En Banc at the Federal Circuit

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.
Cir. 2019)

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:

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.”

8 thoughts on “En Banc at the Federal Circuit

  1. 6

    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.

    I wonder if these “leaders” understand the law they’re talking about (presumably they mean “101,” not “Alice,”) or if they’ve just bought into the talking point “the Federal Circuit said that a garage door and a propeller shaft are abstract ideas!”

    Re: the Kingston petition Dennis highlights, the PTAB Bar Association amicus brief in Thryv flags this same issue (section II.A). Maybe Thryv will say something about it.
    link to supremecourt.gov

  2. 5

    News flash: Mayo and Alice were Supreme Court decisions. They happened. Neither case directly addressed “natural laws” that were embodied in novel non-obvious and claimed man-made structures (myriad arguably did that, but that case was expressly limited to DNA).

    So it’s not Mayo and Alice that need to be “overturned”. And frankly it’s f—-king id ji ot ic to suggest that they be overturned when you understand what those cases were about.

    Got a problem with some poorly reasoned district court decision or CAFC decision? Then explain why, and dont assume your conclusion (“this claim MUST be eligible because I like it!”).

  3. 4

    Hook’s law? or some other natural laws? WTH? Doesn’t any mechanic object obey some “natural law.” Which btw – Hook’s law is not a “natural law” at all – it’s just a linear assumption.

  4. 3

    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.

    And that is because both cases are examples of how Alice (and Mayo) goes to far. Congress is quite right to be concerned about the excesses engendered by the Supreme Court’s misunderstanding of how §101 is supposed to work.

    Hopefully, Congress will soon get around to fixing that. Maybe they can even resolve the Arthrex complications at the same time.

    1. 3.1

      Interestingly enough, Greg’s comment here can be contrasted with the vigor he employs against others wanting a “consolidated approach” (but consolidated with something that Greg does not want to change: IPRs).

    2. 3.2

      … goes to far.

      Er, “goes too far.” Mea culpa.

  5. 1

    What are the statistical odds of a petition for Fed. Cir. en banc review being granted in any patent case?
    [The current overall odds against cert petitions being granted by the Sup. Ct. are now approximately 6000 to 80, [1.3%] per Justice Kagan last night on C-Span.]

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