United States: Spotlight On Upcoming Oral Arguments – March 2019

Collabo Innovations, Inc. v. Sony Corporation, No. 18-1311, Courtroom 402

In this appeal, the Federal Circuit has been asked to consider the constitutionality of IPR’s when applied to patents that issued after enactment, but before the effective date, of the AIA—an issue left open by the Supreme Court in its Oil States Energy Services v. Greene’s Energy Group decision.  Collabo filed the application for the patent-at-issue more than a year before Congress enacted the AIA. The USPTO later issued the patent in the period between enactment of the AIA and the effective date of IPRs under the AIA.

Collabo argues that the application of IPRs to patents that issued before the effective date of the AIA is unconstitutional because Congress may only retroactively apply amendments to patent laws where the amendment expands the rights of patent owners.  Collabo contends that the more lenient preponderance of the evidence standard and lack of presumption of validity in IPRs curtails patent owners’ rights.  Sony argues that retroactive application of IPRs to patents issued before the effective date of the AIA is constitutional.  Sony contends that retroactive application of IPRs is constitutional by drawing parallels to similar constitutional challenges to the USPTO’s ex parte reexamination proceeding that failed.  Sony also argues that Collabo waived this argument by not raising it before the PTAB.  The USPTO intervened in the appeal to defend the constitutionality of IPRs.  The USPTO argues that IPRs did not alter the substantive provisions governing the conditions of patentability, and instead merely altered the procedures for reconsidering the validity of issued patents.  Thus, the USPTO argues that the application of IPRs in this context is constitutional because a change in the procedural application of the law does not constitute a retroactive application of the law.

ThermoLife International LLC v. GNC Corporation, No. 18-1657, Courtroom 402

The Plaintiffs appeal from a Southern District of California decision granting the Defendants’ motion for attorneys’ fees after finding that the case was “exceptional” under 35 U.S.C. § 285.  The district court found that had the Plaintiffs conducted a reasonable pre-filing investigation, it would have been on notice that at least some of the accused products did not infringe.

The Plaintiffs argue that the district court improperly focused solely on a single claim from one of the patents-in-suit and failed to consider all of the accused products.  The Plaintiffs further argue that the district court improperly construed the claim and relied on the improper claim construction to show that Plaintiffs’ pre-filing investigation was unreasonable.  The Defendants argue that the district court correctly determined that this case was exceptional because the Plaintiffs’ investigation involved only a cursory review of labels and ads for the accused products.  The Defendants further argue that the district court did not construe the claim, but rather analyzed the claim and its limitations in order to conduct its infringement analysis.

Wednesday, March 6, 2019

Comcast Corporation v. ITC, No. 18-1450, Courtroom 201

Appellants ARRIS and Technicolor manufacture, import, and sell set-top boxes to customers in the United States.  Appellant Comcast purchases set-top boxes from ARRIS and Technicolor and supplies the set-top boxes to its customers within the United States.  The ITC found that neither ARRIS nor Technicolor infringe the asserted patents, but that Comcast induced infringement of the asserted patents.  The ITC then issued a limited exclusion order preventing ARRIS and Technicolor from importing their set-top boxes.  In this appeal, the Federal Circuit has been asked to consider whether the ITC exceeded its authority under 19 U.S.C. § 1337 in issuing an exclusion order against ARRIS and Technicolor where all infringing conduct took place in the United States and after importation.

Comcast argues that the ITC has exceeded its authority under Section 1337 because Comcast’s set-top boxes were not “articles that infringe” at the time of importation.  Comcast further argues that it cannot violate Section 1337 when the ITC acknowledged that Comcast did not itself engage in importation.  ARRIS and Technicolor argue that exclusion orders can only be issued against persons violating the provisions of Section 1337.  Because the ITC found that neither ARRIS nor Technicolor violated Section 1337, ARRIS and Technicolor argue that the ITC exceeded its authority in issuing the limited exclusion order preventing the importation of their set-top boxes.  In response, the ITC argues that inducement liability does not have to attach at the time of importation and that Comcast controls, and is thus responsible for, the importation because the products are tailored to Comcast’s system.  With respect to ARRIS and Technicolor’s arguments, the ITC contends that it has been standard for limited exclusion orders to extend to infringing articles that are manufactured on behalf of an infringing respondent.  Here, the exclusion order excludes ARRIS and Technicolor from importing products on behalf of the infringing respondent, Comcast.  The ITC contends that this language is routinely included in exclusion orders of this type to prevent the infringing respondent from “hiding behind” others acting on its behalf.

Thursday, March 7, 2019

Lone Star Silicon Innovations v. Micron Technology, Inc., No. 18-1578, Courtroom 203

Lone Star appeals from an Eastern District of Texas decision granting the Defendants’ motion to dismiss for lack of standing.  Prior to bringing suit, Lone Star entered an agreement with Advanced Micro Devices (AMD), which, on its face, gave Lone Star “all rights, title, and interest” in the patents.  The district court found that Lone Star had not in fact received all rights in the patents because AMD retained significant control over Lone Star’s activities, including who Lone Star can enforce the patents against and when Lone Star can dispose of its patent rights, and the agreement did not grant Lone Star any practicing rights in the patents.  Thus, the district court found that Lone Star did not have standing to sue for infringement and that Lone Star should have joined AMD as a co-Plaintiff. 

Lone Star argues that the district court misconstrued its agreement with AMD in that it simply made contractual promises back to AMD and did not divest itself of ownership in the patents.  According to Lone Star, this gave it the ability to be the only party in the suit.  Micron Technology argues that the district court correctly found that the agreement allows AMD to retain “considerable rights in the patent” and that dismissal was appropriate.  

Monday, March 11, 2019

Regents of the University of Minnesota v. LSI Corporation, No. 18-1559, Courtroom 203

The Regents of the University of Minnesota (UMN) appeals from a PTAB decision denying UMN’s motion to dismiss on the grounds of state sovereign immunity.  An expanded, seven-judge panel held that state sovereign immunity shields UMN from involuntary participation in IPRs, but found that UMN had waived state sovereign immunity by asserting the challenged patents in federal district court.  UMN argues that IPRs are subject to state sovereign immunity because IPRs closely resemble civil litigation in district courts.  UMN further argues that waiver of state sovereign immunity in one suit does not extend waiver to an entirely separate lawsuit.  LSI argues that state sovereign immunity does not apply in IPRs, citing the Federal Circuit’s recent decision in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals, which struck down tribal sovereign immunity in IPRs.  LSI further argues that UMN’s waiver of state sovereign immunity extends to LSI’s IPR petition because waiver extends to compulsory claims.  LSI contends that the IPR was compulsory because under 35 U.S.C. § 315(b) LSI must file any request for IPR within one year or be forever barred from doing so. 

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