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Appellate Litigation

America Invents Act Again at Issue: Cuozzo Speed Technologies, LLC v. Lee - Podcast

Intellectual Property Practice Group Podcast
Kristen Osenga June 21, 2016

On June 20, 2016, the Supreme Court decided Cuozzo Speed Technologies v. Lee. In this case, the Supreme Court examined two provisions of the inter partes review, a proceeding created to provide a cost-effective alternative to litigation for resolving certain challenges to patent validity.

Cuozzo Speed Technologies (Cuozzo) owns a speed limit indicator patent. Garmin International (Garmin) petitioned the US Patent and Trademark Office (PTO) for inter partes review of Cuozzo’s patent. The Patent Trial and Appeal Board of the PTO agreed to reexamine claim 17, as requested by Garmin, as well as claims 10 and 14. After the inter partes review proceeding, the Board concluded that all three claims (10, 14, and 17) were invalid. Cuozzo appealed to the U.S. Court of Appeals for the Federal Circuit, arguing that 1) the Board improperly instituted inter partes review of claims 10 and 14, because Garmin had not challenged these claims and 2) that the Board improperly used a claim construction standard set forth by PTO regulation calling for claim terms to be given their “broadest reasonable construction,” a standard that differs from that used in district court litigation (“ordinary meaning”). A divided Federal Circuit rejected both arguments, noting that 1) decisions to institute inter partes reviews are nonappealable by statute and 2) that the application of the broadest reasonable construction standard was a reasonable exercise of the PTO’s rulemaking authority. The Supreme Court granted certiorari to review both issues.

With respect to the appealability of decisions to institute inter partes review, the Supreme Court agreed with the Federal Circuit. 35 U.S.C. § 314(d) states “The determination by the Director [of the PTO] whether to institute an inter partes review under this section shall be final and non-appealable.” The statute means what it says. With respect to the claim construction standard, the Supreme Court also agreed with the Federal Circuit, holding that the PTO has the authority to issue and abide by its broadest reasonable construction regulation.

Our expert discussed the opinion of the Court, delivered by Justice Breyer, including the Supreme Court’s reasoning behind the holdings in Cuozzo Speed Technologies, as well as a concurrence authored by Justice Thomas and an opinion concurring-in-part and dissenting-in-part written by Justice Alito and joined by Justice Sotomayor.

Featuring:

  • Prof. Kristen Osenga, Professor of Law, University of Richmond School of Law

RICO's Reach: RJR Nabisco, Inc. v. The European Community Decided - Podcast

Litigation Practice Group Podcast
Cory L. Andrews June 20, 2016

On Monday, June 20, the United States Supreme Court released its decision in RJR Nabisco, Inc. v. The European Community. The case arose in the 2nd Circuit. The European Community, now the European Union, alleged that RJR participated in a scheme to launder illegal drug sale proceeds in Europe and attempted to sue in the United States' courts. The Court held that they could not sue under RICO, the Racketeer Influenced and Corrupt Organizations Act, because irrespective of any extraterritoriality of the law's substantive provisions, a private right of action does not overcome the presumption against extraterritoriality and thus a private plaintiff must allege and prove a domestic injury.

Featuring:

  • Cory L. Andrews, Senior Litigation Counsel, Washington Legal Foundation

Net Neutrality Survives D.C. Circuit Challenge: U.S. Telecom Association v. FCC - Podcast

Telecommunications & Electronic Media Practice Group Podcast
Brett A. Shumate, Adam J. White June 20, 2016

On Wednesday, June 14, the D.C. Circuit Court of Appeals upheld the Federal Communications Commission’s controversial reclassification of broadband internet service as a telecommunications service subject to common carrier regulation under Title II of the Communications Act. The case, which many observers believe may ultimately end up before the United States Supreme Court, touches on major questions about the Communications Act, as well as First Amendment issues and larger administrative law controversies, including Chevron deference. Our experts discussed all of these angles and the outlook for the case going forward.

Featuring:

  • Brett A. Shumate, Partner, Wiley Rein LLP
  • Adam J. White, Research Fellow, Hoover Institution

How “False” Must a Claim be under the False Claims Act? The Supreme Court Decides Universal Health Services v. United States ex rel. Escobar - Podcast

Litigation Practice Group Podcast
Shane B. Kelly, Mark B. Sweet June 17, 2016

If you do business with the federal government, when does violating a statute, regulation, or contract provision become fraud? This question was answered by the U.S. Supreme Court on June 16 in Universal Health Services v. United States ex rel. Escobar, which examines the scope of the False Claims Act (FCA). The FCA provides for treble damages and civil fines for anyone submitting false claims for payment to the federal government. Violations of the FCA must involve a “false or fraudulent claim” or “a false record or statement material to a false or fraudulent claim.” Traditionally, the falsity element of an FCA claim required a “factual falsehood” (e.g., submitting a claim for payment for 10 computers when only 5 were delivered) or an express false certification (e.g., certifying to a lack of organizational conflicts of interest when such conflicts exist). Circuit Courts had split on this question, but the Supreme Court ruled today that a party can be held liable under the implied false certification theory when the party “fails to disclose noncompliance with material statutory, regulatory, or contractual requirements that make those representations misleading with respect to goods and services.” This decision has significant implications for anyone doing business with the federal government and could substantially increase contractors’ exposure to the FCA’s punishing statutory regime. 

Featuring:

  • Shane B. Kelly, Associate, Wiley Rein LLP
  • Mark B. Sweet, Partner, Wiley Rein LLP

Patents: The Supreme Court Rules, Again - Podcast

Intellectual Property Practice Group Podcast
Kristen Osenga June 15, 2016

On June 13, 2016, the Supreme Court decided Halo Electronics v. Pulse Electronics and a consolidated case, Stryker Corp. v. Zimmer. In each of these patent infringement cases, a jury had found the accused infringer liable for infringing the patent, and having done so willfully. In the Halo case, the district court declined to award enhanced damages and the Federal Circuit affirmed. In the Stryker case, the district court awarded enhanced damages, but the Federal Circuit vacated that award. The Supreme Court took the cases to determine whether the Federal Circuit’s two-part test for enhanced damages was consistent with 35 U.S.C. § 284.

Chief Justice Roberts delivered the opinion of the court, vacating the Federal Circuit’s judgments in both cases because the appellate court’s test for enhanced damages did not permit the district court to exercise the discretion afforded by § 284. The Federal Circuit’s test, adopted in In re Seagate Technology, required first that a patent owner must prove “that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent” and second, that the risk of infringement “was either known or so obvious that it should have been known to the accused infringer.” Both prongs of the test must be shown by clear and convincing evidence. In its opinion, the Supreme Court notes that the Seagate test properly reflects that enhanced damages are available only in egregious cases; however, the test is far too rigid to reflect the level of discretion afforded to the district courts.

Featuring:

  • Prof. Kristen Osenga, Professor of Law, University of Richmond School of Law