Spotlight on Upcoming Oral Arguments – April 2019

Monday, April 1, 2019

Hyosung TNS Inc. v. ITC, No. 17-2563, Courtroom 402

In this appeal from the ITC, Hyosung seeks reversal of the ITC’s exclusion order for Hyosung’s ATMs.  Diebold filed a complaint with the ITC alleging that Hyosung’s ATMs infringe the claims of U.S. Patent Nos. 6,082,616 (“the ’616 patent”) and 7,832,631 (“the ’631 patent”).  The ITC instituted an investigation based on Diebold’s complaint.  At the conclusion of the investigation, the ITC issued its final opinion finding that Hyosung’s ATMs infringe the patents and that Diebold satisfied the “domestic industry” requirement under 19 U.S.C. § 1337(a)(3).

Hyosung argues that the ITC erred in concluding that the “domestic industry” requirement was met for the ’631 patent.  Specifically, Hyosung argues that Diebold failed to demonstrate that significant or substantial expenditures related to the ’631 patent.  Hyosung contends that Diebold’s failure to show any significant expenditures after 2010 is evidence that any domestic industry that might have existed no longer exists today.  The ITC and Diebold both argue that “domestic industry” requirement can be satisfied by investments made before the filing date of the complaint.  Thus, the ITC and Diebold contend that Diebold’s investment in research and development, as well as Diebold’s continued investments in the products that practice the claimed inventions, are sufficient to satisfy the “domestic industry” requirement.

Wednesday, April 3, 2019

Mayne Pharma International Pty v. Merck Sharp & Dohme Corp., No. 18-1593, Courtroom 402

Mayne appeals a PTAB Final Written Decision finding the challenged claims unpatentable on the grounds that the PTAB improperly instituted Merck’s IPR petition.  Merck filed an IPR petition within one year of being served with the complaint alleging infringement in a related district court proceeding.  The petition did not include Merck & Co., Inc. (“MCI”), Merck’s parent corporation, as a real-party-in-interest.  Eighteen months later, Merck corrected its real-party-in-interest identification to include MCI.

Mayne argues that Merck’s petition was time barred as a result of Merck’s untimely identification of MCI as a real-party-in-interest.  Merck argues that the USPTO rules require that the “filing date” assigned to the petition must correspond to the date of Merck’s correction.  Merck argues that had the PTAB followed the USPTO rules, the filing date would have been beyond the one-year window, thus rendering the petition time-barred.  Merck argues that the purpose of the “real party in interest” disclosure is to give notice to Board members of potential conflicts and disclose parties bound by an IPR’s estoppel effects. Merck further argues that because the petition already alerted the Board to MCI’s connection to Merck and that MCI had agreed in a related district court action to be bound by the IPR’s result, the Board acted within its discretion in allowing Merck to retroactively add MCI to its disclosures and not pushing the filing date.

In Re Branded LLC, No. 18-1828, Courtroom 402

This appeal arises from a TTAB decision rejecting the mark “TWEEDS” as being generic for “shirts and sweaters.”  Branded LLC had previously registered the mark “TWEEDS” for “shirts and sweaters.”  This mark was inadvertently cancelled due to failure to file renewal paperwork before the current application for the same mark was filed.

Branded argues that in rejecting the new application, the Board did not give the appropriate weight and presumption of validity to the prior registration of the word “TWEEDS” for the same goods.  By rejecting the mark as generic without providing evidence of how public perception of “TWEEDS” has changed, Branded argues that the Board mounted a collateral attack on a mark protected under sections 14 and 15 of the Lanham Act 15 U.S.C. §§ 1064 and 1065.  In rebuttal, the USPTO first argues that Branded did not offer the prior registration as evidence. The USPTO further argues that, even if Branded had offered the prior registration as evidence, the TTAB was not required to give weight to the mark’s prior registration because registrability of a mark is determined on the basis of facts existing at the time registration is sought, not at a previous time years’ past.

Monday, April 8, 2019

Inspired Development Group v. Inspired Products Group, LLC, No. 18-1616, Courtroom 201

Inspired Development Group (“Inspired Development”) appeals from a Southern District of Florida decision finding that it had subject matter jurisdiction over the action pursuant to 28 U.S.C. § 1338(a) because the claims arose under federal patent law.

Inspired Development brought suit against Inspired Products Group (“Inspired Products”) seeking to recover unpaid patent license royalties.  Inspired Development’s complaint included claims for breach of contract, unjust enrichment, and promissory estoppel.  Inspired Development argues that the district court erred in finding federal subject matter jurisdiction under 28 U.S.C. § 1338(a) because there was no necessarily raised, actually disputed, and substantial issue of federal patent law.  Rather, Inspired Development argues that the breach of contract and unjust enrichment claims arose under state-law.  Inspired Products argues that Inspired Developments’ claims raised substantial issues of infringement, validity, and inventorship.  Specifically, Inspired Products argues that Inspired Development’s unjust enrichment claim requires proof of infringement and thus it “necessarily raised” a question of patent law.