Spotlight on Upcoming Oral Arguments – January 2020

Monday, January 6, 2020

Arctic Cat Inc. v. Bombadier Recreational Products, Inc., No. 19-1080, Courtroom 402

The jury found that Bombadier Recreational Products (“BRP”) willfully infringed, and the district court concluded that actual notice inquiry under 35 U.S.C. § 287(a) required it to examine the conduct of the patentee regardless of the knowledge or understanding of the infringer. The court therefore denied presuit damages because Amsted Industries Inc. v. Buckeye Steel Castings Co., 24 F.3d 178 (Fed. Cir. 1994) states that notice is an affirmative act to be done by the patentee.

On appeal, Arctic Cat argues that under a proper interpretation of § 287(a), a willful infringer is on notice of its infringement. Arctic Cat further argues that Amsted misquotes Dunlap v. Schofield, 152 U.S. 244 (1894) and should be overturned. Arctic Cat argues that the original text from Dunlap, which states that notice to infringers is an affirmative fact that a patentee has the burden of proving, is substantially different from the Federal Circuit’s misquotation in Amsted, which states that notice is an affirmative act. This distinction, Arctic Cat argues, compels reversal in this case. In response, BRP argues that under § 287(a), it is irrelevant whether the defendant knew of the patent or knew of its own infringement, and that the inquiry instead centers around whether the patentee failed to mark patented products. Further, it argues that the Amsted court correctly interpreted Dunlap to require actual notice from the patentee, in line with the clear meaning on the statute.

Monday, January 6, 2020

Dragon Intellectual Property, LLC v. DISH Network LLC, No. 19-1283, Courtroom 402

DISH appeals from a district court decision finding that DISH is not a prevailing party under 35 U.S.C. § 285 because no specific judicial relief had been granted due to the district court’s vacatur of an earlier judgement of noninfringement for mootness. The district court decision was based on a PTAB decision of unpatentability, which the Federal Circuit affirmed. The district court determined that the vacatur was warranted because the invalidity affirmance mooted the controversy. The district court therefore held that because there was no actual relief, DISH was not a prevailing party.

On appeal, DISH argues that it is a prevailing party under § 285 and that the plain language of the statute does not prohibit that determination solely because a different judicial forum awarded the relief. DISH also argues that the district court should have discretion to award § 285 fees against counsel of record as jointly and severally liable with a party. DISH further argues that attorneys who have a significant financial stake in the outcome of the litigation, such as those who act in a “quasi-party” capacity by representing nonpracticing entities on a contingent fee basis and who engage in exceptional conduct, should not escape liability. In response, appellees argue that it is not appropriate to allow the judgment of a district court, a “preliminary” resolution of a dispute, to result in any legal consequences when review of the judgement is prevented by mootness. Further, appellees argue that there is no legal basis under § 285 for entering a fee award against the losing party’s attorney. They additionally argue that when a fee-shifting statute does not explicitly permit a fee award against counsel, it prohibits it.

Wednesday, January 8, 2020

Rapid Completions LLC v. Weatherford International LLC, No. 19-1317, Courtroom 402

The question on appeal is whether by citing and relying on a paper not mentioned in the petitions, the expert declarations, or in the PTAB’s institution decisions, the PTAB did not give appellant opportunity to respond to the new evidence with its own expert testimony. In its final written decisions, the PTAB relied on argument and evidence from Weatherford that was introduced only in Weatherford’s replies. The replies relied on a paper and introduced corresponding expert testimony to argue that the claimed invention provided no surprising results. Rapid Completions requested an opportunity to submit rebuttal testimony in response to the paper, but the request was denied.

On appeal, Rapid Completions argues that by relying on a paper mentioned only in appellee’s replies, the PTAB violated Rapid Completions’ rights under the Administrative Procedure Act (“APA”). Rapid Completions further argues that the action by the PTAB was prejudicial and violated the APA’s requirements that an agency conducting a formal adjudication give notice of all material legal and factual issues to be addressed in a proceeding. In response, Weatherford argues that the PTAB’s reliance on the paper did not violated the APA because the PTAB’s final written decisions were based on the same combinations of references that were set forth in its institution decisions. Weatherford argues, therefore, that because the PTAB’s reliance on the paper did not change the obviousness grounds, there is no APA violation.

Tuesday, January 7, 2020

Coastal Industries, Inc. v. Shower Enclosures America, Inc., No. 19-1431, Courtroom 201

The Federal Circuit has been asked to consider whether cross-appellant Shower Enclosures America (“SEA”) was denied adequate notice of what the PTAB considered to be evidence of the level of ordinary skill in the art and an opportunity to discover evidence of that. During inter partes review, the PTAB denied SEA’s motion to exclude a prior art reference because SEA had not timely filed an objection to the reference.

On appeal, SEA argues that under the PTAB rules, it had no right to conduct a deposition to determine whether the prior art reference was objectionable before the date that it did so. It therefore argues that without violating PTAB rules, it was not possible to file its objection within the five-day window the PTAB required. It further argues that for the PTAB rules to be so inflexible as to not accommodate this case’s situation would be contrary to the statutory interests of justice and would therefore amount to an abuse of discretion. Coastal Industries puts forth no arguments on this issue, but instead seems to rely on the PTAB’s prior decision.

Wednesday, January 8, 2020

Sowinski v. California Air Resources Board, No. 19-1558, Courtroom 402

Sowinski appeals from a district court’s sua sponte order to dismiss its complaint with prejudice. The district court denied Sowinski’s application to proceed in forma pauperis and sua sponte ordered the complaint dismissed without leave to amend, reasoning that res judicata bars Sowinski’s claims.

On appeal, Sowinski argues that the district court violated his due process rights by sua sponte dismissing with prejudice his verified patent infringement complaint. Sowinski further argues that his complaint seeks damages for continuing violations of his patent and should therefore not be barred by res judicata. Sowinski also argues that by sua sponte dismissing his complaint, the district court effectively invalidated his presumptively valid patent without examining it. In response, the California Air Resources Board argues that a patent infringement claim is the same for claim preclusion purposes if it involves the same conduct and the same patent. It further argues that a mere date change does not allow repetitive lawsuits.