Spotlight on Upcoming Oral Arguments – August 2016

Monday, August 1, 2016

Big Baboon v. Lee, No. 16-1232, Courtroom 402

In an ex parte reexamination, the PTO denied Big Baboon’s petition, made under 37 C.F.R. § 1.181, to strike improperly admitted evidence. Big Baboon challenged that decision in the W.D. Wash., claiming that it violated the Administrative Procedure Act (APA), but the court held that the PTO’s denial of the petition was not a final agency action and therefore unreviewable under the APA. Big Baboon’s appeal of the district court’s decision to the Ninth Circuit was transferred to the Federal Circuit. Big Baboon opposed the transfer, arguing there was no substantive patent law at issue because the only issue before the district court was whether the PTO violated the APA in denying Big Baboon’s petition to strike. This appeal concerns whether the Federal Circuit has jurisdiction and, if so, whether a party can appeal the PTO’s decision denying its petition to strike before conclusion of the examination.

Wednesday, August 3, 2016

Dynamic 3D Geosolutions v. Schlumberger, No. 15-1628, Courtroom 201

In this appeal, the Federal Circuit will consider whether the W.D. Tex. abused its discretion in disqualifying Dynamic 3D’s in-house counsel and imputing that disqualification to Dynamic 3D’s other in-house and outside counsel. Dynamic 3D accuses Schlumberger of willful infringement. Dynamic 3D’s current in-house counsel, however, was employed by Schlumberger as in-house IP counsel before Dynamic 3D brought this suit. Schlumberger alleges that this attorney would have been responsible for or had knowledge of Schlumberger’s activities that gave rise to Dynamic 3D’s willful infringement claim. As a result, Schlumberger argues that this attorney (Dynamic 3D’s now-current in-house counsel) should be disqualified because an attorney may not be adverse to a former client (here, Schlumberger) in a matter that is “substantially related” to her representation of the former client. Dynamic 3D argues that the general supervisory responsibility exercised by the head of a legal department is not by itself sufficient to establish that the attorney represented Schlumberger in a particular matter, even if it is the same as or substantially related to a matter at the new employer.

Schlumberger also argues that the court was correct in disqualifying by imputation all in-house counsel at Dynamic 3D’s parent company, Acacia, as well as outside counsel, because Texas law recognizes an irrebuttable presumption that confidences obtained by an individual attorney will be imputed to all other members of her new company. Dynamic 3D argues that the district court correctly recognized a rebuttable presumption, but erred in finding that Dynamic 3D failed to rebut the presumption.

Thursday, August 4, 2016

Personal Audio v. Electronic Frontier Foundation, No. 16-1123, Courtroom 402

Personal Audio appeals a PTAB decision invalidating certain claims of its patent, contending that the Seventh Amendment’s Reexamination Clause should bar the Board’s decision because a jury in E.D. Texas found those same claims valid seven months earlier. Personal Audio supports its argument by highlighting the similarities in the evidence used between the jury’s decision and the PTAB’s decision below. The Electronic Frontier Foundation counters that it was not a named party in the E.D. Texas suit and is therefore entitled to its “own day in court.”

Clearplay v. Customplay, No. 16-1152, Courtroom 402

In this appeal, the Federal Circuit will consider whether the PTAB is bound by specific findings set forth in its institution decision during inter partes review. Clearplay argues that, by raising new issues in a final written decision, the Board denied Clearplay due process to address the Board’s new interpretations, which directly contradicted the Board’s interpretation in the institution decision. Customplay counters that the Board is not bound by any decisions made in its institution decision.

*Bonnie Fletcher Price is a Law Clerk at Finnegan.
**Nicholas Doyle was a Summer Associate at Finnegan.