This morning the Federal Circuit issued three precedential opinions in patent cases and one nonprecedential order in a patent case. Here are the introductions to the opinions and the text of the order.

Personalized Media v. Apple Inc. (Precedential)

Personalized Media Communications, LLC (PMC) appeals from the final written decision of the Patent Trial and Appeal Board holding certain claims of U.S. Patent No. 8,191,091 unpatentable on anticipation and obviousness grounds. PMC specifically challenges certain claim constructions underpinning the Board’s anticipation and obviousness determinations. Because we agree that the Board erred in construing one of the claim terms at issue, we reverse the Board’s decision as to the applicable claims. We affirm the Board’s decision as to the remaining claims.

Kaken Pharmaceutical Co. v. Iancu (Precedential)

U.S. Patent No. 7,214,506 describes and claims methods for topically treating fungal infections in human nails. The parties here treat Kaken Pharmaceutical Co. and Bausch Health Companies Inc. (together, Kaken) as the patent owner. Acrux Limited and Acrux DDS Pty. Ltd. (together, Acrux), which no longer are parties to this proceeding, successfully sought an inter partes review of all claims of the ’506 patent under 35 U.S.C. § 311–319. The Patent Trial and Appeal Board of the Patent and Trademark Office ultimately determined that all claims of the ’506 patent are unpatentable for obviousness. Acrux DDS Pty. Ltd. v. Kaken Pharm. Co., Ltd., No. IPR2017- 00190, 2018 WL 2761408 (P.T.A.B. June 6, 2018).

Kaken appeals. The Director of the Patent and Trademark Office, who intervened after Acrux withdrew, defends the Board’s decision. We agree with Kaken on its principal contention—that the Board erred in its claim construction of one claim limitation. Because the Board’s obviousness analysis materially relied on its erroneous claim construction, we cannot affirm the Board’s unpatentability determination. We reverse the claim construction, vacate the Board’s decision, and remand the matter to the Board.

Communications Test Design, Inc. v. Contec, LLC (Precedential)

Communications Test Design, Inc. (“CTDI”) filed suit in the United States District Court for the Eastern District of Pennsylvania, seeking declaratory judgment that its test systems do not infringe two of Contec, LLC’s patents (“the Pennsylvania action”). Six days later, Contec sued CTDI for patent infringement in the United States District Court for the Northern District of New York (“the New York action”). Contec moved to dismiss the Pennsylvania action, arguing that CTDI’s anticipatory filing was made in bad faith during active licensing discussions. The district court granted the motion, exercising its discretion to decline jurisdiction over CTDI’s declaratory judgment action. Commc’ns Test Design, Inc. v. Contec LLC, 367 F. Supp. 3d 350, 360 (E.D. Pa. 2019). In doing so, the court found that equitable considerations warranted departure from the first-to-file rule. CTDI appeals the district court’s dismissal of the Pennsylvania action. Because we conclude that the district court did not abuse the broad discretion accorded to it—both under the Declaratory Judgment Act, 28 U.S.C. § 2201(a) and pursuant to the first-to-file rule—we affirm.

IYM Technologies LLC v. RPX Corp. (Nonprecedential Order)

RPX Corporation petitioned for inter partes review of claims of 1–11, 13, and 14 of U.S. Patent 7,448,012, owned by IYM Technologies LLC. After that review, the Patent Trial and Appeal Board (“the Board”) held that claims 1–9, 11, 13, and 14 of the ’012 patent are unpatentable. See RPX Corp. v. IYM Techs. LLC, No. IPR2017-01888 (PTAB March 6, 2019). IYM appeals.

In a separate appeal, we recently affirmed a decision by the Board holding claims 1–14 of the same ’012 patent unpatentable. IYM Techs. LLC v. RPX Corp., No. 19-1761 (Fed. Cir. March 9, 2020).


Accordingly, this appeal is dismissed as moot in light of our affirmance in IYM Techs. LLC v. RPX Corp., No. 19- 1761 (Fed. Cir. March 9, 2020), which invalidated all of the claims at issue in this appeal.