Precedential Federal Circuit Opinions

1. BOARD OF REGENTS v. BOSTON SCIENTIFIC CORPORATION [OPINION - PRECEDENTIAL] (2018-1700, 9/05/2019) (PROST, REYNA, and STOLL)

Stoll, J. Affirming an order transferring a patent case from the Western District of Texas to Delaware on the basis of improper venue. The Board of Regents of the University of Texas System (“UT”) argued that the transfer order violated Texas state sovereignty. The Court held that it had jurisdiction under the collateral order doctrine, and then held that state sovereignty principles do not grant UT the right to bring suit in an otherwise improper venue.

2. INTELLECTUAL VENTURES I LLC v. CAPITAL ONE FINANCIAL CORP [OPINION - PRECEDENTIAL] (2018-1367, 9/10/2019) (PROST, BRYSON, and REYNA)

Bryson, J. Affirming the district court’s summary judgment ruling against Capital One regarding its antitrust claims against Intellectual Ventures. The Court based its holding on collateral estoppel—i.e., it affirmed the district court’s application of collateral estoppel based on another court’s prior determination that Capital One had failed to identify an appropriate relevant market for its antitrust claims against Intellectual Ventures. Because Capital One had already lost on that issue in a prior case, it was barred by collateral estoppel from relitigating it again.

3. HENNY PENNY CORPORATION v. FRYMASTER LLC [OPINION - PRECEDENTIAL] (2018-1596, 9/12/2019) (LOURIE, CHEN, and STOLL)

Lourie, J. Affirming the PTAB’s IPR decision that patent claims related to certain deep fryers were not unpatentable as obvious. The Court held that substantial evidence supported the PTAB’s findings of non-obviousness and that the PTAB properly credited evidence of secondary considerations of non-obviousness, including industry praise for the plaintiff’s product that embodied the claimed invention.

4. CURVER LUXEMBOURG, SARL v. HOME EXPRESSIONS INC. [OPINION - PRECEDENTIAL] (2018-2214, 9/12/2019) (CHEN, HUGHES, and STOLL)

Chen, J. Affirming a dismissal of a design patent infringement case regarding an “ornamental design for a pattern for a chair.” The plaintiff accused the defendant of infringing the patent by selling baskets that allegedly used the same ornamental pattern. The Court affirmed the district court’s dismissal for failure to state a plausible infringement claim because the asserted claims were limited to an “ornamental design for a pattern for a chair” (emphasis added), and the accused basket product was not a chair.

5. MAYO FOUNDATION v. IANCU [OPINION - PRECEDENTIAL] (2018-2031, 9/16/2019) (NEWMAN, LOURIE, and DYK)

Lourie, J. Affirming a judgment of the U.S. District Court for the Eastern District of Virginia affirming the U.S. Patent and Trademark Office’s (“PTO”) calculation of a patent term adjustment in the context of an interference proceeding. The issue on appeal was whether the PTO correctly interpreted the phrase, “any time consumed by continued examination of the application requested by the applicant under section 132(b)” in 35 U.S.C. § 154(b)(1)(B)(i). The Court held that, where a request for continued examination has previously been filed, “the time between termination of an interference and the date of mailing of the Notice of Allowance is ‘time consumed by continued examination of the application requested by the applicant under section 132(b)’ pursuant to 35 U.S.C. § 154(b)(1)(B)(i).” Judge Newman dissented.