Here’s the latest.

Federal Circuit Indefinitely Suspends In-Person Oral Arguments

Reported on

Early this week, the Federal Circuit announced it would not be hearing oral arguments “until further notice.” This new policy replaces the Federal Circuit’s previous month-to-month evaluation of the viability of hearing oral arguments amidst the global COVID-19 pandemic. Lawyer Monthly further explained the Federal Circuit’s decision by reporting the following:

In a statement on the move, Chief Circuit Judge Sharon Prost said that it was made ‘in the interest of providing greater predictability‘ for attorneys, who until now have been forced to await the Federal Circuit’s monthly announcements.

Federal Circuit Urged To End ‘Unrealistic’ Obviousness Test

Reported by Tiffany Hu on

In their amicus brief regarding the case Amarin Pharma Inc. et al. v. Hikma Pharmaceuticals USA Inc. et al., currently pending in the Federal Circuit, the Biotechnology Innovation Association called for the Federal Circuit “to get rid of or clarify its “prima facie framework” for evaluating obviousness. . . .” The author further explained:

By looking at the evidence separately, this approach creates the risk of hindsight bias and ’tilts the scales in favor of obviousness,’ the group argued. Instead, the court should opt for the “totality framework,” which looks at all the evidence before making a decision, it said.

The Biotechnology Innovation Association explained their rationale behind their new “totality framework” and also made an alternative request of the court, should they reject their new test. They explained:

Compared to the prima facie framework, the totality framework provides a more consistent method for treating all evidence relevant to obviousness equally and minimizing the potential for hindsight bias . . . [h]owever, should this court continue to endorse application of the prima facie framework, more guidance on its application is needed.

Federal Circuit Extends Appeal Limits on Patent Board Decisions

Reported by Perry Cooper on

On Tuesday in ESIP Series 2 v. Puzhen Life USA, the Federal Circuit held that the Patent Trials and Appeals Board’s (PTAB) real-party-in-interest determinations cannot be reviewed on appeal by the Federal Circuit. Cooper gave the following explanation for the Court’s conclusion:

On appeal, the Federal Circuit found it can’t review the institution decision because the real-party-in-interest determination is final and non-appealable based on two Supreme Court decisions on PTAB institution.

The Federal Circuit relied on the decisions in Thryv Inc v. Click-To-Call Techs. LP and Cuozzo Speed Techs. LLC v. Lee to reach their conclusion. This ruling

will allow the PTAB to establish its own precedent on these institution matters without worry that the Federal Circuit will disagree, making the PTAB’s precedential decisions on those matters more reliable in the future,

Puzhen’s counsel opined. However, ESIP’s counsel, Gordon K. Hill, did not share the same optimism about the Court’s ruling.

The decision hurts patent owners’ rights by giving the PTAB too much power . . . . ESIP’s case is a real world example of exactly the failure of due process warned against as possible by Justice Gorsuch.