Federal Circuit Updates

(1) Notices:

(a)        On November 15, 2022, Revised Protocols for In-Person Arguments were issued.  Significantly, there is no longer a requirement to wear a mask while on court premises.  There is also no longer a prohibition against recent international travel.  A copy of the Revised Protocols may be found at https://cafc.uscourts.gov/notice-of-revised-protocols-for-in-person-argument-3/.

(b)       On November 17, 2022, notice was provided that the Court was deferring adoption of the recently-proposed amendments to the Federal Circuit Rules of Practice in light of the public comments received.  No new date was provided for incorporation of those amendments.  A copy of the notice may be found at https://cafc.uscourts.gov/notice-of-deferral-of-adoption-of-federal-circuit-rules-of-practice/.

(2)       In re Apple, No. 2022-162 (November 8, 2022) (Dyk, Reyna, Taranto)

            After being sued for infringement in the Western District of Texas, Waco Division, Apple had moved the district court to transfer the case to the Northern District of California and had submitted a declaration from an Apple employee in support.  Shortly before the close of venue discovery, Apple sought leave to supplement its motion with additional declarations from employees whom its original declarant had consulted so as to bolster the credibility of his statements. The district court granted Apple leave, but also ordered the parties to first complete fact discovery on the merits (30 weeks) and then re-brief Apple’s motion to transfer (another 6 weeks) before it would rule.  Apple then filed a petition for mandamus.

            In an opinion by Judge Reyna, the panel granted Apple’s petition for mandamus and vacated the district court’s scheduling order.  The panel specifically instructed the district court “to postpone fact discovery and other substantive proceedings until after consideration of Apple’s motion for transfer.”  The panel further stated that “decision of a transfer motion must proceed expeditiously as the first order of business and that venue discovery must proceed immediately to enable such a prompt decision of the transfer motion.”

(3)       Treehouse Avatar LLC v. Valve Corporation, No. 22-1171 (November 30, 2022)(Lourie, Reyna, Stoll)

            Treehouse Avatar had sued Valve for infringement of a patent directed to a method of collecting data from an information network.  During the district court proceedings, the parties had agreed to use the construction of a particular claim term that had been adopted by the Patent Trial and Appeal Board during an earlier inter partes review of the patent-in-suit. Despite this agreement, Treehouse Avatar’s expert had used the “plain and ordinary” meaning of that particular claim term in his infringement report.  Valve had moved to strike, and the district court had granted that motion.

            In an opinion by Judge Reyna, the panel affirmed the district court’s decision.  The panel affirmed that “the grant of a motion to strike expert testimony is not improper when such testimony is based on a claim construction that is materially different from the construction adopted by the parties and the court.”  In support of its decision, the panel noted that “[w]hen the court has adopted a construction that the parties requested and agreed upon, any expert theory that does not rely upon that agreed-upon construction is suspect” and therefore subject to be striken.