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 a new opinion issued in a patent case resolving a dispute related to claim construction, a new amicus brief in a patent case addressing discretionarily denials of petitions for inter partes review based on parallel district court litigation, a response brief in a patent case involving a dispute related to claim construction, and an intervenor brief filed by the Acting Director of the U.S. Patent and Trademark Office in a case involving an appeal and cross-appeal from an inter partes review proceeding. Finally, the court scheduled oral argument next month in two cases that attracted amicus briefs. Here are the details.
New Opinion
Since our last update, the Federal Circuit released its opinion in Alnylam Pharmaceuticals, Inc. v. Moderna, Inc., a patent case we have been watching because it attracted an amicus brief. In it, Alnylam Pharmaceuticals appealed a judgment of a district court based on the argument that the court made an error in claim construction. Judge Taranto authored the opinion for the panel. Joined by Judges Chen and Hughes, the opinion explains why the Federal Circuit found no error in the district court’s claim construction and affirmed the district court’s judgment. See our opinion summary for more information.
New Case
Since our last update, one new case attracted an amicus brief. In In re SAP America, Inc., SAP America filed a petition for a writ of mandamus presenting the following questions:
- Whether “[t]he Patent Office violated the 5th Amendment’s Due Process Clause by retroactively revoking its ‘binding agency guidance’ that had guaranteed SAP’s petitions would not be discretionarily denied based on parallel district court litigation, after SAP had reasonably acted in reliance on that binding guidance.”
- Whether “[t]he Office also violated the separation of powers by discretionarily denying SAP’s (and others’) IPR petitions for reasons that effectively rewrite the statute governing IPRs.”
The petition attracted an amicus brief from the Public Interest Patent Law Institute. It argues “[t]he extraordinary circumstances here–including the USPTO’s abrupt and unexplained policy reversal, its departure from precedent, and its retroactive application to pending proceedings–threaten the integrity of the IPR system and undermine public confidence in the agency’s fidelity to the law.” It argues “[e]xtraordinary relief is warranted to correct the agency’s unlawful conduct and to protect the public’s interest in a stable, transparent, and lawful patent system.”
Response Brief
A response brief was filed in Netlist, Inc. v. Samsung Electronics Co., a utility patent case on appeal from the Patent Trial and Appeal Board that attracted an amicus brief filed by the Alliance of U.S. Startups & Inventors for Jobs. In its opening brief, Netlist contended that, in prior reexaminations, the PTAB and the patent examiner consistently interpreted the relevant claim language to require “transmission of a command signal to only one DDR memory device at a time when there is a plurality of memory devices in a rank.” That construction, Netlist argued, is based on the claim’s text, the patent’s specification, and extensive prosecution history. Moreover, Netlist pointed out, the Federal Circuit affirmed the PTAB’s decision upholding the claim in the prior reexaminations. Yet, in this inter partes review, it continued, the PTAB adopted a diametrically opposed reading of the claim language.
Now, in its response brief, Samsung argues “[t]he Board properly assessed the claim language, specification, and prosecution history, as well as extrinsic evidence” to reach the correct construction, which it says “encompasses one or more memory devices.” With regard to the written description, Samsung maintains “Netlist’s focus on other examples of multi-device ranks is perfectly consistent with a ‘one or more’ construction and fails to offer any support for importing a ‘plurality’ limitation.” Furthermore, it argues, “[t]he Board correctly assessed the full language . . . and properly concluded” that in the reexamination the claim at issue was “not construe[d] . . . to require multiple-device ranks.” Thus, it concludes, “[t]he Board’s analysis properly applied this Court’s approach to claim construction and should be affirmed.”
Intervenor Brief
An intervenor brief was filed in VLSI Technology LLC v. OpenSky Industries, LLC by the Acting Director of the U.S. Patent and Trademark Office, Coke Morgan Stewart.
This is a patent case on an appeal from a judgment of the Patent Trial and Appeal Board in an inter partes review proceeding. This case attracted an amicus brief filed by the National Retail Federation in support of Intel and Opensky.
The appeal by VLSI raises the following questions:
- “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.”
The cross-appeal by OpenSky Industries raises the following questions:
- “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?”
Now, in her brief, Stewart argues the “USPTO’s handling of these IPRs charted a permissible course that is not reviewable in significant part, and was otherwise within the Director’s discretion and authority and supported by substantial evidence.” Stewart says “the sanction argument is judicially unreviewable under 35 U.S.C. § 314(d), as it ultimately seeks to reverse an institution decision.” Moreover, she explains, “even if the sanction argument is considered, the Director had and articulated a permissible explanation for her decision not to deinstitute.” Next, Stewart says that VLSI’s “challenge to the timeliness of Intel’s joinder petition is unreviewable” under 35 U.S.C. § 315(b) because it is “contrary the plain language . . . that exempts the petition from the time bar.” Next, Stewart contends, “[t]he Director’s attorney’s fees sanction was permissibly based solely on post-filing misconduct, and the settlement discussions at issue were sufficiently tainted by OpenSky’s misconduct that they do not constitute protected activity.” Furthermore, she argues, “[t]he record demonstrates that the Director correctly applied a ‘but for’ rationale in setting the sanction amount and adequately explained the basis for that amount.” Finally, she argues, “the Director gave ample notice of both the possible bases for sanctions and the sanctions that might be applied, while providing repeated opportunities for OpenSky to respond through discovery and multiple rounds of briefing.”
Upcoming Oral Arguments
Notices of oral argument were filed in Apple Inc. v. International Trade Commission and Google LLC v. Sonos, Inc., cases we have been following because they attracted amicus briefs. The Federal Circuit scheduled the arguments for next month. We will post argument previews soon.