The following telephone arguments will be available to the public live. Access information will be available by 9 AM ET each day of argument at: http://www.cafc.uscourts.gov/public-access-arguments.
Monday, November 2, 2020
Koninklijke Philips N.V. v. Iancu, No. 19-2040
Philips asserted U.S. Patent No. 6,690,387 against Acer and Asus. Microsoft intervened to indemnify its customers, Acer and Asus. The accused products used Google's Android software, and Google filed two inter partes review (“IPR”) petitions against the '387 patent. Microsoft also filed two IPR petitions against the patent, one of which is at issue in the current appeal. In instituting IPR based on Microsoft's petition, the Patent Trial and Appeal Board (“PTAB”) analyzed 35 U.S.C. § 314 and the related General Plastic factors and determined that discretionary denial was not warranted, heavily relying on the first General Plastic Industrial v. Canon factor. Specifically, the PTAB found a common interest between Microsoft, Google, Acer, and Asus. However, it determined that Microsoft was still a distinct party and, thus, not precluded based on being “the same petitioner.” The PTAB also initially instituted a review of some, but not all of the challenged claims. However, after the Supreme Court's decision in SAS Institute, the Board modified its institution decision to include all challenged claims. Philips did not seek a rehearing of the original or modified institution decisions, argue against the institution decisions in its patent owner response or oral hearing, or seek reconsideration of the final written decision after a PTAB precedential decision in Valve that clarified that the first General Plastic factor “is not limited solely to instances when multiple petitions are filed by the same petitioner.” In its final written decision, the PTAB invalidated all claims of the '387 patent.
On appeal, Philips argues that the PTAB acted arbitrarily and violated its due process rights under the Fifth Amendment by failing to appropriately apply legal precedent, or alternatively, a change in policy purported by the precedential Valve v. Electronic Scripting Products decision. The Valve decision, Philips explains, supports the argument that Microsoft's petition should be denied under § 314 as a follow-on petition because Microsoft shared the same interest as Google, who had previously filed two petitions against the same patent. The USPTO counters, arguing that the Board's institution decision under § 314(d) is committed to the agency's discretion and unreviewable. Regardless, the USPTO argues that Philips waived any argument under Valve by not raising the issue to the PTAB. Even if the Court would considered the argument, the USPTO asserts, the PTAB did not abuse its discretion because (i) neither General Plastic nor Valve requires the PTAB to consider a second petitioner's relationship with the first petitioner's real party in interest. The USPTO further asserts that even if the PTAB must consider the relationship, (ii) it was not proven that any relationship between Google and Microsoft was sufficient to deny institution given that Philips allegedly did not prove coordination between or representation of the same interest by Microsoft and Google. Philips rebuts, arguing that the PTAB legally erred in determining that General Plastic factors six and seven, directed toward the finite resources of the PTAB, were not relevant—contradicting the Valve decision, which established a general rule that follow-on petitions submitted at different times are “inefficient and tend[]s to waste resources.”
Tuesday, November 3, 2020
U.S.A. Dawgs, Inc. v. Crocs, Inc., No. 20-1167
The PTAB reversed an examiner's anticipation rejection in a reexamination that was based on a collection of printouts from Crocs's own website. During the pendency of this proceeding, U.S.A Dawgs filed for bankruptcy and, after all briefing was completed at the PTAB, was sold to a private equity firm that subsequently sold to Mojave Desert Holdings, LLC rights to all claims against Crocs. The PTAB rejected Mojave's request to participate in the oral argument and to substitute for U.S.A. Dawgs as untimely because it had not demonstrated that U.S.A. Dawgs's reexamination rights transferred to the private equity firm.
On appeal, Crocs first asserts that U.S.A. Dawgs and Mojave lack Article III standing because neither U.S.A. Dawgs nor Mojave has shown that they are engaged in, or have any plans to engage in, business activities related to U.S. Design Patent No. D517,789. Mojave rebuts, noting standing is conferred based on its interests in a related district court litigation and a potential offset of liability. Further, Crocs argues that the Federal Circuit's holding in Agilent Technologies. v. Waters Technologies, supports its argument that Mojave is merely in privy with U.S.A. Dawgs, or at most a successor-in-interest, neither of which requires the PTAB to grant Mojave's request for substitution. However, Mojave claims that the private equity firm received all of U.S.A. Dawgs's assets, which include the reexamination rights, and that it is situated differently than the party at issue in Agilent.
Wednesday, November 4, 2020
Fast 101 Pty Ltd. v. Citigroup Inc., No. 20-1458
In September of 2019, Fast 101 asserted five patents against Citigroup that allegedly improve the process of settling invoices and making payment. In response, Citigroup filed a Rule 12(b)(6) motion to dismiss on 35 U.S.C. § 101 grounds. Even though with its opposition to the motion, Fast 101 filed a contingent request to amend its complaint, the district court simply granted Citigroup's motion without oral argument. The district court first held that the asserted patents are directed to the abstract idea of “calculating an amount based on fiscal attributes” and do not contain an inventive concept because they merely “provid[e] a discount based on early payment and a customer's credit rating.” As rationale to not grant Fast 101's request to amend, the district court explained that any amendment “would be futile where the claims describe the implementation of a business transaction using conventional computer technology.”
In this appeal, Fast 101 argues that the asserted patents are not directed to an abstract idea but instead a novel incentive-based invoicing system with a specially-designed and unique payment gateway. Citigroup disagrees—noting that the asserted patents merely recite results-oriented functionality regarding the fundamental economic practice of intermediated settling. Fast 101 further asserts that the district court's denial of leave to amend its complaint was in error and not adequately supported, as evidenced by the mere four lines the district court devoted to the issue. This allegedly prevented Fast 101 from presenting additional factual allegations to bolster its complaint. Citigroup rebuts, highlighting the allegedly conclusory statements in the complaint that parrot the legal language of the 101 inquiry rather than recite factual allegations as support for the district court's decision.
Thursday, November 5, 2020
Par Pharmaceutical, Inc. v. Hospira, Inc., No. 20-1273
Par asserted two Orange-Book-listed patents covering Adrenalin® against Hospira's generic copy. The three elements of the patents-in-suit at issue recite “about 6 to 8 mg/mL of a tonicity regulating agent,” “about 0.001 to 0.010 mL/mL of a pH lowering agent,” and “about 0.01 to 0.4 mg/mL of a transition metal complexing agent.” During the district court proceeding, the parties stipulated that “about” in the claims is afforded its plain and ordinary meaning in this case, i.e., approximately. Hospira argued that its product does not infringe because, according to Hospira, (i) the tonicity regulating agent is consistently at 9.0 mg/mL, (ii) the pH lowering agent, at 0.00035 mL/mL, is well below the claimed range, and (iii) no transition metal complexing agent exists. The district court concluded that Hospira's product infringe the asserted claims.
Hospira asserts on appeal that the district court erred in finding infringement. First, Hospira asserts that the district court erred in applying the claim term “about” by performing what Hospira calls “a wholly functional analysis” that, according to Hospira, “eliminated any numerical limitation” and “ignored the technologic and stylistic context.” Par asserts that Hospira relies on improper claim construction arguments that were waived by stipulation and that the district court correctly considered “about” based on the purpose and function stated in the intrinsic record. Hospira further argues that the district court limited the infringement inquiry to Par's Abbreviated New Drug Application alone, instead of centering the analysis around Par's accused product that Par alleges is likely to be sold. Hospira points specifically to the testing of representative batches of Hospira's product that, according to Hospira, did not show the claimed range of a transition metal complexing agent. Par disagrees with Hospira's argument, contending that the tested batches were expired, non-representative, and not submitted for appropriate consideration to the district court. Hospira also questions the district court's judgment of infringement as to the last claim element at issue. Par responds that the district court provided extensive findings that Hospira's product meets this element.
Originally published by Finnegan, November 2020
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