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 case with an amicus brief, one case with new briefing, one case update, three recent oral arguments, and two upcoming oral arguments. Here are the details.


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

Euzebio v. McDonough

As we explained in our opinion summary, this veterans case involved consideration of the standard for what materials should be deemed constructively before the Board of Veterans’ Appeals. The Federal Circuit found that the Veterans Court applied an erroneous legal standard by requiring a “direct relationship” between the evidence and the claim before the Board. The court articulated the standard for the Board’s constructive possession as “relevance and reasonableness.” Check out the case page to see all our coverage of this case, including our argument preview and argument recap.

In re, Inc.

As we explained in our opinion summary, this patent case dealt with issues related to the first-to-file rule. The Federal Circuit panel found that the Northern District of California did not abuse its discretion in declining to apply the first-to-file rule and refusing to dismiss the case because the district court had previously dealt with the same specification, technology, accused products, and inventors. Check out the case page to see all our coverage of this case, including our argument preview and argument recap.  

New Case

Kannuu Pty Ltd. v. Samsung Electronics Co.

In this patent case, Kannuu appeals the district court’s denial of its motion to enjoin Samsung from pursuing inter partes review. Kannuu and Samsung entered into a non-disclosure agreement and agreed to a forum selection clause that required any dispute under the NDA to be brought in federal or state court. In its opening brief, Kannuu maintains that the validity challenges brought by Samsung before the Patent Trial and Appeal Board fall under the forum selection clause of the parties’ NDA because the validity challenges “relate to” the discussions the parties had under the NDA.

Five law professors filed an amicus brief in support of Kannuu. In it they maintain the district court’s denial of Kannuu’s motion did not give proper legal weight to the importance of privately-negotiated agreements, and, they argue, it created an unprecedented public-policy rule that could prohibit any agreement between private parties to have all patent validity challenges decided in federal court.

New Briefing

Zaxcom, Inc. v. Lectrosonics, Inc.

In this patent case, Zaxcom appeals a decision by the Patent Trial and Appeal Board concerning Zaxcom’s patents. Zaxcom argued 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 contended, the Board erred in finding that prior art combinations disclosed the particular architecture of the claims. Finally, Zaxcom argued that, regardless of the other issues, the Board analyzed the ultimate question of obviousness without weighing evidence of non-obviousness as Federal Circuit precedent requires.

Since our last update, cross-appellant Lectrosonics, filed its principal and response brief. In it, Lectrosonics asserts that “Zaxcom’s claim construction arguments are thinly veiled attempts to improperly limit the claims to particular embodiments in the specification.” Further, it contends that Zaxcom never made the necessary showings for the nexus requirement to go forward with its secondary considerations arguments. On cross appeal, Lectrosonics contends that the Board did err by not finding the amended claims with narrowed scope to be unpatentable. It argues the evidence of non-obviousness in this case should have little weight against the strong case of combining its prior art references.

Case Update

Rolfingsmeyer v. Office of Personnel Management

In this case addressing death benefits, which was scheduled for oral argument this month, the Federal Circuit issued a nonprecedential order “remov[ing] this case from the March 5, 2021 oral argument calendar and [holding] the case in abeyance for 60 days.” Check out our case page to see all our coverage of this case.

Argument Recap

Since our last report, the Federal Circuit has heard oral argument in three cases that attracted amicus briefs.

Omni Medsci, Inc. v. Apple Inc.

In this patent case, the Federal Circuit heard argument regarding two different district courts’ holdings with respect to an alleged standing problem related to the plaintiff, Omni Medsci. See our argument recap for a full report on the oral argument.

GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc.

In this patent case, the Federal Circuit conducted a panel rehearing to address whether Hatch-Waxman provides a statutory “carve-out” mechanism allowing a generic to adopt a skinny label for unpatented uses that cannot be blocked by a patent on one method of using the drug. See our argument recap for a full report on the oral argument.

National Association of Manufacturers v. Department of the Treasury

In this tax case, the Federal Circuit heard argument related to regulations promulgated by the Department of the Treasury regarding “double drawback.” See our argument recap for a full report on the oral argument.

Upcoming Oral Argument

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

New Vision Gaming & Development, Inc. v. SG Gaming, Inc.

In this patent case, New Vision presents the following four issues:

  1. “Whether the unusual structure for instituting and funding AIA post-grant reviews violates the Due Process Clause in view of Tumey v. Ohio, 273 U.S. 510 (1927), and its progeny, which establish ‘structural bias’ as a violation of due process.”
  2. “Whether the Patent Trial and Appeal Board (‘PTAB’) decision should be set aside under 5 U.S.C. § 706(2)(A) because the PTAB (a) did not consider, as part of its discretion to deny institution, a contractual obligation that precluded an AIA post-grant challenge, and (b) placed the burden on the patent owner to identify a ‘contractual estoppel defense.’”
  3. “Whether the PTAB’s decision should be vacated and remanded because the PTAB panel that decided the case was unconstitutional under the Appointments Clause.”
  4. “Whether the PTAB erred in holding the claims as directed to patent-ineligible subject matter under 35 U.S.C. § 101.”

Lynch v. McDonough

In this veterans case, Lynch presents the following issue:

  • “Did the holding in Ortiz v. Principi misinterpret 38 U.S.C. § 5107(b) and 38 C.F.R. § 3.102 by setting forth an equipose-of-the-evidence [sic] standard for veterans to prove their claims and a corresponding preponderance-of-the-evidence-standard for the secretary to disprove them; and, if so, should principles of stare decisis be a bar to the en banc court overturning this three-judge panel decision?”