United States: Spotlight On Upcoming Oral Arguments – June 2019

Genetic Veterinary Sciences v. LABOKlin GmbH & Co, KG, No. 18-2056, Courtroom 203

LABOKlin appeals from an Eastern District of Virginia decision granting Genetic Veterinary Sciences’ (GVS) motion for judgment as a matter of law (JMOL). After receiving a cease and desist letter from LABOKlin, GVS brought a declaratory judgment action seeking an order declaring the claims of U.S. Patent No. 9,157,114 invalid under 35 U.S.C. § 101. The cease and desist letter mentioned the ’114 patent, but alleged that GVS was infringing LABOKlin’s European patent rights.    

On appeal, LABOKlin contends that the district court improperly exercised jurisdiction under Federal Rule of Civil Procedure (4)(k)(2). Specifically, LABOKlin claims that the district court erred in finding that sending a cease and desist letter and the existence of U.S. sublicensees are sufficient to establish the necessary minimum contacts. GVS argues that LABOKlin’s cease and desist letter coupled with its commercialization and enforcement of the ’114 patent in the U.S. is sufficient to establish the necessary minimum contacts.  GVS contends that any other conclusion would result in LABOKlin receiving unintentional and improper immunity from suit.

Tuesday, June 4, 2019

Solutran, Inc. v. Elavon, Inc., No. 19-1345, Courtroom 203

Elavon appeals from a District of Minnesota decision finding that U.S. Patent No. 8,311,945 was valid under 35 U.S.C. § 101. The ’945 patent is directed to a method for processing paper checks in which a check’s image is scanned at two different times by two different pieces of equipment, and the merchant’s account is credited in between the two scans.  Elavon and U.S. Bank sought a covered business method (“CBM”) review of the ’945 patent, asserting invalidity under § 101 and § 103 in its petition. The PTAB instituted a CBM review, but only on the § 103 grounds. The district court later held that the ’945 patent was directed to patent-eligible subject matter, relying, at least in part, on the PTAB’s decision not to institute review on § 101 grounds.

On appeal, Elavon argues that the ’945 patent is directed to patent-ineligible subject matter under § 101. Elavon contends that the claims are directed to the abstract idea of imaging a paper check after crediting a merchant’s account and instructs the use of conventional hardware to execute regulatory tasks inherit in check processing. In response, Solutran argues that the claims are directed to a two-part physical process for handling tangible paper checks, not directed to an abstract idea. Moreover, Solutran argues that the claim elements results in a process that was unknown in the art, and therefore, could not be considered routine or conventional.

Wednesday, June 5, 2019

Trading Technologies International, Inc. v. IBG LLC, No. 18-1489, Courtroom 201

The patent at issue in this case, U.S. Patent No. 7,725,382, issued in 2010. In 2011, Congress enacted the AIA which provides for post-grant review of covered business method (CBM) patents by the PTAB. TTI appeals a PTAB decision invalidating TTI’s ’382 CBM patent under 35 U.S.C. § 101.

On appeal, TTI claims that CBM review by the PTAB violates the Fifth Amendment, the Seventh Amendment, and Article III of the Constitution by retroactively applying to a patent issued prior to enactment of the AIA. TTI further contends that CBM review violates the Appointments Clause of the Constitution because the PTAB judges have final decisional making authority in these proceedings and were not properly appointed by the President with Senate confirmation. IBG argues that the application of CBM review to pre-AIA patents is constitutional because the Federal Circuit has previously permitted retroactive application of the ex parte reexamination statute. IBG also contends the Appointment’s Clause allows CBM review by the PTAB because the review judges are inferior officers who may be properly appointed by the Secretary of Commerce.

Thursday, June 6, 2019

In re Riggs, No. 18-1883, Courtroom 402

This appeal arises from a PTAB decision rejecting the claims of U.S. Patent Application No. 11/873,969 under 35 U.S.C. § 101. During prosecution, the Examiner initially rejected the claims of the ’969 application as being directed to patent ineligible subject matter and as being rendered obvious by the prior art. The Examiner subsequently withdrew the § 101 rejection, but maintained the obviousness rejections. The applicants appealed the obviousness rejections to the PTAB.  The PTAB found that a § 101 rejection was appropriate, but instead of remanding the case back to the Examiner, the PTAB entered a new § 101 rejection. The PTAB directed the applicants to either reopen prosecution or request a rehearing pursuant to 37 C.F.R. § 41.50(b). The applicants filed a request for rehearing, but the PTAB denied the request.   

On appeal, the applicants claim that the PTAB erred by improperly applying 37 C.F.R. § 41.50. The applicants assert that when the PTAB deems a new ground of rejection appropriate, it must remand the case back to the Examiner. The PTO contends that the PTAB properly exerted its authority under 37 C.F.R. § 41.50 to require the applicants to either submit a request to reopen prosecution or to request a rehearing. The PTO further argues that the applicants had a full opportunity to address the PTAB’s § 101 rejection in its request for rehearing.

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