Jul 13, 2020Legal
Fresh From the Bench: Latest Federal Circuit Court Cases


Uniloc 2017 LLC v. Apple, Inc., Appeal Nos. 2019-1922, -1923, -1925, -1926 (Fed. Cir. July 9, 2020)

This week’s case of the week focuses, not on a patent issue, but on a procedural issue common to nearly all patent cases – motions to seal confidential information.  The motion to seal dispute in this case rose to the level of an appeal, resulting in the longest precedential decision issued by the Federal Circuit this week.  The case provides a cautionary tale for litigators.

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By Nika Aldrich


Fitbit, Inc. v. Valencell, Inc., Appeal No. 2019-1048 (Fed. Cir. July 8, 2020)

In this case, the Federal Circuit found that the right of appeal of a petitioner joined to an existing inter partes review proceeding was not limited to the specific grounds raised in its individual petition.  The IPR in this case was initially petitioned by Apple Inc., not a party to the appeal, and the Patent Trial and Appeal Board had instituted review as to some challenged claims, but not others.  Following the institution decision, appellant Fitbit filed an IPR petition for review of the instituted claims only, and sought and obtained joinder with Apple’s IPR.  Between PTAB’s hearing of oral argument and issuance of a final written decision, the Supreme Court decided SAS Insitute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), holding that all claims challenged in an IPR petition must be reviewed if the petition is granted.  The Board then re-instituted the IPR for further proceedings as to the non-instituted claims, and ultimately found that those claims were not shown to be unpatentable.

Fitbit appealed, and appellee Valencell argued that Fitbit had no right to appeal the decision on the previously non-instituted claims because they were not challenged in Fitbit’s IPR petition.  The Federal Circuit rejected Valencell’s arguments that Fitbit’s participation in the IPR was limited and that arguments not presented in its petition should be deemed waived.  Instead, relying on its precedent that joined parties enjoy a statutory right to appeal under 35 U.S.C. § 319, the Court held that this right applies to the entirety of the proceedings, which conforms to the statutory purpose of avoiding redundant actions by facilitating consolidation while preserving statutory rights such as judicial review.

The Court also vacated PTAB’s decision that the claims were not shown to be obvious.  The Court found that the PTAB erred by concluding its analysis after rejecting the petitioner’s proposed claim construction without analyzing the prior art, and also by refusing to address claim terms lacking an antecedent basis where the parties agreed that the issue resulted from a simple claim re-numbering error during the patent’s prosecution.

The opinion can be found here.

By Jason Wrubleski

In re: Boloro Global Limited, Appeal Nos. 2019-2349, -2351, -2353 (Fed. Cir. July 7, 2020)

In this brief precedential order, the Federal Circuit held that its recent decisions in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F .3d 1320 (Fed. Cir. 2019) and VirnetX Inc. v. Cisco Sys., Inc., No. 2019-1671, 2020 WL 2462797 (Fed. Cir. May 13, 2020), which found that administrative patent judges (“APJs”) were not constitutionally appointed, should be extended to ex parte proceedings before the Patent Trial and Appeal Board (“the Board”).  In extending the reasoning of Arthrex and VirnetX, applicable to inter partes reviews and inter partes re-examinations, respectively, to ex parte proceedings, the Court applied the remedy of those cases to the ex parte reexamination at issue here, vacating the Board’s decisions and remanding for proceedings before a different panel of APJs.

The opinion can be found here.

By: Erin Forbes

Edited by: Scott D. Eads and Nika Aldrich, Schwabe Williamson & Wyatt

Contributors: Jason Wrubleski and Erin Forbes

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