Spotlight on Upcoming Oral Arguments – October 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/.

Monday, October 7, 2024, 10:00 A.M.

Kroy IP Holdings, LLC v. Groupon, Inc., No. 23-1359, Courtroom 402, Panel G

Kroy IP Holdings, LLC (“Kroy”) brought suit against Groupon, Inc. (“Groupon”) in October 2017, alleging that Groupon infringed United Stated Patent No. 6,061,660 (“the ’660 patent”).  Groupon filed two inter partes review petitions (the “IPRs”) in October 2018, and the PTAB instituted trial proceedings and ultimately invalidated 19 total challenged claims. The Federal Circuit affirmed the PTAB decisions in June 2021. Back at the district court, Kroy filed a Second Amended Complaint to add 14 new asserted claims (“the Newly Asserted Claims”) that were not challenged in the IPRs; however, the district court found that Kroy was collaterally estopped from asserting any of the Newly Asserted Claims against Groupon and dismissed the Second Amended Complaint with prejudice. In making its decision, the district court relied on two lines of authority regarding collateral estoppel: (1) Federal Circuit precedent that establishes that when the PTAB issues a final invalidity judgment on patent claims, collateral estoppel applies on pending district court actions relating to the same patent claims; and (2) when unadjudicated and adjudicated claims are not identical, but their differences do not materially alter the question of invalidity, collateral estoppel applies. The district court found that the Newly Asserted Claims were not materially different from the invalidated claims, and, thus, applied collateral estoppel.

Kroy argues on appeal that it was improper for the district court to apply collateral estoppel because the Newly Asserted Claims are different than those invalidated by the PTAB—specifically, due to the PTAB’s “preponderance of the evidence” standard being lower than the district court’s “clear and convincing evidence” standard. Kroy also argues that the Newly Asserted Claims are materially different from the invalidated claims. Further, Kroy argues that the district court erred in making hypothetical comparisons to superficial text in the claims rather than compare the actual claims invalidated at the PTAB to the Newly Asserted Claims. Meanwhile, Groupon argues that it has been long established by both the Supreme Court and the Federal Circuit that the PTAB’s decisions have preclusive effect on district court proceedings, regardless of any lower standard of proof. Groupon argues that the district court carefully examined the invalidated and Newly Asserted Claims and properly determined they were not materially different.

Wednesday, October 9, 2024, 10:00 A.M.

Crown Packaging Tech., Inc. v. Belvac Production Machinery, Inc., No. 22-2299, To be argued at Santa Clara University School of Law, Justice Edward A. Penelli Courtroom, Panel D

Crown Packing Technology, Inc. (“Crown”) and Belvac Production Machinery, Inc. (“Belvac”) both make and sell equipment used to produce two-piece aluminum beverage cans. The dispute between the parties started in July 2018 when Crown sued Belvac for infringement of patents related to necking configurations. At summary judgment, Belvac moved to invalidate the asserted patents, which the court denied. The case proceeded to trial where the jury determined that Belvac did not infringe the asserted patents, and the district court denied Crown’s motion for judgment as a matter of law.

On appeal, the Federal Circuit will decide whether the district court erred in denying Belvac’s motion for summary judgment that the asserted patents are invalid under pre-AIA Section 102(b)’s “on-sale bar,” which bars patentability if the claimed invention was on sale or offered for sale more than a year before filing date of the application.

Belvac maintains that Crown offered to sell its CMB3400 product prior to its official launch, including to the Complete Packaging Machinery (“CPM”) in a November 14, 2006, offer (“the Offer”), and that Crown does not deny that the patents were ready for patenting at this time. The district court did not find the on-sale bar applied due to the use of quotations within the offer, leaving necessary contract terms unexpressed. Further, the district court found that the Offer was not binding because CPM did not have the power of acceptance due to a provision stating that the Offer was subject to Crown’s written acceptance of CPM’s order. On appeal, Belvac argues that the Offer was a commercial offer for sale because Crown: (1) targeted an active buyer; (2) considered CPM as a listed customer; and (3) detailed sufficient terms of the Offer, despite the use of quotations. Additionally, Belvac argues that an offeror reserving its right to confirm a purchase order does not bypass the on-sale bar because the Offer maintained that Crown would have to deliver on the order upon CPM’s acceptance.

Thursday, October 10, 2024, 10:00 A.M.

PS Products Inc. v. Panther Trading Co. Inc., To be argued at the United States District Court for the Northern District of California (San Francisco), Thelton Henderson Ceremonial Courtroom, Panel E

PS Products Incorporated (“PS Products”) brought suit in the Eastern District of Arkansas in May 2022, asserting U.S. Design Patent No. D680,188 against Panther Trading Company Incorporated (“Panther”). Shortly after filing, Panther responded by sending PS Products a Rule 11 letter raising venue and noninfringement arguments based on what it contended were differences between the protected design and the accused product. Soon after, Panther filed a Rule 12(b)(6) motion to dismiss. After PS Products voluntarily dismissed its case with prejudice, Panther moved for attorneys’ fees and expenses under 35 U.S.C. § 285 as well as for sanctions.  Following a hearing, the district court granted Panther’s motion for attorneys’ fees pursuant to Section 285, and later, issued a second order granting Panther’s motion for sanctions.

The issue on appeal to the Federal Circuit is the mechanism for seeking sanctions. PS Products contends that Panther’s motion for fees, costs, and sanctions all fall under Section 285 and argues that the district court erred in awarding deterrence sanctions. Specifically, PS Products argues that Section 285 only permits the district court to award attorneys’ fees in exceptional cases and does not permit additional and separate deterrence sanctions. PS Products contends that Supreme Court precedent establishes that the use of the court’s inherent power should be limited to where conduct is not already covered by other sanctioning provisions and that Section 285 is such a sanctioning provision. Meanwhile, Panther contends that its motion for sanctions was pursuant to the court’s inherent power to sanction and that the motions were distinct. Panther also argues that the two mechanisms offer distinct remedies, given that Section 285 provides for compensatory relief whereas sanctions pursuant to the court’s inherent authority has a separate and distinct purpose of deterring future litigation misconduct.