friday, September 24, the United States Court of Appeals for the Federal Circuit (CAFC) granted Juniper Networks, Inc.’s petition for a writ of mandamus directing Judge Alan Albright of the United States District Court for the Western District of Texas (WD of TX) to transfer six actions to the United States District Court for the Northern District of California, holding that denying the motion to transfer constituted a legal error. The Federal Circuit has repeatedly granted such mandamus petitions from the WD of TX, or ordered Albright to reconsider denials of motions to transfer, in recent months.

Two recent court decisions in the United States and the United Kingdom, respectively, have considered (i) the disclosure obligation pursuant to Clause 4.1 of the European Telecommunications Standards Institute’s (ETSI) Intellectual Property Rights (IPR) Policy, and (ii) the impact this has on the enforceability of a patent subject to the Policy…. Both decisions were in the ongoing patent and fair, reasonable, and non-discriminatory (FRAND) related litigations between Optis and Apple. In summary, the decisions confirmed that neither Optis nor its predecessors had breached their duty to disclose IPR to ETSI under clause 4.1, nor did the timing of their disclosures constitute egregious misconduct, so as to result in an implied waiver under U.S. law, or in the case of the UK, a proprietary estoppel, preventing or restricting enforcement of the patent.

On Day 2 of IPWatchdog LIVE, a lively morning panel was convened on the subject of “Is the Federal Circuit Killing Software Patents?” Though that question was answered in the first few seconds of the panel session, the following hour of discussion yielded various ideas on how disastrous jurisprudence on Section 101 subject matter eligibility could be addressed at the Federal Circuit. Speaking on this panel was Robert Stoll, Co-Chair of the IP Group at Faegre Drinker and Former Commissioner of Patents, USPTO; Russ Slifer, Principal at Schwegman Lundberg & Woessner and Former Deputy Director, USPTO; Raymond Millien, CEO at Harness Dickey; and Benjamin Cappel, Partner at AddyHart P.C.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued an order denying MaxPower Semiconductor, Inc.’s appeal and Petition for Writ of Mandamus with respect to the Patent Trial and Appeal Board’s (PTAB’s) decisions to institute ROHM Semiconductor USA, Inc.’s petitions for four inter partes review (IPR) proceedings of MaxPower patents. The five-page Order was authored by Judge Reyna over a 17-page partial dissent by Judge O’Malley. The majority first explained that a decision to institute IPR is non-appealable under 35 U.S.C. §314(d), which plainly “confirms the unavailability of jurisdiction” for the CAFC to hear the direct appeals. Section 314(d) also presents a challenge to the mandamus petition, said the court, because MaxPower did not meet the criteria necessary to invoke the “collateral order doctrine.”

On September 1, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the Trademark Trial and Appeal Board’s (TTAB’s) cancellation of a trademark owned by Sweet 16 Musical Properties (Sweet 16), concluding that there is no Appointments Clause issue with the TTAB…. On appeal, Sweet 16 raised a constitutional challenge to the composition of the TTAB panel that decided their case. Sweet 16 argued that the administrative trademark judges (ATJs) who sat on the panel were appointed in violation of the Appointments Clause of Article II of the U.S. Constitution, and therefore the TTAB’s decision must be vacated. The acting Director of the USPTO, as intervenor, asserted that the ATJs were appointed lawfully.