Spotlight on Upcoming Oral Arguments – October 2017

The Federal Circuit hits the road this week, hearing oral arguments in New York City, including at the Court of International Trade, NYU Law School, and Columbia Law School.

Monday, October 2, 2017

Xitronix Corp. v. KLA-Tencor Corp., No. 16-2746, Courtroom 203

This appeal arises from a Western District of Texas summary judgment order finding that KLA did not engage in fraud in its prosecution and procurement of the patent-in-suit. KLA argues that the court correctly found that it disclosed all prior art and related materials to the PTO and thus did not misrepresent or omit any material facts, fulfilling its duty of candor to the PTO.  Xitronix argues that the Examiner relied upon KLA’s misrepresentation of the relevant prior art and that the mere disclosure of the judgment invalidating a nearly identical patent was not sufficient to satisfy the duty of candor. 

Tuesday, October 3, 2017

Janssen Biotech, Inc. v. Celltrion Healthcare Co., Ltd., No. 17-1120, U.S. Court of International Trade, 1 Federal Plaza, New York, NY 10278, Ceremonial Courtroom

In this case, the Court has been asked to consider whether under the Federal Circuit’s decision in Gilead, a utility patent filed after the Uruguay Round Agreements Act of 1994 (URAA), which expires 20 years from the earliest priority date, can be held invalid for obviousness-type double patenting over a utility patent filed before the URAA, which expires 17 years from the issue date.  Janssen argues that Congress intended for pre-URAA patents to retain their traditional term of 17 years from issuance, even if that term is greater than 20 years from the filing of their earliest priority application.  Janssen argues that the district court’s decision to extend Gilead to invalidate its pre-URAA patent is therefore at odds with Congress’s intent.  Celltrion argues that the district court correctly found Janssen’s pre-URAA patent invalid because under Gilead the relevant question is not which patent issues first, but rather, which patent expires first.

Wednesday, October 4, 2017

In Re Openings, No. 16-2307, NYU Law School, 40 Washington Square South, New York, NY 10012, Greenberg Lounge

The Federal Circuit will consider whether the TTAB erred in finding that the applicant’s expired patents constitute evidence that the applied-for design is functional and therefore cannot be registered as a trademark under section 2(e)(5) of the Lanham Act.  Openings argues that the TTAB erred in finding that the U-shaped design was functional because it improperly attributed the advantages inherent in all locking channels disclosed in Openings’ utility patents to the specific U-shaped design. The PTO argues that substantial evidence supports the Board’s findings because the expired patents that cover the design extol its functional benefits and because Opening’s advertisements highlight these benefits.

Thursday, October 5, 2017

Monsanto Technology LLC v. E.I. DuPont de Nemours, No. 17-1032, Columbia Law School, 435 W. 116^th, New York, NY 10027, Proskauer Auditorium Room 104

In this appeal, the Federal Circuit will address whether the Board properly applied the law of inherent anticipation when it allowed the use of extrinsic data in an inter partes reexamination.  Monsanto argues that the Board erred in finding its claims inherently anticipated when it relied on DuPont’s plant breeding records.  DuPont responds that the Board properly rejected the claims after finding that a prior art patent disclosed the claimed soybean cross and multiple generations of progeny plants meeting the claimed characteristics.  DuPont further argues that extrinsic evidence was properly relied upon to establish the inherent disclosure of the anticipatory prior art reference.