Here is this month’s 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 an opinion in a patent case reviewing determinations by the International Trade Commission of patent ineligibility and no lack of enablement; three oral argument recaps in a patent case concerning patent term extension reissued patents, a case appealed from the Merit Systems Protection Board, and a government contract case; and a new patent case appealed from the Patent Trial and Appeal Board. Here are the details.
New Opinions
Since our last update, the Federal Circuited issued an opinion in a patent case that attracted an amicus brief.
US Synthetic Corp. v. International Trade Commission
In this case, the Federal Circuit reviewed a determination by the International Trade Commission that claims of a patent asserted by US Synthetic Corp. are patent ineligible and that certain intervening companies, who defend the ITC’s judgment in this appeal, failed to prove lack of enablement of those claims. In an opinion authored by Judge Chen that was joined by Judges Dyk and Stoll, the Federal Circuit reversed the part of the judgment related to eligibility, affirmed the part of the judgment related to enablement, and remanded the case to the ITC. Check out our opinion summary for more details.
Argument Recaps
Since our last report, the Federal Circuit heard oral arguments in three cases that attracted amicus briefs.
Merck Sharp & Dohme B.V. v. Aurobindo Pharma USA, Inc.
In this patent case, the Federal Circuit reviewed a district court’s determination that, when calculating a patent term extension for a reissued patent, the U.S. Patent and Trademark Office is statutorily required to base its calculation on the original patent’s issue date and not its reissue date. Judges Dyk, Mayer, and Reyna heard the oral argument. Check out our argument recap for more details.
Farrington v. Department of Transportation
This is a case on appeal from the Merit Systems Protection Board. There, the Board determined that Farrington was not subject to whistleblower protections under the Whistleblower Protection Enhancement Act. Judges Lourie, Mayer, and Prost heard the oral argument. Notably, earlier this week the Federal Circuit summarily affirmed the judgment of the MSPB in this case. Check out our argument recap for more details.
Hawaiian Dredging Construction Co. v. United States
In this government contract case on appeal from the Court of Federal Claims, the Federal Circuit reviewed a dismissal of a complaint seeking damages based on alleged government-caused delays in a contractor’s fulfillment of its contractual obligations. Judges Dyk, Clevenger, and Prost heard the oral argument. Check out our argument recap for more details.
New Case
One new patent case attracted an amicus brief.
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.
VLSI presents three issues in its opening brief:
- “Whether the Director’s sanctions rulings, including refusal to terminate the IPR, were arbitrary, capricious, contrary to law, or otherwise inconsistent with reasoned decisionmaking.”
- “Whether Intel was improperly joined because its IPR petition was untimely and thus not ‘properly file[d],’ 35 U.S.C. §315(c).”
- “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.”
VLSI Technology argues that former U.S. Patent and Trademark Office Director Kathi Vidal’s “failure to impose meaningful sanctions,” even though she “found OpenSky committed egregious misconduct, including extortion and abuse of process,” was “arbitrary, capricious, and inconsistent with reasoned decisionmaking.” Additionally, VLSI argues, given that “Intel’s petition was untimely, it was not ‘properly file[d],'” and so its joinder to the inter partes review was “improper.” As a result of Intel’s “unlawful participation,” VLSI argues, VLSI was prejudiced, because the “Director refused to terminate the IPR in part because Intel was a party.” Finally, VLSI also challenges the PTAB’s interpretation of a claim limitation, contending that “request” means “ask, not command.” Because the specification “uniformly describes the ‘request’ in permissive terms,” VLSI asserts, “[n]either murky prosecution history, nor forbidden extrinsic evidence, can overcome the term’s plain meaning.”
For its part, Intel filed a response brief. In it, Intel asserts “[t]he Board correctly found each challenged claims obvious on two independent grounds.” First, it explains, “substantial evidence supports the Board’s factual finding that skilled artisans would have been motivated to combine . . . references to save power,” and that “this combination does not contradict” the “principle operation” of one of the prior art references. Next, Intel claims, the “Board correctly construed ‘request’ to . . . encompass signals that ask, instruct, or command” because its construction is “supported by the claim language, specification, prosecution history, and how skilled artisans would ordinarily understand the term.” Additionally, Intel alleges, “Intel’s joinder” was well “within [the Board’s] discretion.” Intel maintains “VLSI’s argument that Intel’s IPR petition was ‘untimely’ and not ‘properly filed’ is unreviewable.” Finally, Intel says, the “Director’s denial of VLSI’s request to terminate the IPR due to OpenSky’s conduct” is also “not reviewable.” Nevertheless, Intel claims, “the Director was well within her discretion not to impose such a sanction and provided a reasoned explanation for her decision: . . . balance deterring misconduct with ensuring reliable patent rights.”
OpenSky filed a principal and response brief, which presents the following issues:
- “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?”
- “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?”
- “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)?”
- “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?”
OpenSky claims “[t]he Director has no authority to award attorney fees against” it, because there is no “‘specific and explicit’ statutory authorization” in the relevant statute. Next, it asserts that sanctions against it “penalize conduct protected under the Noerr-Pennington doctrine, which shields petitioning activity and ‘ancillary’ litigation conduct from liability unless it qualifies as ‘sham litigation.’ The Director,” it contends, “conflated lawful non-sham petitioning with alleged improper motives.” Additionally, OpenSky points to Supreme Court precedent that it says clarified “procedural requirements and substantive limitations on attorney fee sanctions,” and that fees are awardable for costs “‘solely,’ ‘but for'” caused by sanctionable conduct. Finally, it claims, the Administrative Procedure Act and due process “set certain procedural minima for agency adjudication” that the Director failed to follow, instead “improvis[ing] procedures” that are “well below statutory and constitutional guarantees.