Here’s the latest.

Federal Circuit Affirms Government’s E-Passport Patent Win

Reported by Matthew Bultman at Bloomberg Law

In IRIS Corporation Berhard v. United States issued on Friday, the Federal Circuit affirmed that the United States did not infringe Iris’s patent on e-passport technology. Matthew Bultman summarizes the opinion that originally started with Iris suing Japan Airlines in 2011. Upon a court’s ruling that the government directed Japan Airlines’s actions, Iris filed suit against the United States. With the government winning in the Court of Federal Claims, the appeal focused mainly on the construction of a single claim term, “integrated circuit.” Iris looked to overturn the construction of the lower court, but could not convince the Federal Circuit.

Upholding the decision, the Federal Circuit said there was “no need to look further than the plain language of the claim here to read the antenna as being a component of the integrated circuit.” It said this interpretation was supported by the patent’s specification and the prosecution history. “Because the construction of ‘integrated circuit’ is dispositive, we affirm” the finding of no infringement, the court said.

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Federal Circuit Judge ‘Baffled’ By Mylan Position In PTAB Appeal

Reported by Britain Eakin at Law360

The Federal Circuit heard oral arguments from Mylan and Janssen on Friday in Mylan’s appeal of the PTAB’s discretionary decision to not accept Mylan’s challenge to Janssen’s patent. Britain Eakin recaps the arguments where Mylan argued that the Federal Circuit had the jurisdiction to consider Mylan could challenge the patent at the PTAB despite not being a party to a parallel district court suit. Judge Moore raised the point during Janssen’s argument that Deepro Mukerjee, counsel for Mylan, “would be a complete fool” to not ask the court to consider Mylan’s appeal as a request for mandamus relief, but Mukerjee was initially hesitant during his argument.

“I am baffled,” Judge Moore said. “Do you appreciate that mandamus can be sought orally in oral arguments? Do you appreciate that?” After Judge Moore pressed the attorney again to say whether he was asking for the court to treat the appeal as a request for mandamus, Mukerjee acceded.

The Federal Circuit had yet to hear any oral arguments in cases considering whether the PTAB’s practice of denying review is constitutional. This case differed because the PTAB usually grants review when a party not involved in parallel litigation challenges the patent. However, Janssen argued that no property right of Mylan’s is at stake and the proper venue to resolve this dispute is the court where Janssen recently filed suit against Mylan.

Federal Circuit Affirms District Court Finding that Fax/Scanner Patent Claims Are Indefinite

Reported by Eileen McDermott at IP Watchdog

Infinity’s patent claims remain indefinite as the Federal Circuit affirmed the lower court’s decision in an opinion issued Wednesday. Eileen McDermott covered the decision that centered on the construction of “passive link,” describing the link between the fax machine and the computer. While not in the patent, the term was introduced to avoid a prior art reference. However, the lower court ruled against Infinity pointing out that Infinity had taken one position on the construction during prosecution but another during reexamination. The Federal Circuit agreed.

The court detailed what it said were Infinity’s contradictory arguments, holding that “the public-notice function of a patent and its prosecution history requires that we hold patentees to what they declare during prosecution” and concluding that “on the record before us…we agree with the district court that the intrinsic evidence leaves an ordinarily skilled artisan without reasonable certainty as to where the passive link ends and where the computer begins.”

The court was also unpersuaded by Infinity’s arguments that the court misinterpreted Infinity’s arguments or that the court should not have held the claims indefinite based on a single statement.

For more information, see our coverage.