Posts Tagged: "Chief Judge Prost"

On January 7, the United States Court of Appeals for the Federal Circuit (CAFC) dismissed ABS Global’s appeal from the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) as moot. Cytonome/st, LLC had disavowed its ability to challenge a district court’s summary judgment that ABS did not infringe claims of the patent in suit and ABS did not establish that it engaged in or had “sufficiently concrete plans to engage in activities not covered by” Cytonome’s disavowal (ABS Global, Inc. v. Cytonome/st, LLC), said the court. The majority denied ABS’s request for vacatur and Chief Judge Prost wrote separately to dissent on the issue of vacatur.

In Facebook v. Windy City Innovations, the U.S. Court of Appeals for the Federal Circuit earlier today ruled that the Patent Trial and Appeal Board (PTAB) erred both in allowing Facebook to join itself to a proceeding in which it was already a party, and in allowing Facebook to add new claims to the inter partes reviews (IPRs) at issue through that joinder…. On the topic of whether the language of § 315(c) authorizes the joinder of a person as a party to a proceeding in which it is already a party, the Court was again clear on what the plain language of § 315(c) allows. The Director is permitted  “to join as a party [to an already instituted IPR] any person’ who meets certain requirements. 35 U.S.C. § 315 (emphases added).”

The United States Office of the Solicitor General has filed its brief in response to the Supreme Court’s March request for views in Hikma Pharmaceuticals v. Vanda Pharmaceuticals. The December 6 brief says that the Federal Circuit correctly held the relevant claims of Vanda’s patent-in-suit eligible, and that the case “is not an optimal vehicle for bringing greater clarity” on the topic of Section 101 law since the CAFC arrived at the correct result. Instead, the High Court should grant certiorari in a case like Athena Diagnostics v. Mayo Collaborative Services, in which the order denying en banc rehearing “was accompanied by multiple separate opinions articulating different understandings of Mayo and seeking clarification from this Court.”

On January 24, the Federal Circuit affirmed a jury’s finding that the defendant-appellant, Medtronic, induced surgeons to infringe two patents of plaintiff-appellee, Dr. Mark Barry, which were directed to methods of correcting spinal column anomalies, such as those due to scoliosis, by applying force to multiple vertebrae at the same time. Medtronic appealed on several grounds, “principally concerning the public-use and on-sale statutory bars, but also concerning prior invention, inequitable conduct, and induced infringement.” The majority of the panel rejected the appellant’s arguments, while Chief Judge Prost dissented and would have found that one of the patents was invalid due to either the public use or on sale bars of Section 102(b). Barry v. Medtronic, Inc., No. 2017-2463, 2019 U.S. App. LEXIS 2305 (Fed. Cir. Jan. 24, 2019) (Before Prost, Chief Judge, Moore and Taranto, Circuit Judges) (Opinion by Taranto) (Dissent by Prost).

IPWatchdog has been closely following the growing trend of Rule 36 affirmances at the Federal Circuit. Perhaps one of the most widely publicized of these was the January 15 decision in VirnetX Inc. v. Cisco Systems, in which co-defendant Apple appealed a September 2016 jury verdict from the Eastern District of Texas awarding $302.4 million in damages to secure communications patent owner VirnetX. That verdict said that Apple had infringed two patents through its VPN On Demand and FaceTime services. While some might say a judgment that ultimately totaled more than $400 million after enhanced damages and interest warrants some kind of explanation, a look at the oral argument transcript suggests that this might be one where Rule 36 was actually appropriate—or, at least, expected. Nonetheless, “with $400 million at stake, the Federal Circuit at a minimum should have explained in a page or two why the decision below was so clearly correct, and Apple’s appeal was so clearly unnecessary,” said IPWatchdog’s Gene Quinn.