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 six dispositions, one new case, one case with new briefing, and one oral argument recap. Here are the details.

Opinions and Orders

Since our last update, the Federal Circuit has issued three opinions and three orders disposing of cases that attracted at least one amicus brief.

GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc.

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

The panel, as it did before, vacated a district court’s grant of judgment as a matter of law “because substantial evidence supports the jury’s verdict of induced infringement.” Furthermore, as before, the panel reinstated the jury’s damages award “because the district court did not err in its jury instructions on damages.”

Notably, however, in its revised opinion, the panel explains that “Teva argued our October 2, 2020 decision could be broadly read to impose liability on ANDA filers that carve out patented uses . . . when seeking approval to market generic drug products, in direct contravention of the Hatch-Waxman Act.” Moreover, the panel explained, “[a]mici curiae raised concerns about lack of clarity of our decision when the patented uses are carved out of the FDA-approved label.” The panel then addressed these arguments and concerns: “Amici were concerned that our prior decision could be read to upset the careful balance struck with . . . carve-outs.” But, explained the panel, “[t]his is a case in which substantial evidence supports a jury finding that the patented use was on the generic label at all relevant times and that, therefore, Teva failed to carve out all patented indications.” The panel went on to say that “[t]his narrow, case-specific review of substantial evidence does not upset the careful balance struck by the Hatch-Waxman Act regarding . . . carve-outs.”

The case attracted numerous amicus briefs in support of rehearing.

Omni Medsci, Inc. v. Apple, Inc.

In this case, the Federal Circuit granted Apple’s motion for an interlocutory appeal to review the district court’s holdings with respect to an alleged standing problem. Apple argued that “Omni does not have standing to sue for patent infringement because Omni does not own the patents-in-suit—and never did.” Omni, however, maintained that Apple “has no evidence to support its claim that the patents-in-suit fall within Bylaw 3.10 ¶1” of the University of Michigan and “the phrase ‘shall be . . . ’ in Bylaw 3.10 assigns no rights.”

The panel found the relevant bylaws “did not effectuate a present automatic assignment of title to UM and thus did not negate [the inventor’s] assignment of the inventions to Omni.” As a result, the Federal Circuit concluded that “the district court’s denial of Apple’s motion to dismiss for lack of standing is affirmed.”

The case attracted an amicus brief filed by the Regents of the University of Michigan.

Buffington v. McDonough

In this veterans case, the Federal Circuit heard argument on the question of whether the Secretary of Veterans Affairs exceeded his statutory authority when promulgating a regulation related to the timing of resumption of disability benefits payments following a period of active military service. The panel held the Secretary did not exceed his authority “because the Veterans Court [correctly] recognized the statutory gap and afforded the VA’s regulation appropriate deference.” This case attracted an amicus brief filed by the New Civil Liberties Alliance.

In re DISH Network L.L.C.

DISH Network petitioned for a writ of mandamus directing the United States District Court for the Western District of Texas to transfer this patent case to the United States District Court for the District of Colorado. In a per curiam opinion, the court denied the petition despite noting that “the district court here erred in relying on DISH’s general presence in Western Texas without tying that presence to the events underlying the suit.” The panel also found “the district court had erred in weighing the practical problems factor heavily against transfer without taking due account of differences in the underlying technology of the co-pending cases and the availability of multi-district litigation procedures.” The court indicated it is “confident the district court will reconsider its determination in light of the appropriate legal standard and precedent on its own.” The Computer & Communications Industry Association, High Tech Inventors Alliance, and R Street Institute filed an amicus brief in support of the petitioner.

In re Apple Inc.

Apple similarly sought transfer of this patent case from the Western District of Texas to the Northern District of California via a petition for a writ of mandamus. The panel denied the petition, holding that, “[w]here a decision applies transfer rules, we must deny mandamus unless it is clear ‘that the facts and circumstances are without any basis for a judgment of discretion.'” The court concluded that “Apple has not satisfied that exacting standard here.” Unified Patents, LLC and the Computer & Communications Industry Association, Engine Advocacy, and ACT | The App Association filed amicus briefs in support of Apple. 

In re Google LLC

Google also petitioned the court for a writ of mandamus, in this case for a transfer from the Western District of Texas to the Northern District of California. The court denied this petition, holding that “Google has not made a clear and indisputable showing that transfer was required.” The court reasoned that, “although we may have our doubts as to whether Western Texas is just as convenient as Northern California for prospective evidence and witnesses, the district court found that one or more Google employees in Austin, Texas are potential witnesses, and we are not prepared on mandamus to disturb those factual findings.” The Computer & Communications Industry Association, Engine Advocacy, and Professor Mark Lemley filed an amicus brief in support of Google. 

New Case

Mitsubishi Tanabe Pharma Corp. v. Zydus Pharmaceuticals (USA) Inc.

In this patent case, Zydus Pharmaceuticals (USA) appealed a ruling by the District of New Jersey. Zydus alleges “the district court erred in rejecting Appellant’s obviousness-type double patenting [OTDP] invalidity defense” when the earlier expiring patent has “received a patent term adjustment pursuant to 35 U.S.C. section 154(b).” In its opening brief, Zydus argues patent term adjustments “can cause related patents to expire at different times, which is the type of ‘problem’ that the doctrine of OTDP was designed to correct to ‘ensure that a particular invention (and obvious variants thereof) does not receive an undue patent term extension.’” Also, Zydus contends the relevant statute “expressly bars terminally disclaimed patents (i.e., patents whose terms the patentee voluntarily shortened to overcome an OTDP problem) from benefiting from PTAs.”

Notably, Zydus and Mitsubishi Tanable Pharma filed an emergency motion to stay the appeal due to a potential settlement that will require modification of the district court judgement. The Federal Circuit granted the motion and requested the parties inform the court of next steps after disposition at the district court.

At the same time, however, this case attracted two amicus briefs. Samsung Electronics filed an amicus brief in support of neither party, contending the district court’s finding that the patent at issue “cannot serve as an obviousness-type double patenting reference for the later-expiring claims of . . . was contrary to law and policy, and should be reversed.” Alvogen PB Research and Development also filed an amicus brief in support of Zydus, arguing that OTDP should apply here because doing so (1) . . . upholds the historical principles that underlie the OTDP doctrine, and (2) . . . is the most natural construction of § 154(b).” 

New Briefing

Mobility Workx, LLC v. Unified Patents, LLC

In this patent case, Mobility Workx presents several arguments that inter partes review violates the Constitution. In particular, Mobility Workx argues that inter partes review violates its right to due process and qualifies as a taking under the Fifth Amendment. The court has already heard oral argument, but allowed briefs to be submitted in light of the Supreme Court’s decision in United States v. Arthrex, Inc

The Director of the Patent and Trademark Office filed a brief as intervenor. In it, he argues “this Court should issue the ‘limited remand’ provided for in Arthrex to afford Mobility Workx the opportunity to request Director rehearing of the Board’s final written decision consistent with the Board’s regulations and interim guidance.” He further contends “this Court should retain jurisdiction, thereby making it possible for this Court to reactivate the appeal in its current posture without the need for a new notice of appeal or otherwise duplicative proceedings.” He also contends “this Court should not vacate the original Board decision because, pursuant to Arthrex, appellants are ‘not entitled to a hearing before a new panel of APJs.’”

Unified Patents also filed a brief in response to Arthrex. It argues that “Mobility waived any Appointments Clause challenge by not raising it below before the Board when it had an opportunity to do so and by not raising the same constitutional argument at issue in Arthrex in its opening brief on appeal.” Therefore, it contends, “no remand is required.” If the argument is not waived, then Unified argues that “the appropriate remedy is a limited remand to the Board without vacatur to allow an opportunity for the Director or Acting Director to decide whether to review the Board’s Final Written Decision, with this Court retaining jurisdiction and holding this appeal in abeyance.”

US Inventor previously filed an amicus brief in support of Mobility Workx.

Argument Recap

Finally, since our last report, the Federal Circuit has heard oral argument in four related cases that attracted amicus briefs.

Arrowood Indemnity Co. v. United States, Cacciapalle v. United States, Owl Creek Asia I, L.P. v. United States, & Fairholme Funds, Inc. v. United States

In these cases, the plaintiffs asserted claims at the Court of Federal Claims based on government actions related to the 2008 financial crisis and ownership of shares of Fannie Mae and Freddie Mac. As explained by the Court of Federal Claims in one of the cases, the “plaintiffs seek the return of money illegally exacted, damages for breach of contract and breach of fiduciary duty, and compensation for a taking pursuant to the Fifth Amendment to the United States Constitution.” The Court of Federal Claims, however, dismissed these claims, finding it “lacks jurisdiction to entertain their fiduciary duty and implied-in-fact-contract claims, and plaintiffs lack standing to pursue any of their claims.” The plaintiffs have now appealed to the Federal Circuit, challenging the lower court’s holdings. The Federal Circuit consolidated these cases for purposes of oral argument. See our argument recap for a summary of the oral argument.