Late yesterday, the Federal Circuit released three nonprecedential orders dismissing appeals in patent cases. This morning, the court released two precedential opinions. One comes in a patent case appealed from the Eastern District of Pennsylvania, and one comes in a veterans case appealed from the Court of Appeals for Veterans Claims. Additionally, the Federal Circuit released a precedential order denying en banc review in a patent case. Notably, Chief Judge Moore and Judge Stoll concurred and Judges Dyk and Hughes dissented from the decision to deny en banc review. Finally, the court issued a nonprecedential opinion in a patent case and two nonprecedential orders, one denying a petition for a writ of mandamus in a patent case and one dismissing a case. Here are the introductions to the opinions and orders and links to the dismissals.
FMC Corporation v. Sharda USA, LLC (Precedential)
Sharda USA, LLC (Sharda) appeals from a preliminary injunction order, barring it from importing, marketing, selling, or distributing its accused product. J.A. 1–2; see FMC Corp. v. Sharda USA LLC, No. 24-cv-02419, 2024 WL 3361604 (E.D. Pa. July 10, 2024) (First Memorandum); FMC Corp. v. Sharda USA LLC, No. 24-cv-02419, 2024 WL 3850811 (E.D. Pa. Aug. 16, 2024) (Second Memorandum). For the reasons explained below, we vacate and remand.
Wright v. Collins (Precedential)
The Board of Veterans’ Appeals (“Board”) denied Rodney Wright’s request for compensation for his adult child under 38 U.S.C. § 1115(1)(F) on the ground that he was precluded by 38 U.S.C. § 3562(2) from receiving that compensation once his daughter elected to receive direct benefits pursuant to the Survivors’ and Dependents’ Educational Assistance (“DEA”) program. The U.S. Court of Appeals for Veterans Claims (“Veterans Court”) affirmed the Board’s decision. We affirm the Veterans Court.
Bright Data Ltd. v. Code200, UAB (Nonprecedential)
Patent Owner Bright Data Ltd. (“Bright Data”) appeals the decision of the Patent Trial and Appeal Board (“Board”) in ten inter partes reviews (“IPRs”), finding the challenged claims of four of its patents unpatentable. Bright Data argues that the Board erred in its constructions of two claim terms, its reading of prior art references, and its findings regarding secondary considerations of non-obviousness. We disagree and affirm the Board.
Kroy IP Holdings, LLC v. Groupon, Inc. (Precedential Order)
Groupon, Inc. filed a combined petition for panel rehearing and rehearing en banc. A response to the petition was invited by the court and filed by Kroy IP Holdings, LLC. Unified Patents, LLC requested leave to file a brief as amicus curiae which the court granted. The petition was referred to the panel that heard the appeal, and thereafter the petition for rehearing en banc was referred to the circuit judges who are in regular active service. The court conducted a poll on request, and the poll failed.
Upon consideration thereof,
IT IS ORDERED THAT:
The petition for panel rehearing is denied.
The petition for rehearing en banc is denied.
MOORE, Chief Judge, with whom STOLL, Circuit Judge, joins, concurs with denial of the petition for rehearing en banc.
The Supreme Court has repeatedly reprimanded us for creating patent-specific departures from well-established principles. Collateral estoppel is a well-established doctrine. The dissent advocates for a patent-specific collateral estoppel rule contrary to Supreme Court precedent. Collateral estoppel does not apply when, as here, the differing standard of proof—preponderance of the evidence before the PTAB versus clear and convincing evidence in district court—materially alters the question of invalidity. See B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 154 (2015) (explaining collateral estoppel does not apply “if the second action involves application of a different legal standard,” such as a different burden of proof); Grogan v. Garner, 498 U.S. 279, 284–85 (1991) (explaining collateral estoppel does not apply when a prior judgment was rendered under a preponderance of the evidence standard and the subsequent matter requires proof by clear and convincing evidence); 18 Charles Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice & Procedure § 4422 (3d ed. 2016) (“[A] party who has carried the burden of establishing an issue by a preponderance of the evidence is not entitled to assert preclusion in a later action that requires proof of the same issue by a higher standard.”). That a patent claim is invalid by a preponderance of the evidence does not mean it is also invalid by clear and convincing evidence.
Policy implications cannot override the desire for uniformity in the application of law across different subject matters. Moreover, litigants can more efficiently and cost-effectively challenge the relevant claims through IPR— including by filing a second petition to cover any claims omitted from the first petition—rather than litigating collateral estoppel in district court. Given the PTAB’s grant of the first petition and invalidation of certain claims of the same patent, it would be odd if the PTAB did not also grant the second petition if it presented a nearly identical substantial question of invalidity.
For these reasons, I concur in the denial of en banc.
DYK, Circuit Judge, with whom HUGHES, Circuit Judge, joins, dissents from denial of petition for rehearing en banc.
We respectfully dissent from the denial of en banc rehearing.
This case presents a significant question: whether, under the Leahy-Smith America Invents Act (“AIA”), decisions of the Patent Trial and Appeal Board (“Board”) determining that particular claims are unpatentable have collateral estoppel effect in district court infringement litigation so that patentably indistinct claims are barred. In holding that there is no such collateral estoppel effect, the panel contradicts our earlier decision in XY, LLC v. Ova Genetics, L.C., 890 F.3d 1282, 1294 (Fed. Cir. 2018) (holding that IPR unpatentability decisions have “immediate issue-preclusive effect” when affirmed by this court), fails to recognize that Supreme Court precedent makes the application of collateral estoppel dependent on Congressional intent, and undermines the central purpose of the AIA—to make Board decisions a substitute for district court invalidity litigation.
In re Fintiv (Nonprecedential Order)
Fintiv, Inc. petitions for a writ of mandamus directing the United States District Court for the Western District of Texas to postpone a trial scheduled for August 4, 2025, and moves to stay trial pending disposition of the petition. Specifically, Fintiv argues that the district court errs by proceeding with trial (1) without first permitting it to take certain discovery and (2) despite Fintiv’s lead counsel having a scheduling conflict with a hearing in a different case. Apple Inc. opposes.
The remedy of mandamus is available only in “exceptional” situations to correct a “clear abuse of discretion or usurpation of judicial power” by a trial court. In re Calmar, Inc., 854 F.2d 461, 464 (Fed. Cir. 1988). A party seeking a writ bears the burden of proving that it has no “adequate alternative” to obtain the same relief, Mallard v. U.S. Dist. Ct. for the S. Dist. of Iowa, 490 U.S. 296, 309 (1989), and that the right to issuance of the writ is “clear and indisputable,” Will v. Calvert Fire Ins., 437 U.S. 655, 666 (1978) (internal quotation marks omitted). Fintiv has not met that standard here. Fintiv indicated to the district court that it could proceed with the trial on the current date, even with its counsel’s scheduling conflict, if it received the desired discovery. Appx031–32. And before this petition was filed, the other court rescheduled its hearing to four days after this trial is anticipated to end. At a minimum, Fintiv has not shown that an appeal after final judgment would be inadequate to raise its challenges to the district court’s rulings or shown a clear and indisputable right to relief from the current trial date under the circumstances.
Accordingly,
IT IS ORDERED THAT:
The petition and motion to stay are denied.