This morning the Federal Circuit issued a precedential opinion in a patent case, a nonprecedential order granting a request to re-issue a nonprecedential order as a precedential order, the re-issued precedential order denying a motion to vacate and remand in light of Arthrex, and another nonprecedential order in a patent case denying a petition for a writ of mandamus related to a motion to transfer. Here is the introduction to the opinion and relevant text from the orders.

Uber Technologies, Inc. v. X One, Inc. (Precedential)

Uber Technologies, Inc. (“Uber”) appeals from a final written decision of the Patent Trial and Appeal Board (“Board”) finding claims 1, 2, 5, 6, 9, and 19 of U.S. Patent No. 8,798,593 (“the ’593 patent”) not unpatentable as obvious. Uber Techs., Inc. v. X One, Inc., No. IPR2017-01255, Paper No. 41 (PTAB Oct. 12, 2018) (“Final Written Decision”). The Board’s conclusion was based on its determination that the asserted prior art does not render obvious the limitation “software . . . to transmit the map with plotted locations to the first individual.” Because the Board’s decision incorrectly applied the relevant legal principles, we reverse the Board’s non-obviousness determination as to this limitation, and remand for the Board to analyze the remaining limitations of the challenged claims in the first instance.

Ciena Corporation v. Oyster Optics, LLC (Nonprecedential Order)

The Director of the United States Patent and Trademark Office requests to reissue the court’s nonprecedential order, dated January 28, 2020, as precedential.

Upon consideration thereof,


The request is granted. The precedential order issues concurrently herewith.

Ciena Corporation v. Oyster Optics, LLC (Precedential Order)

Ciena Corporation (“Ciena”) moves to vacate and remand for further proceedings in light of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). Oyster Optics, LLC (“Oyster”) and the Director of the United States Patent and Trademark Office oppose the motion. For the reasons explained here, the motion is DENIED.

In re Apple (Nonprecedential Order)

Apple Inc. petitions for a writ of mandamus asking this court to direct the United States District Court for the Eastern District of Texas to transfer this case to the North- ern District of California. Maxell, Ltd. opposes.

Applying law of the United States Court of Appeals for the Fifth Circuit in cases arising from district courts in that circuit, this court has held that mandamus may be used to correct a patently erroneous denial of transfer. That standard is an exacting one, requiring the petitioner to establish that the district court’s decision amounted to a failure to meaningfully consider the merits of the transfer motion. See, e.g., In re Nintendo Co., 589 F.3d 1194 (Fed. Cir. 2009); In re Hoffmann-La Roche Inc., 587 F.3d 1333 (Fed. Cir. 2009); In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009); In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008); In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008) (en banc). We are unable to say here that Apple has met that standard.

We cannot say that the district court clearly abused its discretion in concluding that the forum selection clause did not compel transfer here.

NEWMAN, Circuit Judge, dissenting.

* * *

The integrity of contracts is the foundation of commerce. Here the contract is between two competent commercial entities, Apple and Maxell’s parent Hitachi. There is no representation of any impropriety in the 2011 Agreement. The judicial obligation is to enforce such contracts. From my colleagues’ denial of the petition for transfer, I respectfully dissent.