Spotlight on Upcoming Oral Arguments – July 2019

Tuesday, July 9, 2019

The Chamberlain Group, Inc. v. Techtronic Industries Co. Ltd., No. 18-2103, Courtroom 201

Techtronic Industries (“TTI”) appeals a jury verdict finding that the Chamberlain Group’s patents covering wirelessly transmitting information by garage door openers are valid and infringed by TTI.  CGI obtained a preliminary injection against TTI based on a claim construction that the Federal Circuit later reversed.  TTI then petitioned for institution of an IPR.  In arguing against institution, CGI argued for a broad claim construction, which the PTAB adopted.  Later, at the district court, CGI advocated for a broader claim construction, which the district court adopted.  The Court has been asked to consider whether CGI should have been estopped from arguing for a broader claim construction in the district court after advancing a narrower construction in its argument against institution of the IPR.

On appeal, TTI argues that judicial estoppel precludes CGI from arguing for a broader construction after previously arguing for a narrower construction. According to TTI, the Board adopted CGI’s narrower construction arguments and CGI’s theory of infringement in district court contradicts its argument to the Board. TTI further argues that allowing the reversal of claim construction arguments would invite gamesmanship in proceedings before the Board and district courts. CGI counters that although a narrow construction was adopted by the Board, CGI’s specific claim construction arguments were rejected. CGI argues that it would be inequitable for judicial estoppel to apply here because judicial estoppel applies only when a party succeeded in persuading a court to accept its earlier argument.

Allergan Sales, LLC v. Sandoz, Inc., No. 18-2207, Courtroom 402

Sandoz appeals from a District of New Jersey decision granting Allergan a preliminary injunction.  Allergan asserted U.S. Patent Nos. 9,770,453, 9,907,801, and 9,907,802, which claim methods for administering brimonidine tartrate and timolol maleate, against Sandoz.  In granting Allergan a preliminary injunction, the district court found that the “wherein” clauses of the asserted claims, which recite intended results, as limiting the scope of the claim.

On appeal, Sandoz argues that the “wherein” clauses in this case are not limiting because they do not add manipulative steps, but rather only desired results, and the recited effects were not material to patentability. The claims asserted in this case comprise a single step of administering a composition of brimonidine tartrate and timolol maleate (the composition itself found unpatentable as obvious) twice daily. Sandoz argues that holding intended effects as limiting in this case will allow Allergan to recapture matter from the public domain through creative claim-drafting. Allergen counters that the “wherein” clause in this case necessarily limits the asserted claims to Allergen’s pharmaceutical discoveries and were material to patentability during prosecution. Further, Allergan argues that Federal Circuit precedent does not require the “wherein” clauses in this case to contain an additional manipulative step to limit the claims, instead, the “wherein” clauses in this case are limiting as expressing inventive discovery or material to patentability.

Wednesday, July 10, 2019

Chestnut Hill Sound Inc. v. Apple Inc., No. 18-1163, Courtroom 402

U.S. Patent Nos. 8,090,309 and 8,725,063, owned by Chestnut Hill, were invalidated during an IPR. On appeal, Chestnut challenges, among other things, the constitutionality of IPRs for patents that issued prior to the enactment of the America Invents Act (“AIA”).  While the Supreme Court’s recent opinion in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, found that IPRs were constitutional, the Supreme Court did not address the constitutionality of IPRs for pre-AIA patents. 

Chestnut Hill argues that application of the AIA framework to a pre-AIA patent is unconstitutional because it is a retroactive application that is unsupported by the statute. Statutory language must provide for retroactive effect for such effect to be given.  Chestnut Hill argues that the statute authorizing IPR does not provide for retroactive effect, thus application of the AIA framework to pre-AIA patents constitutes an unconstitutional regulatory taking.  Apple first argues that the patent-at-issue should be considered an AIA patent because the issue date of the patent, January 2012, and the effective date of the AIA’s IPR provisions, September 2011, are the relevant dates for judging IPR retroactivity.  Apple further argues that IPRs are constitutional for post-AIA patents because the effect of IPR is prospective only and the IPR legislation affects procedure, not substance.  Apple further argues that the Oil States reasoning applies equally to pre-AIA and AIA patents because both are public franchises that remain subject to Board cancellation. As Intervenor, the USPTO Director argues that retroactive application of IPR comports with due process because it advances legitimate legislative purposes by rational means: it protects the public interest in avoiding monopolization of ideas that belong to the public by invalidating erroneously granted patents that cover those ideas.