Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. Well, the final shoes have dropped on this year's U.S. Supreme Court long conference, and it looks as if we another patent case that could be heading to the docket next year. I've got details below. Plus, it's a Federal Circuit calendar week. I've got a preview of three upcoming arguments and a rundown of one just completed. As always you can email me your thoughts and feedback and follow me on Twitter.

Daniel Ravicher

PTAB Appeals May Take Center Stage

All right, Term 2018 just got slightly more interesting for IP following the release of Monday's orders. Although granting only one cert petition from the Supreme Court's long conference last week, the justices on Monday asked the solicitor general's office for its views on RPX Corp. v. ChanBond, one of the cases I highlighted in my preview last week.

RPX is challenging a Federal Circuit decision, authored by former Chief Judge Randall Rader in 2014 during the waning days of his tenure, that blocks third parties from appealing losses at the PTAB. The America Invents Act explicitly lets any third party file inter partes review, and provides that any dissatisfied party may appeal. But Rader held in Consumer Watchdog v. Wisconsin Alumni Research Foundation that, regardless of what Congress said in the AIA, no party can appeal to the Federal Circuit without an Article III injury-in-fact. And that doesn't include third parties like RPX and Consumer Watchdog, that are trying to invalidate patents ostensibly on behalf of the public.

If the Supreme Court does take the case—and the odds become much more likely once the CVSG is issued—it could offer a chance at redemption for Daniel Ravicher, the lawyer who lost Consumer Watchdog but is now representing RPX. Ravicher, now of the University of Miami School of Law, had no immediate comment. “RPX is pleased that the court has requested the views of the solicitor general,” a spokeswoman for the company said.

Two side notes: 1) The attorney who argued the appeal for patent holder Washington Research Alumni Foundation in 2014: Kara Stoll, then a partner at Finnegan Henderson Farabow Garrett & Dunner, is now a Federal Circuit judge herself.

2) As is so often the case, the Supreme Court and the Federal Circuit seem to be riding elevators in the opposite direction. Just this week, the Federal Circuit was looking to broaden Consumer Watchdog. A panel led by Judge Kathleen O'Malleyrequested briefing sua sponte on whether Google and LG had standing to appeal an IPR loss after patent owner Conversant Wireless dismissed the challenged claims from the underlying district court litigation.

“This case is not like Consumer Watchdog,” Paul Hastings partner Naveen Modiargued, because Conversant dismissed the claims without prejudice, over LG's objection. “We asked them for a covenant not to sue. They refused,” Modi explained. That seemed to satisfy the panel that at least LG could meet the standing requirement.

In other Supreme Court IP news …

There's been no sign so far that the Supreme Court is eager to address the AIA retroactivity question left hanging in Oil States. The court turned away at least two such challenges (though many more will surely come before the court).

The court also turned away Stanford law professor Mark Lemley's argument that judges, not jurors, should determine obviousness; an inequitable conduct casethat had parts of the patent bar in a lather; and a trademark dispute over the use of service marks in goods.

Another Houdini Act for Bill Lee?

Last week, Wilmer Cutler Pickering Hale and Dorr partner Bill Lee got Apple out from under a $506 million patent infringement judgment on semiconductor technology. I wrote about it here.

On Monday he was back before the Federal Circuit again, this time trying to persuade the court to throw out a $57 million judgment for willful patent infringement against Cisco Systems.

I didn't think much of Lee's chances going in. Patent holder SRI International isn't some everyday non-practicing entity. It's a prestigious defense contractor, and the network security patents at issue were developed under a grant from DARPA. U.S. District Judge Sue Robinson found that Cisco pursued the litigation “about as aggressively as the court has seen in its judicial experience.” She awarded SRI all $8 million of its requested attorneys fees.

Lee argued that the litigation never should have happened—that Cisco should have been out early on its Section 101 challenge to the patents. “The claims are broad, they are general, and they are generic,” Lee told the court. And contrary to SRI's story, Cisco wasn't on notice of SRI's patents until 2012—not 2000 as SRI had suggested.

The Federal Circuit was all over the 101 arguments when Fish & Richardson partner Frank Scherkenbach took the lectern.

“It looks like detecting information, generating reports, and integrating the reports,” Judge Alan Lourie said. “Just dealing with information by conventional means.”

“The claims are actually quite a bit more specific than that, your honor,” Scherkenbach said.

“How would you describe the technical problem that is solved by the claimed invention,” Judge Kara Stoll asked.

Scherkenbach said he would describe it as “being able to detect intrusion in large-scaled computer networks in a practical way, which had not been done before.”

O'Malley told him SRI's closing argument to the jury made the patents sound “pretty simple.”

Scherkenbach said that was just “a high-level lead in” to get jurors “in the ballpark” of what the patents are actually about.

As for willfulness, Scherkenbach said it's hard to appreciate on the cold record how contemptuous Cisco engineers acted on the witness stand. “This man showed up and said, 'I don't think these guys have any idea what they're talking about. Patents, schmatents.'”

I'm pretty sure Scherkenbach was paraphrasing the last part.

Who Else Is Arguing?

The Federal Circuit is holding arguments all week, with about half at its D.C. courthouse, and the other half at various law schools in Chicago. Here are a few I'll be paying attention to:

➤ WhatsApp and Facebook v. TriPlay. Facebook and its personal patent validity guru Heidi Keefe of Cooley are in the unfamiliar position of appellants in a PTAB appeal. The PTAB upheld patent claims on a cross-platform messaging system despite Facebook's efforts to cancel them. Keefe and Facebook argue that once advanced messaging apps were invented that could adapt to multimedia, adding video capability became an obvious, unpatentable upgrade. “In terms of providing a realistic experience, everyone knows that videos beat photos, hands-down,” Keefe argues to the Federal Circuit. The PTAB ruled that that argument—as intuitive as it may seem—was “too simplistic and general.” Keefe and Facebook argue that once advanced messaging apps were invented multimedia, adding video capability became an obvious, unpatentable upgrade. “In terms of providing a realistic experience, everyone knows that videos beat photos, hands-down,” Keefe argues to the Federal Circuit. The PTAB ruled that that argument—as intuitive as it may seem— will represent patent owner at the Oct. 4 argument, which will be held at in Chicago. TriPlay is asserting the patent against WhatsApp in the district of Delaware.Greenberg Traurig partner Michael Nicodema will represent patent owner TriPlay at the Oct. 4 argument, which will be held at John Marshall Law School in Chicago. TriPlay is asserting the patent against WhatsApp in the district of Delaware.

➤ Athena Diagnostics v. Mayo Collaborative. The caption tells you all you need to know. The diagnostics industry is making one more push to protect its technology from Section 101 challenges. In this case Athena, Oxford Universityand Max-Planck are pleading with the Federal Circuit to spare a technique for detecting autoantibodies that help diagnose myasthenia gravis. “Methods of diagnosis are surely the type of discoveries that [patent] protection is meant to promote,” they argue, though of course the Federal Circuit has, reluctantly, indicated otherwise. Fenwick & West partner Adam Gahtan will be giving it the college try for Athena on Oct. 4 at the D.C. courthouse. He has amicus backing from the Biotechnology Innovation Organization, and a group of law professors including Villanova's Michael Risch and George Mason's Adam Mossoff, among others. The Mayo Clinic is going with Fish & Richardson, and why not? It's the same firm that won Mayo's groundbreaking Section 101 opinion at the Supreme Court. Partner Jonathan Singer will argue.

➤ Indivior v. Dr. Reddy's Laboratories. This is a battle of dueling Hatch-Waxman cases. Dr. Reddy's got a judgment from U.S. District Judge Richard Andrews that its new opioid treatment doesn't infringe Indivior's $1 billion a year treatment Suboxone. Andrews found that Dr. Reddy's dries its film, which dissolves under the tongue, in a manner disclaimed by Indivior's patent. No problem, Indivior got a continuation patent that changed the words “capable of being dried” to “capable of being continuously cast,” then ran to U.S. District Judge Kevin McNulty in New Jersey and got an injunction shutting down the Dr. Reddy's product. Goodwin Procter partner Kevin Martin will argue that Indivior's new patent suit is precluded, and even if it isn't, the public interest in providing more access to life-saving treatment for opioid addicts cuts against Indivior's injunction. Covington & Burling partner Jeffrey Elikan will argue that if the cheaper Dr. Reddy's product launches, the public interest will be harmed by Indivior being forced to slash R&D on promising new therapies, eliminate jobs, and scale back the millions of dollars it spends each year on educational grants for opioid addiction treatment. This case will also be heard Oct. 4 in D.C.

Durie Tangri Skins RF Ablation Patents

Congratulations are due to Sonal Mehta and a team of Durie Tangri attorneys who obtained summary judgment in competitor litigation over the use of RF energy for skin ablation. Durie Tangri persuaded former U.S. Magistrate Judge Margaret Nagle, acting as a special master in Syneron Medical v. Invasix, to grant summary judgment of invalidity of two patents asserted by Syneron. U.S. District Judge David Carter affirmed that recommendation on Friday.

Syneron is represented by Collins Edmonds & Schlather.

Groupon Strikes a Deal With IBM

Groupon has obtained a post-trial discount on the $82.5 million patent infringement judgment levied against it in Delaware district court, my ALM colleague Tom McParland reports. Patent owner IBM had been arguing that the damages should be doubled, but decided this week to resolve the dispute for $57 million. “The license we have acquired to IBM's patent portfolio will enable Groupon to continue to build amazing products for consumers and small businesses around the world,” said Bill Roberts, Groupon's vice president of global communications.

A jury had found that Groupon willfully infringed four e-commerce patents that date back to the early days of the internet. Groupon brought in a team led by Weil Gotshal & Manges partner Edward Reines and Gibson Dunn & Crutcher partner Mark Perry to start attacking the judgment. Ashby & Geddes provided local counsel.

IBM was represented by John Desmarais and the Desmarais firm, plus local counsel at Potter Anderson & Corroon.

That's all from Skilled in the Art today. I'll see you all again on Friday.