Spotlight on Upcoming Oral Arguments – December 2016

Monday December 5, 2016

Voxathon v. FCA, No. 16-1614, Courtroom 201

This decision arises from a E.D. Tex. case in which the court held that Voxathon’s claims directed to a telephone set with multiple call appearance buttons were ineligible under 35 U.S.C. § 101. Voxathon argues that the district court erred not only in holding that the claims were directed to an abstract idea, but also incorrectly shifted the burden for the second step of the § 101 analysis to Voxathon, the patentee, to establish that an inventive concept was present.

Tuesday December 6, 2016

The Medicines Co. v. Hospira, No. 14-1469, Courtroom 402

In this appeal, the Federal Circuit will revisit its decision in Special Devices, Inc. v. OEA, Inc., which held that there is no exception to the 35 U.S.C. § 102(b) on-sale bar for commercial sales between inventors and suppliers. The Medicines Co. argues that the Court should clarify Special Devices by holding that the on-sale bar is not triggered by an inventor-supplier transaction when it is confidential and under the inventor’s control. Hospira argues that Special Devices should be left intact, pointing to the plain language of § 102(b) and precedent to support the conclusion that it does not matter who the parties to the sale are.

UUSI v. Webasto Roof Systems, No. 16-1517, Courtroom 402

In this appeal, Webasto challenges the PTAB’s claim construction and obviousness determination.  UUSI asserts that the PTAB had previously construed “materially indistinguishable” terms, which led to the Board’s determination that the claims were invalid. UUSI argues that Webasto is now collaterally estopped from challenging the Board’s claim construction and obviousness determination under 37 C.F.R. 42.73(d)(3)(i), which precludes patent owners from “taking action inconsistent with [an] adverse judgment.”

Phigenix v. Immunogen, No. 16-1544, Courtroom 402

This appeal arises from a PTAB decision upholding the patentability of all claims in an inter partes review proceeding. Immunogen has filed a motion to dismiss arguing that Phigenix lacks Article III standing to appeal. Immunogen argues that Phigenix does not suffer an injury in fact because Phigenix faces no risk of infringement and is neither an actual nor a prospective licensee of the patent at issue.

Friday December 9, 2016

In re Aqua Products, No. 15-1177, Courtroom 201

In this en banc appeal, the Federal Circuit will address the burden of persuasion and production if a patentee amends its claims during an IPR under 35 U.S.C. § 316(d). Aqua Products argues that the plain text of § 316 makes clear that the petitioner has the burden of proving unpatentability, and that nothing in § 316(d)-(e) indicates a special burden of proof for amended claims. The PTO argues that while the petitioner bears the burden for instituted claims, the patentee (as the movant) bears the burden for proposed amended claims, as these claims were never subject to examination by the agency.

The Court will also address whether the Board may sua sponte raise patentability challenges to proposed amended claims. Aqua Products argues that the Board does not have the authority, citing to the Court’s Magnum decision for the proposition that the Board’s decision must rely solely on patentability arguments advanced by the petitioner.