Department of Justice Once Again Proves Its Loyalty to the President, Not the Rule of Law

AUSTIN SARAT

Austin Sarat—Associate Provost, Associate Dean of the Faculty, and William Nelson Cromwell Professor of Jurisprudence and Political Science at Amherst College—comments on the recent news that the Justice Department will seek dismissal of charges against Michael Flynn. Sarat suggests that because the decision does not seem to advance the fair administration of justice in this case, the court should take the unusual step of refusing to grant the prosecutor’s motion to dismiss.

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Caterpillar Paving Products, Inc. v. Wirtgen America, Inc.

Court: US Court of Appeals for the Federal Circuit

Docket: 20-1261

Opinion Date: May 6, 2020

Judge: Timothy B. Dyk

Areas of Law: Intellectual Property, Patents

The Patent Trial and Appeal Board instituted inter partes review of Caterpillar’s patent and issued its final written decision on November 13, 2019. Caterpillar appealed, then moved to vacate and remand for a new hearing before a differently constituted panel in light of the Federal Circuit’s 2019 “Arthrex” holding that the administrative patent judges of the Patent Trial and Appeal Board were improperly appointed. The Federal Circuit denied the motion. Unlike prior cases, which have been remanded, Arthrex issued before the Board’s final written decision in Caterpillar’s case. The Arthrex holding was expressly limited “to those cases where final written decisions were issued.” The court rejected an argument that even if the panel members became constitutional immediately before issuing the final written decision, that “does not cure a year’s worth of constitutional violations influencing the Board’s thinking and conclusions.”

Ciena Corp. v. Oyster Optics, LLC

Court: US Court of Appeals for the Federal Circuit

Docket: 19-2117

Opinion Date: May 5, 2020

Judge: O'Malley

Areas of Law: Civil Procedure, Government & Administrative Law, Intellectual Property, Patents

Oyster sued, alleging that Ciena infringed several patents. Ciena petitioned the Patent Trial and Appeal Board for inter partes review of the asserted patents. The district court stayed the litigation. The Board concluded that Ciena had failed to demonstrate by a preponderance of the evidence that any of the challenged claims were unpatentable. The Federal Circuit denied Ciena’s motion to vacate the decision. Ciena forfeited its argument that the members of the Board panel that issued the decision were not appointed in compliance with the Appointments Clause. Ciena requested that the Board adjudicate its petition and affirmatively sought a ruling from the Board members, regardless of how they were appointed. Ciena was content to have the assigned Board judges adjudicate its invalidity challenges until the Board ruled against it.

Hitkansut LLC v. United States

Court: US Court of Appeals for the Federal Circuit

Docket: 19-1884

Opinion Date: May 1, 2020

Judge: Sharon Prost

Areas of Law: Government Contracts, Intellectual Property, Legal Ethics, Patents

Hitkansut owns the patent, entitled “Methods and Apparatus for Stress Relief Using Multiple Energy Sources.” While the application that later issued as that patent was pending, Hitkansut entered into a non-disclosure agreement with Oak Ridge National Laboratory (ORNL) and provided ORNL with a copy of the then-unpublished patent application. ORNL staff prepared research reports, received funding, authored publications, and received awards for research, based upon unauthorized use of the patent. Hitkansut sued ORNL, alleging infringement under 28 U.S.C. 1498. The Claims Court determined that certain claims of the patent were invalid but that other claims were valid and infringed. Although Hitkansut originally sought a royalty between $4.5-$5.6 million, based on a percentage of the research funding obtained by ORNL, the Claims Court awarded $200,000, plus interest, as the hypothetically negotiated cost of an up-front licensing fee. The Federal Circuit affirmed. Hitkansut then sought attorneys’ fees and expenses under 28 U.S.C. 1498(a). The Claims Court awarded $4,387,889.54.The Federal Circuit affirmed. Section 1498(a) provides for the award of attorneys’ fees under certain conditions, unless “the court finds that the position of the United States was substantially justified.” The “position of the United States” in this statutory provision refers to positions taken during litigation and does not encompass pre-litigation conduct by government actors, but the examples of conduct cited by the Claims Court demonstrate that the position of the United States was not substantially justified even under this narrow definition

Uber Technologies, Inc. v. X One, Inc.

Court: US Court of Appeals for the Federal Circuit

Docket: 19-1164

Opinion Date: May 5, 2020

Judge: Sharon Prost

Areas of Law: Intellectual Property, Patents

X One’s patent describes a “Buddy Watch application” that allows a mobile device user to add other mobile device users to her “Buddy List.” A user may set up “instant buddies.” For example, a stranded motorist may wish to be instant buddies with the driver of a tow truck, allowing each phone to show the location of the other phone on its moving map. Uber sought inter partes review asserting that claims of the patent were obvious, 35 U.S.C. 103, in view of prior art that generally describes transmitting location information between mobile devices. The Patent Trial and Appeal Board held the claims were not unpatentable. The Federal Circuit reversed. The Board erred in determining that the combination of prior art does not render obvious the limitation “software . . . to transmit the map with plotted locations to the first individual.” Because terminal-side plotting and server-side plotting, as described in prior art, would have been two of a finite number of known, predictable solutions at the time of the invention of the patent, a person of ordinary skill would have faced a simple design choice between the two, and would have been motivated to combine the teachings of prior art to achieve the limitation.