Spotlight on Upcoming Oral Arguments – February 2020

Tuesday, February 4, 2020

Gensetix, Inc. v. Baylor College of Medicine, No. 19-1424, Courtroom 402

Gensetix exclusively licensed the patents at issue from the University of Texas (“UT”) and filed a patent infringement suit in district court. UT did not join the lawsuit.  Gensetix argued that it should have been allowed to proceed either on its own under Rule 19(b) or by joining UT as a nominal party under Rule 19(a)(2). The district court rejected both grounds, granting Defendants’ motion to dismiss because joinder of UT, according to the district court, was barred by the Eleventh Amendment. The district court ruled that Rule 19(b) did not permit Gensetix to continue its suit in the absence of UT.

On appeal, Gensetix argues that because it is the exclusive licensee, UT is required to enforce the patents at issue against infringers and cooperate fully in any such suit. Gensetix asserts that the district court did not properly apply Rule 19. Proper application, according to Gensetix, would have allowed Gensetix to withstand a Motion to Dismiss.  Plaintiff-appellee UT argues that sovereign immunity immunizes it from private party litigation and extends to Rule 19 joinder issues. Defendants-appellees Baylor College of Medicine, Diakonos Research, and William K. Decker argue Gensetix waived any argument that it can proceed without UT under Rule 19 or that assignor estoppel affects the Rule 19(b) analysis because, according to Defendants-appellees, it failed to raise those issues in district court.

Thursday, February 6, 2020

Hyatt v. Iancu, No. 18-2390, Courtroom 203

Plaintiff-cross-appellant Gilbert Hyatt filed approximately 400 patent applications in 1995 before the change in law on patent term. He expanded his applications to contain over 115,000 claims. Mr. Hyatt filed four § 145 proceedings that were the subject of a consolidated prosecution laches trial and of subsequent individual patentability trials as to three of the applications. The district court rejected the USPTO’s prosecution laches defense, finding that the agency was responsible for the delay.

On appeal, the USPTO argues that the district court erred by not applying prosecution laches or considering the totality of Mr. Hyatt’s prosecution conduct. The USPTO also argues the court improperly found written description support and entered an order that incorrectly required the USPTO to issue three of Mr. Hyatt’s patents. Mr. Hyatt argues that the trial court did not abuse its discretion because the USPTO failed to substantiate its claims that he delayed the application process. Mr. Hyatt also argues that the court’s determination that he is entitled to patents on three of his patent applications should be affirmed. As cross-appellant, Mr. Hyatt claims the court erred in denying judgment on claims on which the PTAB reversed all examiner rejections.

Friday, February 7, 2020

BASF Corp. v. SNF Holding Co., No. 19-1243, Courtroom 203

Appellant BASF owned U.S. Patent No. 5,633,329, directed to a polymer-production process. BASF sued SNF for allegedly infringing its patent claims. SNF sought summary judgment of invalidity based on two alleged prior art references: (1) a confidential license between third parties Sanyo and Celanese, and (2) Celanese’s implementation of the process. Celanse sold pilot and production plants to Hoechst Corp. The district court determined that Celanese’s process covered by the ’329 patent was “known or used” under § 102(a) and “on sale” under §102(b), and that it anticipated or rendered obvious the ’329 patent claims.

On appeal, BASF argues the two references are not prior art because third-party confidential knowledge and use are not prior art. BASF relies on the argument that a license does not necessarily enable the public to justifiably believe an invention is freely available. BASF also argues that Sanyo’s transfer of know-how and limited licenses was not a sale of the invention because the claimed process was not performed as a result of the transaction. SNF argues the patented process was known or used by others because the process was known to agents of Sanyo, Celanse, and Hoechst and used by Celanese and Hoechst in the United States. SNF further argues that Celanese’s and Hoechst’s actual knowledge of the process was not negated by Hoechst because Sanyo and Celanese had confidential agreements. SNF asserts the process was on sale when it was offered to Celanese on terms that guaranteed its replication and successful performance in the United States.