United States: Spotlight on Upcoming Oral Arguments - June 2017

In Re NFC Technology, No. 16-1808, Courtroom 201

In this appeal from the PTAB, the Federal Circuit will address whether the Board exceeded its authority in an inter partes review by sua sponte raising a conception/lack of inurement defense on behalf of Petitioner HTC.  Patent owner NFCT argues that the Board's actions deprived NFCT of the opportunity to respond to the inurement defense prior to the Board issuing its final written decision.  The PTO argues that NFCT raised the issue of conception and that the Board's analysis of the issue was not restricted to the rebuttal arguments raised by HTC in its Reply.

AIA America v. Avid Radiopharmaceuticals, No. 16-2647; AIA America v. Eli Lilly, No. 16-2094, Courtroom 201

AIA America appeals awards of attorneys' fees by the Eastern District of Pennsylvania and the Northern District of California in these companion appeals.  In AIA v. Avid, AIA America argues that the district court failed to consider the "totality of the circumstances" in making its exceptional case determination because the issues of intent, state of mind, and culpability were not put before the jury.  Avid argues that AIA had no right to a jury finding on these issues as the exceptional case determination is left to the discretion of the court.  In AIA America v. Eli Lilly, AIA America argues that collateral estoppel is improper as it was not given a full and fair opportunity to litigate the intent, state of mind, and culpability issues in Avid.  Lilly argues that collateral estoppel is proper as the court in Avid acted within its discretion in making the findings of fact to support its exceptional case determination.

Tuesday, June 6, 2017

Amgen v. Sanofi, No. 17-1480, Courtroom 402

Sanofi appeals a District of Delaware order granting a permanent injunction.  Sanofi argues that the court abused its discretion by excluding post-priority-date evidence, which it contends would show that Amgen's patents fail to satisfy the written description requirement.  Amgen argues that the evidence was properly excluded because written description and enablement are judged based on the state of the art at the time of the priority date.

Wednesday, June 7, 2017

Prism Technologies v. T-Mobile USA, No. 16-2031, Courtroom 402

T-Mobile appeals a District of Nebraska decision finding the asserted claims patent eligible under § 101.  T-Mobile argues that the asserted claims are patent ineligible because the claims are directed to the abstract idea of controlling access to protected resources using a general purpose computer.  Prism argues that its claims include concrete, non-generic limitations and are an "improvement over the current technology."  Prism notes that the district court's holding was based on a finding that the asserted claims do not implement generic practices, but instead modify the function of the computer networks to solve the identified problem.

PLL Technologies v. Xilinx, No. 16-2219, Courtroom 402

In this appeal from the PTAB, the Federal Circuit will determine whether the Board violated the APA by its actions in the lower proceedings.  PLL argues that it was denied a full and fair opportunity to respond to new arguments and evidence raised in the Xilinx's Reply when the Board prohibited PLL from filing a sur-reply.  In response, Xilinx argues that its Reply properly responded to arguments raised by PLL and that PLL was able to "respond" to Xilinx's Reply by, for example, deposing and cross-examining Xilinx's expert and rebutting Xilinx's arguments at the oral hearing.

Thursday, June 8, 2017

Nidec Motor Corp. v. Broad Ocean Motor, 16-2321, Courtroom 201

In this appeal from the PTAB, Nidec challenges the Board's application of the § 315(c) Joinder Provision as an exception to the § 315(b) Time-Bar Provision.  Under 35 U.S.C. § 315(c), the Board allowed Broad Ocean to join its own, already pending IPR.  Nidec argues that the Board improperly allowed Broad Ocean to use § 315(c) to circumvent § 315(b) and present otherwise time-barred arguments.  Broad Ocean and the PTO argue that the Board's decision is not appealable under § 314(d).  Alternatively, they argue that § 315(c) permits the joinder of any party who files a petition under § 311, including a party to an earlier instituted IPR.

*Kate Leonard is a Summer Associate at Finnegan.

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