Argument Recap

Argument Recap – Conversant Wireless Licensing v. Apple Inc.

Earlier this week the Federal Circuit heard oral argument in Conversant Wireless Licensing v. Apple Inc., a case we have been following because it attracted amicus briefs. In this case, the court addressed a district court’s holding that Conversant’s ’151 patent is unenforceable because Nokia, the original patentee, made an untimely disclosure of the patent to the ETSI standards setting body. On appeal, Conversant argues that implied waiver of enforceability requires proof of but-for causation that Conversant inequitably benefited from the untimely disclosure. Judges Reyna and Bryson heard the oral argument, and a third unnamed judge will join the panel later for deliberation and final judgment. This is our argument recap.

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Opinions

Opinions & Orders – August 7, 2020

This morning the Federal Circuit issued a precedential opinion in a government contracts case and a nonprecedential opinion in a case appealed from the Merit Systems Protection Board. Here are the introductions to the opinions.

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En Banc Activity / Featured / Opinions / Panel Activity / Petitions

Guest Post – American Axle Relies Upon Misreading of Old Precedent to Create New Law

Jeffrey A. Lefstin serves as a Professor of Law at the University of California, Hastings College of the Law. Prior to serving as a professor, he clerked for Federal Circuit Judge Raymond C. Clevenger III. Prof. Lefstin holds a Ph.D. in Biochemistry from the University of California San Francisco and a J.D. from Stanford Law School. He has written extensively and testified before Congress concerning the doctrine of patent eligibility.

Though described by the majority as “narrow,” the American Axle v. Neapco panel opinion sets forth two far-reaching expansions in the law of patent eligibility. First, the panel opinion holds that a patentee’s alleged failure to describe how to implement an invention defined by a claim renders the claim ineligible under § 101—without needing to resort to the factual inquiries associated with the written description or enablement requirements of § 112. Second, the panel opinion holds that a claim may be “directed to” an ineligible law of nature in step one of the Mayo/Alice inquiry, even though neither the claim nor the specification recites it directly.

Authority for the first proposition is said to be the “O’Reilly test” for patent eligibility articulated by the Supreme Court in O’Reilly v. Morse in 1854.[1] That case, however, represented a conventional application of the statutory disclosure requirements now lodged in § 112, as I explain in detail below. As authority for the second proposition, the revised panel opinion invokes Neilson v. Harford, the famous case on James Neilson’s hot-blast patent, decided by the Court of Exchequer in 1841. But, again, in seeking to force the American Axle claims into the mold of the Mayo/Alice test,

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News

Recent News on the Federal Circuit

Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today’s report highlights an article summarizing a recent decision in a pharmaceutical case, commentary on a recent opinion addressing a bid challenge, and news concerning FanDuel’s challenge to a patent claiming a remote gambling system.

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Opinions / Panel Activity

Opinion Summary – Bio-Rad Laboratories, Inc. v. 10X Genomics Inc.

On Monday, the Federal Circuit issued its opinion in Bio-Rad Laboratories, Inc. v. 10X Genomics Inc., a case we have been tracking because it attracted an amicus brief. In the opinion, the panel composed of Judges Newman, O’Malley, and Taranto unanimously affirmed a district court’s judgment of liability for infringement of a patent. The panel, however, also reversed the district court’s construction of asserted claims in two other patents and vacated the judgment of infringement of those patents. Finally, the panel also vacated the district court’s grant of a permanent injunction, but only with respect to certain product lines. Here is a summary of the opinion.

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Opinions

Opinions & Orders – August 6, 2020

This morning the Federal Circuit issued a precedential opinion in Little Tucker Act case; four nonprecedential opinions in a case concerning the jurisdiction of the Court of Federal Claims, an MSPB case, a veterans case, and a patent case; and a Rule 36 summary affirmance. Here are the introductions to the opinions and the Rule 36 judgment.

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Supreme Court Activity

Recent Supreme Court Activity

This post summarizes recent activity at the Supreme Court in cases decided by the Federal Circuit.

Here are the details.

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Opinions

Opinion Summary – Takeda Pharmaceuticals U.S.A v. Mylan Pharmaceuticals Inc.

Last Friday, the Federal Circuit filed opinions in two related cases that attracted amicus briefs, Takeda Pharmaceuticals U.S.A. v. Mylan Pharmaceuticals Inc. and Takeda Pharmaceuticals U.S.A. v. Alkem Laboratories Limited. In both cases, Judges Prost and Hughes affirmed the district court’s decision denying Takeda’s request for a preliminary injunction. Judge Newman dissented in both cases. Here is a summary of the opinions.

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Opinions

Opinions & Orders – August 5, 2020

This morning the Federal Circuit issued a precedential order sua sponte granting en banc rehearing in a veterans case, as well as four nonprecedential opinions in cases addressing the jurisdiction of the Court of Federal Claims, patent law, trademark law, and the jurisdiction of the Merit Systems Protection Board. Here is text from today’s order and the introductions of the opinions.

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En Banc Activity / Petitions

Recent En Banc Activity

Here is an update on recent en banc activity at the Federal Circuit. Highlights include modified opinions issued in two patent cases raising questions related to eligibility; new petitions filed in two cases raising questions related to obviousness; a new invitation to respond to a petition raising questions related to venue; and the denial of petitions in cases raising questions related to jurisdiction over an appeal from the Patent Trial and Appeal Board, restriction requirements, and patent term adjustments. Here are the details.

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