Panel Activity

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 two dispositions, one new patent case, and new briefing in another patent case. Here are the details.


This past month the Federal Circuit issued two opinions in cases that attracted amicus briefs.

Boeing Co. v. Secretary of the Air Force

As we explained in our opinion summary, in this government contract case the court considered issues related to the marking of technical data delivered to the government. In a unanimous decision, the court agreed with Boeing’s interpretation of a clause of the Defense Federal Acquisition Regulation Supplement as permitting marking of technical data provided to the government in a way that protects rights against use by third parties, and as a result the court vacated the final judgment of the Armed Services Board of Contract Appeals. Check out the case page to see all our coverage of this case, including our argument preview and argument recap.

Veterans4You, Inc. v. United States

As we explained in our opinion summary, this veterans case involved a dispute over use of the “printing mandate” in 44 U.S.C. § 501 to route a VA procurement of gun locks with information imprinted on the lock body through the Government Publishing Office. A unanimous panel reversed the Court of Federal Claim’s conclusion that the printing mandate applied in the case, finding instead that § 501 applies only to the production of written or graphic published materials. Check out the case page to see all our coverage of this case, including our argument preview and argument recap.

New Case

SIPCO, LLC v. Emerson Electric Co.

In this case, SIPCO appeals a decision by the Patent Trial and Appeal Board that SIPCO’s patent claims are obvious and thus unpatentable. In its opening brief, SIPCO argues the decision should be reversed because (1) the Board improperly prevented SIPCO from obtaining a certificate of correction; (2) the Board declined to recognize the certificate that was issued by the Director of the Patent Office after the Final Written decision; (3) the Board based its obviousness decision “on the false premise that certain points were undisputed by SIPCO when, in fact, they were vigorously disputed;” and (4) the Board based its decision on new evidence not presented until the Petitioner’s reply.

In its response, Emerson asserts that the certificate of correction does not apply retroactively and thus it has no effect on the Board’s final decision. Further, Emerson argues, SIPCO forfeited review because it did not appeal the Board’s ruling that the certificate was not retroactive. Emerson also maintains that SIPCO is barred by collateral estoppel arising out of another patent held by SIPCO because the relevant claims are substantively identical.

In its reply, SIPCO emphasizes that Emerson did not show that the Board complied with the Administrative Procedure Act in preventing SIPCO from obtaining a certificate of correction. Further, SIPCO reasserts that effect should be given to the certificate because it was ultimately issued by the Director.

Most recently, the United States filed an amicus brief asserting that 35 U.S.C. § 255 and the USPTO’s issuance of the certificate of correction should have no effect on the court’s disposition. Instead, the government argues, the court should review the Board’s final decision based on the record that was before the Board.

New Briefing

Mobility Workx, LLC v. Unified Patents, LLC

In this case, Mobility Workx argues that post grant review proceedings violate the Due Process Clause of the Constitution. In response, Unified Patents argued that Mobility Workx waived its opportunity to appeal by not raising its arguments before the Board, and it further asserts that substantial evidence supports the Board’s factual findings.

Since our last update, Mobility Workx filed its reply brief. It first argues that it did not waive its right to appeal, as it would have been absurd to raise the issue of the PTAB’s propriety in the PTAB itself. Further, Mobility Workx emphasizes that the Director failed to negate the appearance of impropriety of the tie between the PTAB’s decisions and the revenue generated by these proceedings. Finally, Mobility Workx maintains that the PTAB’s decision is not supported by substantial evidence.