Spotlight on Upcoming Oral Arguments – January 2018

Monday, January 8, 2018

Alexsam, Inc. v. WildCard Systems, Inc., No. 17-1682, Courtroom 201

This appeal arises from a Southern District of Florida decision denying Alexsam’s motion to remand to state court and granting summary judgment against Alexsam on its breach of contract claim.  The district court held that Fidelity’s invalidity counterclaim conferred subject matter jurisdiction and also that Alexsam’s breach of contract claim raised substantial patent issues.  Alexsam filed suit against Fidelity for breach of the parties’ license agreement.  In its answer, Fidelity alleged that Alexsam’s patents were invalid and sought a declaratory judgment of invalidity and filed a notice of removal.  On appeal, Alexsam argues that the mere fact that an issue of patent law is relevant to the contract dispute is insufficient to establish subject matter jurisdiction.  Alexsam further argues that Fidelity’s counterclaim was not compulsory, and therefore cannot independently establish jurisdiction.  Fidelity argues that Alexsam’s breach of contract claim necessarily raised disputed and substantial patent issues, which is sufficient to establish federal question jurisdiction.  Fidelity further argues that federal courts have jurisdiction over counterclaims arising under the patent laws irrespective of their compulsory or permissive nature.

Tuesday, January 9, 2018

Queens University at Kingston v. Samsung Electronics Co. Ltd., No. 16-2723, 16-2725, Courtroom 402

Queen’s University appeals from a PTAB decision finding the challenged claims invalid as anticipated.  Queen’s University argues that its due process rights were violated because Samsung introduced a new enablement argument in its Reply Brief, it was not provided an opportunity to present rebuttal evidence, and the PTAB ultimately relied exclusively on the new enablement argument in the Final Written Decision.  Samsung argues that the PTAB properly refused Queen’s University’s request to submit additional evidence because the enablement argument was disclosed in Samsung’s petitions and Samsung’s Reply Brief merely reiterated its argument.

Wednesday, January 10, 2018

SAP America, Inc. v. Wellogix, Inc., No. 17-1176, Courtroom 203

In this appeal arising from the Southern District of Texas, the Federal Circuit has been asked to consider whether a district court may consider the merits of an inter partes review or reexamination when determining whether a case is “exceptional” under Section 285.  SAP argues that the district court is required to review the “totality of the circumstances” and its successful invalidation of all of the asserted claims is a relevant and undisputed fact that should have been considered by the district court.  Wellogix argues that the text of Section 285 indicates that external litigation should not be considered, and thus, the district court should not consider the results of the PTAB proceedings.     

Thursday, January 11, 2018

SimpleAir, Inc. v. Google LLC, No. 16-2738, Courtroom 201

SimpleAir appeals from an Eastern District of Texas decision granting Google’s motion to dismiss.  Google argues that the doctrine of claim preclusion bars SimpleAir’s suit asserting infringement against the same Defendant and the same product when the asserted claims are from a terminally disclaimed continuation patent of earlier patents adjudged not infringed.  SimpleAir argues that its infringement claim is not precluded because while the accused product is the same, it asserted infringement of a different patent that was never previously asserted and the cause of action accrued after the filing of the previous cases.

Tinnus Enterprises, LLC v. Telebrands Corporation, No. 17-2194, Courtroom 201

In this appeal, the Federal Circuit will consider whether a district court must resolve a venue challenge before issuing a preliminary injunction and whether improper venue is a basis for vacating a preliminary injunction.  Telebrands argues that venue is a threshold determination that must be determined before proceeding on the merits and that the district court’s injunction must be vacated.  Tinnus argues that venue relates to the convenience of the litigants, not the power of the court, and that the possibility of improper venue should not prevent a court from issuing a “critical injunction.”  Tinnus further argues that the venue issue is not ripe as the district court has not ruled on the issue.

Friday, January 12, 2018

Energy Heating, LLC v. Heat On-The-Fly, LLC, No. 16-1559, 16-1893, 16-1894, Courtroom 402

This appeal arises from a District of North Dakota decision canceling Heat On-The-Fly’s (“HOTF”) trademark after a jury found the mark was generic.  HOTF appeals, arguing that the district court lacked subject matter jurisdiction.  HOTF argues that Energy Heating failed to provide evidence of an affirmative act by HOTF to enforce its trademark, thus there was no case or controversy sufficient to establish declaratory judgment jurisdiction over Energy Heating’s trademark claims.  Energy Heating argues that the generic nature of HOTF’s mark prevented it from describing its product and services to potential consumers, thus a case or controversy sufficient to confer jurisdiction existed.