Spotlight on Upcoming Oral Arguments – December 2019

Tuesday, December 3, 2019

In-Depth Test LLC v. Maxim Integrated Products, Inc., No. 19-1409, Courtroom 203

This appeal centers on whether the patent at issue contains a sufficient inventive concept to claim patentable subject matter. The District of Delaware granted Maxim’s motion for judgment on the pleadings because it found U.S. Patent No. 6,792,373 (the ’373 patent) invalid for failure to claim patent eligible subject matter under 35 U.S.C. § 101. In-Depth owns the ’373 patent, which claims a method and apparatus for semiconductor testing. The court determined the patent fails the Alice test because it is directed to the abstract idea of “generating, receiving, analyzing by means of statistics, and reporting data” and does not contain an inventive concept.

In-Depth argues that the court impermissibly broadened the scope of the claims to find the patent invalid. In-Depth points to numerous post-grant proceedings where the ’373 patent was found to contain an inventive concept. Further, In-Depth asserts that there is a factual dispute regarding the question of an inventive concept and the case should be remanded for further fact discovery and consideration. Maxim argues that the ’373 patent is merely directed to a method of collecting data, identifying outliers within the data, and reporting the results, which is an abstract idea. Maxim further contends that identifying and reporting outliers is not an inventive concept and therefore the ’373 patent is invalid for lack of patent eligible subject matter.

Wednesday, December 4, 2019

Audatex North America, Inc. v. Mitchell International, Inc., No. 18-2108, Courtroom 402

This appeal focuses on whether proceedings at the Patent Trial and Appeal Board (PTAB) are constitutionally valid. The District Court for the Southern District of California summarily dismissed this case after the patents-in-suit were found invalid through a Covered Business Method (CBM) proceeding at the PTAB.

Audatex, owner of the patents-in-suit, argues that post-grant proceedings are unconstitutional because these proceedings, particularly CBM proceeding, are retroactive takings that violate due process, and that PTAB judge appointments violate the Appointments Clause. The patents were issued prior to the America Invents Act (AIA), and Audatex argues that the creation of new post-grant proceedings that apply to patents issued prior to the AIA is an unconstitutional taking. According to Audatex, these proceedings lack due process also because PTAB judges are not appointed by the President with the advice and consent of the Senate. This October, the Federal Circuit held that PTAB judges are principal officers that are appointed in violation of the Appointments Clause. Arthrex, Inc. v. Smith & Nephew, Inc., Case No. 18-2140 (Fed. Cir. Oct. 31, 2019). Mitchell argues that post-grant proceedings are not unconstitutional because patents have been subject to invalidation through administrative proceedings since the 1980 Patent Act.

Wednesday, December 4, 2019

Personal Audio, LLC v. CBS Corp., No. 18-2256, Courtroom 201

This appeal centers on whether post-grant proceedings at the PTAB are unconstitutional. In the district court, a jury found U.S. Patent No. 8,112,504 (the ’504 patent) valid and infringed, but the court entered a judgment of invalidity based on an inter partes review (IPR) proceeding at the PTAB.

The patent owner, Personal Audio, argues that post-grant proceedings at the PTAB are an ex post facto application of law that violate the Takings Clause. According to Personal Audio, because the ’504 patent issued prior to the AIA, the court’s finding is an unconstitutional taking without just compensation. Additionally, Personal Audio argues that retroactively applying the AIA to invalidate patents should be unconstitutional under the Ex Post Facto Clause. Personal Audio argues that the Supreme Court precedent holding that the Ex Post Facto Clause applies only to criminal litigation should be overturned. CBS argues that because the PTAB cancelled the relevant ʼ504 patent claims, Personal Audio’s action is moot and should be dismissed. Further, CBS contends that Personal Audio has waived the substantive arguments it makes on appeal. According to CBS, the Federal Circuit should not reach any constitutional arguments Personal Audio raises.

Wednesday, December 4, 2019

Cheetah Omni LLC v. AT&T Services, Inc., No. 19-1264, Courtroom 402

This appeal addresses whether the district court correctly found that the defendants hold an implied license to the patent at issue. Cheetah owns U.S. Patent No. 7,522,836 (the ’836 patent) and alleges that AT&T and Ciena Communications infringe the patent. Ciena manufacturers one of the components of AT&T’s fiber network, and Cheetah alleges that this network infringes the ’836 patent. Ciena and Cheetah previously negotiated a license agreement, but the agreement did not include the ’836 patent. The court found that Ciena had an implied license to the ’836 patent and therefore neither Ciena nor AT&T infringed.

On appeal, Cheetah argues that a license is not implied because the ’836 patent was explicitly excluded from the earlier agreement. According to Cheetah, implying a license to the ’836 patent is a windfall for Ciena because Ciena would gain rights it had not negotiated for. AT&T argues that the license granted to Ciena includes a broad list of related patents and is not limited to specific patents. AT&T further states that the license grants Ciena the right to make and sell products under the ’836 patent, and that grant includes an implied license to the ’836 patent.

Thursday, December 5, 2019

Odyssey Logistics & Tech. Corp. v. Iancu, No. 19-1066, Courtroom 203

This appeal focuses on challenges to United States Patent and Trademark Office (USPTO) procedure under the Administrative Procedure Act (APA). Odyssey alleges the USPTO violated the APA (1) when the PTAB reopened an appeal after the time period for rehearing, (2) when Odyssey was not permitted to reply to undesignated new grounds of rejection in an Examiner’s answer, and (3) by amending the Ex Parte Appeal Rules to preclude the PTAB from exercising its jurisdiction over an ex parte appeal until after briefing is completed. The district court determined that because the proceeding is still pending, Odyssey cannot challenge the PTAB appeal, that the court did not have jurisdiction to hear the new grounds argument, and that the Ex Parte Appeal Rule argument was untimely.

Odyssey argues before the Federal Circuit that because its claim against the PTAB does not relate to an issue addressed in the ongoing appeal, the court can address this issue. Further, Odyssey states that it has the right to file a reply brief to address the new grounds of rejection. Regarding the Ex Parte Appeal Rules, Odyssey argues that the six-year statute of limitations runs not from the date of publication as the district court stated, but from the effective date of the Amended Ex Parte Appeal Rules. The USPTO argues that the Patent Act precludes APA challenges to the USPTO’s examination process.