Here’s the latest.

Patent Appeal Lessons From Fed. Circ. Remote En Banc Args

Reported By Katherine Helm, Jacob Porter, and Jeffrey Edwards on Law360

Even though patent cases account for about 60% of the Federal Circuit’s docket, in the past two years, five out of the six en banc cases in the Federal Circuit have been veterans cases. Furthermore, the Federal Circuit only sat en banc for two cases last year—both of which concerned veterans.

On May 18, 2020, the Federal Circuit ordered all oral arguments be conducted telephonically. In February 2021, the court extended its courthouse closure at least until the end of March, with oral arguments being provided via live audio streaming via the court’s new YouTube channel. According to Helm, Porter, and Edwards, future en banc oral arguments in patent cases would mimic the procedures followed in the arguments in NOVA v. Secretary of Veterans Affairs and Arellano v. McDonough.

These oral arguments were notable both in their length and their organization. First, in both cases, the argument of each side ran for an hour. This is about twice the default 30 minutes per side the court normally allots for in-person en banc argument. Second, in contrast to the free-for-all nature of the pre-pandemic, in-person en banc arguments, the court in these two cases imposed a more structured, turn-taking procedure for the parties and court.

Helm, Porter, and Edwards express the importance of en banc review. According to their research, even where an en banc rehearing is denied, a dissent from a denial increases the likelihood that a case will get the attention of the Supreme Court. Emphasizing the significance of en banc review by the only patent appellate court in the country, Helm, Porter, and Edwards encourage practitioners to listen to the telephonic en banc oral arguments in the NOVA and Arellano veterans cases.

Much can be gleaned from the cadence of the arguments, to assist patent practitioners in learning the subtle art of how to approach en banc oral arguments in the current remote environment in which we find ourselves for the indefinite future.

Novartis Patent on MS Drug Gilenya Evades Supreme Court Scrutiny

Reported By Perry Cooper on Bloomberg Law

In April 2020, the Federal Circuit ruled that Argentum Pharmaceuticals LLC lacked standing necessary to appeal a Patent Trial and Appeal Board decision regarding a multiple sclerosis drug. The court reasoned that because Argentum’s partner will manufacture and apply for FDA approval of a generic version of Novartis Pharmaceuticals’ Gilenya multiple sclerosis drug, Agentum’s partner, and not Argentum, is at risk of a lawsuit. Argentum claimed that it had standing based on economic harm due to Novartis’ looming infringement action. The Federal Circuit rejected this argument stating that such a claim was “conclusory and speculative.” The U.S. Supreme Court will not review whether Argentum’s joint venture to make a generic version of the drug should have granted Argentum standing to appeal the PTAB decision. Perry Cooper highlights the importance of the issue:

The case would have given the court the chance to wade into the debate over competitor standing, or whether being in regular competition is enough to challenge a patent office ruling on a rival’s patent without having been sued for infringement. Recent Federal Circuit cases put companies in the awkward position of having to admit infringement in order to seek review of a PTAB decision.

Fourth Circuit Finds ‘Pretzel Crisps’ Plaintiffs are Not Bound to Federal Circuit Across Appeals from Distinct TTAB Decisions

Reported By Nancy Braman on IP Watchdog

According to the facts presented by Nancy Braman, Princeton Vanguard registered the trademark “Pretzel Crisps” on the supplemental trademark register in 2004. Five years later, thinking the mark had changed from merely descriptive to acquiring distinctiveness, Princeton Vanguard reapplied for registration on the principal register, hoping to be accorded the highest level of protection. Frito-Lay, however, opposed this registration, arguing that the mark was either generic for pretzel crackers or failed to acquire distinctiveness. The Trademark Trial and Appeal Board (TTAB) reviewed the dispute and sided with Frito-Lay, finding that the mark was generic and therefore not registrable. Princeton Vanguard appealed this decision to the Federal Circuit. The Federal Circuit concluded that the TTAB incorrectly evaluated the terms “Pretzel” and “Crisp” separately rather than together as a whole. On remand, the TTAB again concluded that “Pretzel Crisps” was generic and lacked acquired distinctiveness. Princeton Vanguard then appealed the second TTAB decision, this time to the U.S. District Court for the Western District of North Carolina. After the court dismissed for lack of subject matter jurisdiction, Princeton Vanguard appealed to the Fourth Circuit.

The Lanham Act permits an applicant who is dissatisfied with the initial decision of the TTAB to seek review either at the CAFC or in federal district court. Frito-Lay argued that under the Lanham Act, Princeton Vanguard’s decision to litigate the initial decision at the CAFC bound them to that choice for the remainder of the case. The Fourth Circuit disagreed with this interpretation stating that one’s right to seek review of a TTAB decision applies only per decision, not per case. The Fourth Circuit also disagreed with the district court’s interpretation regarding district court review after CAFC review has occurred. Braman summarizes the Fourth Circuit’s holding:

[T]he waiver in Section 1071(a)(1) of the statute allowing a party who appeals to the CAFC to waive its right to proceed in district court, refers only to a waiver made by the aggrieved party. Therefore, even if the aggrieved party waived its right to district court review in one decision, this does not prevent the winning party from later exercising its right to force district court review in a subsequent decision. Further, the Fourth Circuit stated that it is not unheard of for an appellate court to apply another’s prior decision as the law of the case, so this should pose no issue.

The Seventh and Ninth Circuits, are the only other Courts of Appeals to have considered this issue, and they too have interpreted the statute in favor of Princeton Vanguard’s arguments.