Federal Circuit Update (January 2025)
Client Alert | February 10, 2025
This edition of Gibson Dunn’s Federal Circuit Update for January 2025 summarizes the current status of petitions pending before the Supreme Court and recent Federal Circuit decisions concerning inventorship, reverse doctrine of equivalents, and personal jurisdiction.
Federal Circuit News
Noteworthy Petitions for a Writ of Certiorari:
There were a few potentially impactful petitions filed before the Supreme Court in January 2025:
- Brumfield v. IBG LLC, et al. (US No. 24-764): The questions presented are: (1) “Whether the lower courts abused their discretion by denying the meritorious Rule 60(b)(3) motion, and whether Rule 60(b)(3) requires a showing that a moving party was diligent in uncovering fraud, misrepresentation, or misconduct to obtain relief from a judgment?”; (2) “Whether this Court’s three categorical judicial exceptions to patent eligibility that are further defined by the two-step Alice/Mayo test impose limitations on patent eligibility that are inconsistent with the text of 35 U.S.C. § 101 of the Patent Act of 1952?”; and (3) “Whether this Court’s supervisory authority is needed to correct the Federal Circuit’s improper (1) application of Rule 56 to patent cases and (2) practice of deciding issues that were never argued or briefed on appeal?” A response is due March 20, 2025.
- DISH Network L.L.C. v. Dragon Intellectual Property, LLC, et al. (US No. 24-726): The questions presented are “1. Whether the Patent Act’s fee-shifting statute allows a district court discretion to impose joint and several liability for the fee award on a party’s attorney whose actions substantially contribute to the exceptionality of the case. 2. Whether the same fee-shifting statute allows a district court discretion to award attorney’s fees incurred by a prevailing accused infringer in a parallel administrative proceeding to invalidate a patent.” The respondents waived their right to respond, and one amicus curiae brief has been filed. The Court will consider this petition during its February 21, 2025 conference.
- Provisur Technologies, Inc. v. Weber, Inc. (US No. 24-723): The questions presented are “I. Whether the Federal Circuit applied an incorrect standard of review for appeals of a Judgment as a Matter of Law (JMOL) and, as a result, improperly assumed the role of factfinder in overturning a jury verdict of willful patent infringement? Whether the Seventh Amendment permits the Federal Circuit to reexamine a jury’s factual findings and credibility determinations in reaching a verdict of willful patent infringement?” Weber waived its right to respond. The Court will consider this petition during its February 21, 2025 conference.
We provide an update below of the petitions pending before the Supreme Court, which were summarized in our November-December 2024 update:
- In Celanese International Corp. v. International Trade Commission (US No. 24-635), one amicus curiae brief has been filed. The response is due March 24, 2025.
- In Lighting Defense Group LLC v. SnapRays, LLC (US No. 24-524), after SnapRays waived its right to respond, the Court requested a response. The response is due February 10, 2025.
- In Parker Vision, Inc. v. TCL Industries Holdings Co., et al. (US No. 24-518), after the respondents waived their right to respond, the Court requested a response, which is due February 14, 2025. Nine amicus curiae briefs have now been filed.
- The Court denied the petition in Edwards Lifesciences Corporation, et al., v. Meril Life Sciences Pvt. Ltd., et al. (US No. 24-428).
Other Federal Circuit News:
Release of Materials in Judicial Investigation. The Federal Circuit released additional materials in connection with the proceeding under the Judicial Conduct and Disability Act and the implementing Rules involving Judge Pauline Newman. The materials may be accessed here: https://www.cafc.uscourts.gov/release-of-materials-in-judicial-investigation-5/.
Upcoming Oral Argument Calendar
The list of upcoming arguments at the Federal Circuit is available on the court’s website.
Key Case Summaries (January 2025)
BearBox LLC v. Lancium LLC, No. 23-1922 (Fed. Cir. Jan. 13, 2025): Mr. Storms (founder and sole employee of BearBox) and Mr. McNamara (co-founder of Lancium) met at a Bitcoin mining conference in 2019 where they discussed BearBox’s system, after which Mr. Storms sent Mr. McNamara an email with four attachments describing BearBox’s technology. Months later, Lancium filed a patent application that issued as the patent-at-issue, listing Mc. McNamara and a Dr. Cline (the other co-founder of Lancium) as inventors, claiming methods and systems for dynamic power delivery. BearBox sued Lancium asserting claims of sole or joint inventorship of Lancium’s patent, claiming that Mr. Storms had conceived of and shared with Mr. McNamara the claimed subject matter of Lancium’s patent. The district court held that BearBox had not met its burden to prove its inventorship claims by clear and convincing evidence based on testimony from Lancium’s witnesses about Lancium’s software and the development activities prior to the 2019 conference.
The Federal Circuit (Stoll, J., joined by Chen and Bryson, JJ.) affirmed. The Court upheld the district court’s denial of the correction to the inventorship claim, reiterating that “an alleged co-inventor must supply evidence to corroborate his testimony.” The Court reasoned that the email with the four attachments on which BearBox’s case rested was not sufficient to establish that Mr. Storms conceived of the claimed invention, or that he had communicated the information to Lancium prior to Lancium’s independent conception of the claimed matter.
Steuben Foods, Inc. v. Shibuya Hoppmann Corp., et al., No. 23-1790 (Fed. Cir. Jan. 24, 2025): Steuben sued Shibuya for infringement of patents directed to aseptic packaging of food products. Shibuya argued for a finding of noninfringement under the reverse doctrine of equivalents (RDOE), which allows an accused infringer to rebut infringement by showing the accused product is so far changed in principle from the asserted claims that it performs the same or similar function in a substantially different way. After the jury returned its verdict finding the asserted patents were infringed and not invalid, the district court granted Shibuya’s renewed motion for judgment as a matter of law (JMOL) of noninfringement under RDOE.
The Federal Circuit (Moore, C.J., joined by Hughes and Cunningham, JJ.) affirmed-in-part, reversed-in-part, vacated-in-part, and remanded. The Court held that the district court erred in granting JMOL of noninfringement under RDOE, determining that there was substantial evidence upon which a reasonable jury could have found that the accused products and claims were not so far changed as to support a theory of noninfringement under RDOE.
Regeneron Pharmaceuticals, Inc. v. Mylan Pharmaceuticals Inc., et al., Nos. 24-1965, 24-1966, 24-2082, 24-2083 (Fed. Cir. Jan. 29, 2025): Regeneron owns patents directed to the formulation of EYLEA®, a therapeutic product that stimulates blood vessel growth. Samsung Bioepis (SB) is a biosimilar products company headquartered in Incheon, South Korea. In 2019, SB signed an agreement with a U.S. company, Biogen, to provide it exclusive rights to commercialize SB’s FDA-approved EYLEA® biosimilar called SB15. SB filed an abbreviated Biologics License Application (aBLA) under the BPCIA seeking FDA approval to market SB15. Regeneron sued SB in West Virginia where a similar suit was pending against Mylan, and SB moved to dismiss for lack of personal jurisdiction. The district court determined the minimum contacts standard was met based on SB’s aBLA filing and evidence of distribution channels that SB had established for national marketing of its biosimilar, with no carve-out for West Virginia.
The Federal Circuit (Taranto, J., joined by Moore, C.J., and Renya, J.) affirmed. The Court determined that SB’s conduct satisfied the minimum contacts requirement for personal jurisdiction in West Virginia. For instance, the Court explained that SB had filed an application for aBLA with the FDA and served Regeneron with a notice in which it expressly communicated its intent to market SB15 upon FDA approval. The Court also pointed to the fact that SB had entered into an elaborate distribution agreement with Biogen to commercialize SB15 in the United States. The Court further explained that it and other courts have determined that “purposeful shipment or plans to do so through an established distribution channel,” such as the one SB had created, can establish personal jurisdiction.
Gibson Dunn’s lawyers are available to assist in addressing any questions you may have regarding developments at the Federal Circuit. Please contact the Gibson Dunn lawyer with whom you usually work, any leader or member of the firm’s Appellate and Constitutional Law or Intellectual Property practice groups, or the following authors:
Blaine H. Evanson – Orange County (+1 949.451.3805, bevanson@gibsondunn.com)
Audrey Yang – Dallas (+1 214.698.3215, ayang@gibsondunn.com)
Appellate and Constitutional Law:
Thomas H. Dupree Jr. – Washington, D.C. (+1 202.955.8547, tdupree@gibsondunn.com)
Allyson N. Ho – Dallas (+1 214.698.3233, aho@gibsondunn.com)
Julian W. Poon – Los Angeles (+ 213.229.7758, jpoon@gibsondunn.com)
Intellectual Property:
Kate Dominguez – New York (+1 212.351.2338, kdominguez@gibsondunn.com)
Y. Ernest Hsin – San Francisco (+1 415.393.8224, ehsin@gibsondunn.com)
Josh Krevitt – New York (+1 212.351.4000, jkrevitt@gibsondunn.com)
Jane M. Love, Ph.D. – New York (+1 212.351.3922, jlove@gibsondunn.com)
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