This morning the Federal Circuit released a nonprecedential opinion in a patent case appealed from the Patent Trial and Appeal Board. Notably, Judge Newman dissented. The Federal Circuit also released a nonprecedential order granting petitions to order the Eastern District of Texas to transfer three consolidated cases to the Northern District of California. Here is the introduction to the opinion and text from the order.

Ethicon LLC v. Intuitive Surgical, Inc. (Nonprecedential)

Appellant Ethicon LLC appeals a final written decision issued in two consolidated inter partes review proceedings where the Patent Trial and Appeal Board concluded that the challenged claims are unpatentable as obvious. Ethicon contends that the Board committed legal error by placing the burden of proof on Ethicon, the patent owner. Ethicon also contends that the Board’s finding of a reasonable expectation of success in combining the asserted prior art is unsupported by substantial evidence. We affirm.

NEWMAN, Circuit Judge, dissenting.

I respectfully dissent. The court reconstructs a novel surgical device from components of known devices, using the ’379 patent as a template for the reconstruction. The court finds that an engineer with at least three years of experience in designing surgical instruments would have been capable of designing the claimed device. However, the patentability question is not whether such an engineer would be capable of designing the instrument of the ’379 patent. The patentability question is whether the prior art teaches or suggests the structure of the ’379 instrument as a whole. Although the court finds that it would have been obvious to combine the Solyntjes and Green reference mechanisms, it is not disputed that the Solyntjes’ spring-and-pin mechanism is not a spent-cartridge lockout, and that a simple combination does not produce the ’379 instrument.

In re Google LLC (Nonprecedential Order)

In these consolidated cases, Google LLC, Waze Mobile Limited, and Samsung Electronics Co., Ltd. et al. (collectively, “Petitioners”) seek writs of mandamus directing the United States District Court for the Eastern District of Texas to transfer these cases to the United States District Court for the Northern District of California. AGIS Software Development, LLC (“AGIS”) opposes. For the reasons below, we grant the petitions and direct transfer.