Spotlight on Upcoming Oral Arguments – July 2024

The following arguments will be available to the public live, both in-person and through online audio streaming. Access information will be available by 9 AM ET each day of argument at: https://cafc.uscourts.gov/home/oral-argument/listen-to-oral-arguments/

Tuesday, July 9, 2024, 10:00 A.M.

Koki Holdings America Ltd. v. ITC, No. 22-2006, Courtroom 201, Panel C

Kyocera Senco Industrial Tools Inc. filed a complaint with the International Trade Commission alleging Koki Holdings America Ltd. imported products infringing five patents. The ITC found that four of the asserted patents were not infringed, but Koki had infringed U.S. Patent No. 8,387,718, which relates to methods for controlling a fastener driving tool. Both Koki and Kyocera appealed, and the Federal Circuit remanded. Upon remand, Kyocera withdrew its complaint, and, in response, the ITC terminated the investigation. Koki opposed termination and appealed again. On appeal, Koki argues that the ITC acted contrary to its statutory obligation under 19 U.S.C. § 1337(b)(1) by terminating the investigation without determining whether there was a violation. Koki contends that neither of the statutory grounds for a nonconclusive termination (either a consent order or an agreement between the parties) were present here, so the ITC was required to reach a conclusion. Further, Koki argues this action is contrary to the ITC’s own rule, 19 C.F.R. § 210.21(a)(1), because it allowed Kyocera to withdraw its complaint after an initial determination. In response, the ITC first argues Koki lacks standing to bring this appeal because its alleged injury—the potentially preclusive effect that a determination in the remanded investigation could have in a future investigation—is too speculative to confer standing. The ITC further argues that even if Koki had standing, the Federal Circuit lacks jurisdiction because the termination was without prejudice. Finally, the ITC argues for alternative interpretations of 19 U.S.C. § 1337(b)(1) and 19 C.F.R. § 210.21(a)(1) should the Court reach the merits, and that its actions were not contrary to the statute or its rules. Kyocera, as intervenor, also argues that the Federal Circuit lacks jurisdiction and Koki lacks standing, stating that there is no case or controversy because Koki failed to establish its standing, Kyocera committed not to sue Koki at the ITC, so there is no redressable injury.

Friday, July 12, 2024, 10:00 A.M.

Arbor Global Strategies, LLC v. Samsung Electronics Co., Ltd., No. 22-1465, Courtroom 402, Panel H

Samsung Electronics Co., Ltd., Xilinx, Inc., and Taiwan Semiconductor Manufacturing Company, Ltd. (“TSMC”) (collectively, “Appellees”) petitioned for inter partes review regarding claims of Arbor Global Strategies, LLC’s U.S. Patent Nos. 7,282,951, 7,126,214, 6,781,226, and RE42,035, relating to reconfigurable computer processors. The Patent Trials & Appeals Board issued final written decisions (“FWDs”) in all seven IPRs, finding 107 claims across the four patents invalid for obviousness. Arbor Global appealed, arguing that the Board erred in its obviousness analysis. Arbor Global also argues it is improper for IPRs to be both instituted and adjudicated by the same panel of Administrative Patent Judges (“APJs”). Arbor Global contends that this amounts to a violation of both due process and § 554(d)(2) of the Administrative Procedure Act (“APA”), which prohibits the same employee or agent from engaging in both “investigative or prosecuting functions” and adjudicatory, decision-rendering, functions. Arbor Global further contends that the Court should overrule its decision in Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023 (Fed. Cir. 2016), because it was “based on the incorrect conclusion that both institution and FWDs are ‘adjudicatory decisions.’” Appellees counter Arbor Global’s arguments concerning the Board’s obviousness analysis. They further argue that Ethicon was not wrongly decided and is applicable here, therefore foreclosing Arbor Global’s due process and APA arguments. The United States Patent and Trademark Office intervened and similarly argues that Ethicon’s findings relating to due process concerns and APA violations are valid and therefore foreclose Arbor Global’s related arguments.

Friday, July 12, 2024, 10:00 A.M.

AliveCor, Inc. v. Apple Inc., No. 23-1512, Courtroom 402, Panel H

AliveCor, Inc. sued Apple Inc. in the Western District of Texas alleging infringement of U.S. Patent Nos. 10,638,941, 10,595,731, and 9,572,499, which claim methods of cardiac monitoring. AliveCor also initiated proceedings before the ITC, alleging infringement of these three patents. Apple then petitioned for IPRs of claims across the three patents. The Board issued FWDs on all three IPRs, finding all challenged claims unpatentable as obvious. AliveCor appealed from those decisions. On appeal, AliveCor argued that the Board erred in its obviousness determinations. AliveCor further argues that, regardless of obviousness, the Board’s decision should be vacated because Apple failed to comply with its routine discovery obligations. AliveCor contends that Apple possessed evidence of copying as a secondary consideration of non-obviousness in the form of internal documents and ITC testimony, but did not provide this during routine discovery, thus violating 37 C.F.R. § 42.51(b)(1)(iii). AliveCor argues that because this evidence was under an ITC protective order, it was not able to be used as the basis for discovery requests in the IPRs. Apple in turn argues that AliveCor failed to raise this discovery issue with the Board, the ITC, or Apple itself, so it waived this argument. Apple also argues that the protective order was not preclusive, as the ITC can be petitioned to modify protective orders to allow materials to be used before the Board. Apple further contends that evidence related to secondary considerations fell outside the scope of its discovery obligations because neither party raised secondary considerations in their respective petitions or responses.