Here is an update 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 two new opinions, one in a patent infringement case and one in a takings case. We also highlight two recent oral arguments in two patent cases, a new reply brief filed in another patent case, and a new amicus brief in another patent case. Here are the details.
New Opinions
Since our last update, the Federal Circuit has issued two opinions in cases pending before panels that attracted amicus briefs.
Jiaxing Super Lighting Electric Appliance, Co. v. CH Lighting Technology Co.
The court issued its opinion in Jiaxing Super Lighting Electric Appliance, Co. v. CH Lighting Technology Co., a patent infringement case. In this case, the Federal Circuit reviewed a judgment of the Western District of Texas, which granted a partial judgment as a matter of law that asserted patents were not invalid and entered judgment on a jury verdict of infringement and no invalidity. In the opinion authored by Judge Dyk, the panel held, first, “the district court erred in granting JMOL” that two asserted patents “were not invalid because it erroneously prevented CH Lighting from presenting evidence of their invalidity; the district court was required to hold a new trial as to the invalidity” of the patents. Second, with respect to a third patent, “substantial evidence supports the jury’s verdicts of infringement and no invalidity.” Finally, “the district court should assess the reliability” of expert testimony “consistent with this court’s recent en banc decision in EcoFactor and under Rule 702 of the Federal Rules of Evidence.” As a result, the court said, “a new trial is required as to the validity” of the first two patents “and as to damages for infringement of all three patents.” We will post an opinion summary soon.
Dinh v. United States
The Federal Circuit also issued its opinion in Dinh v. United States. In this case, the Federal Circuit affirmed a dismissal by the Court of Federal Claims of a takings claim. The opinion, authored by Judge Stoll, first held that the Puerto Rico Oversight, Management, and Economic Stability Act “does not displace Tucker Act jurisdiction.” Next, it held, the panel “agree[d] with the Claims Court that the United States lacks the requisite amount of coercive control over the Oversight Board’s actions to create liability under the Fifth Amendment.” Finally, Judge Stoll wrote, “the Claims Court did not abuse its discretion in declining to allow amendment” of the complaint. We will post an opinion summary soon.
Argument Recaps
Since our last update panels of the Federal Circuit heard oral argument in two cases that attracted amicus briefs.
Apple Inc. v. International Trade Commission
In this patent case, Apple appealed from a judgment of the International Trade Commission, arguing the Commission erred in concluding that Masimo established an existing domestic industry, in concluding that five patent claims are infringed and not invalid, and in rejecting Apple’s prosecution laches defense. Judges Lourie, Reyna, and Stark heard the oral argument. For highlights of the oral argument, check out our argument recap.
Google LLC v. Sonos, Inc.
This patent case raises questions concerning prosecution laches, the written description requirement, and the boundaries of judicial discretion at trial. Judges Prost, Reyna, and Hughes heard the oral argument. For highlights, check out our argument recap.
Reply Brief
Late last month, Netlist, Inc. filed its reply brief in Netlist, Inc. v. Samsung Electronics Co., a utility patent case on appeal from the Patent Trial and Appeal Board. In its opening brief, Netlist pointed out how the Federal Circuit affirmed the PTAB’s decision upholding the claim in prior reexaminations. Yet, in this inter partes review, it continued, the PTAB adopted a diametrically opposed reading of the claim language. In its response brief, Samsung argued “[t]he Board properly assessed the claim language, specification, and prosecution history, as well as extrinsic evidence” to reach the correct construction, which, it said, “encompasses one or more memory devices.”
Now in its reply brief, Netlist argues the “Board cannot flip-flop constructions during a decade of proceedings until it finally arrives at one that renders the patent invalid.” It claims the “Board’s failure of reasoned decisionmaking defies” the Administrative Procedure Act. According to Netlist, the “Board . . . failed to justify reaching a different result here than in the reexaminations.” In conclusion, Netlist urges that the “Board’s decision should be reversed or vacated.”
Amicus Brief
Since our last update, an amicus brief was filed by Satya Marar in In re SAP America, Inc. The petition presents the following questions:
- Whether “[t]he Patent Office violated the 5th Amendment’s Due Process Clause by retroactively revoking its ‘binding agency guidance’ that had guaranteed SAP’s petitions would not be discretionarily denied based on parallel district court litigation, after SAP had reasonably acted in reliance on that binding guidance.”
- Whether “[t]he Office also violated the separation of powers by discretionarily denying SAP’s (and others’) IPR petitions for reasons that effectively rewrite the statute governing IPRs.”
In the brief, Marar argues “former USPTO director Vidal’s June 2022 memo presented only interim guidance.” As a result, Marar says, it “was neither a guarantee nor a representation that it would be in effect by the time that petitioner’s [Inter Partes Review] came before” the Patent Trial and Appeal Board. According to Marar, “federal court precedents indicate that the petitioner’s reliance upon it was unreasonable and does not warrant a writ of mandamus that would constrain the PTAB’s Congressionally-granted discretion and require it to apply rescinded interim guidance.”