Spotlight on Upcoming Oral Arguments – July 2017

Monday, July 10, 2017

Nalco Company v. Chem-Mod, LLC, No. 17-1036, Courtroom 201

This appeal arises from a Northern District of Illinois decision dismissing Nalco’s infringement complaint with prejudice and denying its motion for reconsideration. Nalco argues that the law does not require pleading all underlying evidence, but rather only requires evidence sufficient to establish entitlement to relief and notice of its claim. Chem-Mod argues that the district court properly dismissed Nalco’s complaint with prejudice after Nalco repeatedly failed to plead sufficient facts to establish a plausible claim and properly rejected Nalco’s attempt to bolster its complaint with materials put before the court in its motion for reconsideration.

In re North Carolina Lottery, No. 16-2558, Courtroom 203

On appeal from the TTAB, North Carolina Lottery argues that the FIRST TUESDAY mark, used to advertise the introduction of new scratch-off games at the beginning of each month, is not merely descriptive. North Carolina Lottery argues that the mark does not “directly and immediately” convey the characteristics or features of its goods and services because a consumer’s imagination is required to determine what happens on the First Tuesday. The Board argues that the mark is descriptive since it merely describes a feature of North Carolina Lottery’s goods and services, namely, that they are available on the first Tuesday of the month.

Tuesday, July 11, 2017

Ultratec, Inc. v. CaptionCall, LLC, Nos. 16-1706, 16-1708, 16-1713, Courtroom 201

In this consolidated appeal, the Court will consider whether an inter partes review procedure denied patent owner Ultratec its constitutional rights to a trial by jury and due process. Ultratec argues that the IPR procedure deprived Ultratec of its constitutional rights by effectively stripping a jury verdict of infringement on the same patents-in-suit and replacing the verdict with an agency decision based on truncated filings and abbreviated discovery. CaptionCall argues that binding precedent forecloses Ultratec’s challenges to the constitutionality of IPR.

Audatex North America Inc. v. Mitchell International, Inc., No. 16-1913, Courtroom 203

This appeal arises from a PTAB decision finding a patent for an online car valuation service to be directed to ineligible subject matter under § 101. Patent owner Audatex argues that even if the systems and methods facially are directed to an abstract idea, Audatex’s claims are nevertheless patent eligible as they are directed to specific improvements to computer-related systems and methods for generating valuation reports. Mitchell International argues that the limitations do not lead to eligibility as the patent does not offer any technological improvement and utilizes a standard computer server.

Instradent USA, Inc. v. ITC, No. 16-2336, Courtroom 203

Instradent appeals an ITC ruling that a catalog published by the original patent owner was not a printed publication as of the relevant priority date.  Instradent argues that the ALJ correctly determined, and the applicant admitted, that the catalog was publicly available in March 2003, thus qualifying as § 102(b) prior art.  The Commission argues that evidence of the catalog’s public accessibility is not strong enough for an anticipation finding and that Instradent has waived any argument of anticipation by the journal article when it failed to earlier petition the Commission for review.

Wednesday, July 12, 2017

In Re Stepan Company, No. 16-1811, Courtroom 201

This appeal arises from a PTAB decision finding the claims of a glyphosate formulation obvious.  Patent owner Stepan Company argues that the claimed formulation was not “obvious to try” as there were virtually infinite possibilities and the art is highly unpredictable.  The PTAB argues that routine experimentation would have led one of ordinary skill in the art to the claimed concentrate and that the reference pointed to preferred surfactants, thus narrowing the number of surfactants from which a routine experimenter could select.

Thursday, July 13, 2017

MasterMine Software Inc. v. Microsoft Corporation, No. 16-2465, Courtroom 203

MasterMine appeals a District of Minnesota’s ruling that MasterMine’s claims were indefinite.  MasterMine argues that because each functional term in its claims is preceded by structure capable of performing the function, the claims are not indefinite.  Microsoft argues that the claims are invalid for indefiniteness because they claim both an apparatus and a method for its use, thus one of ordinary skill would be unable to reasonably ascertain the scope of the invention.