Here is this month’s update on activity in cases pending before panels of the Federal Circuit where the cases involve at least one amicus brief. We keep track of these cases in the “Other Cases” section of our blog. Today, with respect to these cases we highlight five dispositions, two new cases, two cases with new briefing, and one upcoming oral argument. Here are the details.
Opinions and Orders
This past month the Federal Circuit issued three opinions in a patent, takings, and veterans case respectively. Additionally, in two patent cases the Federal Circuit issued orders granting a motion to vacate and remand and a motion to voluntarily dismiss.
As we explained in our opinion summary, this patent case addressed the issues of (1) whether Immunex improperly extended its patent term by violating the equitable prohibition on obviousness-type double patenting, (2) whether Immunex failed to meet the written description requirement, and (3) whether the patents-in-suit asserted by Immunex were invalid for obviousness. Judges O’Malley and Chen affirmed the district court’s judgment in favor of Immunex over a dissent by Judge Reyna. Check out the case page to see all of our coverage of this case, including our argument preview and argument recap.
As we explained in our opinion summary, this takings case addressed the issues of (1) whether the lower court erred in ruling that the deeds for a rail corridor conveyed merely an easement to the railroad, rather than a fee, and (2) whether the court erred in ruling that a taking occurred based on a Notice of Interim Trial Use. The panel unanimously affirmed the first issue in favor of Hardy, but it vacated and remanded to the Court of Federal Claims on the second issue. Check out the case page to see all of our coverage of this case.
As we explained in our opinion summary, this veterans case addressed the issue of 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. The panel unanimously reversed the grant of benefits and remanded the case with instruction to enter judgment against the veteran. Check out the case page for more information.
As we explained earlier this morning, his case addressed the issue of the application of Arthrex to appeals in ex parte patent examination, and in particular whether the appointment of Administrative Patent Judges to the Patent Trial and Appeal Board violated the Appointments Clause in the context of appeals of rejections in examination. Boloro Global Ltd. moved to vacate and remand the decisions of the Patent Trial and Appeal Board. The Federal Circuit granted the motion. Check out the case page to see all of our coverage of this case.
As we explained in our case update, this case addressed the issue of district court’s judgment of noninfringement given an agreement to a consent judgment of infringement. This case was scheduled for oral argument, but at the last minute both parties moved to voluntarily dismiss the case before the oral argument. The court granted the motion and dismissed the case. Check out the case page to see all of our coverage of this case.
Since our last update, we highlight two new patent case that have attracted amicus briefs.
In January, the Federal Circuit granted interlocutory review in this case to consider a district court’s rulings related to damages law and expert testimony. In its opening brief, MLC makes several arguments. First, it argues that the district court improperly excluded its damages expert’s opinions based on the parol-evidence rule. According to MLC, the expert did not rely on extrinsic evidence to interpret terms of a previous licensing agreement. Second, it argues that the district court is “usurping the jury’s role as ultimate arbiter of factual disputes, by resolving disputes as to the competing evidence presented by the parties in Micron’s favor as part of its Daubert analysis.” Third, it argues that the district court imposed disclosure requirements “that are unsupported by the Federal Rules of Civil Procedure.” Fourth, it argues that the court erred in applying an apportionment standard that violates Federal Circuit precedent.
Micron, in its response brief, argues that the “district court’s evidentiary and discovery rulings were within its broad discretion.” It argues that “MLC fails to identify any abuse of discretion in the district court’s orders” and therefore that the Federal Circuit should affirm.
Apple Inc., Dell Inc., and HP Inc. filed an amicus brief in support of Micron. In it, they argue that, due to the growth of multi-component and multi-featured technology, “[p]atentees must in all cases limit their damages theories to the alleged invention’s incremental benefit, without claiming the value added by unpatented features.” Further, they contend, “[d]istrict courts have a gatekeeping responsibility to exclude damages theories that do not comply with this apportionment requirement.”
The High Tech Inventors Alliance and the Computer & Communications Industry Association also filed an amicus brief in support of Micron. In it, they argue that too often “previous licenses are used as a shortcut around sound economic analysis.” They contend that this case is emblematic of a broader problem with the unreliable use of comparable-license evidence, and as a result they ask the court to release a published opinion that will promote confidence in how district courts address comparable-license theories.
Engine Advocacy and the R Street Institute also filed an amicus brief in support of Micron. In it, they categorize MLC’s damage theories as a “last-minute mulligan on a plainly erroneous expert report that was rooted in facts and theories not properly disclosed during trial.” They argue denying district courts proper discretion “would impose considerable costs, uncertainty, delay, and unfairness on future patent litigants.”
In this case, the Federal Circuit granted Apple’s motion for an interlocutory appeal to review the district court’s holdings with respect to an alleged standing problem. In its opening brief, Apple argues that “Omni does not have standing to sue for patent infringement because Omni does not own the patents-in-suit—and never did.” It contends that inventions created by Dr. Mohammed Islam were automatically the property of the University of Michigan by nature of Dr. Islam’s employment. And, Apple argues, Dr. Islam never secured the rights and thus could not assign the patents to Omni.
The Regents of the University of Michigan filed an amicus brief. In it, they support Apple by arguing that “the lower court’s interpretation of the University’s Bylaws and Policies as effecting only a promise to assign rights in the future and not an automatic assignment of such rights was clearly in error and against the clear meaning of those provisions.”
There is activity to report in two patent cases.
This case concerns the enablement requirement and antibody patent claims. In its opening brief, Amgen Inc. challenged “[w]hether the district court erred in holding that any reasonable juror was required to find that Sanofi-Regeneron established non-enablement by clear-and-convincing evidence.”
Since our last update, the case has attracted another amicus brief in support of Sanofi. In it, Stanley D. Liang attempts to estimate the number of species potentially in the claimed genus to determine whether undue experimentation is required to identify the members of the genus. Using three different testing methods, he concludes that there is a “vast potential genus size for the claims-at-issue” and undue experimentation “would be required to identify and practice their full scope.”
This case concerns the non-obviousness requirement. In its opening brief, Amarin Pharma appeals the district court’s judgment of obviousness, arguing that “the district court fell into the trap of hindsight—dismissing powerful objective evidence of non-obviousness because the court had already decided the claims were obvious.”
Since our last update, appellee Hikma has filed its response brief, and Amarin has filed its reply brief.
In its response brief, Hikma argues that the district court “simply found—correctly—that Amarin’s evidence ‘does not weigh in favor of . . . nonobvious[ness].’” It contends that finding that “prima facie evidence, if unrebutted, would be sufficient to establish” obviousness is “entirely appropriate.” Further, it maintains that Amarin’s argument that the court “ignored” evidence and “shifted the burden” lacks merit, and the “court did not err in rejecting Amarin’s contrived argument.”
Amarin has also filed its reply. In it, Amarin asserts that Hikma’s response, “[l]ong on pejoratives, . . . seeks to accuse its way to affirmance of the district court’s erroneous obviousness judgment.” It argues “that a court may correctly analyze obviousness utilizing a framework that looks to a ‘prima facie’ case and then to objective indicia—provided that the court withholds its conclusion until considering the objective indicia.” Thus, it claims that the district court’s error was finding obviousness based on a prima facie case alone and then requiring Amarin to “save” the claims through the objective indicia.
New Supplemental Briefing
There is new supplemental briefing to report in one case.
In this appeal addressing questions related to class certification in veterans cases, the parties and amici curiae filed supplemental briefs addressing the relevance of the appeal in light of the Veterans Appeals Improvement and Modernization Act (VAIMA).
Upcoming Oral Argument
Next month, one case that attracted an amicus briefs will be argued.
In this case, Conversant presents the following issues:
- “Whether, in determining that Patent No. 6,477,151 (the ‘151′, or the ‘’151 Patent’) is unenforceable, the district court committed an error of law in failing to apply a ‘but for’ standard of causation, or indeed any lesser, known standard of causation, to the question of whether Nokia’s untimely disclosure to a standard setting committee ‘resulted in’ an unfair benefit to Nokia or its successors.”
- “Whether the district court committed an error of law in failing to apply the clear and convincing standard of evidence, or require Apple to meet its burden under this standard, to the question of whether Nokia’s untimely disclosure ‘resulted in’ an unfair benefit to Nokia or its successors.”
- “Whether the district court clearly erred in the finding that the ’151 Patent is ‘essential’ to the GPRS standard, where this Court’s findings in Core Wireless, ETSI’s definition of ‘essential,’ and the testimony of all experts testifying at trial was that the patented invention was optional in the standard, and companies practicing the standard were not required to practice the ‘151 Patent.”
We plan to post an argument preview for this case next week.