This morning the Federal Circuit released three precedential opinions, one nonprecedential order, and a Rule 36 judgment. In the first opinion, the Federal Circuit affirmed in part, reversed in part, and remanded to the Northern District of California a case where Apple and other companies are challenging the U.S. Patent and Trademark Office’s so-called Fintiv factors and, in particular, in the decision whether to institute inter partes review proceedings the role of the pendency of district-court infringement litigation involving the same patents. In the second opinion, the court vacated and remanded a judgment in a patent case on appeal from the District of Delaware. In the third opinion, the Federal Circuit reversed and remanded a judgment in a case appealed from the Patent Trial and Appeal Board. Finally, the nonprecedential order dismisses an appeal. Here are the introductions to the opinions and links to the order and Rule 36 judgment.

Apple, Inc. v. Vidal (Precedential)

Plaintiffs are Apple Inc. and four other companies that have repeatedly been sued for patent infringement and thereafter petitioned the Director of the Patent and Trademark Office (PTO) to institute inter partes reviews (IPRs), under 35 U.S.C. §§ 311–319, so that the PTO’s Patent Trial and Appeal Board could adjudicate the petitions’ unpatentability challenges to patent claims that had been asserted against them in court. In the present action, brought against the Director in district court under the Administrative Procedure Act (APA), 5 U.S.C. §§ 701– 706, plaintiffs challenge instructions the Director issued to the Board to inform it how to exercise, under delegation by the Director, the Director’s discretion whether to institute a requested IPR. Plaintiffs assert that the instructions are likely to produce too many denials of institution requests. The district court dismissed the APA action on the ground that the Director’s instructions were made unreviewable by the IPR provisions of the patent statute.

We affirm in part and reverse in part. We affirm the unreviewability dismissal of plaintiffs’ challenges to the instructions as being contrary to statute and arbitrary and capricious. No constitutional challenges are presented. But we reverse the unreviewability dismissal of plaintiffs’ challenge to the instructions as having been improperly issued because they had to be, but were not, promulgated through notice-and-comment rulemaking under 5 U.S.C. § 553. That challenge, we also hold, at least Apple had standing to present. We remand for further proceedings on the lone surviving challenge. Like the district court, we do not reach the merits of that challenge.

AlterWAN, Inc. v. Amazon.com, Inc. (Precedential)

In this patent infringement action, the parties entered into a stipulation of non-infringement based on two of the district court’s claim construction rulings. Because the stipulation is ambiguous and therefore defective, we vacate and remand for further proceedings.

Intel Corporation v. PACT XPP Schweiz AG (Precedential)

The Patent Trial and Appeal Board (“Board”) determined that Intel Corp. (“Intel”) failed to show that claim 5 of U.S. Patent No. 9,250,908 (“the ’908 patent”) was unpatentable as obvious in light of prior art references Kabemoto and Bauman.1 Intel Corp. v. PACT XPP Schweiz AG, No. IPR2020-00518, Paper 34, 2021 WL 3503434 (P.T.A.B. Aug. 9, 2021) (“Final Written Decision”). We reverse and remand.


Rule 36 Judgments