This morning, the Federal Circuit released one precedential opinion, two nonprecedential opinions, and two nonprecedential orders. The precedential opinion comes in an appeal of a decision of the Merit Systems Protection Board. One of the nonprecedential opinions comes in an appeal of a decision of the Patent Trial and Appeal Board. Notably, it includes an opinion concurring-in-part and dissenting-in-part filed by Judge Dyk. The other nonprecedential opinion comes in an appeal of a decision of the Court of Appeals for Veterans Claims. One of the orders rules on a petition for review of a decision of the Merit Systems Protection Board; the other rules on a petition for a writ of mandamus seeking to order the Patent and Trademark Office to to vacate non-institution decisions and reconsider petitions for inter partes review without relying on time-to-trial as a factor. Here are the introductions to the opinions and orders.
Neal v. Department of Veterans Affairs (Precedential)
Jennifer Neal petitions for review of a Merit Systems Protection Board (“Board”) order denying her request for attorneys’ fees. An initial decision determined that Ms. Neal’s removal from her position was not in accordance with law. The government filed a petition for review of the initial decision on the merits, which the full Board dismissed as moot because the government voluntarily gave Ms. Neal all of the relief she sought in her appeal. The administrative judge (“AJ”) then granted Ms. Neal’s request for attorneys’ fees, and the government filed a petition for review of the attorneys’ fees decision. The Board held that Ms. Neal could not recover attorneys’ fees because she was not the prevailing party. We conclude that Ms. Neal may recover attorneys’ fees as the prevailing party and reverse.
Apple Inc. v. Smart Mobile Technologies LLC (Nonprecedential)
Smart Mobile Technologies LLC owns U.S. Patent No. 9,614,943, whose claims 1–9 and 12–20 are the subject of an inter partes review (IPR) instituted by the Patent and Trademark Office (PTO) on a petition filed by Apple Inc. that asserted obviousness on nine overlapping grounds. The PTO’s Patent Trial and Appeal Board held claims 1, 5– 9, and 12–14 unpatentable for obviousness but upheld claims 2–4 and 15–20. Samsung Electronics Co., Ltd. v. Smart Mobile Technologies LLC, No. IPR2022-01004, 2023 WL 8412856, at *1 (P.T.A.B. Dec. 4, 2023) (Decision). The Board rested its upholding of the identified claims on findings that Apple had not shown, for two pairs of prior-art references, adequate rationales for combining the references. Id. at *21–24, *31–39. Apple appeals as to claims 2–4 and 15–20. We affirm.
Judge Dyk, concurring-in-part and dissenting-in-part
I join the majority opinion affirming the Board’s conclusion that claims 2–4 and claims 15–20 were not obvious over U.S. Patent No. 6,144,711 to Raleigh et al. in view of European Patent Application Publication No. 0660626 to Byrne (“Byrne”). However, Apple also asserts that claims 3 and 4 are unpatentable as obvious over Byrne in view of International Patent Publication No. WO 98/27748 to Farber et al. (“WO748”). The majority decides that there was substantial evidence to support the Board’s finding that a person of ordinary skill in the art (“POSA”) would have lacked motivation to combine Byrne with WO748 to join a virtual network. Contrary to the majority, I think that substantial evidence does not support the Board’s determination that there was insufficient motivation to combine Byrne and WO748. I respectfully dissent as to claims 3 and 4.
Lewis v. Collins (Nonprecedential)
Shirley Moore Lewis, on behalf of her late brother, William Moore1 appeals the final decision of the U.S. Court of Appeals for Veterans Claims (Veterans Court) affirming the decision of the Board of Veterans Appeals (Board), which denied his claim for an increased rating for an acquired psychiatric disorder. Moore v. McDonough, No. 21-6821, 2023 WL 1786300 (Vet. App. Feb. 7, 2023) (Decision). For the following reasons, we affirm.
Alexander v. Department of Homeland Security (Nonprecedential Order)
Patrick Anthony Alexander petitions for review of a Merit Systems Protection Board decision awarding less attorney fees than he requested. The Department of Homeland Security moves unopposed to remand to the Board because the decision “appears to have deducted attorney fees that Mr. Alexander did not . . . request” and “did not sufficiently explain these deductions.” Mot. at 7.
In re Tesla, Inc. (Nonprecedential Order)
In response to Granite Vehicle Ventures LLC filing suit alleging patent infringement, Tesla, Inc. petitioned the United States Patent and Trademark Office (“PTO”) for inter partes review (“IPR”) of the asserted patents. The Director of the PTO, through his delegee, the Deputy Director, denied Tesla’s petitions. In particular, the Director reasoned “it is unlikely that a final written decision in [these] proceeding[s] will issue before the district court trial occurs,” and such review would result “in significant duplication of effort, additional expense for the parties, and a risk of inconsistent decisions.” Appx2, Appx6. Tesla now petitions this court for a writ of mandamus directing the PTO to vacate the non-institution decisions and reconsider without relying on time-to-trial as a criterion. ECF No. 2- 1 at 11. Granite and the Director oppose.