scott eads
Sep 24, 2019
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Fresh From the Bench: Latest Federal Circuit Court Cases

CASE OF THE WEEK

Inspired Development Grp, LLC v. Inspired Products Grp., LLC, Appeal No. 2018-1616 (Fed. Cir. Sept. 18, 2019)

Our first patent case of the week is not, according to the Federal Circuit, a patent case after all. Rather, applying the subject matter jurisdiction test in Gunn v. Minton, 568 U.S. 251, 256 (2013), the Federal Circuit held that the case was a garden variety state law dispute. And because there was no diversity between defendants, the Federal Circuit ordered the case dismissed three years after it was brought.

The dispute started as a business dispute involving a license for a patent. The plaintiff sued defendant (aka KidsEmbrace) for breach of contract and unjust enrichment concerning the agreements by which the patent was licensed. KidsEmbrace asserted counterclaims, including breach of contract, fraud, negligent misrepresentation, restitution, and breach of fiduciary duty. Both parties relied on diversity for jurisdiction. The case was ultimately resolved in KidsEmbrace’s favor, and Inspired Development appealed to the Eleventh Circuit.

Read more.

ALSO THIS WEEK

Intra-Cellular Therapies, Inc. v. Iancu, Appeal No. 2018-1849 (Fed. Cir. Sept. 18, 2019)

In an appeal from a district court decision upholding the Patent Office's determination of Patent Term Adjustment (PTA), the Court reviewed whether an applicant submission, filed after a final Office action to continue to argue the merits of the examiner’s rejection, may accrue applicant delay under the PTA statute (applicant delay offsets Patent Office examination delay and may effectively decrease patent term adjustment). The Court held that the Patent Office did give permissible construction of the PTA statute when interpreting an after-final submission that continued to argue the merit of the examiner’s final rejection as a “fai[lure] to engage in reasonable efforts to conclude prosecution.” Accordingly, the Court concluded that the district court did not err in granting summary judgement in favor of the Patent Office.

The opinion can be found here.

Mayo Foundation for Med. Educ. & Research v. Iancu, Appeal No. 2018-2031 (Fed. Cir. Sept. 16, 2019)

In a second case this week concerning Patent Term Adjustment, the dispute concerned continued examination of a patent after an interference was brought and concluded. Mayo had argued that the declaration of interference was equivalent to a Notice of Allowance, thus triggering PTA for all time after the examination concluded. The PTO disagreed, and awarded no time for post-interference examination. The district court agreed with the PTO and the Federal Circuit agreed, relying on PTO procedures and interpretation of the statute.

The opinion can be found here.

Written by: Scott D. Eads and Nika Aldrich, Schwabe Williamson & Wyatt

Contributor: Michael A. Cofield