Today the Federal Circuit issued one precedential opinion in a patent case, a precedential and a related nonprecedential opinion finding a lack of jurisdiction, and another nonprecedential opinion in a patent case. Here are the introductions to the opinions.

Intra-Cellular Therapies, Inc. v. Iancu (Precedential)

Intra-Cellular Therapies, Inc. (Intra-Cellular) appeals the summary judgment decision of the United States District Court for the Eastern District of Virginia affirming the patent term adjustment (PTA) determination made by the United States Patent and Trademark Office (Patent Office). During prosecution of Intra-Cellular’s patent appli- cation, the Patent Office issued a final Office action rejecting some claims and objecting to the others. A final Office action, as opposed to a non-final Office action, marks the end of formal prosecution of an application. On the three-month deadline for responding to the final Office action, Intra-Cellular filed its first response. While timely, this initial response continued to argue the merits of the examiner’s final rejections and failed to comply with the Patent Office’s regulatory requirements for what constitutes a proper “reply” to a final Office action. For that reason, the Patent Office concluded that Intra-Cellular’s first response did not prevent the accrual of applicant delay for purposes of calculating PTA for the resulting patent. Twenty-one days after filing its unsuccessful first response, Intra-Cellular tried again by filing a second response. This time, Intra-Cellular successfully overcame all outstanding rejections and objections. Adopting all of the examiner’s suggestions, the second response capitulated to all of the examiner’s rulings by canceling or amending every rejected or objected to claim based on the examiner’s positions. As a result of these amendments, the Patent Office issued a Notice of Allowance and concluded that this second response stopped the accrual of any further applicant delay. In calculating PTA, the Patent Office determined that the extra 21 days it took Intra-Cellular to file a successful response after the three-month deadline for responding to the final Office action constituted applicant delay. Because we find that determination of applicant delay was based on a permissible interpretation of statute and proper reading of the regulations, we affirm the district court’s grant of summary judgment in favor of the Patent Office.

Inspired Development Group v. Inspired Products Group, LLC (Precedential)

Appellant Inspired Development Group, LLC (“Inspired Development”) sued Appellee Inspired Products Group, LLC, d/b/a KidsEmbrace, LLC (“KidsEmbrace”) for breach of contract and other related state law claims in federal district court on the basis of diversity jurisdiction under 28 U.S.C. § 1332(a). The district court granted summary judgment in KidsEmbrace’s favor on certain claims and Inspired Development appealed to the U.S. Court of Appeals for the Eleventh Circuit. After the Eleventh Circuit discovered that diversity jurisdiction did not exist, the district court concluded on remand that it retained jurisdiction over the suit based on federal question jurisdiction. The Eleventh Circuit transferred the case to this court to determine whether the parties’ claims “aris[e] under” the patent laws pursuant to 28 U.S.C. § 1338(a). For the reasons below, we vacate and remand for dismissal of the lawsuit for lack of jurisdiction.

Innovative Memory Systems, Inc. v. Micron Technology, Inc. (Nonprecedential)

Innovative Memory Systems, Inc. appeals a decision of the Patent Trial and Appeal Board in an inter partes review proceeding determining that claims 8–10 of the challenged patent were unpatentable as obvious. Because the Board did not err in concluding that the challenged claims are un-patentable, we affirm.

Inspired Development Group v. Inspired Products Group, LLC (Nonprecedential)

Based on our holding in Inspired Development Group, LLC v. Inspired Products Group, LLC, 2018-1616 (Fed. Cir. Sept. 18, 2019), that the district court lacked subject matter jurisdiction over the case underlying that appeal and this appeal, we vacate the district court’s judgment awarding attorneys’ fees.