Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today’s report highlights:

  • an article discussing how a recent Federal Circuit opinion “stands as an important warning” to patent holders who send notice letters;
  • another article addressing the Federal Circuit’s split in an “unusual” case concerning the Federal Circuit’s jurisdiction to review decisions of the Patent Trial and Appeal Board; and
  • a third article addressing a recent Federal Circuit case that “clarifies the scope of incorporation by reference” in government contracts.

John Cordani and Trevor Bradley co-authored an article for IPWatchdog discussing how, in Apple, Inc. v. Zipit Wireless, Inc., the Federal Circuit found that, “[b]y sending ‘multiple letters and claim charts accusing Apple of patent infringement and also travel[ing] to Apple’s offices in California to discuss these accusations,’” Zipit subjected itself to personal jurisdiction in California. Addressing the implications of the opinion, the authors noted that “[a] single notice letter may not be sufficient to establish minimum contacts with the forum where the letter is sent, but a letter in conjunction with emails, phone calls, and/or in-person meetings that often follow a notice letter may suffice.” The authors emphasized that “[t]his is especially true where the communications are substantive and discuss the validity and enforceability of a patent or threaten litigation.”

Samantha Handler wrote an article for Bloomberg Law addressing how a split panel in Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc. held that the Federal Circuit was “barred from considering [Atlanta Gas’] appeal because at its center was a timeliness issue that the US Supreme Court has ruled isn’t appealable.” Handler noted how that the majority indicated that, while “the issue [was framed] as an appeal of the sanctions award, the Federal Circuit is restricted from reviewing PTAB decisions on instituting inter partes review.” And, the article explained, “there is nothing to suggest the board was trying to ‘subvert the mandate by using the time-bar determination as a pretext.’” Handler highlighted, however, that “Judge Pauline Newman dissented, arguing that the majority is creating more contradictions about the validity of the patent.” 

Kevin Barnett published an article with JD Supra addressing how, in CSI Aviation, Inc. v. Department of Homeland Security, the Federal Circuit “provides a useful reminder for contractors wishing to incorporate their commercial terms and conditions into government contracts.” Barnett discussed how “federal contractors should ensure that their standard commercial terms and conditions are unambiguously incorporated by reference” to minimize potential disputes over which terms apply.