Spotlight on Upcoming Oral Arguments – November 2017

Monday, November 6, 2017

Arthrex, Inc. v. Smith & Nephew, Inc., No. 17-1239, Courtroom 402

In this appeal, the Federal Circuit will consider whether it has jurisdiction to review a PTAB decision to terminate an IPR and enter an adverse judgment against the patent owner.  Arthrex argues that the Court has jurisdiction because the PTAB’s decision to enter an adverse judgment and terminate the IPR constituted a “decision” that is appealable under 28 U.S.C. § 1295(a)(4).  Alternatively, Arthrex argues that the PTAB’s decision constitutes a “final agency action” that is reviewable under the Administrative Procedure Act.  Smith & Nephew argues that the APA does not permit judicial review of final agency actions when another statute bars judicial review.  Thus, Smith & Nephew argues that the Court does not have jurisdiction to hear Arthrex’s appeal because its jurisdiction is limited to review of final written decisions under the AIA. 

Intellectual Ventures I LLC v. FTD Companies, Inc., Nos. 17-1376, 17-1377, Courtroom 40

This appeal arises from an E.D. of Texas decision holding that Intellectual Ventures’ ’715 patent was directed to patent ineligible subject matter under § 101.  Intellectual Ventures argues that the district court erred in holding the patent ineligible because it failed to consider the PTAB’s decision not to institute CBM review in light of its conclusion that the ’715 patent is a “technological-invention.”  FTD argues that the PTAB’s decision that the ’715 patent was not a covered business method patent has no bearing on whether the claims are directed to patent eligible subject matter.  Additionally, FTD argues that the district court adequately considered the PTAB’s decision when it denied Intellectual Ventures’ motion for reconsideration, finding that the PTAB’s ruling had no impact on its § 101 ruling. 

Tuesday, November 7, 2017

Kahr v. Cole, No. 17-1391, Courtroom 202

Patent owner Kahr appeals from an E.D. of Wisconsin decision finding that the ensnarement defense precluded a finding of infringement under the doctrine of equivalents.  Kahr argues that the district court erred by focusing only on the patentability of the equivalent element, not the equivalent of the hypothetical claim as a whole.  Kahr argues that when the claim as a whole is considered, it is patentable, as it is neither obvious nor anticipated in view of the references asserted by Cole.  Cole argues that the district court correctly construed the scope of the hypothetical equivalent claim and determined that the claim was obvious in light of the prior art.

Wednesday, November 8, 2017

Merck Sharp & Dohme Corp. v. Amneal Pharmaceuticals LLC, No. 17-1560, Courtroom 201

In this appeal, the Federal Circuit has been asked to consider whether under the Hatch-Waxman Act, the infringement analysis in this particular case must be based on Amneal’s final commercial ANDA product.  During the course of litigation, it was discovered that Amneal’s ANDA product did not meet the specification of Amneal’s amended ANDA.  In light of this discovery, Amneal amended its manufacturing process.  Amneal provided Merck with samples drawn from the bulk formulation before final manufacturing and packaging, but Amneal did not provide samples of the final product.  Merck argues that Amneal should have been required to produce samples of the final product and that the district court erred in focusing its infringement analysis on the intermediate samples Amneal provided.  Amneal argues that the district court properly considered Merck’s testing on its intermediate product as well as the effects of additional processing in reaching its non-infringement decision.

Yongjiang Yin & Shenzhen El v. Sure-Fire Electrical Corporation, No. 16-2686, Courtroom 402

Yongjiang appeals from a PTAB Final Written Decision finding the claims of the ’279 patent invalid as obvious.  Yongjian argues that the PTAB improperly construed the claims when it adopted a dictionary definition that was not advanced by the Petitioner, was not relied upon by the Petitioner’s expert, was not part of the record, and is inconsistent with the specification and prosecution history.  Sure-Fire argues that the PTAB permissibly consulted dictionary definitions of the constituent words after it adopted Sure-Fire’s argument that the phrase should be given its plain and ordinary meaning.