Posts in Federal Circuit

On Wednesday, June 21, the U.S. Court of Appeals for the Federal Circuit (CAFC) ruled in a nonprecedential opinion that a Florida district court correctly dismissed a UK-based patent owner’s infringement case after he willfully disobeyed the court and disrupted the enforcement of a court order. The ruling is the second time that the UK resident, Yoldas Askan, lost a patent infringement lawsuit against FARO Technologies. Askan first sued FARO, alleging that the firm’s 3D scanner product infringed on claims in three of his U.S. patents. In the first case, Askan was sanctioned twice by the court and failed to respond to a court order demanding that he show cause.

The Supreme Court’s reasoning in Amgen v. Sanofi upholds the Federal Circuit’s longstanding requirement to enable the full scope of a claimed invention. Since the Patent Act of 1790, patent law has required describing inventions with such clarity and specificity as to enable one skilled in the art to make and use the claimed invention. Moreover, the Court has consistently held that a patent fails to satisfy the enablement requirement if a person having ordinary skill must engage in undue experimentation to practice the claimed invention. The Federal Circuit has gone a step further, requiring that patents enable the full scope of a claimed invention. Amgen is a ratification of this aspect of the Federal Circuit’s enablement jurisprudence.

The Special Committee of the Judicial Council of the Federal Circuit that is investigating a complaint identified against Judge Pauline Newman filed an Order today clarifying the scope of its investigation. The Order was in response to a June 15 letter from Newman’s counsel asking for clarification of the narrowed scope of the investigation and also asking that the July 13 hearing be open to the public, which the Committee refused. The Order clarified that “no part of the investigation has been terminated” and that the investigation into whether Newman “suffers from a disability that impairs her ability to perform the duties of her office remains ongoing.” In separate orders issued June 1 and June 5, the Special Committee narrowed the focus of its investigation to whether Newman’s refusal to undergo medical examination and to provide medical records constitutes misconduct, and agreed to publicly release a number of documents at the request of Newman’s counsel, respectively.

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled in a precedential decision Wednesday that the Patent Trial and Appeal Board (PTAB) was correct to affirm a United States Patent and Trademark Office (USPTO) examiner’s finding that the claims of U.S. Patent Application 15/131,442 were obvious in view of the prior art. The patent application was filed by John Couvaras and covers a method of reducing high blood pressure. The examiner rejected the claims as “not patentable because they naturally flowed from the claimed administration of the known antihypertensive agents,” specifically, a GABA-a agonist and an Angiotensin II Receptor Blocker (ARB). Couvaras conceded during prosecution that Couvaras that GABA-a agonists and ARBs “have been known as essential hypertension treatments for many, many decades” but appealed to the PTAB on the ground that the prostacyclin—a naturally occurring compound in the body that acts as an anticoagulant and vasodilator—increase was unexpected. Couvaras also argued that objective indicia overcame any existing prima facie case of obviousness.

Parus Holdings, Inc. was unsuccessful today in its bid to the U.S. Court of Appeals for the Federal Circuit (CAFC) to reverse two Patent Trial and Appeal Board (PTAB) decisions invalidating its patent claims for voice recognition technology. The CAFC in part said in a precedential decision authored by Judge Lourie that since Parus violated the U.S. Patent and Trademark Office’s (USPTO’s) regulation against arguments incorporated by reference, the PTAB did not have to consider evidence related to those arguments.

This week, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued two precedential decisions that provide additional guidance for those participating in inter partes review (IPR) proceedings. These decisions are Medtronic, Inc. v. Teleflex Innovations S.a.r.l., cases 21-2357 and 21-2359. In total, they address six IPR proceedings challenging five patents related to various advances in guide catheter technology. The decisions raise a number of issues that suggest some tips for practice going forward.

Last week, Apple filed a petition for the U.S. Court of Appeals for the Federal Circuit (CAFC) to rehear a decision that effectively canceled the tech giant’s application to register the trademark APPLE MUSIC. The petition asks the court to rehear the case in order to direct the Trademark Trial and Appeal Board (TTAB) to narrow the services listed in the trademark application so that it can proceed to registration.

The Judicial Council of the Federal Circuit has denied Judge Pauline Newman’s request to be restored to the rotation of new case assignments pending a Special Committee’s investigation into her fitness to serve on the court. The Committee referred Newman’s request to the Judicial Council, which construed it as a request for reconsideration of its previous decision to preclude the assignment of new cases to Newman, and determined again that she should not be allowed new case assignments.

The U.S. Supreme Court today granted a petition brought by U.S. Patent and Trademark Office (USPTO) Director Katherine Vidal that asks, “whether the refusal to register a mark under Section 1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.” The case was decided by the U.S. Court of Appeals for the Federal Circuit (CAFC) in February of last year, and the full court denied a request for panel rehearing or rehearing en banc in August. The February CAFC decision held the Office’s application of Section 2(c) of the Lanham Act to reject the mark TRUMP TOO SMALL was unconstitutional. Specifically, the CAFC panel held that “applying section 2(c) to bar registration of [Steve] Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment.”

In two separate precedential decisions authored by Chief Judge Moore today, the U.S. Court of Appeals for the Federal Circuit (CAFC) delivered victory for Teleflex Innovations, S.À.R.L. when it upheld Patent Trial and Appeal Board (PTAB) rulings that found Medtronic, Inc. had failed to prove Teleflex’s patent claims for catheter technology used in interventional cardiology procedures unpatentable. The court issued a related decision last month, authored by Judge Lourie, also finding for Teleflex. Chief Judge Moore joined Lourie’s opinion, while Judge Dyk dissented.

Last week, retired U.S. Court of Appeals for the Federal Circuit (CAFC) Chief Judge Paul Michel and law professor John F. Duffy filed an amicus brief with the U.S. Supreme Court in support of CareDx, Inc. and the Board of Trustees of the Leland Stanford Junior University. The company and university are asking the Supreme Court to review a 2022 decision invalidating claims of its patents directed to detection levels of donor cell-free DNA (cfDNA) in the blood of an organ transplant patient. In the amicus brief, Michel and Duffy wrote, “this case concerns [us] because it represents a continuing trend of uncertainty and inconsistency in patent-eligibility jurisprudence…The outcome undermines the innovation promoting goals of U.S. patent law.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled in a precedential decision today that Medtronic, Inc. failed to show the challenged claims of five patents covering catheter technology unpatentable. The CAFC specifically upheld the Patent Trial and Appeal Board’s (PTAB’s) finding that the primary prior art reference cited by Medtronic did not qualify as prior art under pre-America Invents Act (AIA) first-to-invent provisions. Judge Dyk dissented, arguing that the prior art reference had been shown to qualify as prior art, and thus could support a determination of anticipation or obviousness.

On Tuesday, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision affirming a district court ruling that denied attorney fees to oil drilling equipment company, FMC Technologies. OneSubsea, a competitor in the offshore oil extraction industry, originally sued FMC for patent infringement in 2015; FMC subsequently countersued. At the heart of the patent infringement dispute was whether fluid flows through FMS’s device, as in the OneSubsea patent.

The Special Committee of the Judicial Council of the U.S. Court of Appeals for the Federal Circuit (CAFC) that is investigating Judge Pauline Newman over allegations she is unfit to serve on the court issued a redacted order yesterday specifying the behavior they say warrants the probe. Amid calls from Newman’s attorneys and ethics experts to transfer the complaint to a different circuit, a footnote on page one of yesterday’s order somewhat confusingly notes that Chief Judge Moore “did not file a complaint nor is she a complainant. Instead, Chief Judge Moore identified a complaint pursuant to Rule 5, which allows a Chief Judge to initiate the complaint when others have presented allegations establishing probable cause to believe a disability exists.”