The following telephone arguments will be available to the public live. Access information will be available by 9 AM ET each day of argument at: http://www.cafc.uscourts.gov/public-access-arguments.
SecurityProfiling, LLC v. Trend Micro, Inc., No. 19-1881
For over a decade, SecurityProfiling prosecuted a series of patents directed to detecting vulnerabilities in computer systems and deploying methods to mitigate system attacks, all stemming from a provisional application filed in 2003. One resulting patent was U.S. Patent No. 8,894,644 (the “’644 patent”), against which Trend Micro filed a petition for inter partes review. Trend Micro’s petition alleged, among other things, that certain claims of the ’644 patent would have been obvious over two prior art references. The Patent Trial and Appeal Board (“PTAB”) agreed with Trend Micro, finding that the challenged claims were not entitled to claim priority to the 2003 provisional because that provisional did not provide sufficient written description support for a “user option” claim limitation. And because the ’644 patent could not claim priority back to 2003, SecurityProfiling could not swear behind the two references. The PTAB thus found the ’644 patent invalid as obvious.
On appeal, SecurityProfiling argues that the PTAB erred in two ways. First, SecurityProfiling takes issue with the PTAB’s finding that one of the prior art references disclosed the “user option” functionality but that the provisional did not. But both the prior art reference and the provisional describe this same functionality, SecurityProfiling asserts; thus, in SecurityProfiling’s view, this dichotomy renders the PTAB’s decision internally inconsistent—and thus in violation of the Administrative Procedure Act. Second, SecurityProfiling argues that each application in the ’644 patent’s priority chain incorporates the full disclosure of the provisional by reference, and thus each intermediate application provides written description support for the ’644 patent. Trend Micro argues that the PTAB was correct in finding that the 2003 provisional lacked sufficient written description to support the ’644 patent. Indeed, Trend Micro claims, there can be no written description support in the intermediate applications, because material may not be incorporated from another application which itself incorporates material by reference. In other words, there can be no double incorporation. Further, Trend Micro asserts that SecurityProfiling waived its Administrative Procedure Act arguments by failing to present them until appeal.
In its reply brief, SecurityProfiling raised an additional Administrative Procedure Act violation, citing the Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). The USPTO intervened, arguing that SecurityProfiling’s waived the Arthrex issue by failing to raise the issue in or before its opening brief.
Apple Inc. v. Voip-Pal.com, Inc., No. 18-1456
Apple filed petitions for inter partes review against two patents Voip-Pal had asserted against it in district court; both reviews were instituted. During the proceedings, Dr. Thomas Sawyer, the former CEO of Voip-Pal, sent six letters directed to various members of the PTAB, the then-Acting Director of the USPTO, and the Secretary of Commerce, and sometimes copied the President, other Cabinet Secretaries, Supreme Court Justices, and Federal Circuit Judges, among others. These letters contained Dr. Sawyer’s concerns that the current state of the Patent Trial and Appeal PTAB did not embody the patent review system envisioned by the AIA. The last few letters sought judgment in Voip-Pal’s favor in the two inter partes reviews, and indicated that the USPTO had committed ethical violations and perhaps even criminal violations of the Racketeer Influenced and Corrupt Organizations Act. The final letter indicated that Dr. Sawyer had prepared the letters in cooperation with Voip-Pal. All six letters were received by the PTAB—but were not sent to Apple. By the time Final Written Decisions were issued in the two inter partes reviews, Apple was aware of only two of these letters. Those Final Written Decisions found that Apple had not shown that the challenged claims were unpatentable. Subsequently, Apple filed a motion for sanctions against Voip-Pal, requesting either judgment in its favor or a fresh proceeding before a new panel. The PTAB then changed panels of administrative patent judges. The replacement panel ruled on Apple’s sanctions motion, and found that the appropriate sanction was to allow Apple to petition for rehearing of the Final Written Decisions.
Apple appealed, arguing that the replacement panel’s decision, which deferred to the previous panel’s Final Written Decisions, violated the Administrative Procedure Act and Apple’s right to due process. Apple would have the right to petition for rehearing of the Final Written Decisions anyway, it argued, so the PTAB’s “sanction” was no sanction at all. And according to Apple, USPTO regulations do not allow the PTAB to prescribe its own sanction; rather, the PTAB must choose one of the few sanctions available, which do not include allowing a party to petition for rehearing. Further, Apple argues its right to due process was violated because Dr. Sawyer’s ex parte communications with the PTAB prevented Apple from having a full and fair opportunity to present its case before an unbiased panel. Voip-Pal argues that the PTAB is not limited to the sanctions listed in USPTO regulations; rather, those regulations allow the PTAB expansive authority to impose sanctions of its choosing. Further, Voip-Pal asserts, Apple’s delay in waiting until after the Final Written Decisions were issued to seek sanctions indicates that Apple was not seriously concerned about its due process rights until after the unfavorable decisions. Finally, Voip-Pal argues that the letters’ content did not address the merits of the two cases and thus could not have biased the PTAB. The USPTO intervened, agreeing with Voip-Pal that the PTAB’s sanction was appropriate. Further, the USPTO argues, Apple’s right to due process was not violated because it had the opportunity to respond during a rehearing process, and in any event due process concerns are not implicated by “irrelevant communications.”
Amgen Inc. v. Watson Labs., Inc., No. 19-1650
Watson was one of many defendant groups that submitted Abbreviated New Drug Applications (“ANDAs”) seeking to sell generic versions of Amgen’s Sensiparâ product. Amgen sued the groups of defendants, alleging that each ANDA product infringed its U.S. Patent No. 9,375,405 (the “’405 patent”). The district court found that Watson did not infringe the ’405 patent. Amgen appealed the noninfringement judgment, and Watson launched its generic product. Shortly thereafter, the parties negotiated and executed a settlement agreement. That agreement provided that Watson would pay Amgen $40 million, stipulate to the ’405 patent’s validity and enforceability, and stipulate that its products infringed the ’405 patent; in return, Amgen would withdraw its pending appeal and release any further damages claims. Under the agreement’s terms, the provisions on payment and release of claims would not take effect until Amgen and Watson asked the district court to enter a consent judgment. The parties did so. But seeking a consent judgment required that the court have jurisdiction, which was complicated by Amgen’s pending appeal. To give the district court jurisdiction, the parties requested that the court issue an indicative ruling that it would vacate its noninfringement opinion. With that opinion vacated, the parties would then seek a consent judgment. Before the court decided the parties’ joint motion for an indicative ruling, however, two generic pharmaceutical companies, Cipla and Sun, filed “oppositions” to the joint motion, urging the court to deny it and maintain its judgment of noninfringement. Subsequently, the court denied Amgen and Watson’s joint motion for an indicative ruling.
Amgen appealed, requesting that the Federal Circuit reverse the district court’s decision that declined to vacate the judgment of noninfringement. On appeal, Amgen argues that vacatur of the district court’s judgment is appropriate because Watson admitted that its product infringed in the parties’ proposed consent judgment, notwithstanding the district court’s contrary findings. Further, the policy behind Hatch-Waxman litigation encourages parties to agree to settlements that provide for vacatur of noninfringement judgments, Amgen argues; allowing the parties to enter into their agreed-upon judgment would promote judicial order and efficiency. In addition, Amgen asserts, the district court applied the wrong standard in deciding the joint motion. Rather than applying the framework under Federal Rule of Civil Procedure 60, as Amgen asserts it should have, the district court looked to U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership, 515 U.S. 18 (1994). Amgen argues that this constitutes legal error. And, if the Federal Circuit does not vacate the district court’s noninfringement judgment based on the parties’ settlement agreement, Amgen argues that the Court should still vacate that judgment because it was incorrect on its merits. Watson does not appeal the district court’s decision not to vacate its noninfringement judgment. On appeal, Watson argues only that if the Federal Circuit decides not to reverse that judgment, and instead reaches the merits of the case, it should affirm the district court’s judgment of noninfringement. Cipla has filed an amici brief in support of Watson.
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