Panel Activity

Here is the first of two updates this week 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 a new patent case in which the court, due to a motion to expedite, heard oral argument recently. Additionally, we highlight new briefings in two patent cases as well as four recent opinions. Here are the details.

New Cases

One new patent case attracted an amicus brief.

Jazz Pharmaceuticals, Inc. v. Avadel CNS Pharmaceuticals LLC

In its opening brief in this patent case, Jazz argued the district court incorrectly determined that it must request the FDA delist one of its patents. Avadel in its response brief argued the district court correctly found the patent claimed systems and not any methods and so was incorrectly listed. Furthermore, Avadel maintained the district court property rejected Jazz’s argument that its “delisting counterclaim depends on showing that the . . . patent was not properly listed in the first place.”

This case attracted an amicus brief from The Public Interest Patent Law Institute, Professor Robin Feldman, Eliana Bookbinder, Brian Mahn, and the Niskanen Center in favor of Avadel. For more information, check out our argument preview.

New Briefing

New Vision Gaming & Development, Inc. v. SG Gaming, Inc.

In this patent case, New Vision contends that the institution process used by the Patent Trial and Appeal Board “does not meet the ‘jealously protected’ due process standard” based on the “inherent tie between the PTAB’s institution decisions and the substantial revenue generated by those decisions.” New Vision argues that, as a result, “the Director’s decision should be reversed, and the Board’s decision should be vacated.” As we previously reported, New Vision received support in the form of an amicus brief filed by US Inventor, Inc.

Since our last report about this case briefs were filed by the government and New Vision.

In its response brief, the government intervenes to argue against New Vision’s motion that asserts “the funding structure for America Invents Act (AIA) post-grant proceedings violates principles of structural due process.”

New Vision, in its reply brief, reiterates its original arguments regarding alleged biases of the PTAB.

Celanese International Corp. v. International Trade Commission

In this patent case, Celanese asserts that an administrative law judge legally erred in concluding that the sale of its products invalidated its patent claims. Celanese argues that the America Invents Act’s on-sale provision does not include “a product made by using the claimed invention” but, rather, “requires the ‘claimed invention’ itself . . . to be ‘on sale.’” As we previously reported, Celanese received support in the form of an amicus brief from the National Association of Manufacturers.

Since our last report about this case the International Trade Commission (“ITC”) filed its response brief and an intervenors’ response brief was filed.

In its response brief, the ITC argues controlling law regarding the meaning of “on sale” is enough for an affirmation of its ruling.

The intervenors, in their response brief, argue that the ITC is correct in recognizing the controlling law indicating that the “phrase ‘on sale’ has ‘acquired a well-settled meaning when the AIA was enacted.”


Since our last update, the Federal Circuit issued orders in veteran, patent, takings, and trades cases.

Doyon v. United States

In this veterans case, Doyon appealed a decision by the Court of Federal Claims to upheld a judgment by the Board for the Correction of Naval Records denying Doyon’s application to correct his discharge records. The Federal Circuit’s opinion vacated the Claim Court’s decision and remanded the case “with instructions to afford Mr. Doyon’s application liberal consideration.” For more information, check out our opinion summary.

Personalized Media Communications, LLC v. Apple Inc.

In this patent case, Personalized Media argued that the district court “committed legal and clear factual errors” and “abused its discretion” in its holding. In its opinion, the Federal Circuit determined that “district court did not abuse its discretion,” and affirmed the district court’s holding. For more information, check out our opinion summary.

Behrens v. United States

In this federal takings case, Behrens appealed a determination of the Court of Federal Claims that it was not entitled to compensation because the scope of the easement in question was broad enough to encompass railbanking and the construction of a hiking and biking trail. The Federal Circuit, in its opinion, held that “an overly broad reading” was against the purpose of the statute, and the “easements granted to the railroad” did not encompass railbanking and trail use. Therefore, the Federal Circuit reversed and remanded that case. For more information, check out our opinion summary.

PrimeSource Building Products, Inc. v. United States

In this trade case, PrimeSource claimed the President did not act within his statutory authority by extending national security tariffs he had previously applied to steel articles to include derivatives of those articles. The United States argued the Federal Circuit’s prior judgment in another case “controls and compels reversal” because in that case the court “reversed a judgment premised on the same alleged statutory violation at issue here.” 

The Federal Circuit’s opinion reversed and remanded the case and held that the statutory “deadlines did not prevent the President from modifying his initial timely adopted plan of action by issuing Proclamation 9980.” For more information, see our opinion summary.