Panel Activity

About once a month we provide an update on activity in important patent cases. In particular, we keep track of patent cases pending before panels of the Federal Circuit, where the cases involve at least one amicus brief. We also keep track of non-patent cases that attract amicus briefs, but only once those cases have been scheduled for oral argument. Finally, we also highlight panel cases we find important. You can find all of these cases in the “Other Cases” section of our blog. Today, with respect to these cases, we highlight two patent cases with new briefing, an argument recap in the only such case argued in April, and three upcoming oral arguments in these cases. Here are the details.

New Briefing

There is activity to report in two patent cases.

In re Boloro Global Ltd.

This case concerns the scope and effect of Arthrex, and in particular whether the Appointments Clause has been violated with respect to ex parte appeals from rejections of patent applications.

In this case the panel has issued two orders. The first order required both parties to submit supplemental briefs addressing “whether Arthrex should be extended to ex parte examination cases.”

In the government’s response, the government argued that “[t]he Court should decline to extend the vacatur remedy announced in Arthrex . . . to this case.” The government contends that “the examination proceedings at issue in these appeals were not addressed in Arthrex.”

In its reply, Boloro argued that “[t]he PTO has never disputed that, in order to address the issue of judicially-excepted subject matter, the APJs in these cases on appeal were acting as principal officers, and that omission should be treated as an admission that the APJs in these ex parte appeals are indeed unconstitutionally appointed principal officers entitling Boloro to a remand.”

On April 13, the court issued a second order posing two additional question:

  1. “Whether the Director’s purported ability to refuse to issue a patent if the Patent Trial and Appeal Board approves an application amounts to sufficient control or review over the Board’s exercise of authority to render them inferior officers?”
  2. “Whether, under the Supreme Court’s reasoning in Freytag v. Commissioner, 501 U.S. 868, 882 (1991) that if the special trial judge in question was ‘an inferior officer for purposes of ‘ some responsibilities, then ‘he is an inferior officer within the meaning of the Appointments Clause and he must be properly appointed,’ can an administrative patent judge’s appointment be unconstitutional with regard to inter partes reviews as was determined in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) and yet constitutional for reviewing initial examination?”

We will continue to monitor this case.

Trimble Inc. v. PerDiemCo LLC

This case concerns the issue of personal jurisdiction in patent cases.

Trimble, the appellant, argued in its opening brief that the Federal Circuit should “overrule [a line of its cases] as imposing rigid, patent-specific rules that are contrary to controlling Supreme Court law and unwarranted by the public-policy justifications cited in [the Federal Circuit’s decision in] Red Wing Shoe.”

An amicus brief was filed in support of Trimble arguing that “Red Wing Shoe makes the choice of forum in patent cases consistently unfair by restricting choice of jurisdiction for declaratory judgment actions.”

Since we last reported on this case, PerDiemCo LLC filed its response brief. In it, PerDiemCo argues that “[the Federal Circuit’s] de novo assessment of the ‘fair play and substantial justice’ prong of the Due Process analysis—reflecting the Supreme Court’s flexible fairness factors, the holdings and policy of Red Wing Shoe, and the defendant’s exceedingly limited, indirect contacts with the forum—should result in affirmance.” Responding to Trimble’s characterization of Red Wing Shoe, PerDiemCo argues that “the holding and policy of Red Wing Shoe are easily incorporated within the Supreme Court’s flexible five factor analysis for assessing whether the assertion of personal jurisdiction would comport with fair play and substantial justice.”

Argument Recap

Since out last report, the Federal Circuit has heard oral argument in one case that attracted an amicus brief, Bio-Rad Laboratories, Inc. v. 10X Genomics Inc. On April 10, the parties presented their arguments concerning literal infringement, infringement under the doctrine of equivalents, claim construction, damages, and injunctive relief. See our argument recap for a summary of the oral argument.

Upcoming Oral Arguments

Three cases attracting amicus briefs will be argued next month. One is a patent case, one a takings case, and one a veterans case. We will provide our argument previews later this month. For now, we identify the issues presented in each appeal.

Uniloc 2017 LLC v. Hulu, LLC

In this case, Uniloc presents the following issue:

  • “The primary issue on appeal is whether the Board erred in denying, based only on a § 101 patent eligibility challenge, Uniloc’s motion to amend the patent in this inter partes review proceeding. Uniloc also respectfully requests that, if the Court determines that the Board may consider a § 101 eligibility challenge in an IPR, Uniloc be given the opportunity on remand to dispute the Board’s substantive determination on § 101, particularly under the PTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).”

Hardy v. United States

In this case, the United States presents the following issues:

  1. “Whether the CFC erred in ruling that a number of deeds for the rail corridor at issue in this case conveyed merely an easement to the railroad where no language in the deeds overcomes the presumption that deeds convey a fee interest under Georgia law. Similarly, whether the CFC erred in ruling that deeds conveying land to the state for a public road conveyed merely an easement, rather than a fee.”
  2.  “Whether the CFC erred in ruling that issuance of a notice providing time to negotiate possible conversion of a right-of-way for interim use as a trail effectuated a physical taking of certain Plaintiffs’ property where the notice did not actually apply to the section of rail line adjacent to those Plaintiffs’ land, where the railroad lacked any intent to abandon this section of rail line, and where trail conversion never occurred.”

Sellers v. Wilkie

In this case, the government presents the following issue:

  • “Whether a claimant’s general statement requesting benefits on a formal claim form that identifies specific disabilities constitutes a claim for all ‘reasonably identifiable’ diagnoses within the claimant’s records.”