Appeal

Subscribe to Appeal via RSS

Article III standing has become a contested and often dispositive issue in appeals from the Patent Trial and Appeal Board (PTAB).  For example, as we reported previously, the Federal Circuit has dismissed an inter partes review (IPR) petitioner’s appeal where the petitioner-appellant lost standing by abandoning development of its potentially infringing product.[1]  We also…

Recently, in AVX Corp. v. Presidio Components, Inc., the Federal Circuit dismissed AVX Corp.’s (“AVX”) appeal of the PTAB’s inter partes review decision for lack of standing. AVX petitioned the PTAB for an inter partes review of the 21 claims of U.S. Patent No. 6,661,639 (“the ’639 patent”). Presidio Components Inc. (“Presidio”) owns the…

On April 18, 2019, in Dodocase VR, Inc. v. MerchSource, LLC, No. 2018-1724 (Fed. Cir. Apr. 18, 2019) (nonprecedential), the Federal Circuit affirmed the District Court for the Northern District of California, agreeing that Dodocase VR, Inc. (“Dodocase”) is entitled to a preliminary injunction against MerchSource, LLC (“MerchSource”). The preliminary injunction requires that MerchSource…

The Federal Circuit reversed a Patent Trial and Appeal Board (“PTAB” or “the Board”) ruling that invalidated three patents in three separate IPR proceedings (IPR2015-00325, IPR2015-00326, and IPR2015-00330).  The patent owner, ATI Technologies, asserted that the inventions in the challenged claims antedated the asserted prior art.  That is, ATI attempted to swear behind the asserted…

On February 7, 2019, the Federal Circuit dismissed an appeal because the IPR petitioner, Momenta Pharmaceuticals, essentially “lost” its constitutional standing when – prior to completing its appeal to the Federal Circuit – it abandoned development of its proposed biosimilar after failed Phase 1 clinical trials. Momenta Pharm., Inc. v. Bristol-Myers Squibb Co., No.…

Patent litigation often involves the intersection of practice before the PTAB and district courts.  Not surprisingly then, the subject of this post—the Federal Circuit’s recent opinion concerning the reexamination of U.S. Patent No. 6,284,471 (“the ʼ471 patent”)—directly relates to a litigation analyzed on our firm’s companion blog, BiosimilarsIP.com.  See here and here.

In re…

Remands and reversals of the Board are relatively rare.  Nonetheless, the Federal Circuit has vacated or reversed PTAB decisions every so often for adopting an erroneous claim construction.[1]  Most recently, in Owens Corning v. Fast Felt Corp., 2016-2613 (Fed. Cir. Oct. 11, 2017), the Federal Circuit reversed the PTAB’s decision upholding the challenged…

On September 26, 2017, in In re Smith International, Inc., the Federal Circuit reversed the PTAB’s decision affirming an examiner’s final rejection in an ex parte reexamination. During the ex parte reexamination, the examiner rejected claims 28-36, 39-46, 50, 79-81 and 93-99 of U.S. Patent No. 6,732,817 (“’817 patent”) as anticipated or obvious in…

The Federal Circuit’s May 8, 2017 opinion in Intellectual Ventures II LLC v. Ericsson, Inc., while non-precedential, provides useful insight into bounds of procedural due process requirements in an IPR proceeding.  Due process necessitates “notice and an opportunity to be heard.”  Further, because IPRs are a formal administrative adjudication under the Administrative Procedure Act…