This morning, the Federal Circuit issued two precedential opinions and one nonprecedential opinion in patent cases, as well as a precedential opinion and two nonprecedential opinions in cases appealed from the Merit Systems Protection Board. The court also issued a Rule 36 judgment. Here are the introductions to the opinions and a link to the Rule 36 judgment.

cxLoyalty, Inc. v. Maritz Holdings Inc. (Precedential)

cxLoyalty, Inc. (“cxLoyalty”) petitioned for a covered business method (“CBM”) review of claims 1–15 of U.S. Patent No. 7,134,087 (“the ’087 patent”), which is owned by Maritz Holdings Inc. (“Maritz”). The Patent Trial and Appeal Board (“Board”) instituted CBM review and concluded that original claims 1–15 are ineligible for patenting under 35 U.S.C. § 101 but that proposed substitute claims 16–23 are patent eligible. See cxLoyalty, Inc. v. Maritz Holdings Inc., No. CBM2018-00037, Paper 36, 2019 Pat. App. LEXIS 13178 (P.T.A.B. Dec. 19, 2019) (“Decision”). cxLoyalty appealed the Board’s ruling as to the substitute claims, and Maritz cross-appealed both the Board’s determination that the ’087 patent is eligible for CBM review and the Board’s ruling as to the original claims.

We do not have authority to entertain Maritz’s challenge to the CBM eligibility of the ’087 patent. SIPCO, LLC v. Emerson Elec. Co., 980 F.3d 865, 867 (Fed. Cir. 2020). As to the merits, we conclude that both the original and substitute claims are directed to patent-ineligible subject matter under § 101. We therefore dismiss Maritz’s CBM eligibility challenge, affirm the Board’s determination as to the original claims, and reverse the Board’s determination as to the proposed substitute claims.

Chudik v. Hirshfeld (Precedential)

Dr. Steven Chudik applied to the Patent and Trademark Office (PTO) for a patent on his “Guide for Shoulder Surgery” on September 29, 2006. When the assigned PTO examiner issued a second rejection of all then-pending claims as unpatentable in 2010, Dr. Chudik took a step that would turn out to have consequences for the patent term adjustment awarded under 35 U.S.C. § 154(b) when his application ultimately issued as a patent. Rather than immediately taking an appeal to the Patent Trial and Appeal Board under 35 U.S.C. § 134(a), Dr. Chudik requested a continued examination under 35 U.S.C. § 132(b). In 2014, the examiner again rejected his claims, and Dr. Chudik then appealed to the Board. But instead of filing an answer, the examiner reopened prosecution, only to reject the claims as unpatentable on a different ground, in early 2015. That 2014–2015 process—notice of appeal filed, prosecution reopened before answer, new rejection on a new ground—occurred again in 2015. It occurred once more in 2016. Finally, in 2017, while Dr. Chudik’s fourth notice of appeal from an examiner rejection was pending, the examiner issued yet another new rejection, but this one led, in 2018, to a notice of allowance after Dr. Chudik altered some of his claims. Dr. Chudik’s U.S. Patent No. 9,968,459 issued on May 15, 2018, eleven and a half years after the application was filed.

The PTO ultimately awarded Dr. Chudik a patent term adjustment of 2,066 days under 35 U.S.C. § 154(b), but it rejected Dr. Chudik’s argument that he was entitled to an additional 655 days, under 35 U.S.C. § 154(b)(1)(C)(iii) (C-delay), for the time his four notices of appeal were pending in the PTO. The C-delay provision covers delay due to “appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability.” 35 U.S.C. § 154(b)(1)(C)(iii). The PTO concluded that the provision does not apply here because, in light of the examiner’s reopening of prosecution, (1) the Board’s jurisdiction over the appeals never attached and (2) there was no Board (or reviewing court) reversal. The United States District Court for the Eastern District of Virginia affirmed the PTO’s decision. Chudik v. Iancu, No. 1:19-cv-01163 (E.D. Va. March 25, 2020), ECF
No. 33.

We now affirm. The statutory language regarding C-delay for “appellate review” requires a “decision in the review reversing an adverse determination of patentability.” 35 U.S.C. § 154(b)(1)(C)(iii). That language, we conclude, is reasonably interpreted—indeed, is best interpreted—to require a reversal decision made by the Board or a reviewing court, thus excluding time spent on a path pursuing such a decision when, because of an examiner reopening of prosecution, no such decision is ever issued.

Holmes v. United States Postal Service (Precedential)

McKenzie Holmes appeals the final decision of the Merit System Protection Board (“Board”) affirming his removal from employment with the United States Postal Service (“USPS” or “agency”). We affirm.

NEWMAN, Circuit Judge, dissenting

This appeal concerns the obligation of the Postal Service, as a federal employer, to assure that federal employees receive just and evenhanded consideration in adverse employment actions. Federal law entrusts that obligation to the employing agency, and entrusts review of agency compliance to the Merit Systems Protection Board (“MSPB”) and the Federal Circuit. In the case of former Postal Service employee McKenzie Holmes, all three entities have failed their trust.

Statute and precedent require consistency of the penalty imposed on employees for comparable offenses. However, the court today holds that Mr. Holmes has no right to consideration of the penalty that was imposed on his fellow marijuana-purchasers, who were restored to employment,
while he remains fired—although all of the offenders committed the identical offense in identical circumstances and on identical evidence.

The majority holds that Mr. Holmes has no recourse. That is incorrect, for this court is charged to assure that federal agencies conform to statute and implement legislative policy in their employment practices. In Wilburn v. Department of Transportation, this court recognized that “the linchpin of federal personnel management is fairness, i.e., employees who are similarly situated are entitled to similar treatment.” 757 F.2d 260, 262 (Fed. Cir. 1985).

This court is charged to assure that federal employment law is respected. The disparate treatment imposed on Mr. Holmes is contrary to law. From my colleagues’ endorsement of this improper action, I respectfully dissent.

Turner v. Merit Systems Protection Board (Nonprecedential)

Gregory Turner seeks review of a final decision of the Merit Systems Protection Board (“Board”) that dismissed his appeal for lack of jurisdiction. We affirm.

Zachariasiewicz v. Merit Systems Protection Board (Nonprecedential)

Robert F. Zachariasiewicz petitions for review of the Merit Systems Protection Board’s decision dismissing his individual right of action appeal as untimely refiled without good cause for delay. Mr. Zachariasiewicz argues that a remand is necessary because the Board erred in its ruling regarding the timeliness of his appeal. Because we conclude that the Board did not abuse its discretion in dismissing the appeal, we affirm the Board’s decision.

VeriPath, Inc. v. Didomi (Nonprecedential)

VeriPath, Inc. (“VeriPath”) appeals from a decision of the United States District Court for the Southern District of New York holding that the claims of U.S. Patent 10,075,451 (“the ’451 patent”) are ineligible for patent under 35 U.S.C. § 101. VeriPath, Inc. v. Didomi, No. 19 CIV. 1702 (GBD), 2020 WL 1503687 (S.D.N.Y. Mar. 30, 2020) (“Decision”). Because we agree with the district court that the patent claims patent-ineligible subject matter, we affirm.

Rule 36 Judgment