Spotlight on Upcoming Oral Arguments – April 2017

Monday, April 3, 2017

Amgen v. Hospira, No. 16-2179, Courtroom 402

In the first BPCIA case after Amgen v. Sandoz, the Federal Circuit has been asked to determine whether Sandoz should be interpreted to allow discovery of manufacturing information required under 42 U.S.C. § 262 (l)(2)(A).  Amgen argues that the Court in Sandoz made it clear that the reference product sponsor can bring an infringement action and obtain the required information under § 262 (l)(2)(A) through discovery.  Hospira argues that Sandoz did not alter the relevancy and proportionality requirements of FRCP 26(b)(1), and that the information Amgen seeks is irrelevant.

Tuesday, April 4, 2017

EmeraChem Holdings v. Volkswagen Group of America, No. 16-1984, Courtroom 201

In this appeal, the Federal Circuit will address the extent to which the Board may rely on a disclosure identified in the petitioner’s initial IPR petition.  EmeraChem argues that the Board improperly relied on a disclosure to support an obviousness argument that was not raised in Volkswagen’s petition.  Volkswagen argues that its petition did not limit the disclosure to a specific argument, thus the Board could properly rely on the disclosure to support its obviousness conclusion

Rovalma v. Bohler-Edelstahl GmbH & Co. KG, No. 16-2233, Courtroom 402

This appeal arises from a PTAB decision finding the claims of Rovalma’s patent invalid as obvious.  Rovalma argues that the Board violated its due process rights by relying on an obviousness theory that could have been, but that was not, included in the initial IPR petition.  Bohler-Edelstahl argues that Rovalma had notice of and addressed the prior art relied on by the Board as it was the same prior art the Board relied on in its institution decision.

Wednesday, April 5, 2017

Securus Technologies v. Global Tel Link, No. 16-1992, 16-1993, Courtroom 203

In this consolidated appeal, the Federal Circuit will decide whether Securus should have been permitted to amend the claims during the IPR proceeding to correct a dependency error.  GTL argues that the amendment is improper because amendments must be made in response to a “ground of unpatentability” and § 112 does not provide a ground of unpatentability in an IPR proceeding.  Securus argues that correcting the dependency of the claims would establish that the claims are not obvious in light of the prior art identified by GTL, thus it is responding to a “ground of unpatentability.”