Spotlight on Upcoming Oral Arguments – November 2016

Tuesday November 1, 2016

ArcelorMittal v. AK Steel Corporation, No. 16-1357, Court Room 402

In this appeal, the Federal Circuit will answer the question of whether an unconditional covenant not to sue for infringement of a patent-in-suit deprived the district court of subject matter jurisdiction over counterclaims seeking declaratory judgments of noninfringement and invalidity of claims in the same patent. After two earlier appeals and a reissue, two claims survived in ArcelorMittal’s originally asserted patent. ArcelorMittal moved to dismiss the case and offered an unconditional covenant not to sue Defendants on the remaining two claims. The District Court nevertheless ruled on Defendants’ invalidity counterclaim and found the remaining claims invalid. ArcelorMittal argues that the covenant not to sue eliminated any possible case or controversy between the parties with respect to the two remaining claims of the patent and therefore deprived the district court of subject matter jurisdiction over Defendants' counterclaims.

Wednesday November 2, 2016

Tinnus Enterprises, LLC v. Telebrands Corporation, No. 16-1410, Court Room 402

In this appeal, the Federal Circuit will clarify how the PTAB’s decision to institute a PGR should affect a District Court’s preliminary injunction analysis. For a PGR to be instituted, a petitioner must demonstrate that the claims at issue are more likely than not invalid. Telebrands argues that, when the PTAB institutes a PGR for the claims-in-suit, the party asserting the claims in litigation cannot demonstrate likelihood of success on the merits—a required element for a preliminary injunction.

Secure Axcess, LLC v. PNC Bank National Association, No. 16-1353, Court Room 203

In this case, Secure Axcess asks the Federal Circuit to address whether a patent’s eligibility for CBM review should be determined based on its claim language in light of the specification as understood at the earliest effective filing date, or whether the PTAB should also consider post-grant evidence, such as a patent owner’s litigation history. Secure Axcess argues that the PTAB erred in holding the patent-at-issue eligible for CBM review by analyzing the circumstances surrounding the patent’s enforcement against financial institutions.

Thursday November 3, 2016

Novartis AG v. Torrent Pharmaceuticals, No. 16-1352, Court Room 201

In this appeal, the Federal Circuit will answer the question of whether the PTAB may change direction on a previously ruled-out reference and consider a new theory without notice to the patent owner. The Federal Circuit has recently placed a notice requirement on the PTAB when the Board adopts a new claim construction in SAS Inst., Inc. v. ComplementSoft, LLC., 825 F.3d 1341 (Fed. Cir. 2016). Now the Court will consider whether similar notice to the parties is required when the Board adopts a new theory on a previously ruled-out reference.

Netflix, Inc. v. Rovi Corporation, No. 15-1917, Court Room 203

This appeal arises from a N.D. Cal. case in which the court found two patents ineligible under 35 U.S.C. § 101. One of the patents covers an improved “media-on-demand” system that allows users to begin watching content on one device, stop or pause, and resume watching at the same point on a different device that utilizes a different media format than the first device. The other patent provided interactive television program guides that also made personalized viewing recommendations to the user based on that user’s preferences and viewing history. On appeal, Rovi argues that both patents are patent eligible because (1) they are directed to concrete, tangible, and improved technology and (2) both patents identify an inventive concept.

Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals Inc., No. 16-1217, Court Room 203

In this appeal, the Federal Circuit will address whether, in its final decision for an IPR, the PTAB must include decisions on all challenged claims and consider all the evidence in the record. Amneal argues that failing to address all challenged claims violates the plain language of 35 U.S.C. § 318(a). Amneal further argues that the PTAB’s refusal to consider all record evidence of unpatentability violates the estoppel provision of 35 U.S.C. § 315(e).

*Jack Li is a Law Clerk at Finnegan