Spotlight on Upcoming Oral Arguments – June 2018

Monday, June 4, 2018

Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., No. 18-1638, Courtroom 201

In this appeal from the PTAB, the Federal Circuit has been asked to consider whether the Saint Regis Mohawk Native American Tribe may assert sovereign immunity in an inter partes review, and whether the Tribe in this case has substantial rights to the patent.  Mylan filed petitions for inter partes review of the patents related to Allergan’s drug Restasis, and Allergan assigned the patents to the Saint Regis Mohawk Tribe.  Saint Regis then granted Allergan exclusive field of use rights limited to “licensed products for all FDA-approved uses in the U.S.”  Saint Regis then moved to dismiss the inter partes reviews on the basis of sovereign immunity and Allergan moved to withdraw.  Both motions were dismissed by the Board. 

On appeal, Saint Regis argues that it should have been permitted to assert sovereign immunity because an IPR is a private adjudicatory action, instituted and prosecuted by private parties.  Saint Regis further argues that the license did not transfer “all substantial rights” to the patents and therefore, the Board erred in concluding that Allergan was “the effective patent owner.”  Mylan argues that an IPR is not a common law “suit” that is subject to sovereign immunity, but rather, is a federal agency proceeding in which the PTO reexamines its own grant of a patent.  Mylan further argues that Allergan is the “owner” for purposes of the IPR because Allergan has the right to sue for infringement and holds the exclusive right to make, use, and sell products under the patent.

Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., No. 17-1555, Courtroom 402

This appeal arises from a PTAB decision holding the claims of Bennett’s patent invalid.  In April 2012, Bennett filed suit against the Atlanta Gas Light Company (“AGLC”) and MRC Global for infringement of U.S. Patent No. 5,810,029.  In November 2012, Bennett substituted McJunkin Red Man Corporation as a defendant.  In July 2013, AGLC was dismissed for lack of personal jurisdiction.  In February 2015, AGLC filed an IPR petition.  In its Institution Decision, the PTAB rejected Bennett’s argument that the IPR was time-barred under 35 U.S.C. § 315(b). 

On appeal, Bennett argues that 35 U.S.C. § 315(b) does not include any restriction or qualifications on the “served with a complaint” language, and therefore, AGLC’s dismissal does not negate the triggering of the statute of limitations.  Bennett further argues that McJunkin Red Man is a privy of AGLC because the parties have a direct, pre-existing, substantive relationship, and thus the complaint against McJunkin Red Man also invoked the time bar under 35 U.S.C. § 315(b).  AGLC, on the other hand, argues that the IPR was not time-barred because the dismissal nullified the effect of service, and as a result, the time-bar was not triggered.  AGLC further argues that it only has a buyer-supplier relationship with McJunkin Red Man, which is insufficient to establish privity to invoke the time bar under 35 U.S.C. § 315(b).

Wednesday, June 6, 2018

Toshiba Samsung Storage v. LG Electronics, Inc., No. 17-1881, Courtroom 402

This appeal arises from a PTAB decision finding the claims of Toshiba’s patent invalid.   Toshiba argues that the Board improperly adopted an entirely new claim construction in the Final Written Decision that is inconsistent with the claim construction previously agreed upon by the parties.  Toshiba argues that adopting the new construction without giving it the opportunity to address the new construction violates the Administrative Procedure Act.  LG argues that the parties never agreed to a specific claim construction and that the PTAB resolved the differences between the parties’ proposed claim constructions in its Final Written Decision. LG further argues that if Toshiba believed the claim construction was new, Toshiba had opportunities to address the claim construction by seeking a sur-reply or by petitioning for rehearing after the Final Written Decision.

Thursday, June 7, 2018

Apple Inc. v. ContentGuard Holdings, Inc., No. 16-2548, Courtroom 201

In this appeal, the Federal Circuit will consider whether the Board erred in finding the patent at issue eligible for CBM review.  The Board determined that the patent is eligible for CBM review because the claimed invention “at the very least, is incidental or complementary to a financial activity.”  ContentGuard argues that the Board relied on an incorrect standard for CBM review that addressed whether the claims could encompass embodiments that are financial in nature rather than considering whether they affirmatively recite financial activity.  Apple argues that the patents meets the statutory definition of a CBM patent because the claims, in view of the claim language and the specification, are financial in nature.

Friday, June 8, 2018

Amarin Pharma, Inc. v. ITC, No. 18-1247, Courtroom 201

Amarin appeals from an International Trade Commission decision dismissing Amarin’s complaint and denying Amarin’s request to institute an investigation into the labeling and advertising of certain imported products.  Amarin markets Vascepa®, the only purified ethyl ester E-EPA product sold in the United States as an FDA-approved drug.  Amarin alleges that certain companies are falsely labeling or deceptively advertising their similar products as “dietary supplements” when the products are “drugs” that have not been approved for sale or use in the United States. The Commission refused to institute an investigation on view that Amarin’s allegations are precluded by the Food, Drug, and Cosmetics Act (“FDCA”), which is administered by the Food & Drug Administration. 

Amarin argues that the Commission’s decision violates the Commission’s statutory obligations to investigate alleged violations of the Tariff Act and is contrary to controlling precedent of POM Wonderful in which the Supreme Court held that “Congress did not intend the FDCA to preclude Lanham Act suits.”  The Commission contends that Amarin’s arguments require a determination of whether the accused products are in violation of the FDCA.  The Commission also contends that Amarin’s reliance on POM Wonderful is misplaced because the complaint in that case was not premised on a violation of the FDCA.