Here’s the latest.

Federal Circuit Continues Expanding Appointments Clause Decision

Reported by Scott Graham on

Tuesday, in In re Boloro Global Ltd., the Federal Circuit once again applied October’s Appointments Clause decision in Arthrex, Inc. v. Smith & Nephew, Inc. In this case, the Federal Circuit expanded the application of Arthrex, beyond just America Invents Act trials and inter partes reexaminations, to now include ex parte appeals pending when the Federal Circuit ruled on Arthrex, last year. As a result, the Federal Circuit vacated and remanded both the PTAB’s denial of Boloro’s payment systems patent as well as the Board’s decisions in the subsequent ex parte appeals. Graham summarizes Boloro’s winning argument:

Boloro moved to terminate its appeal in January and send the case back to the PTAB for a new hearing, saying the same logic should apply to ex parte appeals. ‘The APJs who presided over the hearings in the ex parte appeals and issued the final decisions in those applications were “principal officers” under the Appointments Clause, yet were neither appointed by the [P]resident nor confirmed by the Senate,’ Oblon, McClelland, Maier & Neustadt partner Michael Casey argued in Boloro’s motion.

Following this decision, experts fully expect the Supreme Court to weigh in on Arthrex with numerous petitions for writ of certiorari having been submitted to the Court in recent weeks. Graham provided this quote by Ropes & Gray partner Matthew Rizzolo regarding the potential of Supreme Court review:

‘[Arthrex is] fully teed up for the Supreme Court,’ he said, with cert petitions last week from the government, patent owners and AIA petitioners. ‘You’re going to have petitions raising it for inter partes reexaminations, ex parte reexaminations and ex parte appeals.’ The PTAB decides many ex parte appeals. Even if most new hearings were to end in the same result, it could create a lot of new work for the PTO even as it continues trying to reduce its backlog of pending applications, Rizzolo said.

For more information on this case, see our coverage.

Bank of America’s $173M Refund Suit Belongs In Claims Court, Federal Circuit Says

Reported by Dylan Moroses on

Additionally, in Bank of America Corp. v. United States, the Federal Circuit reversed the Western District of North Carolina’s decision denying the government’s request to transfer Bank of America’s overpaid interest claims to the Court of Federal Claims. Moroses elaborates on the Federal Circuit’s reversal of the district court’s ruling:

Bank of America failed to persuade the three-judge panel that the North Carolina district court should be permitted to hear its case involving claims for tax refunds stemming from its merger with Merrill Lynch, according to the precedential opinion. The statutory authority to consider claims for interest on tax overpayments resides exclusively with the Court of Federal Claims, the appeals court said. The North Carolina district court improperly concluded that the law ‘provided it with jurisdiction over the Merrill Lynch overpayment interest claims,’ Circuit Judge Evan J. Wallach said in the opinion.

Specifically, the Federal Circuit ruled Section 1346(a)(1) of the U.S. Judicial Code only grants jurisdiction to the federal district courts to hear claims for tax refunds against the government and lacks the specificity to also implicate claims for interest on tax overpayments. Moroses explains:

Section 1346 grants concurrent jurisdiction to the district courts and the claims court over cases involving claims for refunds of wrongfully collected taxes, penalties or other sums, the court said. Under a plain reading of the statute, the district court shouldn’t have jurisdiction over the bank’s claims for interest on their tax overpayments, since the interest doesn’t fall into any of those categories, it said.

For more information on this case, see our coverage.

Federal Circuit Gives Fitbit Another Shot At Nixing Biometrics Patent

Reported by Jan Wolfe on

Finally, the Federal Circuit in Fitbit, Inc. v. Valencell, Inc. reversed a 2018 PTAB ruling which partially upheld Valencell’s claims regarding a motion tracking patent. The Federal Circuit’s reversal and remand of this case to the tribunal opens the door for Fitbit to achieve total victory on all of the claims in question. The court rejected Valencell’s argument that Fitbit lacked standing to appeal the PTAB’s ruling on three claims because Apple petitioned for review of the claims, not Fitbit. Wolfe explains:

Clarifying the appellate rights of parties that are joined to Patent Trial and Appeal Board proceedings, the three-judge Federal Circuit panel said Fitbit had standing to appeal a PTAB ruling that partially upheld a Valencell Inc patent. . . . ‘We [the Federal Circuit] conclude that Fitbit’s rights as a joined party applies to the entirety of the proceedings and includes the right of appeal,’ Circuit Judge Pauline Newman wrote on behalf of the court.

For more information on this case, see our coverage.