This morning, the Federal Circuit released one precedential opinion and five nonprecedential opinions. In the precedential opinion, the court reversed a decision of the Patent Trial and Appeal Board based on an incorrect interpretation of the patent statute in the context of determining what qualifies as prior art for use in an inter partes review proceeding. Of the nonprecedential opinions, one comes in a vaccine case, one in an international trade case, one in a patent case appealed from the Patent Trial and Appeal Board, and two in patent cases appealed from district courts. Notably, Judge Stark filed additional views in the international trade case, indicating potential disagreement with the court’s law governing differential pricing analyses, while Judge Prost filed a concurring opinion in the nonprecedential opinion reviewing a decision of the Patent Trial and Appeal Board. Here are the introductions to the opinions.
Qualcomm Inc. v. Apple Inc. (Precedential)
Qualcomm Incorporated appeals from the final written decision on remand of the Patent Trial and Appeal Board. Apple Inc. filed two petitions for inter partes review challenging as unpatentable as obvious various claims of U.S. Patent No. 8,063,674, owned by Qualcomm. Each petition asserted a similar pair of grounds, one of which used certain applicant admitted prior art. The Board initially determined that the use of applicant admitted prior art in the ground complied with 35 U.S.C. § 311(b). The Board reached this determination because it concluded that, generally, applicant admitted prior art is “prior art consisting of patents or printed publications,” which, under § 311(b), are the “only” references that can form “the basis” of a ground in a petition for inter partes review.
Qualcomm appealed, and this court held that the Board misinterpreted § 311(b), because applicant admitted prior art is not “prior art consisting of patents or printed publications,” although it can be used in a petition for inter partes review under particular circumstances. We thus vacated and remanded for the Board to determine whether the applicant admitted prior art in Apple’s petitions formed “the basis” of the ground at issue in violation of § 311(b). On remand, the Board interpreted the statute and determined that the applicant admitted prior art did not form the basis of the ground. The Board thus concluded that the ground complied with § 311(b). We hold that the Board erred in its interpretation of § 311(b) and in its determination that the ground at issue complied with the statute. Accordingly, we reverse.
Doles v. Secretary of Health and Human Services (Nonprecedential)
Ms. Elizabeth Doles appeals from the final decision of the United States Court of Federal Claims (“Claims Court”) which dismissed her petition for compensation under the National Childhood Vaccine Injury Compensation Program, 42 U.S.C. §§ 300aa-10–34 (“Vaccine Act”). Doles v. Dep’t of Health & Hum. Servs., 167 Fed. Cl. 525 (2023) (Doles III). We have jurisdiction over her timely appeal under 28 U.S.C. § 1295(a)(3) and 42 U.S.C. §§ 300aa-12(f). For the reasons set forth below, we reverse the final decision of the Claims Court. Ms. Doles is entitled to compensation under the Vaccine Act. We remand for a determination of damages.
Stupp Corp. v. United States (Nonprecedential)
SeAH Steel Corporation (“SeAH”), a Korean manufacturer of welded line pipe, appeals the decision of the Court of International Trade (“Trade Court”) sustaining the third remand redetermination by the U.S. Department of Commerce (“Commerce”) in its 2015 less-than-fair-value (“LTFV”) investigation of welded line pipe imported from the Republic of Korea (“Korea”). The Trade Court judgment affirmed Commerce’s assignment of a 2.53% antidumping duty on SeAH’s imports. J.A. 3. Consistent with our precedential opinion in Marmen Inc. v. United States Wind Tower Trade Coalition, No. 23-1877 (“Marmen”), we vacate and remand for Commerce to have an opportunity to “re-perform a differential pricing analysis” that “may not rely on Cohen’s d test.” Slip Op. at 23.
Stark, Circuit Judge, additional views.
Were we writing on a blank slate, I might well be persuaded by Commerce that its use of Cohen’s d test, as one step in its three-step differential pricing analysis, is reasonable. See generally Stupp, 5 F.4th at 1353 (“Our precedents make clear that the relevant standard for reviewing Commerce’s selection of statistical tests and numerical cutoffs is reasonableness . . . .”). Moreover, had Commerce not labelled what it is doing at step one as “Cohen’s d,” and had it not tried to borrow credibility for its test by reference to Dr. Cohen’s extensive work and other literature endorsing Cohen’s d, I might agree it should be permitted to use something quite like Cohen’s d as a rough, initial “measur[e] [of] the practical significance of price difference[s].” Gov’t Br. at 17. After all, Commerce has expertise we lack and broad discretion to decide how to perform its statutory duty to identify targeted dumping. See id. at 1346 (“Congress has not delineated exactly how Commerce is to assess whether there is a pattern of export prices . . . differ[ing] significantly among purchasers, regions, or periods of time, or how Commerce is to explain[] why such differences cannot be taken into account using the average-to-average or transaction-to-transaction methods.”) (internal quotation marks omitted; alterations in original).
Valve Corp. v. Ironburg Inventions Ltd. (Nonprecedential)
Valve Corporation (“Valve”) appeals a final written decision of the Patent Trial and Appeal Board (“Board”) in inter partes review (“IPR”) 2017-00858. The Board concluded that claims 18, 19, 21, 26, and 29 of U.S. Patent No. 9,289,688 (the “’688 patent”) were not shown to be unpatentable as obvious.
In a previous appeal from the same IPR, we affirmed the Board’s determination that independent claim 1 of the ’688 patent was unpatentable as anticipated, and we determined, contrary to the Board, that the Burns reference was prior art. See Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1381 (Fed. Cir. 2021) (Valve I). We then remanded the case to the Board to determine whether the dependent claims now at issue were obvious in light of Burns.
On remand, despite our holding that claim 1 was shown to be unpatentable, the Board considered claim 1 to be “at issue” and then apparently determined that the dependent claims were not obvious because claim 1 was not obvious over Burns and another reference, LaCelle. The Board’s approach was inconsistent with our mandate in Valve I and our case law on issue preclusion. Under our precedent, the Board was required to recognize claim 1 as unpatentable and then determine whether the dependent claims were patentably indistinct from claim 1.
The Board also erred in failing to resolve factual disputes and consider relevant evidence relating to whether a person of ordinary skill in the art would be motivated to combine Burns with LaCelle for the purposes of the dependent claims. We vacate and remand the Board’s decision for further proceedings consistent with this opinion.
Prost, Circuit Judge, concurring in the result.
I join Part II of the majority’s opinion beginning with the following sentence: “Under this analysis, we conclude that the Board’s decision determining that there was a lack of motivation to combine Burns and LaCelle was not supported by substantial evidence.” Maj. 12. Patentability over Burns and LaCelle was the only issue that the parties briefed to us. And I agree with the majority’s analysis of this issue, which suffices to resolve this appeal.
Respectfully, I cannot join Part I of the majority’s opinion. The majority concludes in Part I that (1) the Board violated our mandate in Valve I, and (2) collateral estoppel required the Board—and requires it now—to conduct a “patentably distinct” analysis as to certain claims. I disagree that the Board violated our mandate. And I am disinclined to reach issues of collateral estoppel here. Those issues are complicated, they were not briefed, and their consideration is unnecessary to this appeal’s resolution.
Metacel Pharmaceuticals LLC v. Rubicon Research Private Ltd. (Nonprecedential)
Metacel Pharmaceuticals LLC (“Metacel”) appeals from a final judgment of the United States District Court for the District of New Jersey granting summary judgment of no infringement of U.S. Patent 10,610,502 (“the ’502 patent”) in favor of Rubicon Research Private Ltd. (“Rubicon”). See Metacel Pharms. LLC v. Rubicon Rsch. Priv. Ltd., No. 21-cv-19463, 2023 WL 5939903 (D.N.J. Sept. 12, 2023) (“Reconsideration Decision”); Metacel Pharms. LLC v. Rubicon Rsch. Priv. Ltd., No. 21-cv-19463 (D.N.J. July 6, 2023) (“Summary Judgment Decision”), J.A. 6010–19. For the following reasons, we affirm.
Wakefield v. Blackboard Inc. (Nonprecedential)
In 2022, this court affirmed the judgment of the United States District Court for the District of Delaware holding invalid all claims of U.S. Patent No. 7,162,696 (’696 patent). See CoolTVNetwork.com, Inc. v. Blackboard, Inc., No. 2021-2191, 2022 WL 2525330 (Fed. Cir. July 7, 2022) (per curiam). More than a year later, the named inventor of the ’696 patent, Franz A. Wakefield, doing business as CoolTVNetwork.com, Inc. (CoolTV), filed a motion for relief from the judgment under Federal Rule of Civil Procedure 60(b). The district court denied Mr. Wakefield’s motion as untimely and additionally denied Mr. Wakefield’s subsequent motion for reargument. SAppx 461.2 Because the district court did not abuse its discretion, we affirm.