This morning, the Federal Circuit released two precedential opinions, four nonprecedential opinions, and two Rule 36 summary affirmances. One of the precedential opinions addresses an appeal from a final written decision of the Patent Trial and Appeal Board in a post-grant review, which held certain claims unpatentable as obvious or lacking written description. The other precedential opinion addresses an appeal from a judgment of the Court of Federal Claims and addresses an assertion by the government of a right to practice a patent and have a patent practiced on its behalf under a provision of a Bayh-Dole Act. Two of the nonprecedential opinions address jurisdiction, one affirms the rejection of proposed patent claims for being directed to patent-ineligible subject matter, and one affirms the dismissal of a complaint due to the claims being timebarred. Late yesterday, the Federal Circuit also released five nonprecedential orders dismissing appeals. Here are the introductions to the opinions and links to the dismissals and summary affirmances.

RAI Strategic Holdings, Inc. v. Philip Morris Products S.A. (Precedential Opinion)

RAI Strategic Holdings, Inc. appeals the Patent Trial and Appeal Board’s final written decision in a post-grant review (PGR) holding certain claims of U.S. Patent No. 10,492,542 unpatentable as obvious or lacking written description.  We affirm-in-part, vacate-in-part, and remand.  Specifically, we hold that substantial evidence supports the Board’s obviousness finding but does not support the Board’s finding that certain claims lack written description support under 35 U.S.C. § 112.

University of South Florida Board of Trustees v. United States (Precedential Opinion)

University of South Florida Board of Trustees (USF) owns now-expired United States Patent No. 5,898,094, which was issued in 1999 and is titled “Transgenic Mice Expressing APPK670N,M671L and a Mutant Presenilin Transgenes.”  In 2015, USF sued the United States in the Court of Federal Claims (Claims Court) under 28 U.S.C. § 1498(a), alleging that the United States was liable for infringement of the ʼ094 patent because, as is undisputed before us, The Jackson Laboratory, with the government’s authorization and consent, had been producing and using mice covered by the patent for the government.  As a defense, the government argued that the United States had a license to practice the patent, and have the patent practiced on its behalf, under 35 U.S.C. § 202(c)(4), a provision of the Bayh-Dole Act, Pub. L. No. 96-517, § 6(a), 94 Stat. 3019–28 (1980) (codified as amended at 35 U.S.C. §§ 20012), which addresses patent rights in work funded by the federal government.  After summary-judgment proceedings and a trial, the Claims Court agreed with the government and entered final judgment of noninfringement.  University of South Florida, Board of Trustees v. United States, 162 Fed. Cl. 59 (2022) (Claims Court Decision).

USF timely appealed.  We have jurisdiction under 28 U.S.C. § 1295(a)(3).  There is no dispute that the judgment must be affirmed if § 202(c)(4) applies.  We conclude that the provision does apply.  We therefore affirm.

Gonzalez v. McDonough (Nonprecedential Opinion)

Daniel Rosario Gonzalez appeals from a decision of the United States Court of Appeals for Veterans Claims (“the Veterans Court”) affirming a Board of Veterans’ Appeals (“the Board”) decision that denied Gonzalez’s claim for dependency and indemnity compensation (“DIC”) benefits.  Gonzalez v. McDonough, No. 20-8056, 2022 WL 17336496 (Vet. App. Nov. 30, 2022) (“Decision”).  For the reasons detailed below, we dismiss Gonzalez’s appeal for lack of jurisdiction.

In Re Zimmerman (Nonprecedential Opinion)

Jason Arthur Zimmerman appeals the Patent Trial and Appeal Board’s (“Board”) decision affirming a patent examiner’s rejection of proposed claims 59-80 and 82-132 of U.S. Patent Application No. 12/503,494 (the “’494 application”) for being directed to patent-ineligible subject matter under 35 U.S.C. § 101.  We affirm.

Ananiades v. United States (Nonprecedential Opinion)

In 1984, Constantine Ananiades entered into a research contract with the United States Air Force, and in connection with his proposal and project work, he submitted a physical container to an office of the Air Force for storage.  Over thirty years later, in December 2019, Mr. Ananiades asked the Air Force, for the first time, to return the container.  The Air Force responded that records related to the project had been destroyed in 2004.

In November 2022, Mr. Ananiades filed a complaint in the United States Court of Federal Claims (Claims Court), alleging, among other claims, that the federal government had committed a taking of his personal property (both physical and intellectual) and had breached duties under an implied-in-fact contract.  In June 2023, the Claims Court determined that Mr. Ananiades’s claims are timebarred and dismissed his complaint.  Ananiades v. United States, No. 22-1666, 2023 WL 4058399 (Fed. Cl. June 14, 2023).  On Mr. Ananiades’s appeal, we affirm. 

Bey v. United States (Nonprecedential Opinion)

Thirplus Tino Moose Bey appeals from a decision of the United States Court of Federal Claims (“the Claims Court”) dismissing his complaint for lack of subject-matter jurisdiction.  Moose Bey v. United States, No. 22-1699C, SAppx. 11–16 (Fed. Cl. Mar. 8, 2023) (“Decision”). The Claims Court also held that Bey’s breach of contract claims were barred by principles of res judicataDecision at 5.  For the following reasons, we affirm.


Rule 36 Judgments