The Federal Circuit this week denied two interesting petitions for en banc rehearing:
Kingston Technology Company v. SPEX Technologies, Inc., Docket No. 19-1342 (Fed. Cir. 2019)
Does WiFi One apply only when the patentee is appealing and not when the IPR petitioner appeals an institution denial?
In this case, the PTAB held that § 315(e) estopped Kingston from petitioning for IPR. Had the Board decided in Kingston’s favor, the patent holder (SPEX) could have appealed under Wi-Fi One. However, the panel found that an orthogonal Board decision against the patent owner was not appealable.
Genzyme Corporation v. Zydus Pharmaceuticals (USA), Docket No. 18-02362 (Fed.
Whether a patent-challenger asserting obviousness must prove that a POSA would have had a reasonable expectation of success as to achieving unclaimed features, such as achieving alleged unexpected results that are not recited in the asserted claims.
The patent challenger here argues that “[t]ying the reasonable expectation of success inquiry strictly to the claims as written ensures that courts do not decide obviousness on hypothetical claims that are fundamentally narrower than the actual claims at issue.”
Earlier this month, the Federal circuit also denied a well written petition in Board of Regents v. Boston Scientific Corporation, Docket No. 18-01700 (Fed. Cir 2019)
1. Whether the patent venue statute, 28 U.S.C. § 1400(b), dictates venue in state party patent infringement cases.
2. Whether state sovereignty includes the right to not litigate in a nonresident defendant’s home state (and hence the right to choose any forum with the requisite subject matter and personal jurisdiction).
3. Whether a federal transferee court can acquire jurisdiction over a state without its consent or waiver of any objection to such court’s jurisdiction
En banc petitions are still pending in several cases:
- Chrimar Systems, Inc. v. ALE USA Inc., Docket No. 18-02420 (Fed. Cir. 2019) (retroactive preclusion based upon IPR decision)
- The Chamberlain Group, Inc. v. Techtronic Industries Co. Ltd., Docket No. 18-02103 (Fed. Cir. 2019) (Is it improper for this Court to conflate Alice steps one and two, disregarding the concrete and structural combination of elements cited by the patent owner?)
- American Axle & Manufacturing v. Neapco Holdings LLC, Docket No. 18-01763 (Fed. Cir. 2019) (must a court state the precise ineligible concept) [AmAxlePetitionRehearing]
Both the Chamberlain Group and American Axle case have been mentioned to me by PTO/Congressional leaders as examples of how Alice has gone too far.
In American Axle, the patent is at issue, U.S. Patent 7,774,911, relates to “automotive driveshafts used in pickup trucks — claiming “novel and unconventional methods of manufacturing improved driveshafts that include ‘liners’—low cost, hollow tubes made of a fibrous material (such as cardboard).” Petition. The courts found the claims ineligible as directed to “Hooke’s law, and possibly other natural laws.”