Former acting chief judge of PTAB to argue Nidec v. Zhongshan

June 7th, 2017

One of the interesting twists in tomorrow’s oral argument of Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co. is that Nathan Kelley, the USPTO Solicitor, has entered a notice to argue the case on behalf of the USPTO.  If I am not mistaken, Mr. Kelley was serving as the interim Chief Judge of the PTAB at the time the enlarged panel was ordered.  So, this is a very rare instance, or perhaps totally unprecedented, where the Federal Circuit will be able to ask questions directly of the administrative official who ordered an enlarged Board panel.

I suppose some questions that might come up are:

1)  Why was the original panel enlarged?

2) Did the Commissioner order the enlarged panel and how were those instructions communicated?

3) How were the additional judges selected?  What criteria was used to select the additional judges?

4) Has a vote ever been taken among the PTAB judges as a whole as to whether a self-joinder decision of the  PTAB should be made precedential and what was the outcome of that vote?

5)  Did Colonel Jessup order the code red . . . . wait, we already know the answer to that one.

6)  Is the appellant correct that the decision of In re Alappat, while abrogated in part on other grounds, does not sanction the use of stacked panels?

7)  Why isn’t notice and comment rule making a better vehicle for achieving the Commissioner’s policy, especially with the option of Commissioner directed reexamination still available for an unjoined argument in this case?

Briefs for upcoming “panel-stacking” oral argument

June 4th, 2017

The oral argument in Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co. is scheduled for this Thursday. The more interesting issue in this appeal is whether the USPTO improperly stacked the PTAB re-hearing panel to arrive at a preordained outcome.

The USPTO has intervened in the appeal.  Its brief is presented as the intervenor’s brief.  Also, BIO has filed an amicus brief in the appeal.

The briefs are available below:

Appellant’s brief: [link]

Appellee’s brief: [link]

Intervenor’s brief: [link]

Amicus brief: [link]

Reply brief: [link].

The Federal Circuit’s en banc opinion in In re Alappat is available [here].

The Supreme Court’s Cuozzo v. Lee opinion is available [here].

Oral argument of panel-stacking case

June 2nd, 2017

Those of you in the D.C. area might want to mark your calendars for next Thursday.  The Federal Circuit will be hearing oral argument in one of its panel-stacking cases, Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co.  I will try to post the briefs and more about the appeal in a future post.

Panel J:  Thursday, June 08, 2017, 10:00 A.M.,  Courtroom 201
16-1773 PATO Richmond v. Coleman Cable, LLC [argued]
16-1916 DCT ContentGuard Holdings, Inc. v. Apple, Inc. [argued]
16-2430 DCT ContentGuard Holdings, Inc. v. Google, Inc. [argued]
16-2321 PATO Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co [argued]
17-1542 PATO Beling v. Ennis, Inc. [on the briefs]
17-1745 CFC Lewis v. US [on the briefs]

Quote of the day

May 31st, 2017

To allow the Commissioner to gerrymander the 1575*1575 composition of the board to insure a preordained result directly conflicts with the concept “that in administrative proceedings of a quasi-judicial character the liberty and property of the citizen shall be protected by the rudimentary requirements of fair play.” [Morgan v. United States, 304 U.S. 1, 58 S.Ct. 773 (1938)] at 14-15, 58 S.Ct. at 775. See also Utica Packing Co. v. Block, 781 F.2d 71, 78 (6th Cir.1986) (decision of the Department of Agriculture reversed because the secretary’s removal of the adjudicating officer who rendered the original decision and assigning a new one to rule on a petition for reconsideration violated due process.) “There is no guarantee of fairness when the one who appoints a judge has the power to remove the judge before the end of proceedings for rendering a decision which displeases the appointer.” 781 F.2d at 78.

In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994)(en banc)(Judge Mayer and Judge Michel’s dissenting opinion).

Erratum or late recusal?

May 21st, 2017

The recent decision in Atlas Power, LLC v. Commonwealth Edison Co. is curious in that it only shows Judges O’Malley and Hughes as the judges on the decision.  Judge Moore presided over the oral argument.  It is unclear if Judge Moore’s name missing from the decision is just an error or a late recusal without explanation. Usually, the Federal Circuit corrects printing errors relatively quickly.

The court’s opinion is available [here].

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Update:  May 21, 2017

Whoops — my “erratum.”  I see from this IPLaw360 article [Link] that it was indeed a late recusal without explanation.

The oral argument is available [here].

Good marketing

May 12th, 2017

Any enterprising Chinese restaurants located near courthouses or law offices around the country might want to add this fortune to some of their cookies:

Hot bench: In re Chudik

May 12th, 2017

The oral argument of In re Chudik is interesting for several reasons.  The associate solicitor faced a bit of a hot bench from the Federal Circuit panel with questions coming from the get-go.  Judges Reyna and Stoll fired a lot of questions at the Associate Solicitor and even Judge Dyk had some questions challenging the Office’s rejection of the claims.

The case is also interesting in that it deals with the language “arranged to” and whether the Office should interpret that language as structural or functional language.

The oral argument is available [here].

The court’s opinion is available [here].

Oral Argument of the Day: Williamson v. Citrix (2017)

May 10th, 2017

The oral argument of the day comes from the recently decided Williamson v. Citrix case.  The oral argument focuses on patent eligibility issues.  There were two sound bites that I thought would be of particular interest.  In this sound bite, Judge Moore refers to the old Alappat test that new software makes a new computer each time you run it: [Listen]. And, in this sound bite, Judge Moore notes that nobody would be more fond of turning the Alice decision on its head than she would, just show her the path:  [Listen].

The entire oral argument is available [here].

The court’s Rule 36 judgment is available [here].

Supreme Court Oral Argument: Sandoz, Inc. v. Amgen, Inc.

May 6th, 2017

The Supreme Court heard oral argument last week in its final IP case of the term, Sandoz, Inc. v. Amgen, Inc.

The questions presented, as laid out in the Solicitor General’s CVSG brief, are:

The Biologics Price Competition and Innovation Act of 2009 (BPCIA) establishes an expedited process for licensing “biosimilar” versions of licensed biologic prod- ucts (“reference products”). 42 U.S.C. 262(k). In con- junction with that process, the BPCIA establishes a series of steps for the resolution of potential patent claims by the sponsor of the reference product and the biosimilar applicant. § 262(l ). Among other things, Subsection (l )(2)(A) of Section 262 provides that the applicant “shall provide to” the sponsor a copy of the biosimilar application and information about the prod- uct’s manufacturing processes. Subsection (l )(8)(A) provides that the applicant “shall provide notice to the reference product sponsor not later than 180 days before the date of the first commercial marketing of the biological product licensed under subsection (k).”

1. The questions presented in the certiorari petition are (a) whether notice of commercial marketing under Subsection (l )(8)(A) is legally effective if it is given before Food and Drug Administration (FDA) approval of the biosimilar application, and, if not, (b) whether Subsection (l )(8)(A) is a stand-alone requirement that may be enforced by means of an injunction that delays the marketing of the biosimilar until 180 days after FDA approval.

2. The question presented in the conditional cross- petition is whether Subsection (l )(2)(A) creates a binding disclosure obligation that a court may enforce by injunction, or whether the sponsor’s sole recourse for the applicant’s failure to disclose the information is the right, prescribed elsewhere in the BPCIA, to commence an immediate action for patent infringement.

The recording of the oral argument is available for download or streaming at this [link].

Plant Patent Infringement

May 4th, 2017

The Docket Report site highlighted the recent summary judgment order in Regents of the University of California v. California Berry Cultivars.  The case offers a trifecta of fun topics:  plant patent infringement, extraterritoriality, and strawberries.  Who doesn’t like strawberries!

The summary judgment order is available [here].