Panel Activity

Here is this month’s update on activity in cases pending before panels of the Federal Circuit where the cases attracted 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 in a veterans case addressing allegations of delay violating due process and one in a patent case addressing the enablement requirement. We also highlight two new patent cases, one addressing claim construction and the non-obviousness requirement and the other addressing the first-to-file rule and patent eligibility. We also note three upcoming oral arguments. Here are the details.


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

Monk v. Tran

As we explained in our opinion summary, in this veterans case the court considered whether five year delays in resolving appeals of adverse decisions by Veterans Affairs constituted unreasonable delay under 38 U.S.C. § 7261(a)(2) and violated due process. A panel of the Federal Circuit found that the veterans’ appeals were moot because, before the Veterans Court’s disposition of their petition on point, those veterans received decisions by the Board of Veterans Appeals. Check out the case page to see all our coverage of this case, including our argument preview and argument recap.

Amgen Inc. v. Sanofi, Aventisub LLC

As we explained in our opinion summary, this patent case dealt with the enablement requirement in the context of antibody claims. The panel unanimously held that the antibody claims in this case did not satisfy the enablement requirement because the claims were so broad as to require undue experimentation. You can head on over to the case page to see all our coverage of this case, including our argument preview and argument recap.

New Cases

This month two patent cases attracted amicus briefs.

Zaxcom, Inc. v. Lectrosonics, Inc.

In this case, Zaxcom appeals a decision by the Patent Trial and Appeal Board concerning Zaxcom’s ’902 and ’814 patents. Zaxcom argues in its opening brief that the Board erred in construing the term “wearable” in its claims so that the patents were covered by the prior art. Further, Zaxcom contends the Board erred in finding that prior art combinations disclosed the particular architecture of the claims, and relatedly it argues the Board erred in construing the claims. Finally, Zaxcom argues that, regardless of the previous issues, the Board analyzed the ultimate question of obviousness without weighing evidence of non-obviousness as Federal Circuit precedent requires.

Former Chief Judge Paul R. Michel filed an amicus brief supporting neither party. In it, he encourages the court to take the time to clarify the court’s decision in FOX Factory, Inc. v. SRAM, LLC, arguing that the decision added burdens on patentees in the context of the non-obviousness requirement that are not supported by the court’s precedent. Alternatively, he encourages the court to sua sponte take the case en banc to address the nexus-presumption rules that governed before that case.

US Inventor, Inc. also filed an amicus brief in support of Zaxcom. In the brief, US Inventor points to the Board’s disregard of industry praise in finding that the claims were obvious. It argues that an affirmance would threaten to “narrow further the hole in the needle that patentholders must thread to preserve the validity of their claims through an expensive administrative process that is widely viewed as already unfavorable to inventors.”

In re VoIP-Pal, Inc.

In this case, VoIP-Pal filed a petition for writ of mandamus alleging that the district court abused its discretion in declining to apply the first-to-file rule. Particularly, VoIP-Pal alleges the district court (1) erroneously concluded that the Western District of Texas’s decision regarding the patent in suit could conflict with the district court’s prior orders; (2) erroneously accused VoIP-Pal of forum shopping; (3) erroneously invoked an exception to the first-to-file rule without a factual basis in the record; (4) erroneously shifted the burden to prove an exception to the first-to-file rule to VoIP-Pal; and (5) erroneously found its limited familiarity with previous VoIP-Pal cases sufficient to override the first-to-file rule.

Apple, AT&T, Cellco Partnership, and Verizon Wireless filed a response. In it, they argue that VoIP-Pal falls “well short” of the standard for demonstrating abuse of discretion or usurpation of judicial power. They contend that district courts are afforded “an ample degree of discretion” in considering whether to apply the first-to-file rule and that the court acted well within its discretion.

VoIP-Pal, in its reply, emphasized that the district court took unreasonable and erroneous steps to ensure that it controlled the fate of the claims of VoIP-Pal’s patents, including an erroneous assertion that VoIP-Pal engaged in forum shopping.

Dr. Raymond A. Mercado filed an amicus brief in support of the petition for writ of mandamus. In the brief, he places heavy emphasis on patent eligibility’s influence on the dispute. He argues much of the forum dispute is tightly connected with the disarray of patent eligibility procedural rules, and argues that the Northern District of California in this case created a novel exception that allows it to disregard a first-filed action in another venue and retain jurisdiction over a second-filed action merely on the basis of the court’s familiarity with the patent’s family.

Upcoming Oral Arguments

Next month, three cases that attracted amicus briefs will be argued.

Omni Medsci, Inc. v. Apple Inc.

In this patent case, Apple presents the following two issues:

  1. “Whether contractual language providing that patents ‘shall be the property of [an employing entity, here, the University of Michigan],’ without requiring any further acts from the parties, operates as an automatic assignment of future rights.”
  • “Whether, given Dr. Islam’s employment agreement, the University of Michigan’s bylaws and rules, and the parties’ course of conduct, Omni lacks standing to bring the underlying litigations because the patents were automatically assigned to the University before Dr. Islam’s attempted assignment of them to Omni.”

Rolfingsmeyer v. Office of Personnel Management

In this death benefit case, Rolfingsmeyer presents the following issue:

  • “Whether it is unlawful for the federal government to rely on a state’s concededly unconstitutional definition of marriage to deny survivor benefits to the surviving member of a long-term, committed same-sex couple who would have qualified for such benefits but for that unconstitutional definition of marriage.”

National Association of Manufacturers v. Department of the Treasury

In this trade case, the government presents the following issue:

  • “[W]hether the U.S. Court of International Trade erred when it held the [Rule promulgated by the Department of the Treasury in conjunction with U.S. Customs and Border Protection confirming the prohibition in 19 U.S.C. § 1313(v)] invalid.”

We will provide argument previews for these cases next week.