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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 a new opinion in a patent infringement case, a recent oral argument in a case on appeal from the Merit Systems Protection Board, a new response and reply brief filed in a patent case, and two new patent cases that attracted amicus briefs. Here are the details.

Recent Opinion

Late last month, the Federal Circuit released its opinion in Google LLC v. Sonos, Inc., a patent case we have been following because it attracted five amicus briefs. In this case, the Federal Circuit reviewed a judgment of the Northern District of California holding several patent claims invalid and two patents unenforceable based on prosecution laches. The panel, consisting of Federal Circuit Judges Lourie and Prost and District of New Jersey Chief Judge Renée Bumb, reversed in part and affirmed in part. For more information, check out our opinion summary.

New Oral Argument 

Last month, the Federal Circuit heard oral argument in a case we have been following because it attracted an amicus brief. The case, Director of the Office of Personnel Management v. Moulton, raises a question relating to apportionment of federal employee retirement annuity supplements pursuant to court orders, for example, as a result of divorce decrees. This case asks whether the Merit Systems Protection Board misinterpreted 5 U.S.C. § 8421(c) by concluding that the Office of Personnel Management cannot divide annuity supplements at all, unless their division is expressly provided for in a court order. Judges Prost, Wallach, and Chen heard the oral argument. For highlights, read our argument recap.

New Response and Reply Brief

Since our last update, VLSI Technology filed its response and reply brief in VLSI Technology LLC v. OpenSky Industries, LLC. This is a patent case on an appeal from a judgment of the Patent Trial and Appeal Board in an inter partes review proceeding.

The appeal by VLSI raised the following questions:

  1. “Whether the Director’s sanctions rulings, including refusal to terminate the IPR, were arbitrary, capricious, contrary to law, or otherwise inconsistent with reasoned decisionmaking.”
  2. “Whether Intel was improperly joined because its IPR petition was untimely and thus not ‘properly file[d],’ 35 U.S.C. § 315(c).”
  3. “Whether the PTAB’s obviousness rulings must be set aside because they rest on an erroneous claim construction and are unsupported by substantial evidence or reasoned decisionmaking.”

The cross-appeal by OpenSky Industries raised the following questions:

  1. “Were the Director’s determination of abuse of process and award of attorney fees contrary to constitutional right or immunity, short of statutory right, arbitrary and capricious, or unsupported by substantial evidence, for failure to provide OpenSky with notice and opportunity to present its case, failure to observe requirements for an agency’s receipt of substantial evidence, and failure to provide the ‘cogent explanation’ required by the APA?”
  2. “Did the Director act in excess of statutory authority by awarding VLSI attorney fees in IPR2021-01064 where the statute does not ‘specifically and explicitly’ authorize an attorney fee award, as required by the ‘American Rule’ and governing Supreme Court precedent?”
  3. “Was the Director’s award of sanctions ‘arbitrary and capricious’ or ‘contrary to constitutional right or immunity,’ 5 U.S.C. § 706(2)(A) or (B), because the award penalizes an objectively reasonable petition immunized under the Noerr-Pennington doctrine?”
  4. “Was the Director’s sanction award an abuse of discretion or contrary to law, because it failed to make showings of ‘sole,’ ‘but for’ causal links between wrongful conduct and costs, as required by Goodyear Tire & Rubber Co. v. Haeger, 581 U.S. 101 (2017)?”

Now, in its response and reply, VLSI responds to OpenSky’s cross-appeal and replies in support of its appeal.

In support of its appeal, VLSI argues “[t]he PTO fails to answer a simple question: How could the Director find that OpenSky committed egregious misconduct in pursuing this IPR—including abuse of process and extortion—yet still allow the IPR to proceed?” VLSI contends “[t]he PTO . . . asks this Court to uphold a decision resting on authority the agency has abandoned addressing parallel IPR and district-court proceedings.” Next, it asserts, although “[t]he Director announced that . . . OpenSky’s abuse of process did not matter because its petition purportedly exhibited ‘compelling merits’ . . . no one disputes that the Memorandum says ‘abuse of process’ is reason to reject an IPR despite ‘compelling merits.'” VLSI also maintains “[t]he PTO cannot salvage the Director’s other errors” and that Intel’s efforts “to defend the PTAB’s patentability rulings” fail.

In its response to OpenSky’s cross-appeal, VLSI first argues “[t]he Director properly concluded that OpenSky pursued this IPR for improper purposes, including to extort VLSI.” According to VLSI, “[u]sing a legal proceeding for extortion constitutes an abuse of PTO processes, and the Director has ample authority to sanction such an abuse[.]” Next, it argues, “OpenSky brazenly violated the Director’s discovery orders,” which “were amply supported by statute, regulation, and the facts of this case.” Finally, VLSI asserts, “[t]he Director had statutory and regulatory authority to order OpenSky to pay attorney’s fees.”

New Cases

Since our last update, two cases attracted amicus briefs.

Vicor Corp. v. International Trade Commission

In Vicor Corp. v. International Trade Commission, Vicor filed an appeal brief presenting the following questions:

  1. “Did the Commission err in holding that Vicor had given Foxconn a royalty-free license to Vicor’s patents, where Mass. Gen. Laws Ann. ch. 106, § 2-207 requires that all conflicting terms in contracting parties’ competing forms be excluded from the resulting contract?”
  2. “Did the Commission err in holding that Vicor accepted Foxconn’s royalty-free license term by email?”

Three amicus briefs were filed. Two support the appellant and reversal:

One supports neither party:

In re Motorola Solutions, Inc.

In In re Motorola Solutions, Inc., Motorola Solutions filed a petition for a writ of mandamus to “challenge[] the USPTO’s rescission of binding rules without notice and its Acting Director’s retroactive application of that rule change to vacate the institution of IPRs.” Motorola presents three questions:

  1. “Whether the USPTO violated the APA by:

a. rescinding its binding rule prohibiting discretionary denial of IPRs based on parallel litigation without notice-and-comment rulemaking;
b. retroactively applying the Rescission; and
c. failing to consider reliance interests arising from the June 2022 Memo.”

  • 2. “Whether the USPTO violated the Fifth Amendment’s due-process clause by retroactively applying the Rescission to vacate the Board’s institution decisions, and refusing to consider facts and arguments presented after the Rescission and vacatur.”

In its response brief, Stellar, LLC contends “Motorola’s Petition is foreclosed” by precedent concluding that there is no history or tradition that supports a fundamental right to have the Board consider whether to institute one’s IPR petition. Regardless, Stellar argues, “Motorola cannot meet the standard for mandamus relief in light of the USPTO’s statutory discretion and the facts here.” Stellar also contends a “fundamental flaw in Motorola’s reasoning” is the fact that “the prior interim guidance it seeks to restore was itself not the product of notice-and-comment rulemaking.” Anyway, it says, the “new guidance is a procedural rule which does not require notice-and-comment rulemaking.” It also says “Motorola’s due process arguments have no merit.”

The Acting Director of the USPTO also filed a response to the petition. According to the government, “Motorola’s statutory complaints are barred by 35 U.S.C. § 314(d)[,]” “Motorola’s constitutional claims are meritless[,]” and “Motorola cannot satisfy the remaining mandamus factors.”

The petition attracted five amicus briefs. Four support the petitioner and a grant of mandamus:

One supports the government: