Earlier this month, the Federal Circuit heard oral argument in AliveCor, Inc. v. Apple Inc., a patent case that attracted an amicus brief. In this case the Federal Circuit is reviewing a judgment of the Patent Trial and Appeal Board, which held several of AliveCor’s patents to be invalid as obvious. Judges Hughs, Linn, and Stark heard the argument. This is our argument recap.
Sean Pak argued for AliveCor. A judge began by asking, if this case was affirmed, whether it would dispose of AliveCor, Inc. v. International Trade Commision. Pak agreed it would. He then argued that Apple was conflating detection of arrhythmia with confirmation of arrhythmia. Pak went on to say that the Board’s finding was that it would be obvious to use machine learning to confirm arrhythmia using ECG data does not relate to detecting the arrhythmia using PPG data, which he argued is actually at issue. A judge then asked if AliveCor’s argument about secondary considerations had been forfeited given that AliveCor did not raise any of these contentions with the Board. Pak maintained that the arguments were not waived. A judge, however, asked “if I think that you clearly forfeited or waived these arguments, do we, nonetheless, have the discretion to find perhaps exceptional circumstances and reach this issue?” Pak answered that the court could reach the issue because there is “no waiver of a self enforcing duty of candor.” The same judge asked if Pak believed AliveCor had an obligation to bring up this issue with the Board in the first instance. Pak responded that he “believed that once we put [Apple] on notice that we did not have to take any further action.”
Mark Davies argued for Apple. A judge began by asking if the Board had addressed the argument that detection and confirmation are different. Davies responded that the Board had fully addressed that argument, pointing to the appendix. A judge then moved the discussion to the issue of secondary considerations of nonobviousness. This judge asked why Apple did not submit its own relevant evidence to the Board after being put on notice by AliveCor about secondary considerations. Davies argued that the issue should have been raised with the Board instead of almost two years after the lawsuit began. The same judge, however, asked how that could apply to the “copying evidence [AliveCor] didn’t get until the ITC hearing.” Davies maintained that AliveCor could have attempted to get that evidence sooner before he reiterated that AliveCor failed to bring this issue up with the Board. Another judge then pointed out that AliveCor had asked Apple to provide the evidence. This judge asked if “it amounted to a bit of gamesmanship that [Apple is] hiding behind a protective order.” Davies denied this suggestion, pointing out that the Board found that Apple provided “a reasonable basis for believing that the allegedly known evidence of secondary considerations did not apply to the challenged patents.”
During AliveCor’s rebuttal, one judge asked Pak why the court should not waive the secondary considerations argument. Pak explained that the argument was not brought up before the Board because “without access to Apple’s confidential information” AliveCor did not believe it “had enough [evidence] to mount a secondary consideration challenge.”
We will continue to monitor this case and report on developments.