Update on Important Panel Activity

Here is an update on activity in cases pending before panels of the Federal Circuit where the cases have attracted 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 four recent opinions: one addressing injunctive relief, two addressing bilateral tax treaties and their relation to net investment income tax, and one addressing educational benefits for veterans. We also identify two new cases: one raising questions related to injunctive relief, and one raising questions related to the domestic-industry requirement. We highlight two response briefs in cases that raised questions related to inter partes reviews and obviousness; two reply briefs in cases that raise questions related remedies against the United States and copyright law; and one intervenor brief in a case that raises questions related to the ability to appeal denial of institution of inter partes review. Here are the details.

Opinions

Since our last update, Federal Circuit panels have issued opinions in four cases that either attracted amicus briefs or had appointed counsel as amicus curiae: two tax cases, one design patent case, and one military benefits case.

Jacki Easlick, LLC v. Accencyc US

In this case, Jacki Easlick, LLC and JE Corporate, LLC appealed a district court’s denial of a motion for a preliminary injunction as well as a denial of a subsequent motion for reconsideration. In an opinion authored by Judge Prost and joined by Judges Dyk and Schall, the panel affirmed the lower court. For more information, check out our opinion summary.

Bruyea v. United States

In this case, the government appealed a judgment of the Court of Federal Claims based on its view that bilateral tax treaties relieve U.S. taxpayers from double taxation with respect to net investment income tax. In an opinion authored by Judge Stark and joined by Judges Chen and Hughes, the panel reversed the judgment. We will post an opinion summary soon. 

Christensen v. United States

In this case, the government appealed another judgment of the Court of Federal Claims based on its view that bilateral tax treaties relieve U.S. taxpayers from double taxation with respect to net investment income tax. In an opinion authored by Judge Stark and joined by Judges Chen and Hughes, the panel reversed the judgment. We will post an opinion summary soon.

Loomis v. Collins

In this case, Charles Loomis appealed the denial of his application for education assistance benefits to cover his flight training class. In an opinion authored by Judge Subramanian, sitting by designation, and joined by Chief Judge Moore and Judge Cunningham, the panel affirmed the judgment. We will post an opinion summary soon.

New Cases

Since our last update, we have identified two new patent cases that attracted amicus briefs.

Collision Communications, Inc. v. Samsung Electronics Co.

In this case, Collision Communications filed an appeal presenting the following question:

• “Whether the district court erred as a matter of law in denying Collision a permanent injunction to prohibit Samsung from continuing to infringe.”

Three amicus briefs supporting reversal were filed:

• Corrected Brief of Amicus Curiae Alliance of U.S. Startups and Inventors for Jobs (USIJ) in Support of Appellants and In Support of Reversal
• Brief of Amici Curiae Patent Law Experts in Support of Plaintiff-Appellant
• Brief of Amicus Curiae Interdigital, Inc. in Support of Appellant and in Support of Reversal

STIIIZY, Inc. v. International Trade Commission

In this case, STIIIZY, Inc. filed an appeal presenting the following questions:

1. “Whether investments made before a patent issues can satisfy the economic prong of the domestic-industry requirement under 19 U.S.C. § 1337(a)(3), when the statute requires that qualifying investments be made with respect to the articles ‘protected’ by the patent and, before issuance, no patent exists and no articles are protected by it.”
2. “Whether [Intervenor]’s asserted pre-issuance investments can satisfy the economic prong of the domestic-industry requirement under 19 U.S.C. § 1337, when [Intervenor] was not a licensee of the patents until after they issued.”

One amicus brief supporting reversal was filed:

• Brief of Amicus Curiae William J. Mcnichol, Jr. in Support of Appellants and Reversal

Response Briefs

Since our last update, two response briefs were filed in cases that attracted amicus briefs.

Google LLC v. Cellular South, Inc.

As a reminder, Google’s opening brief in this case presented the following questions:

1. “Whether this Court has jurisdiction over a direct appeal from a decision of the PTO denying institution of an inter partes review where the appeal raises a colorable constitutional claim that the institution process violated the equal protection component of the Due Process Clause.”
2. “Whether the PTO’s decision to deny institution of inter partes reviews for the ’954 and ’972 patents solely because both patents are over six years old violates the equal protection component of the Due Process Clause.”

Now, in its response brief, Cellular South highlights that 35 U.S.C. § 314(d) “provides in unambiguous terms that the ‘determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.'” Cellular South further asserts that “Google has failed to raise a colorable constitutional argument and has failed to demonstrate that the application of the settled expectations rule in this case violated the equal protection component of the Due Process Clause.”

Johns Hopkins University v. Merck Sharp & Dohme LLC

As a reminder, Johns Hopkins University’s opening brief in this case presented the following questions:

1. “Did the Board err by applying the JHU Inventors’ statutorily-required ClinicalTrials.gov posting as prior art where the posting was made as part of a bona fide effort by the inventors to test the hypothesis underlying their invention and to ascertain whether the invention would work as intended, and where there was no dispute as to the application of the experimental use factors?”
2. “Did the Board err in its construction of ‘in response to’ by adopting an analytical framework that does not require finding an express causal relationship between determining a patient’s MSI-H status and treating the patient according to the claimed method?”
3. “Did the Board err in its anticipation analysis by finding missing claim limitations, including regarding efficacy and patient characteristics, anticipated, either by explicit or inherent disclosure in the prior art?”
4. “Did the Board err in its obviousness determination where it relied on inherency to supply missing claim limitations and failed to evaluate the Graham factors?”

Now, in its response brief, Merck Sharp & Dohme argues that, “[a]s every court to address the question has agreed, the experimental-use doctrine does not negate the prior-art status of printed publications.” It further contends “JHU makes no effort to reconcile its position with the text of” a relevant statute. As to obviousness, Merck Sharp & Dohme claims the Board’s previous determination that “dependent claims directed to trivial method details would have been obvious . . . was particularly well founded given that JHU argued against all of Merck’s obviousness challenges together, without arguing that any of the limitations recited in the dependent claims rendered the claimed treatment method as a whole non-obvious.”

Reply Briefs

Since our last update, two reply briefs were filed in cases attracting amicus briefs.

Arbutus Biopharma Corp. v. Moderna, Inc.

As a reminder, Moderna’s opening brief in this case presented the following question:

• “Whether [28 U.S.C.] § 1498 provides the exclusive remedy—a suit against the United States in the Court of Federal Claims—for Plaintiffs’ claims of (1) direct infringement and (2) indirect infringement based on the vaccine doses Moderna manufactured in performing its C-100 Contract for the Government.”

In its response brief, Arbutus Biopharma Corp. asserted “clear language and decades of settled precedent dictate that what matters when applying § 1498 is whether the purchased goods are ‘for the Government’ in the most straightforward and obvious sense—is the United States government the direct beneficiary or not?” It contends that, because Moderna “cannot meet the long-established direct-benefit test,” it “attempts to supplant it with two alternative rules that no court ever has articulated, much less endorsed.”

Now, in its reply brief, Moderna asserts the “[p]laintiff’s gerrymandered ‘direct-benefit test’ has no basis in § 1498.” Moderna argues this “‘test’ is a case-specific improvisation that contradicts text, precedent, and common sense.”

Splunk Inc. v. Cribl, Inc.

As a reminder, Splunk’s opening brief in this case presented the following questions:

1. “Whether the district court erred in holding that Cribl’s repeated, ongoing downloading, copying, and executing of the entire copyrighted Splunk Enterprise software to test and troubleshoot Cribl Stream were ‘fair uses’ under Section 107 of the Copyright Act, where these uses were not transformative, were overwhelmingly commercial, and caused market harm to Splunk.”
2. “Whether the district court erred in interpreting the SGT and TAP agreements.”
3. “Whether remand is warranted to revise the permanent injunction where the district court’s erroneous rulings on fair use and on contract interpretation tainted its injunction analysis.”
4. “Whether the district court erred in holding at the pleadings stage that the asserted claims of U.S. Patent Nos. 9,762,443 and 10,805,438 are patent ineligible under 35 U.S.C. § 101.”

In its principle and response brief, Cribl Inc. presented the following questions in its cross appeal:

1. “Whether the district court committed reversible error in finding that any unlicensed, incidental copying of Splunk’s copyrighted object code arising from Cribl’s downloading and execution of Splunk Enterprise for purposes of testing and troubleshooting to maintain interoperability with Cribl Stream was a fair use under Section 107 of the Copyright Act.”
2. “Whether the district court correctly interpreted provisions of the parties’ agreements to allow for the fair use of Splunk Enterprise software, including through reverse-engineering, testing, and troubleshooting.”
3. “Whether there is any basis to remand for a new trial or revisit the scope of the injunction.”
4. “Whether the asserted claims of U.S. Patent Nos. 9,762,443 and 10,805,438 are patent-ineligible under 35 U.S.C. § 101.”
5. “Only to the extent this Court disturbs any copyright aspect of the judgment or injunction below, whether the district court erred in denying Cribl’s renewed motion for judgment as a matter of law as to willful copyright infringement.”

Now, in its response and reply brief, Splunk claims it “is entitled to the protections of the Copyright Act and the Patent Act to protect the substantial investments it made in its innovative Enterprise software and to prevent wholesale copying by competitor Cribl.” Splunk further contends “[t]he district court eviscerated those protections” in three stages. First, it “invalidat[ed] Splunk’s patents on the pleadings.” It then “expand[ed] fair use law further than any court has ever gone, misinterpreting Splunk’s license agreements to permit ongoing copying that is expressly prohibited.” Finally, Splunk contends it “enter[ed] a narrow injunction that permitted ongoing wholesale copying despite the jury’s verdicts in Splunk’s favor that Cribl willfully infringed Splunk’s copyright.”

Intervenor Brief

Since our last update, an intervenor brief was filed in a case attracting amicus briefs.

Google LLC v. Cellular South, Inc.

As discussed above, the appeal by Google raises the following questions:

1. “Whether this Court has jurisdiction over a direct appeal from a decision of the PTO denying institution of an inter partes review where the appeal raises a colorable constitutional claim that the institution process violated the equal protection component of the Due Process Clause.”
2. “Whether the PTO’s decision to deny institution of inter partes reviews for the ’954 and ’972 patents solely because both patents are over six years old violates the equal protection component of the Due Process Clause.”

This case attracted two amicus briefs: one filed by US*Made and several other parties and another filed by the PTAB Bar Association.

Now, in his intervenor brief, USPTO Director Squires argues 35 U.S.C. § 314(d) makes “the Director’s decisions whether to institute an inter partes review ‘final and nonappealable.’” He also advances “two independent reasons” why “[t]his Court lacks jurisdiction over Google’s appeal.” First, he contends, “Google’s appeal is barred under the plain text of 35 U.S.C. § 314(d), as it is seeking to ‘appeal’ a ‘determination by the [USPTO] whether to institute an inter partes review.’” Second, he contends, “Congress specified that a party to an inter partes review generally may appeal only from a ‘final written decision with respect to the patentability of any patent claim challenged,’ . . . and there is no final written decision for Google to appeal here.” As such, he maintains “Google improperly asks” the court “to second-guess the policy determination by the USPTO and its politically accountable Director about how best to allocate limited agency resources between discretionary review proceedings and the agency’s other needs.”