Spotlight on Upcoming Oral Arguments – May 2017

Monday, May 1, 2017

Intervet v. E.I. DuPont de Nemours, No. 16-2131, Courtroom 402

In this appeal, the Federal Circuit has been asked to determine whether the AIA eliminated district court review of post-AIA interference decisions, and if so, whether the Court should review interference decisions de novo.  Intervet argues that the Court should overrule its Biogen v. Japanese Found. for Cancer Research decision and find that district court review is still available.  Alternatively, Intervet argues that the Court should overrule its Merck & Cie v. Gnosis decision and find that the Federal Circuit should review the Board’s determination of priority de novo.  DuPont argues that the Court’s decisions in Biogen and Gnosis were correctly decided, should not be disturbed, and cannot be revisited absent en banc review.

Wednesday, May 3, 2017

GoDaddy.com v. Rpost Communications, No. 16-2335, Courtroom 402

This appeal arises from a D. Ariz. decision in which Rpost’s patents were held invalid under § 101.  Rpost argues that the district court did not have jurisdiction to hear GoDaddy’s § 101 challenge because patent ineligibility is not an enumerated litigation defense under § 282(b).  GoDaddy argues that the Federal Circuit has long recognized that § 282 defenses include the “conditions of patentability” in § 101.  This issue will be addressed in light of the Court’s holding in Versata v. SAP Am., in which the Court determined that the PTAB has the authority to consider § 101 challenges.

Shinn Fu Co. of America v. Tire Hanger Corp, No. 16-2250, Courtroom 203

Shinn Fu appeals the PTAB’s grant of Tire Hanger’s motion to amend its claims.  Shinn Fu argues that Tire Hanger failed to carry its burden to prove the patentability of its substitute claims because it did not address every possible combination of the prior art of record.  Tire Hanger argues that the Board does not have to address every possible combination of the prior art of record when considering a motion to amend.

Google v. Intellectual Ventures II, No. 16-1543, Courtroom 201

Google appeals from a PTAB decision finding the ’690 patent was not invalid as anticipated.  Google argues that the Board erred in finding that the prior art did not disclose “logical operators,” which it characterizes as “basic, well-known elements of computer science.”  Intellectual Ventures argues that Google failed to carry its burden of establishing unpatentability as its petition did not show that the prior art expressly or inherently disclosed “logical operators.”

Thursday, May 4, 2017

Wi-Fi One v. Broadcom, No. 15-1944, Courtroom 201

In this en banc appeal, the Federal Circuit will address whether § 314(d) precludes review of the Board’s determination that the Petitioner satisfied the timeliness requirement for filing an IPR petition.  Broadcom argues that under the Court’s decision in Achates, there is no exception under § 314(d) for review of the Board’s timeliness determination.  Wi-Fi One argues that Achates should not be construed so strictly and that § 314(d) only precludes interlocutory appeal of the Board’s institution, not the reviewability of the Board’s compliance with the time-bar of § 315(b) on appeal of a final written decision.