Wi-Fi One, LLC v. Broadcom Corp.

Congress has prohibited the Director of the United States Patent and Trademark Office from instituting inter partes review if the petition requesting that review is filed more than one year after the petitioner, real party in interest, or privy of the petitioner is served with a complaint for patent infringement. 35 U.S.C. § 315(b). Congress also provided that the Director’s determination “whether to institute an inter partes review under this section shall be final and nonappealable.” Id. § 314(d). The question before us is whether the bar on judicial review of institution decisions in § 314(d) applies to timebar determinations made under § 315(b). In Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652, 658 (Fed. Cir. 2015), a panel of this court held in the affirmative that a § 315(b) time-bar determination is final and nonappealable under § 314(d). Today, the court revisits this question en banc.

We recognize the strong presumption in favor of judicial review of agency actions. To overcome this presumption, Congress must clearly and convincingly indicate its intent to prohibit judicial review. We find no clear and convincing indication of such congressional intent. We therefore hold that the time-bar determinations under § 315(b) are appealable, overrule Achates’s contrary conclusion, and remand these cases to the panel for further proceedings consistent with this opinion.

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Monsanto Technology LLC v. E.I. DuPont de Nemours

Appellee E.I. DuPont de Nemours & Co. (“DuPont”) sought inter partes reexamination of various claims of Appellant Monsanto Technology LLC’s (“Monsanto”) U.S. Patent No. 7,790,953 (“the ’953 patent”). The U.S. Patent and Trademark Office’s (“USPTO”) Patent Trial and Appeal Board (“PTAB”) issued a final decision that affirmed an examiner’s rejection of claims 1, 7, 12–22, 24, and 27–30 (“the Asserted Claims”) as anticipated by U.S. Patent No. 6,426,448 (“Booth”), and of, inter alia, claim 2 as obvious over Booth. See E.I. DuPont de Nemours & Co. v. Monsanto Tech. LLC, No. 2015-007692, 2016 WL 4255131, at *3 (P.T.A.B. Aug. 10, 2016). Monsanto appeals. We have subject matter jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) (2012). We affirm.

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Microsoft Corp. v. Biscotti

Microsoft Corporation (“Microsoft”) appeals from decisions of the Patent Trial and Appeal Board (“Board”) in three separate inter partes review (“IPR”) proceedings, in which the Board found that Microsoft failed to show by a preponderance of the evidence that the challenged claims of U.S. Patent No. 8,144,182 (“’182 patent”) were anticipated or obvious. See Microsoft Corp. v. Biscotti Inc., No. IPR2014-01457, 2016 Pat. App. LEXIS 7571 (P.T.A.B. Mar. 17, 2016); Microsoft Corp. v. Biscotti Inc., No. IPR2014-01458, 2016 Pat. App. LEXIS 7572 (P.T.A.B. Mar. 17, 2016); Microsoft Corp. v. Biscotti Inc., No. IPR2014-01459, 2016 Pat. App. LEXIS 7573 (P.T.A.B. Mar. 17, 2016). Because the Board’s decisions are supported by substantial evidence and do not rely on an erroneous claim construction, we affirm.

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Bosch Automotive Service Solutions, LLC v. Matal

This appeal arises from the inter partes review (IPR) of U.S. Patent No. 6,904,796 (the ’796 patent) owned by Bosch Automotive Service Solutions LLC (Bosch). The Patent Trial and Appeal Board (Board) granted the IPR petition filed by Autel U.S. Inc. and Autel Intelligent Technology Co. Ltd. (Autel) and instituted the IPR on claims 1, 4–15, and 20–22 of the ’796 patent. Bosch filed a patent owner response and a “contingent” motion to amend, seeking to substitute amended claims 23–38 for original claims 1, 4–15, and 20–22 in the event that the Board found the challenged claims unpatentable. In its final decision, the Board found all challenged claims unpatentable and also denied Bosch’s contingent motion to amend. Autel U.S. Inc. v. Bosch Auto. Serv. Sols. LLC, No. IPR2014-00183, 2015 WL 2149218 (P.T.A.B. May 5, 2015) (Final Written Decision). Bosch now appeals.1 For the reasons below, we affirm the Board’s finding of unpatentability of claims 1, 4–15, and 20–22, and we vacate and remand its denial of Bosch’s motion to amend as to proposed substitute claims 23–38.

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Travel Sentry, Inc. v. Tropp

This is the third time we have had occasion to preside over this longstanding dispute regarding whether Travel Sentry, Inc. (“Travel Sentry”) and its licensees infringe one or more claims of two patents issued to appellant David A. Tropp (“Tropp”): U.S. Patent Nos. 7,021,537 (“the ’537 patent”) and 7,036,728 (“the ’728 patent”). See Travel Sentry, Inc. v. Tropp (Travel Sentry II), 497 F. App’x 958 (Fed. Cir. 2012); Tropp v. Conair Corp., 484 F. App’x 568 (Fed. Cir. 2012). In this most recent iteration, Tropp appeals from the district court’s entry of summary judgment that Travel Sentry and its licensees do not directly infringe any of the method claims recited in the ’537 and ’728 patents under 35 U.S.C. § 271(a). See Travel Sentry, Inc. v. Tropp (Travel Sentry III), 192 F. Supp. 3d 332 (E.D.N.Y. 2016). Travel Sentry and several of its licensees cross-appeal from the district court’s denial of their motions for attorney fees brought under 35 U.S.C. § 285.

We conclude that there are genuine disputes of material fact regarding whether Travel Sentry directs or controls the performance of certain steps of the claimed methods. Accordingly, we vacate the district court’s entry of summary judgment of noninfringement in favor of Travel Sentry and its licensees and remand for further proceedings. Because Travel Sentry and its licensees are no longer “prevailing parties” to whom an award of attorney fees could be made under 35 U.S.C. § 285, we dismiss their cross-appeal as moot.

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HTC Corp. v. Cellular Communications Equipment, LLC

HTC Corporation and ZTE (USA), Inc. appeal a final written decision of the Patent Trial and Appeal Board in an inter partes review. Appellants argue that the Board improperly construed the claim term “message” and erred in finding that HTC failed to show that the prior art anticipated or rendered obvious the challenged claims. We find no error in the Board’s claim construction, and substantial evidence supports the Board’s patentability determination. We affirm.

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Roberts v. Gordy

William L. Roberts II, Andrew Harr, and Jermaine Jackson (collectively “Appellants”), who are artists in the hip-hop industry, appeal the dismissal of their copyright infringement case. On appeal, they argue that their copyright registrations were improperly invalidated under 17 U.S.C. § 411 without a showing of scienter and that they made a proper showing of copyright ownership. Appellees counter that 17 U.S.C. § 411(b)(1) does not require scienter for nullification of a copyright registration and that a web of transfer and licensing agreements reflect a murky disposition of legal ownership. The Court need not reach a decision on the ownership issue because the district court misapplied the law by invalidating the copyright registrations. Accordingly, the district court’s dismissal order will be reversed and remanded for further proceedings.

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Amgen Inc. v. Sandoz

This appeal has returned to us on remand from the Supreme Court of the United States. In their earlier appearance in this court, Amgen Inc. and Amgen Manufacturing Ltd. (collectively, “Amgen”) appealed from the decision of the United States District Court for the Northern District of California (1) granting partial judgment on the pleadings to Sandoz Inc. (“Sandoz”) on its counterclaims seeking a declaratory judgment interpreting the Biologics Price Competition and Innovation Act of 2009 (“BPCIA”), Pub. L. No. 111-148, §§ 7001–7003, 124 Stat. 119, 804–21 (2010) (codified as amended at 42 U.S.C. § 262, 35 U.S.C. § 271(e), 28 U.S.C. § 2201(b), 21 U.S.C. § 355 et seq.); (2) dismissing with prejudice Amgen’s unfair competition claims asserting unlawful business practices under California Business & Professions Code § 17200 et seq. (“UCL”) and conversion claims (collectively, the “state law claims”); and (3) denying Amgen’s motion for a preliminary injunction based on its state law claims. Amgen Inc. v. Sandoz Inc., No. 14-cv-04741, 2015 WL 1264756 (N.D. Cal. Mar. 19, 2015) (“Opinion”).

Following full briefing and oral argument, we affirmed the dismissal of Amgen’s state law claims, vacated the judgment on Sandoz’s counterclaims, directed the district court to enter judgment on those counterclaims consistent with our opinion, and remanded for further proceedings. See Amgen Inc. v. Sandoz Inc., 794 F.3d 1347 (Fed. Cir. 2015), rev’d in part, vacated in part, 137 S. Ct. 1664 (2017).

In particular, we held that under 42 U.S.C. § 262(l)(8)(A) “a subsection (k) applicant may only give effective notice of commercial marketing after the FDA has licensed its product.” Id. at 1357. In addition, we held that the “shall” provision in paragraph (l)(2)(A) did not mean “must” and concluded that “when a subsection (k) applicant fails the disclosure requirement [of § 262(l)(8)(A)], 42 U.S.C. § 262(l)(9)(C) and 35 U.S.C. § 271(e) expressly provide the only remedies as those being based on a claim of patent infringement.” Id. at 1355–57.

Both parties petitioned for rehearing en banc, which this court denied. See Amgen Inc. v. Sandoz Inc., No. 15- 1499, slip op. (Fed. Cir. Oct. 16, 2015). Sandoz then filed a petition for a writ of certiorari in the Supreme Court presenting the following questions: “Whether notice of commercial marketing given before FDA approval can be effective and whether, in any event, treating Section 262(l)(8)(A) as a standalone requirement and creating an injunctive remedy that delays all biosimilars by 180 days after approval is improper.” Petition for a Writ of Certiorari at ii, Sandoz Inc. v. Amgen Inc., 137 S. Ct. 1664 (2017) (No. 15-1039).

Amgen subsequently filed a conditional cross-petition for a writ of certiorari presenting the following questions:

Is an Applicant required by 42 U.S.C. § 262(l)(2)(A) to provide the Sponsor with a copy of its biologics license application and related manufacturing information, which the statute says the Applicant “shall provide,” and, where an Applicant fails to provide that required information, is the Sponsor’s sole recourse to commence a declaratory-judgment action under 42 U.S.C. § 262(l)(9)(C) and/or a patent-infringement action under 35 U.S.C. § 27l(e)(2)(C)(ii)?

Conditional Cross-Petition for a Writ of Certiorari at ii, Sandoz Inc. v. Amgen Inc., 137 S. Ct. 1664 (2017) (No. 15- 1195). The Supreme Court granted both Sandoz’s petition and Amgen’s conditional cross-petition and consolidated the cases for briefing and oral argument. Sandoz Inc. v. Amgen Inc., 137 S. Ct. 808 (2017). The United States filed a brief and argued as amicus curiae.

On June 12, 2017, the Court announced its decision. Sandoz Inc. v. Amgen Inc., 137 S. Ct. 1664 (2017). The Court held that an injunction under federal law is not available to enforce 42 U.S.C. § 262(l)(2)(A); and a biosimilar applicant may provide the notice required by 42 U.S.C. § 262(l)(8)(A) either before or after receiving FDA approval, i.e., the applicant need not defer giving notice of commercial marketing until FDA licensure of the biosimilar in order to begin the running of the 180-day clock. Id. at 1674, 1677. The Court reversed our decision in part and vacated it in part and remanded the case for further proceedings consistent with its opinion. The Court directed:

On remand, the Federal Circuit should determine whether California law would treat noncompliance with § 262(l)(2)(A) as “unlawful.” If the answer is yes, then the court should proceed to determine whether the BPCIA pre-empts any additional remedy available under state law for an applicant’s failure to comply with § 262(l)(2)(A) (and whether Sandoz has forfeited any preemption defense, see 794 F.3d, at 1360, n. 5). The court is also of course free to address the preemption question first by assuming that a remedy under state law exists. Id. at 1676–77.

Following remand, we recalled our mandate, reopened the appeal, and directed supplemental briefing on July 26, 2017. Both parties responded with supplemental briefing, which, inter alia, addressed the question whether Sandoz waived any preemption defense it had to Amgen’s state law claims.

Because Sandoz did not forfeit its preemption defense and the BPCIA preempts state law remedies for an applicant’s failure to comply with § 262(l)(2)(A), we now affirm the district court’s dismissal of Amgen’s state law claims. 

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Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.

Inventor Holdings, LLC (IH) sued Bed Bath & Beyond, Inc. (BBB) for infringement of U.S. Patent No. 6,381,582 (the ’582 patent) in April 2014. The Supreme Court issued its decision in Alice Corp. v. CLS Bank International in June 2014. 134 S. Ct. 2347 (2014). BBB thereafter moved for judgment on the pleadings, contending that Alice rendered the asserted claims of the ’582 patent invalid under 35 U.S.C. § 101. The district court granted BBB’s § 101 motion. See Inventor Holdings, LLC v. Bed Bath & Beyond Inc., 123 F. Supp. 3d 557, 563 (D. Del. 2015). We affirmed the district court’s § 101 decision without opinion under Federal Circuit Rule 36. See Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 643 F. App’x 1014, 1015 (Fed. Cir. 2016).

BBB moved for an award of attorney fees pursuant to 35 U.S.C. § 285, arguing that, once Alice issued, IH should have reevaluated its case and dismissed the action. The district court granted BBB’s fees motion, holding that, “following the Alice decision, IH’s claims were objectively without merit.” Inventor Holdings, LLC v. Bed Bath & Beyond Inc., No. 14-CV-448, 2016 WL 3090633, at *3 (D. Del. May 31, 2016). The district court awarded BBB its attorney fees beginning from the date of the Alice decision, including fees incurred during the § 101 appeal. See id. at *4. IH appeals the district court’s fees decision. We affirm.

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IN RE: ERIK BRUNETTI

Erik Brunetti appeals from the decision of the Trademark Trial and Appeal Board (“Board”) affirming the examining attorney’s refusal to register the mark FUCT because it comprises immoral or scandalous matter under 15 U.S.C. § 1052(a) (“§ 2(a)”). We hold substantial evidence supports the Board’s findings and it did not err concluding the mark comprises immoral or scandalous matter. We conclude, however, that § 2(a)’s bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech. We therefore reverse the Board’s holding that Mr. Brunetti’s mark is unregistrable.

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