Spotlight On Upcoming Oral Arguments – November 2017

Author:Ms Caitlin E. O'Connell
Profession:Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Monday, November 6, 2017

Arthrex, Inc. v. Smith & Nephew, Inc., No. 17-1239, Courtroom 402

In this appeal, the Federal Circuit will consider whether it has jurisdiction to review a PTAB decision to terminate an IPR and enter an adverse judgment against the patent owner.  Arthrex argues that the Court has jurisdiction because the PTAB's decision to enter an adverse judgment and terminate the IPR constituted a "decision" that is appealable under 28 U.S.C. § 1295(a)(4).  Alternatively, Arthrex argues that the PTAB's decision constitutes a "final agency action" that is reviewable under the Administrative Procedure Act.  Smith & Nephew argues that the APA does not permit judicial review of final agency actions when another statute bars judicial review.  Thus, Smith & Nephew argues that the Court does not have jurisdiction to hear Arthrex's appeal because its jurisdiction is limited to review of final written decisions under the AIA. 

Intellectual Ventures I LLC v. FTD Companies, Inc., Nos. 17-1376, 17-1377, Courtroom 40

This appeal arises from an E.D. of Texas decision holding that Intellectual Ventures' '715 patent was directed to patent ineligible subject matter under § 101.  Intellectual Ventures argues that the district court erred in holding the patent ineligible because it failed to consider the PTAB's decision not to institute CBM review in light of its conclusion that the '715 patent is a "technological-invention."  FTD argues that the PTAB's decision that the '715 patent was not a covered business method patent has no bearing on whether the claims are directed to patent eligible subject matter.  Additionally, FTD argues that the district court adequately considered the PTAB's decision when it denied Intellectual Ventures' motion for reconsideration, finding that the PTAB's ruling had no impact on its § 101 ruling. 

Tuesday, November 7, 2017

Kahr v. Cole, No. 17-1391, Courtroom 202

Patent owner Kahr appeals from an E.D. of Wisconsin decision finding that the ensnarement defense precluded a finding of infringement under the doctrine of equivalents.  Kahr argues that the district court erred by focusing only on the patentability of the equivalent element, not the equivalent of the hypothetical claim as a whole.  Kahr argues that when the claim as a whole is considered, it is patentable, as it is neither obvious nor anticipated in view of the references asserted by Cole.  Cole argues that the district court correctly construed...

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