Panel Activity

Once a month we provide an update on activity in cases pending before panels of the Federal Circuit where the cases involve at least one amicus brief. Today we highlight recent activity in six such cases. We introduced four of these cases last month in a previous blog post. Of the two new cases, one concerns an attempt to vacate a judgment of non-infringement of a patent in favor of a settlement agreement, and the other questions whether the Patent Trial and Appeal Board may consider eligibility challenges to amended patent claims filed in inter partes review proceedings.

New Briefing

Amgen Inc. v. Watson Laboratories, Inc.

This case involves an attempt by a patent owner to force a district court to vacate its judgment of non-infringement in favor of a consent judgment. Amgen, in its opening brief, urges the court to “recognize that vacatur is appropriate when the party that won below acknowledges that it should not have won.” Amgen argues that settlements that provide for “vacatur of non-infringement judgments and entry of consent judgments of infringement” are crucial to Hatch-Waxman litigation because a “non-infringement judgment” can have “significant collateral consequences.” Specifically, Amgen contends that “earlier Hatch-Waxman litigants that settled” would likely “try to use the non-infringement judgment as a basis for launching infringing sales of their generic products.”

In response, Watson Laboratories and Actavis Pharma argue that, “[i]f the Court declines to reverse the district court’s decision denying vacatur of the judgment of noninfringement . . . and reaches the merits of the noninfringement judgment, it should affirm.” They argue “Watson has not admitted that the generic cinacalcet hydrochloride tablets . . . infringe the patent-in-suit.” Moreover, on the merits of the judgment of non-infringement, they claim that “the district court made no errors in its findings of fact and correctly determined that Watson would not infringe the asserted claims.”

Cipla Limited and Cipla USA filed an amicus brief in support of dismissal or affirmance of the judgment of non-infringement. They argue that “the Court lacks jurisdiction to decide” the case because there is “a binding, in-force settlement agreement between Amgen and Teva.” They argue, anyway, that “[t]o the extent that this Court considers it appropriate to review whether the district court erred in refusing to ‘indicate’ that it would, in the event of a remand . . . , issue a collusive ‘consent judgment’ . . . , the Court should affirm.”

Uniloc 2017 LLC v. Hulu, LLC

This case concerns the Patent Trial and Appeal Board’s ability to consider patent-eligibility challenges under 35 U.S.C. § 101 in an inter partes review proceeding. Uniloc argues in its opening brief that, “under Chevron Step One, the Board’s consideration of patent-eligibility challenges under 35 U.S.C. § 101 in an IPR is precluded by the [America Invents Act], even for proposed substitute claims in a motion to amend.” Further, Uniloc warns that “interpreting the IPR statutes to allow a § 101 challenge” interferes with a patent owners’ right “to propose a narrowing amendment” and “threatens to disrupt the streamlined and focused nature of the IPR adjudication.” Uniloc urges the court to adopt a reading of the IPR statutes that would “not provide for a petitioner to challenge a proposed substitute claim as directed to a judicial exception to eligible subject matter under § 101, or for the Board to consider such a challenge.”

In opposition, the U.S. Patent and Trademark Office, which intervened in the case, argues that “the IPR statute allows [the Board] to determine whether [previously] unexamined claims are patentable—an analysis that includes consideration of § 101 eligibility.” The USPTO relies on the alleged plain language of the AIA, which “requires the Board to assess the ‘patentability’ of such proposed substitute claims” under 35 U.S.C. § 318. Additionally, the USPTO believes that their implementation of the statute qualifies for Chevron deference.

In their response brief, Hulu and Netflix argue that Uniloc’s reading of the AIA “makes no sense” and that the plurality opinion Uniloc relied upon “never articulated the rule Uniloc imagines.” Hulu and Netflix assert that “§ 318(a) requires a decision on patentability, and because no other provision in the AIA limits the scope of that inquiry, the Board properly reached Petitioners’ eligibility challenge to Uniloc’s substitute claims.”

Askeladden filed an amicus brief in support of Hulu and Netflix similarly arguing that “subject-matter eligibility under § 101” falls within § 318 of the AIA. Specifically, Askeladden maintains that § 318 requires the Board to “issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added.” Askeladden argues that reversing the Board’s decision would allow “parties to manipulate the PTO by inserting ineligible claims during an inter partes review that could not have been included (or that were rejected) during the initial prosecution of the patent.”

Conversant Wireless Licensing v. Apple Inc.

We discussed this case, which concerns the enforceability of Conversant’s patent, in a previous blog post. Apple recently filed their response brief arguing that the Court should affirm “that the ’151 patent is unenforceable against products practicing the GPRS standard, including the accused Apple products.” Apple highlights that the Federal Circuit “already determined that Nokia (1) had a duty to disclose the existence of the ’151 patent family when it first proposed Mr. Oksala’s idea for inclusion in the GPRS standard, and (2) breached that duty by waiting more than four years after the deadline to do so.” Further, Apple clarifies that the court “remanded this case for a single, narrow purpose: to have the district court determine in the first instance whether Nokia or Conversant inequitably benefitted from Nokia’s lack of disclosure, or whether Nokia engaged in egregious misconduct when getting its patented invention incorporated into the GPRS standard—either of which would warrant a finding of implied waiver.” In stark contrast to Conversant and Nokia’s claims of no “extra benefit during the standards-setting process,” Apple counters that “Nokia successfully converted the admittedly low-value invention of the ’151 patent into a mandatory requirement for every GPRS handset practicing the standard—itself an unjust (and ongoing) benefit that vastly expanded the scope of potential licensees.”

Upcoming Oral Arguments

In re Google LLC, which as we reported last month raises the question of “[w]hether a defendant who keeps computer equipment in the facility of a third party in a judicial district has a ‘regular and established place of business’ in that district under the patent venue statute,” has been scheduled for oral argument on December 13 at 10:00 a.m. One amicus brief has already been filed in the case. Note that, by court order, “[b]riefs of amici curiae will be entertained on the underlying venue issue, and any such briefs may be filed without leave of court by November 25, 2019.”

Argument Recaps

On November 4 a panel heard oral argument in Network-1 Technologies, Inc. v. Hewlett-Packard Company, a case with one amicus brief. As a reminder, this case involves a dispute regarding the correct application of 35 U.S.C. § 315(e)(2), which prohibits a petitioner in an inter partes review that results in a final written decision from asserting in a patent infringement case that a patent claim is invalid on any ground that the petitioner “raised or reasonably could have raised during that inter partes review.” Our argument recap for this case can be found here.

Judgments and Settlements

Power Integrations, Inc. v. Fairchild Semiconductor International, Inc. settled on October 22, which resulted in its dismissal. This case, which also involved one amicus brief, presented the question of whether foreign lost profits may be recovered when patent infringement is proven under 35 U.S.C. § 271(a). Our discussion of the unanswered issues raised in the case can be found here.