Spotlight on Upcoming Oral Arguments – March 2018

Monday, March 5, 2018

Hyatt v. PATO, No. 17-1722, Courtroom 201

In this appeal, the Federal Circuit will consider whether the PTO exceeded its authority under the Patent Act by promulgating MPEP § 1207.04.  Hyatt argues that MPEP § 1207.04, which governs the reopening of prosecution after appeal, conflicts with the Patent Act and was promulgated in excess of the PTO’s statutory authority because it improperly enables the PTO to delay the appellate process by allowing examiners to reopen prosecution.  The PTO argues that it has the inherent authority to reopen prosecution.  The PTO further argues that the reopening of prosecution does not constitute a “final agency action,” and is therefore not a reviewable decision under the APA. 

VirnetX Inc. v. Apple, Inc., No. 17-1131, Courtroom 203

In this appeal arising from the PTAB, VirnetX contends that the PTAB erred in invalidating its patent.  VirnetX argues that the PTAB erroneously found that a reference asserted by Apple constituted a “printed publication” within the meaning of 35 U.S.C. § 102(b).  Specifically, VirnetX argues that the PTAB erred in presuming the publication was publicly available as of the date printed on the document, despite the absence of any corroborating evidence establishing dissemination on that date.  Apple argues that the date on the face of the document as well as the copyright notice and statement that “[d]istribution of this memo is unlimited” constituted sufficient evidence to support the PTAB’s finding.     

Wednesday, March 7, 2018

Valmont Industries, Inc. v. Lindsay Corp., No. 17-1235, Courtroom 201

Valmont appeals from a PTAB decision finding the challenged claims of its patent directed to a remote user interface to monitor and control irrigation equipment invalid as obvious.  Valmont argues that the statutory and regulatory framework governing inter partes reviews require petitioners to submit all of the grounds and supporting evidence in the petition.  Therefore, Valmont argues that the PTAB impermissibly considered new arguments and evidence submitted for the first time in Lindsay’s reply.  In response, Valmont argues that the challenged evidence was submitted in reply to the patent owner’s response, and thus is permissible under 35 U.S.C. § 312(a)(3).  

Thursday, March 8, 2018

NantKwest, Inc. v. Matal, No. 16-1794, Courtroom 201 (en banc)

The Federal Circuit will sit en banc to rehear the panel’s decision in NantKwest, Inc. v. Matal, 860 F.3d 1352 (Fed. Cir. 2017).  The Court will consider whether the PTO can recover its attorneys’ fees under 35 U.S.C. § 145 when an applicant chooses to commence a proceeding at the U.S. District Court for the Eastern District of Virginia.  The panel held that the PTO’s personnel expenses are part of “[a]ll the expenses of the proceeding.”  The Federal Circuit vacated the panel opinion and decided to consider this case en banc.

The PTO argues that Congress unambiguously expressed its intent to require a patent applicant to pay all expenses associated with their decision to commence a proceeding under § 145.  The PTO argues that § 145 clearly evinces Congress’s intent to place the full economic burden on the applicant, rather than on the public.  NantKwest argues that the “American Rule” creates a presumption that litigants pay their own expenses, which can be rebutted only by a “specific and explicit” statutory provision that establishes a clear Congressional intent to deviate from the American Rule.  NantKwest argues that § 145 does not mention “fees,” let alone “attorneys’ fees,” and therefore, Congress has not demonstrated its intent to deviate from the American Rule.