Case: 24-1897 Document: 23 Page: 1 Filed: 12/11/2024
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`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`24-1897
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`In re CLANTECH, INC., MODERN FONT APPLICATIONS LLC,
`Appellants
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`JOINT MOTION TO VACATE, RESPONSIVE TO THE COURT’S
`NOVEMBER 25, 2024 ORDER
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`Pursuant to the Court’s November 25, 2024 Order (Dkt. No. 22), Appellants
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`Clantech, Inc., and Modern Font Applications LLC and Appellee Director of the
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`United States Patent and Trademark Office (“USPTO”) submit this joint motion
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`requesting that the Court vacate the USPTO’s decisions which gave rise to this
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`appeal. As is explained below, while the parties agree that Allergan USA, Inc. v.
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`MSN Labs. Private Ltd., 111 F.4th 1358 (Fed. Cir. 2024) is controlling as to the facts
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`of this case and that vacatur is warranted, the parties disagree as to what action this
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`Court should order after vacating the USPTO’s decisions.
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`I.
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`JOINT MOTION TO VACATE
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`On October 7, 2024, the parties jointly moved to stay this appeal pending this
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`Court’s resolution of the combined petition for panel rehearing and rehearing en
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`banc filed on September 26, 2024, in Allergan USA, Inc. v. MSN Labs. Private Ltd.,
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`No. 24-1061 (Fed. Cir.). Dkt. No. 20. The Court granted the stay and instructed the
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`parties to inform the Court within 14 days of the issuance of the mandate in Allergan,
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`No. 24-1061 as to how they believe this appeal should proceed. Dkt. No. 22.
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`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`24-1897
`
`In re CLANTECH, INC., MODERN FONT APPLICATIONS LLC,
`Appellants
`
`JOINT MOTION TO VACATE, RESPONSIVE TO THE COURT’S
`NOVEMBER 25, 2024 ORDER
`
`
`
`
`
`Pursuant to the Court’s November 25, 2024 Order (Dkt. No. 22), Appellants
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`Clantech, Inc., and Modern Font Applications LLC and Appellee Director of the
`
`United States Patent and Trademark Office (“USPTO”) submit this joint motion
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`requesting that the Court vacate the USPTO’s decisions which gave rise to this
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`appeal. As is explained below, while the parties agree that Allergan USA, Inc. v.
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`MSN Labs. Private Ltd., 111 F.4th 1358 (Fed. Cir. 2024) is controlling as to the facts
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`of this case and that vacatur is warranted, the parties disagree as to what action this
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`Court should order after vacating the USPTO’s decisions.
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`I.
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`JOINT MOTION TO VACATE
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`On October 7, 2024, the parties jointly moved to stay this appeal pending this
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`Court’s resolution of the combined petition for panel rehearing and rehearing en
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`banc filed on September 26, 2024, in Allergan USA, Inc. v. MSN Labs. Private Ltd.,
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`No. 24-1061 (Fed. Cir.). Dkt. No. 20. The Court granted the stay and instructed the
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`parties to inform the Court within 14 days of the issuance of the mandate in Allergan,
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`No. 24-1061 as to how they believe this appeal should proceed. Dkt. No. 22.
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`Case: 24-1897 Document: 23 Page: 2 Filed: 12/11/2024
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`Following the Court’s grant of a motion to withdraw the combined petition for panel
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`rehearing and rehearing en banc in Allergan, the mandate in Appeal No. 24-1061
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`issued on November 27, 2024. Appeal No. 24-1061, Dkt. No. 66. The parties now
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`submit this joint response.
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`This case arises from an ex parte reexamination proceeding at the USPTO in
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`which the claims of a first-filed and first-issued patent (i.e., U.S. Pat. No. 8,522,127),
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`which expires later due to patent term adjustment, were held unpatentable for
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`obviousness-type double patenting based on the claims of a later-filed, later-issued,
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`earlier-expiring child patent having a common priority date (i.e., U.S. Pat. No.
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`9,886,421). See, e.g., Dkt. No. 17 p. 9 (grounds of rejection), p. 14 (listing filing
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`dates, issue dates, and common priority date), p. 16 (clarifying that the ‘127 patent
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`expires later than the ‘421 patent).
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`But in Allergan, 111 F.4th 1358, 1369 (Fed. Cir. 2024), this court held that “a
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`first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed,
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`later-issued, earlier-expiring reference claim having a common priority date,” under
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`the doctrine of obviousness-type double patenting (“OTDP”).
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`The parties agree that Allergan controls the outcome of this case. Accordingly,
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`the parties respectfully request that the Court vacate the USPTO’s decisions
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`(Decision on Request for Rehearing of the Patent Trial and Appeal Board, entered
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`April 30, 2024 (see Dkt. No. 17 pp. 35-46) and the Decision on Appeal of the Patent
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`2
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`Case: 24-1897 Document: 23 Page: 3 Filed: 12/11/2024
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`Trial and Appeal Board, entered November 17, 2023 (see Dkt. No. 17 pp. 5-34)) and
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`remand the case.
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`II. POSITION OF APPELLANTS CLANTECH,
`MODERN FONT APPLICATIONS LLC
`Appellants state that with the acknowledgement in Allergan that the ‘421
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`INC. AND
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`patent is not a proper OTDP reference, the OTDP rejection must fail, because there
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`is no “substantial new question of patentability” (“SNQ”) in the reexamination. But
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`to proceed with a reexamination, a SNQ must exist. 35 U.S.C. §§303, 304. Where
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`no SNQ exists, the reexamination must end. The proper ending is that “the Director
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`will issue and publish a certificate … confirming any claim of the patent determined
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`to be patentable…” 35 U.S.C. §307(a).
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`Accordingly, Appellants request that this court order the USPTO to issue and
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`publish a reexamination certificate confirming patentability of all claims of U.S. Pat.
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`No. 8,522,127 within 60 days of the mandate.
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`If this court determines that it is without power to order the USPTO to issue
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`the reexamination certificate, Appellants request in the alternative that this court
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`issue an order directing the USPTO to dismiss the reexamination and not undertake
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`any further proceedings. See In re Vivint, Inc., 14 F.4th 1342, 1346 (Fed. Cir. 2021)
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`(vacating and remanding “with instructions for the Patent Office to dismiss” the
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`reexamination because the USPTO acted arbitrarily and capriciously in finding
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`SNQs). In this case, no SNQ ever existed under the proper interpretation of the law,
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`3
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`Case: 24-1897 Document: 23 Page: 4 Filed: 12/11/2024
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`such that ordering reexamination was improper ab initio in view of this Court’s case
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`law that existed at the time that reexamination was ordered in September 2021; at
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`every stage of the reexamination, Appellants argued that the ‘421 patent was not a
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`proper OTDP reference against the ‘127 patent under existing case law. This court’s
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`later-issued In re Cellect and Allergan opinions confirmed, and did not change, the
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`existing state of the law. Thus, there should be no further proceedings in the USPTO
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`because no reexamination should have ever been ordered. See also Valspar
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`Sourcing, Inc. v. PPG Indus., Inc., 780 Fed. Appx. 917, 923 (Fed. Cir. 2019)
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`(reprimanding the USPTO for erring in undertaking further proceedings, and stating,
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`“To the extent the Patent Office interprets our mandate to require further action, such
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`action should be limited to concluding the reexaminations by vacating the
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`proceedings without any further adjudication, and without the issuance of any
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`reexamination certificate.”).
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`III. POSITION OF APPELLEE USPTO
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`Appellee states that the proper procedure is to remand the case with
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`instructions to issue a decision consistent with Allergan.
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`This Court should not order the USPTO to issue a reexamination certificate
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`or dismiss the reexamination. As the predecessor to this Court has explained, “we
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`pass only on rejections actually made and do not decree the issuance of patents.” In
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`re Fisher, 448 F.2d 1406, 1407, 171 U.S.P.Q. 292, 293 (CCPA 1971); see also
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`4
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`Case: 24-1897 Document: 23 Page: 5 Filed: 12/11/2024
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`Gould v. Quigg, 822 F.2d 1074, 1079 (Fed. Cir. 1987) (citations omitted) (holding
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`that district courts do not have the authority to order the USPTO to issue a patent
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`upon review of a Board’s decision as courts pass only on rejections made and
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`presume that the USPTO will follow a proper order and perform the duties imposed
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`upon the USPTO by statute). In line with these cases, the Court should vacate the
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`USPTO’s prior decisions and remand with instructions to issue a decision consistent
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`with Allergan. That action is very likely to result in the USPTO issuing a
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`reexamination certificate. But it is the USPTO who has a duty to determine whether
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`Appellants’ claims are patentable in view of the Patent Act and this Court’s
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`precedent and to issue a reexamination certificate, as appropriate. See id.
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`Appellants’ assertion that this Court should order the USPTO to dismiss the
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`reexamination because there is no SNQ in light of this Court’s recent decision in
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`Allergan, is misplaced. At the time that the reexamination was requested, the
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`USPTO properly determined that there was an SNQ based on this Court’s precedent
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`at the time and therefore proceeded to analyze the merits of the patentability
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`challenges, issuing decisions on November 17, 2023 and April 30, 2024. Dkt No.
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`17 pp. 5-46. On June 4, 2024, Appellant filed a notice of appeal. Dkt. No. 1.
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`Subsequently, this Court issued its decision in Allergan on August 13, 2024. At that
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`time, the reexamination had already been ordered and decided. Thus, dismissal of
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`the reexamination is inappropriate at this stage of the proceeding.
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`5
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`Case: 24-1897 Document: 23 Page: 6 Filed: 12/11/2024
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` Further, Appellants’ reliance on In re Vivint, Inc., 14 F.4th 1342, 1346 (Fed.
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`Cir. 2021) to seek a dismissal is misplaced. Appellants make no argument, under
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`Vivint, that the USPTO should have declined from the outset to order reexamination
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`under 35 U.S.C. § 325(d) because it had already denied similar petitions for post-
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`grant proceedings and therefore reexamination would be abusive. Only a later-
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`issued decision by this Court affects the outcome of this proceeding on appeal.
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`Appellants’ reliance on Valspar Sourcing, Inc. v. PPG Indus., Inc., 780 Fed. Appx.
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`917, 922-923 (Fed. Cir. 2019) is also unavailing. In that case, the Court ordered a
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`dismissal of a reexamination after the USPTO had misinterpreted the mandate issued
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`in a prior decision by reinstating the examiner’s rejections and effective cancelation
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`of the challenged claims which was contrary to the very purpose of ordering vacatur
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`following mootness on appeal. Id. Allergan does not render the reexamination
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`moot.
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`IV. CONCLUSION
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`Accordingly, the parties jointly request that this Court vacate the appealed
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`USPTO decisions.
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`The parties disagree as to the action that this Court should take in connection
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`with vacating the USPTO decisions:
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`(a) Appellants request that this Court order the USPTO to issue a
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`reexamination certificate confirming the patentability of all claims of U.S. Pat. No.
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`6
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`Case: 24-1897 Document: 23 Page: 7 Filed: 12/11/2024
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`8,522,127 within 60 days, or, if such order is not permitted, that this Court order the
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`USPTO to dismiss the reexamination proceeding; and
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`(b) Appellees request that this Court remand the case with instructions to issue
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`a decision consistent with Allergan.
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`December 11, 2024
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`Respectfully submitted,
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`/s/ Kakoli Caprihan
`FARHEENA Y. RASHEED
` Solicitor
`AMY J. NELSON
` Deputy Solicitor
`KAKOLI CAPRIHAN
`BRIAN RACILLA
` Associate Solicitors
`Office of the Solicitor
`U.S. Patent and Trademark Office
`Mail Stop 8
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`kakoli.caprihan@uspto.gov
`(571) 272-9035
`Attorneys for Appellee, the Director of the
`U.S. Patent and Trademark Office
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`/s/ Andrew T. Oliver
`ANDREW T. OLIVER
`Amin, Turocy, & Watson, LLP
`160 W. Santa Clara St.
`Suite 975
`7
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`Case: 24-1897 Document: 23 Page: 8 Filed: 12/11/2024
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`San Jose, CA 95113
`(650) 618-6477
`Attorney for Appellant
`Modern Font Applications LLC
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`/s/ Perry S. Clegg
`PERRY S. CLEGG
`Johnson & Martin, P.A.
`50 W. Broadway
`Suite 900
`Salt Lake City, UT 84101
`(801) 783-3200
`Attorney for Appellant
`Modern Font Applications LLC
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`/s/ James C. Watson
`JAMES C. WATSON
`Trask Britt, P.C.
`230 South 500 East
`Suite 300
`Salt Lake City, UT 84102
`(801) 532-1922
`Attorney for Appellant
`Clantech, Inc.
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`8
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`Case: 24-1897 Document: 23 Page: 9 Filed: 12/11/2024
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`CERTIFICATE OF COMPLIANCE
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`I hereby certify pursuant to Fed. R. App. P. 32(g)(1) that the foregoing
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`JOINT MOTION TO VACATE, RESPONSIVE TO THE COURT’S
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`NOVEMBER 25, 2024 ORDER complies with the type-volume limitation required
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`by the Court’s rule. The total number of words in the foregoing motion, excluding
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`case caption, title of the document, signature block, declaration and proof of
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`service, is 1,420 words as calculated using the Microsoft Word® software program.
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`/s/ Kakoli Caprihan
`Kakoli Caprihan
`Associate Solicitor
`U.S. Patent and Trademark Office
`Mail Stop 8
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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