At a Glance: Federal Circuit Oral Arguments Preview

The U.S. Court of Appeals for the Federal Circuit will hear dozens of oral arguments in August, including disputes over patent eligibility, enhanced damages, and whether a piece of research was publicly available. Some notable cases to watch are:

Patent Eligibility

Uniloc USA Inc. is appealing a ruling that its software licensing related patent was directed at an abstract idea, making it ineligible for protection. U.S. Patent No. 8,566,960 covers ways to adjust software licenses attached to specific devices. Uniloc used the patent to sue several media-related companies, including Inc., Alphabet Inc.’s Google LLC, and Home Box Office Inc.

The U.S. District Court for the Eastern District of Texas granted the defendants’ motion to dismiss the case. While Uniloc’s appeal was pending, the Federal Circuit issued rulings in Berkheimer v. HP and Aatrix v. Green Shades, about how to handle factual disputes in motions based on patent ineligibility arguments. The court will likely revisit the issue in the case.

The court will hear arguments Aug. 6.

The case is Uniloc USA, Inc. v., Inc., Fed. Cir., No. 17-2051, oral argument 8/6/18.

Enhanced Damages

MGA Entertainment Inc. is asking the court to clarify when a losing party has to pay enhanced damages to the other side. The company is appealing a trial court ruling awarding triple damages and attorneys’ fees to patent owner Innovention Toys LLC. The trial court first awarded enhanced damages before the U.S. Supreme Court’s Halo Elecs. v. Pulse Elecs., so the case returned to the trial court to reconsider the issue in light of that 2014 ruling.

The trial court again awarded enhanced damages because it found MGA willfully infringed the patent, which relates to a chess-like, light-reflecting board game. MGA is arguing its behavior was reasonable because it started selling its infringing product more than a year before it learned about Innovention’s patent, and it had serious doubts about the patent’s validity.

The court will hear arguments Aug. 6.

The case is Innovention Toys, LLC v. MGA Entm’t, Inc., Fed. Cir., No. 17-2204, oral argument 8/6/18.

Inter Partes Reexaminations

Automated Merchandising Systems Inc. is challenging whether the patent office can continue to reexamine a patent even if the requesting party has withdrawn from the case. Automated is asking the Federal Circuit to throw out the patent office’s ruling invalidating its patents related to optical sensors in vending machines. Competitor Crane Co. filed for inter partes reexamination of the patents after Automated sued for infringement. The parties settled the lawsuit, and in the agreement, Crane said it agreed the patents were valid.

Congress replaced inter partes reexamination with another administrative proceeding, inter partes reviews, in the 2011 America Invents Act.

The patent office refused to stop reexamining Automated’s patents and concluded they were invalid. Automated is arguing the patent office should have stopped the proceedings.

The court will hear arguments Aug. 7.

The case is Automated Merch. Sys. v. Iancu, Fed. Cir., No. 17-1953, oral argument 8/7/18.


Coda Development SRO is asking the court to give it ownership of several patents belonging to Goodyear Tire & Rubber Co. Coda is arguing its founder, Frantisek Hrabel, is the rightful inventor of several Goodyear patents related to self-inflating tires. Coda says Hrabal shared his invention with Goodyear representatives under a non-disclosure agreement. Coda brought a trade secrets theft claim after Goodyear got patents for the technology. According to Coda, Goodyear argued for the first time in a reply brief that the trade secrets were publicly available, and the district court accepted that argument without giving Coda a chance to respond.

Goodyear argues the publicly available trade secrets were already part of the litigation record, not a new argument raised in a reply brief.

The Federal Circuit will hear arguments Aug. 7.

The case is Coda Dev. SRO v. Goodyear Tire & Rubber Co., Fed. Cir., No. 18-1028, oral argument 8/7/18.

Publicly Available Prior Art

Nobel Biocare Services AG is challenging the patent office’s ruling invalidating its patent related to dental implants. The Patent Trial and Appeal Board said a catalog describing the invention was publicly available at a conference, anticipating the patent.

Nobel said that conclusion is wrong because it was based on incomplete witness testimony. For example, one witness said he printed and made the catalogs available at the conference, but didn’t say how many were distributed, where they were displayed, and whether there were any non-disclosure agreements attached to them.

The Federal Circuit ruled on a similar issue in GoPro, Inc. v. Contour IP Holding on July 27. In GoPro, the court reversed the board’s conclusion that a catalog wasn’t publicly available. That case could figure prominently during the oral arguments.

The Federal Circuit will hear arguments Aug. 9.

The case is Nobel Biocare Services AG v. Instradent USA, Inc., Fed. Cir., No. 17-2256, oral argument 8/9/18.

The appeals court also will hear two life sciences cases involving patent rulings on epilepsy drug Oxtellar XR and eye drop drug Durezol.

To contact the reporter on this story: Peter Leung in Washington at

To contact the editor responsible for this story: Rebecca Baker at