Spotlight on Upcoming Oral Arguments – February 2017

Wednesday, February 8, 2017

Allergan v. Sandoz, No. 16-1085, Courtroom 201

In this appeal, the Federal Circuit will determine whether collateral estoppel can bar a party from asserting an infringement claim when, in previous litigation between the parties, a patent in the same family and covering the same product was held invalid.  Allergan argues that collateral estoppel should not apply in this case because the issue of the validity of the eyelash growth and eyelash darkness claims is not “identical.”  Sandoz argues that collateral estoppel should apply in this case because the two sets of claims are “substantially similar,” thus the issue is “identical.”

Intellectual Ventures II v. Ericsson, No. 16-1739, Courtroom 201

In this appeal, the Federal Circuit will address Intellectual Ventures’ argument that it was denied notice and opportunity to present rebuttal evidence required by the Administrative Procedure Act when the PTAB adopted a claim construction never argued by either party.  The Court will also address whether the PTAB erred in adopting a combination of references that Ericsson expressly abandoned and then supplying its own theory for motivation to combine.

Thursday, February 9, 2017

Phil-Insul v. Airlite Plastics, No. 16-1982, Courtroom 201

In this case, the Federal Circuit is tasked with deciding whether its own Rule 36 decisions constitute “final decisions” upon which collateral estoppel can be based.  Phil-Insul argues that the Court’s Tecsec decision stands for the proposition that Rule 36 judgments cannot have preclusive effect because the Court “does not endorse or reject any specific part of the trial court’s reasoning.” Airlite argues that the Federal Circuit rules clearly indicate that Rule 36 judgments are binding in the context of collateral estoppel.

NantKwest v. Lee, No. 16-1794, Courtroom 402

Should a dissatisfied applicant choose to pursue a civil action under 35 U.S.C. § 145, instead of appealing directly to the Federal Circuit, it must pay “all expenses of the proceedings.”  In this appeal from the E.D. Va., the Federal Circuit must decide whether the “all expenses” language allows the USPTO to recover its attorney’s fees despite the presumption that each litigant pays their own attorney’s fees.

Friday, February 10, 2017

Speck v. Bates, No. 16-1879, Courtroom 201 Speck appeals from a PTAB decision canceling the claims of an application on the grounds of interference estoppel.  Speck argues that the use of the closed-ended “consisting of” language in the interference claims precludes the application of estoppel to the appealed claims, which use the open-ended “comprising” language.  The appellees argue that the interference estoppel by judgment is warranted because the appealed claims are not “patentably distinct” from the interference claims.