Monday, March 4, 2024, 10:00 A.M.
Packet Intelligence LLC v. NetScout Systems, Inc., No. 22-2064, Courtroom 402, Panel B
Packet Intelligence LLC ("Packet Intelligence") asserted U.S. Patent No. 6,954,789 ("the '789 patent") against NetScout Systems, Inc. ("NetScout"), and won a jury trial in 2017. After the district court entered a final judgment, NetScout appealed in 2020. The Federal Circuit affirmed most aspects, but reversed and remanded to the district court on pre-suit damages. Subsequently, the Court denied rehearing and review en banc in October 2020. The Supreme Court denied certiorari. The district court eventually issued an Amended Final Judgment in May 2022, following the Federal Circuit's mandate. Meanwhile, the Patent Trial and Appeal Board ("the Board") instituted inter partes review ("IPR") in September 2020 based on petitions filed by a third party, and invalidated the '789 patent in September 2021. Packet Intelligence appealed the IPR decision to the Federal Circuit (the "PTAB Appeal"). Following the IPR decision, NetScout sought to dismiss or stay the district court proceedings on remand in view of the IPR decision, which the district court denied. NetScout appealed to the Federal Circuit, arguing that the pending PTAB Appeal will determine the outcome of the damage dispute. NetScout argues that if the Federal Circuit affirms the PTAB's decision of invalidity, Packet Intelligence cannot collect monetary damages. Alternatively, if this Court remands to the PTAB, then the present case should be stayed to simplify the issues. Packet Intelligence argues that the damage dispute is a post-appeal proceeding, and that the Federal Circuit already affirmed damages in the prior appeal. Additionally, Packet Intelligence argues that because NetScout is not a party in the PTAB Appeal, it is within the district court's discretion to deny NetScout's motion to stay.
Monday, March 4, 2024, 10:00 A.M.
Celanese International Corporation v. ITC, No. 22-1827, Courtroom 203, Panel C
Celanese International Corporation ("Celanese") filed a section 337 complaint at the International Trade Commission ("ITC") based on the Intervenors' importation of certain high-potency sweeteners, alleging that the Intervenors' process for making the sweeteners infringed Celanese's three U.S. patents. Each asserted patent claims an improved method for making an artificial sweetener. During prosecution, Celanese disclosed to the U.S. Patent and Trademark Office ("PTO") that the claimed process for making the sweetener had been in secret use in Europe and that the sweetener had been exported and sold in the United States for more than one year before the filing dates. The ITC granted Intervenors' motion for summary determination, holding that Celanese's sales of products made by its secret process invalidated the patent claims on that process under the on-sale provision of the America Invents Act ("AIA") § 102(a)(1). Celanese appealed to the Federal Circuit, arguing that the AIA's on-sale provision requires the "claimed invention" itself, not a product made by using the claimed invention, to be "on sale." Celanese argues that the Congress made a deliberate choice in the AIA not to cover sales of the end results of a patented process. Celanese contends that the Supreme Court in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S. Ct. 628 (2019), determined that an invention is "on sale" when it is the subject of a commercial offer for sale. Celanese argues that because the process for making the high-potency sweetener was never the subject of a commercial offer for sale, a secret use of the process does not bar its patentability. The ITC contends that it is well settled pre-AIA that a patentee's sale of an unpatented product made according to a secret method triggered the on-sale bar to patentability and that the Supreme Court in Helsinn did not change the meaning of the on-sale bar.
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