Fresh From the Bench: Latest Precedential Patent Cases

CASE OF THE WEEK

Medytox, Inc. v. Galderma S.A., Appeal No. 2022-1165 (Fed. Cir. June 27, 2023)

In this week’s Case of the Week, the Federal Circuit upheld an application by the Patent Trial and Appeal Board of its Pilot Program concerning motions to amend practice and procedures (the “Pilot Program”), which patent owner/appellant Medytox challenged under the Administrative Procedures Act.  Parties whose patents are challenged in administrative trial proceedings under the America Invents Act (i.e., inter partes reviews, post-grant reviews, or covered business method reviews) may generally file a motion to amend the challenged claims to overcome a petitioner’s challenge.  Under the Pilot Program, after receiving a petitioner’s opposition to a motion to amend, the patent owner may opt to receive preliminary guidance from the Board on whether there is a reasonable likelihood that its motion and proposed amended claims meet applicable statutory and regulatory requirements, and may choose to file a revised motion to amend to address issues raised in the petitioner’s initial opposition and/or in the Board’s preliminary guidance.

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ALSO THIS WEEK

LKQ Corporation v. GM Global Technology Operations LLC, Appeal No. 2021-2348 (Fed. Cir. June 30, 2023)

In a precedential order, the en banc court agreed to hear this case concerning the standard for obviousness applicable to design patents.  Although the Federal Circuit panel’s opinion in the case was designated nonprecedential, we nonetheless wrote about it in January this year because of its significance.  Our write-up can be found here.  Specifically, the Court upheld the Rosen and Durling tests for design patent obviousness over an argument that those decisions were abrogated sub silencio by the Supreme Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007).  In its order this week, the en banc court will consider that question.

The opinion can be found here.

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Editors:

Nika Aldrich, IP Litigation Group Leader, Schwabe, Williamson & Wyatt, P.C.

Jason A. Wrubleski, Shareholder