FedCircuitBlog

When a patent applicant challenges the U.S. Patent and Trademark’s rejection of her patent application, and in particular takes that challenge into federal district court rather than straight to the Federal Circuit—in order, for example, to introduce new evidence and obtain de novo review—must the applicant pay the USPTO’s personnel expenses of the district court proceeding? Indeed, must the applicant pay those expenses, including attorneys’ fees, regardless of whether the applicant wins or loses in court? Those are questions the Supreme Court will consider Monday, when it holds oral argument in Peter v. NantKwest, Inc., the first of six Federal Circuit cases the Supreme Court has agreed to hear during the 2019 Term.

Next week the Federal Circuit will hear arguments in VirnetX Inc. v. Apple Inc. For the third time in a series of cases brought by VirnetX, Apple is appealing a judgment of infringement. As explained in VirnetX’s brief, “[i]n this action . . . a jury found infringement by revised versions of VPN on Demand and FaceTime,” “finding . . . that VirnetX was entitled to $502 million in damages.”

A constitutional question will be argued next week in a patent case entitled Evolved Wireless LLC v. ZTE (USA) Inc. This case presents, however, a total of three issues:  (1) “Whether the Board erred in concluding the patent claims at issue are unpatentable, by failing to properly apply its own adopted claim construction”; (2) “Whether the Board erred by refusing to consider the declaration of Evolved’s expert on the sole ground that it did not include a statement referring to penalty of perjury”; and (3) “Whether the proceedings violated Evolved’s Fifth Amendment Constitutional rights.”

Another interesting case being argued next week is Cardionet, LLC v. InfoBionic, Inc. This case presents the question of whether an improved cardiac monitoring device is ineligible for patenting under 35 U.S.C. § 101, and also whether early dismissal of the case based on the finding of ineligibility was appropriate under Federal Rule of Civil Procedure 12(b)(6).

Another case being argued next week involves X2Y Attenuators, LLC and Intel Corporation. This case presents the question of whether district court abused its discretion by dismissing two stayed cases for failure to prosecute.

One case we are following that is being argued next week is In re FCA US LLC. This case presents the question of whether the Trademark Trial and Appeal Board erred in holding a mark was likely to cause confusion given that in a separate proceeding a district court determined confusion was unlikely.

One case being argued next week involves Keith Manufacturing Co. (“Keith”) and Larry Butterfield (“Butterfield”). This case presents the issue of whether a “stipulated dismissal with prejudice functions as a ‘judgment’ under Fed. R. Civ. P. 54(a), allowing the defendant to move for an award of attorney’s fees.”

Another case being argued next week involves Intellectual Ventures I LLC (“IV”) and EMC Corp. (“EMC”). This case present the issue of whether, during an inter partes review (“IPR”), the Patent Trial and Appeal Board (“PTAB”) may premise its obviousness finding on expert testimony that represents gap-filling.

Another interesting case being argued next week involves Fraunhofer-Gesellschaft (“Fraunhofer”) and Sirius XM Radio Inc. (“SXM”). This case presents the question of whether the term “irrevocable” in a patent license precludes any forfeiture of the licensed rights.

A pharmaceutical patent case being argued next week involves Sanofi-Aventis Deutschland (“Sanofi”) and Mylan Pharmaceuticals Inc. (“Mylan”). This case presents two related issues on the subject of the law of obviousness: (1) whether “obviousness may be shown even when the prior art did not ‘expressly articulate’ or even implicitly ‘suggest’” a modification to the prior art, and (2) whether “the teachings of the challenged patents-in-suit, rather than the prior art,” are sufficient to show that a person of skill in the art (“POSITA”) “would have had a reason to modify the prior art.”