This morning, the Federal Circuit released a precedential opinion in a patent case involving analysis of pre-AIA first-to-invent provisions. Notably, Judge Dyk dissented. The court also released a nonprecedential opinion in a case appealed from the Merit Systems Protection Board, along with a nonprecedential order dismissing a case. Here are the introductions to the opinions and a link to the order.

Medtronic, Inc. v. Teleflex Innovations S.A.R.L. (Precedential)

Medtronic, Inc. and Medtronic Vascular, Inc. (collectively, “Medtronic”) appeal from five final written decisions of the United States Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) finding that Itou does not qualify as prior art to related U.S. Patents 8,048,032, RE45,380, RE45,776, RE45,760, and RE47,379 (collectively, “the challenged patents”) under pre-AIA first-to-invent provisions, and Medtronic had therefore not shown the challenged claims to be unpatentable. Medtronic, Inc. v. Teleflex Innovations S.À.R.L., IPR2020- 00126 (P.T.A.B. Jun. 7, 2021) (“Decision”), J.A. 1–75; Medtronic, Inc. v. Teleflex Innovations S.À.R.L., IPR2020- 00128 (P.T.A.B. Jun. 7, 2021), J.A. 76–150; Medtronic, Inc. v. Teleflex Innovations S.ÀR.L., IPR2020-00132 (P.T.A.B. Jun. 7, 2021), J.A. 151–222; Medtronic, Inc. v. Teleflex Innovations S.À.R.L., IPR2020-00135 (P.T.A.B. Jun. 7, 2021), J.A. 223–98; Medtronic, Inc. v. Teleflex Innovations S.À.R.L., IPR2020-00137 (P.T.A.B. Jun. 7, 2021), J.A. 299– 373. For the reasons provided below, we affirm.

DYK, Circuit Judge, dissenting.

Contrary to the majority, I think that Itou has been shown to be prior art to the patents at issue and therefore could support a determination of anticipation or obvious-ness. This is so because, under the pre-America Invents Act (“AIA”) 35 U.S.C. § 102(e), applicable to this case, Itou has an earlier filing date than that of the ‘032 patent, and the evidence in this case fails to adequately corroborate inventor testimony that the rapid exchange (“RX”) Guide-Liner invention had been reduced to practice before Itou’s filing date of September 23, 2005. I agree with the majority that the Board correctly identified the object of the invention as “providing increased backup support,” Panel Op. 6, and that the testimony and corroborating evidence support the Board’s finding that prototypes reflecting the invention were assembled before the priority date. Panel Op. 12. My disagreement lies with respect to the issue of testing. Specifically, the evidence does not corroborate that testing of the RX GuideLiner prototypes before the critical date had shown them to work for their intended purpose.

Gomez-Rodriguez v. Department of the Army (Nonprecedential)

Juan M. Gomez-Rodriguez petitions for review of the Merit Systems Protection Board’s (“Board”) decision affirming his removal as a Department of the Army Civilian Police (“DACP”) officer in the Army’s Installation Command, Directorate of Emergency Services (“DES”) at Fort Gordon, Georgia. We affirm.