Precedential Federal Circuit Opinions 

1. In Re NITRO FLUIDS L.L.C. [ORDER] (2020-0142, 10/28/28) (REYNA, WALLACH, and CHEN)  
   Reyna, J.  The Court considered a petition for a writ of mandamus seeking transfer from the United States District Court for the Western District of Texas to the United States District Court for the Southern District of Texas, Houston Division, based on the “first-to-file” rule.  The Court explained that the first-to-file rule “generally dictates that the court in which an action is first filed is the appropriate court to determine whether subsequently filed cases involving substantially similar issues should proceed.”  The Court held that the district court erred in finding that the “first-to file rule is only applicable when the balance of [the traditional transfer] factors favors the first-filed court.”  Instead, as the Court explained, “[u]nless the balance of transfer factors favors keeping the case in the second-filed court, there are no compelling circumstances to justify such an exception [to the first-to file rule].”  The Court also explained that the party seeking to keep its case in the second-filed court has the burden to show that “compelling circumstances” warrant an exception to the first-to-file rule.  The Court therefore vacated the district court’s decision denying transfer and directed the district court to conduct further proceedings consistent with its order.
2. CHEVRON U.S.A. INC. v. UNIVERSITY OF WYOMING RESEARCH [OPINION]  (2019-1530, 11/04/2020) (NEWMAN, LOURIE, and SCHALL) 
   Schall, J.  The Court affirmed the PTAB’s decision in an interference proceeding regarding patent claims directed to a “method for determining asphaltene stability in a hydrocarbon-containing material.”  The only issue on appeal was whether the PTAB erred in its construction of the claim limitation “gradually and continuously changing the alkane mobile phase solvent to a final mobile phase solvent.”  The Court affirmed the PTAB’s construction, holding that it was “consistent with, and indeed tracks a verbatim definition set forth in, [Chevron’s patent] application.”  Judge Newman dissented.
3. VALEANT PHARMACEUTICALS v. MYLAN PHARMACEUTICALS [OPINION] (2020-2402, 11/05/2020) (NEWMAN, O’MALLEY, and TARANTO) 
   O’Malley, J.  The Court affirmed the district court’s order dismissing patent infringement claims against two U.S.-based defendants for improper venue under Federal Rule of Civil Procedure 12(b)(3).  The Court explained that under 28 U.S.C. § 1400, the venue statute applicable to patent cases, “a corporation may be sued for patent infringement in only two categories of judicial districts: those in the state in which it is incorporated and those in which it has a regular and established place of business and an act of infringement has occurred.”  The Court further explained: “Today we answer the question of where ‘acts of infringement’ under § 1400(b) occur with respect to infringement claims brought pursuant to the Hatch-Waxman Act.”  The Court held that “in cases brought under 35 U.S.C. § 271(e)(2)(A), infringement occurs for venue purposes only in districts where actions related to the submission of an Abbreviated New Drug Application (‘ANDA’) occur, not in all locations where future distribution of the generic products specified in the ANDA is contemplated.”
   
   In addition, the Court “vacate[d] and remand[ed] the portion of the court’s order dismissing the action against [a] foreign defendant—as to which venue was unquestionably proper—pursuant to Rule 12(b)(6), because the court failed to address the substance of that motion.”
4. In Re APPLE INC. [ORDER] (2020-135, 11/09/2020) (PROST, MOORE, and HUGHES) 
   Prost, C.J.  The Court granted a petition for a writ of mandamus seeking transfer from the United States District Court for the Western District of Texas (WDTX) to the United States District Court for the Northern District of California (NDCA).  The Court held that the district court “clearly abused its discretion in denying transfer” based on multiple errors.  The Court found that the district court did not “meaningfully consider the wealth of important information in NDCA.”  The Court also found that the district court erred by finding that WDTX was significantly more convenient than NDCA for third-party witnesses (the inventors and prosecuting attorneys) located in New York, when these “witnesses will only be slightly more inconvenienced by having to travel to California than to Texas.”  The Court also found that the district court should have given “top priority” to deciding the transfer motion over other motions and had erred in finding that judicial economy weighed in favor of denying transfer based on the progress of the case at the time the Court decided the transfer motion rather than at the time the transfer motion was filed.  The Court also found that, in considering the issue of court congestion, the district court erred by “relying too heavily” on its own scheduled trial date rather than historical data showing the time to trial in each district.  Finally, the Court found that the district court erred by giving too much weight to the parties’ connections to each forum, rather than the “significant connections between a particular venue and the events that gave rise to a suit” (emphasis in original).  Judge Moore dissented.
5. DONNER TECHNOLOGY, LLC v. PRO STAGE GEAR, LLC [OPINION] (2020-1104, 11/09/2020) (PROST, DYK, and HUGHES) 
   Prost, C.J.  The Court vacated and remanded an IPR decision in which the PTAB found that the challenged claims were not unpatentable as obvious on the ground that the petitioner had not shown that a cited prior art reference was analogous art.  The challenged patent is directed to guitar pedalboards that allow the user to control the amplified sound of a guitar.  The Court explained the law of analogous art as follows: “The scope of the prior art includes all analogous art.  Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.”  (Citations omitted.)  The Court held that the PTAB erred in its analysis because it had not considered the petitioner’s evidence that the cited prior art was “reasonably pertinent” and “failed to properly identify and compare the purposes or problems” to which the cited prior art and the challenged patent relate.  The Court remanded for the PTAB to consider the analogous art issue under the correct standard.