This morning the Federal Circuit released one precedential opinion and seven nonprecedential orders. The opinion comes in a inter partes review proceeding appealed from the Patent Trial and Appeal Board. The first order denies a petition for a writ of mandamus seeking to order the Western District of Texas to transfer a case or, in the alternative, to stay proceedings pending a ruling on a motion to dismiss for improper venue and lack of personal jurisdiction. The second order vacates and remands a district court judgment in light of a recent decision of the Supreme Court. The third transfers an appeal to the Sixth Circuit. The fourth grants a joint motion to remand a case to the Court of Appeals for Veterans Claims. Two of the remaining orders are dismissals, and the last is an erratum. Here are the introductions to the opinion and first four orders and links to the remaining three orders.
Zyxel Communications Corp. v. UNM Rainforest Innovations (Precedential)
In this inter partes review proceeding, the Patent Trial and Appeal Board (the “Board”) found claims 1–4, 6, and 7 of U.S. Patent No. 8,265,096 (the “’096 patent”) unpatentable as obvious but declined to find claim 8 of the ’096 patent unpatentable as obvious. The Board also granted patentee UNM Rainforest Innovations’s (“UNMRI”) motion to amend, canceling claims 1–4, 6, and 7 and substituting in claims 44–47, 49, and 50.
Petitioner ZyXEL Communications Corp. (“ZyXEL”) appeals the Board’s determination that claim 8 was not obvious and the Board’s decision granting UNMRI’s motion to amend. UNMRI cross-appeals the Board’s determination that claims 1–4, 6, and 7 are unpatentable as obvious.
We affirm the Board’s determination that claims 1–4, 6, and 7 are unpatentable as obvious, but reverse the Board’s determination that claim 8 is not obvious. We affirm the Board’s decision to grant UNMRI’s motion to amend. However, we remand to the Board to determine if the substitute claims are unpatentable as obvious under collateral estoppel based on our holding that claims 1–4 and 6–8 are unpatentable as obvious. We also remand to the Board for it to consider whether to exercise its discretion to evaluate if the substitute claims are unpatentable as obvious on a new ground. Thus, as to the main appeal, we affirm-in-part, reverse-in-part, and remand-in-part, and we affirm as to the cross-appeal.
In re Futaba Corp. (Nonprecedential Order)
Futaba Corporation of America (“FCA”) petitions for a writ of mandamus directing the United States District Court for the Western District of Texas (“WDTX”) to dismiss this case or, in the alternative, to stay proceedings pending a ruling on its motion to dismiss for improper venue and lack of personal jurisdiction. UUSI, LLC (“Nartron”) opposes the petition.
Codrea v. Garland (Nonprecedential Order)
In light of the Supreme Court’s recent decision in Garland v. Cargill, 144 S. Ct. 1613 (June 14, 2024), which involved the same rule at issue in this case, the parties file a joint response requesting that this court vacate the existing judgment in the government’s favor and remand to the district court to permit the parties and the district court to resolve the remaining disputes in this case.
Randleman v. Firelands Habitat for Humanity, Inc. (Nonprecedential Order)
The court considers the parties’ responses to the May 23, 2024 order to show cause.
Firelands Habitat for Humanity filed a foreclosure action against Ms. Randleman in a state court in Ohio. Ms. Randleman removed the action to the United States District Court for the Northern District of Ohio, but that court later issued an order remanding the case to state court, explaining the court “lacks original jurisdiction over the foreclosure action” because “[t]he foreclosure action filed by Firelands Habitat for Humanity in state court was based on state law” and Ms. Randleman’s “[f]ederal counterclaims and defenses are inadequate to confer federal jurisdiction.” ECF No. 1-2 at 9–10 (citation omitted).