United States: Spotlight On Upcoming Oral Arguments – December 2017

Monday, December 4, 2017

Ariosa Diagnostics, Inc. v. Illumina, Inc. No. 16-2388, Courtroom 203

Ariosa appeals from a PTAB decision denying Ariosa's IPR petition and upholding the validity of Illumina's '794 patent.  In reaching its decision, the PTAB found that Ariosa failed to establish that the asserted reference qualified as § 102(e) invalidating prior art under the standard set forth in Dynamic Drinkware LLC v. National Graphics, Inc.  Ariosa argues that the PTAB improperly extended Dynamic Drinkware to published patent applications, and that a published application qualifies as prior art for all it discloses, and that a published application is entitled to a prior art date as of the earliest application in the chain containing the relevant disclosure.  Illumina argues that the PTAB correctly interpreted Dynamic Drinkware to require that § 119(e)(1) must be satisfied for prior art pursuant to § 102(e) to gain the earlier filing date of a provisional application.  Illumina further argues that the PTAB correctly interpreted § 119(e)(1) to require the patent challenger establish that the claims, not merely the disclosure, of the § 102(e) reference be supported by the provisional application in order to receive the benefit of the provisional filing date.

Tuesday, December 5, 2017

Momenta Pharmaceuticals, Inc. v. Bristol-Myers Squibb Company, No. 17-1694, Courtroom 203

In this appeal, the Federal Circuit will consider whether a third-party petitioner in an IPR proceeding can establish Article III standing to appeal the PTAB's decision to the Federal Circuit.  BMS argues that Momenta lacks standing to appeal because it has not suffered a concrete and particularized injury from the agency decision since Momenta does not currently market a product within the scope of the patent claims nor has it filed an application with the FDA for such a product.  Momenta argues that the burden for establishing injury-in-fact is low, and serves only to distinguish a person with a direct stake in the outcome of the litigation.  Momenta argues that it has standing to appeal because Momenta has concrete plans to pursue regulatory approval and the PTAB's decision causes it concrete economic harm by forcing Momenta to alter its business plan to pursue alternative options or expose itself to risk of a future infringement suit.

Thursday, December 7, 2017

Jack Henry & Associates, Inc. v. Plano Encryption Technologies, No. 16-2700, Courtroom 201

This appeal arises from a Northern District of Texas decision granting Plano Encryption Technologies' ("PET") motion to dismiss for improper venue under 28 U.S.C. § 1391.  Jack Henry argues that the Federal Circuit decision in Red Wing Shoe v. Hockerson-Halberstadt, Inc., which held that contacts created through licensing attempts cannot form the basis of personal jurisdiction, is outdated and allows non-practicing entities, whose sole business is licensing patents, uneven control over venue.  PET argues that the mere sending of notices to a forum regarding intellectual property rights does not constitute sufficient contact with that forum to establish personal jurisdiction.

Oracle America, Inc. v. Google Inc., No. 17-1118, Courtroom 201

This appeal arises from a Northern District of California decision finding that Google's copying of Oracle's Java code into its Android operating system constituted fair use.  Oracle argues that Google copied "the heart of Java" for commercial gain and repackaged it for another platform without altering the fundamental expressive purpose of the original work.  Google argues that its use of a "miniscule percentage" of Java was consistent with industry custom.  Google further argues that its work was "transformative" because it altered the original work to enable it to be used in a new context, the Android platform for smartphones, thus the fact that it serves the same purpose is irrelevant. 

Monday, December 11, 2017

Core Wireless Licensing v. LG Electronics, Inc.., No. 16-2684, Courtroom 402

Core appeals from an Eastern District of Texas decision holding that the asserted claims directed to a user interface for computing devices that use an "application summary window" are patent-eligible under 35 U.S.C. § 101.  Core argues that the claims are directed to an abstract idea—namely, an index—and is not inventive as it only calls for the index to be applied to a computing device with a display screen.  LG argues that the claimed invention improves upon a graphical user interface and provides specific solutions to specific problems.  LG further argues that the mere use of existing computing hardware does not render claims patent-ineligible if those components are brought together in an unconventional way.

Wednesday, December 13, 2017

ATI Technologies ULC v. Matal, No. 16-2222, Courtroom 201

In this appeal, the Federal Circuit has been asked to review a PTAB decision finding that ATI failed to establish actual reduction to practice, and thus could not antedate the asserted references.  ATI argues that the PTAB misapplied the standard for demonstrating actual reduction to practice by requiring creation of a functioning computer chip, instead of an embodiment that meets all the claimed limitations.  ATI further argues that the PTAB erred in requiring proof of specific test inputs and outputs relating to commercialization, when only proof that the invention worked for its intended use is required.  LG argues that the RTL model, which is only a behavioral model that describes the chip's function, is not sufficient to establish actual reduction to practice.  LG further argues that even if the RTL model was sufficient, ATI nevertheless could not establish actual reduction to practice because ATI failed to establish that the model would work for its intended purpose as significant design work was needed to make the RTL model into a useful blueprint.

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Events from this Firm
26 Sep 2018, Webinar, Washington, DC, United States

This latest series of webinars will explore emerging trends in the changing intellectual property (IP) legal environment in Europe and the United States.

26 Sep 2018, Webinar, Washington, DC, United States

This latest series of webinars will explore emerging trends in the changing intellectual property (IP) legal environment in Europe and the United States.

1 Oct 2018, Seminar, New York, United States

Finnegan partner Doug Rettew will consider recent Internet Corporation for Assigned Names and Numbers (ICANN) developments during Practicing Law Institute’s Intellectual Property Institute.

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