Spotlight on Upcoming Oral Arguments – August 2024

The following arguments will be available to the public live, both in-person and through online audio streaming. Access information will be available by 9 AM ET each day of argument at: https://cafc.uscourts.gov/home/oral-argument/listen-to-oral-arguments/.

Tuesday, August 6, 2024, 10:00 A.M.

Koninklijke KPN N.V. v. Vidal, No. 19-2447, Courtroom 201 Panel A

LG Electronics, Inc., HTC America, Inc. and Lenovo Inc. each petitioned for inter partes review (“IPR”) of U.S. Patent 9,014,667, directed to the efficient use of telecommunications’ network resources. The Patent Trial and Appeal Board (“PTAB”) joined the IPRs and subsequently issued a final written decision (“FWD”) finding Claims 31, 33, and 35 of the ’667 Patent invalid as obvious under 35 U.S.C. § 103. Koninklijke KPN N.V., the ’667 Patent owner, appealed. The Federal Circuit remanded, at KPN’s request, to allow KPN to seek Director review of the FWD. Director Vidal denied the request and KPN filed its Amended Notice of Appeal to the Federal Circuit. Now before the Federal Circuit, HTC remains as the only appellee in this appeal. On appeal, KPN first argues that the cited references in combination fail to teach all the limitations of Claims 31, 33, and 35. Second, KPN contends that the Board improperly relied on a motivation to combine that wasn’t presented in the IPR petition. Further arguing that even if the Board could properly rely on this motivation, it failed to adequately explain how a skilled artisan would arrive at the claimed invention.  HTC responds that the Board correctly determined that the prior art taught all the limitations of the challenged claims. HTC further argues that the Board correctly relied on the testimony of HTC’s expert in finding a motivation to combine the prior art references.

Wednesday, August 7, 2024, 10:00 A.M.

Qualcomm Incorporated v. Apple, Inc., No. 23-1208, Courtroom 201, Panel B

Apple petitioned for inter partes review of certain claims of Qualcomm’s U.S. Patent No. 8,063,674, directed to use of a feedback technique for more efficiently and quickly detecting on-or-off devices with multiple supply voltages (e.g., cell phones). The PTAB determined the challenged claims were unpatentable under Apple’s “Ground 2” based on obviousness using a combination of applicant admitted prior art (“AAPA”) and another prior art reference, Majcherczack. In its first appeal, Qualcomm challenged Ground 2 as impermissible under 35 U.S.C. § 311(b) because the ground violated the statute’s limitation that the basis of an IPR challenge can only be based on prior art patents or printed publications, and AAPA fits into neither category. The Federal Circuit in Qualcomm I held that AAPA does not qualify as either prior art patents or printed publications under the statute; however, the use of AAPA is permissible in an IPR when AAPA does not form “the basis” of a ground for invalidity by itself, i.e., an IPR petition may rely on AAPA in combination with one or more prior patents or printed publications. The Federal Circuit remanded to the Board to determine whether Apple’s Ground 2 impermissibly relies on AAPA. On remand, the Board found that because Apple’s Ground 2 relied on AAPA in combination with a prior art patent or printed publication, Majcherczack, Ground 2 complied with Section 311(b) under Qualcomm I and the USPTO’s memorandum. The Board held that AAPA was simply used to provide missing limitations but did not form the basis of Ground 2. In its second appeal, Qualcomm now argues, again, that the basis of Ground 2 exceeds the statutory limitation of Section 311(b) because Apple expressly defined the basis of Ground 2 as including AAPA and that the Board and the USPTO memorandum both misread the plain language of the statute. Further, Qualcomm contends that Qualcomm I permits AAPA to be used as support for the skilled artisan’s general knowledge but not as evidence forming the basis of an obviousness theory, which is how Apple used AAPA in Ground 2. Apple counters that Qualcomm’s appeal lacks jurisdiction to challenge the Board’s decisions to institute in the first place under 35 U.S.C. § 314(d) and argues that Apple relied on AAPA only to show the structure of a standard device generally known to a skilled artisan—a use Qualcomm I explicitly held permissible. The USPTO intervened and similarly argues the Board correctly interpreted Qualcomm I, the USPTO’s memorandum, and, ultimately, the text of Section 311(b) because Apple’s Ground 2 relied on Majcherczack in combination with AAPA. The USPTO further argues that even if of the PTAB used AAPA to supply missing claim limitations, it was permissible in this context because it served the indispensable role of the skilled artisan’s knowledge in an obviousness analysis, especially in view of Congressional intent to exclude evidence of public use or commercial sales from IPR petitions under Section 311(b).

Wednesday, August 7, 2024, 10:00 A.M.

Astellas Pharma, Inc. v. Sandoz, Inc., No. 23-2032, Courtroom 201, Panel B

Sandoz Inc., Lupin Pharmaceuticals, and Zydus Pharmaceuticals filed Abbreviated New Drug Applications in 2016 seeking approval to market generic versions of Astellas’ FDA-approved Mybretriq®. In response, Astellas filed a complaint in the District of Delaware under the Hatch-Waxman Amendments alleging the generic products will infringe U.S. Patent No. 10,842,780, which claims chemical formulations of mirabegron, the active ingredient of Mybretriq®, and its method of treatment for an overactive bladder. The defendants counter-claimed that the ’780 patent claims were invalid for anticipation (35 U.S.C. § 102), obviousness (35 U.S.C. § 103), and lack of written description, enablement, and indefiniteness (35 U.S.C. § 112). At trial, the defendants limited their invalidity case to contentions under Section 112, but the district court held the asserted claims of the ’780 patent were invalid as claiming unpatentable subject matter in violation of 35 U.S.C. § 101. In so doing, the district court resolved the validity of the asserted claims de novo and prevented further post-trial briefing, denying defendants’ motion under Federal Rule of Civil Procedure 52(b) asking the district court to make additional fact findings and conclusions of law related to their Section 112 invalidity contentions and Astellas’ infringement arguments. Astellas appealed and asserts that the district court abused its discretion under the party-presentation principle and due process because neither party presented Section 101 arguments, so the denial of post-trial briefing deprived Astellas of due process to develop a factual record relevant to this invalidity theory. Further, Astellas contends that the district court’s Section 101 analysis improperly analyzed its claims at a high level of abstraction with no reference to claim language in concluding that the claims are directed toward the unpatentable discovery of a dissolution rate that would address the food effect of mirabegron and achieving it using previously known formulation technology. Astellas asserts its claim language covers a pharmaceutical composition that complies with Section 101. Specifically, the claims are directed to sustained release hydrogel-forming formulations with a particular claimed dissolution rate. Astellas analogizes its claim language to that in the Federal Circuit case of Rapid Litigation Management, in which the inventors had discovered hepatocyte cells’ ability to survive freeze-thaw cycles with the application to achieve a desired outcome, such as methods of treating disease. See Rapid Litig. Mgmt. Ltd. V. CellzDirect, Inc., 827 F.3d 1042, 1048-49 (Fed. Cir. 2016). In response, the defendants argue that, despite its infrequency, there is a long history of courts considering patent validity issues not raised by parties, contending the principle of party presentation is not absolute. On the merits, the defendants agree with the district court’s conclusions that: (1) the claims are directed to a patent ineligible law of nature, i.e., the dissolution profile and rate that resolved the food effect of mirabegron; and (2) the claims do not contain an inventive concept sufficient to transform the claims into patent-eligible subject matter because the claimed dissolution profile limitation was achieved using well understood, routine, and conventional formulation technology.