With an unusual fact pattern, and a Federal Circuit opinion that touches on standing to appeal, joinder of parties, and agency obligations, Fitbit, Inc. v. Valencell, Inc., 964 F.3d 1112 (Fed. Cir. 2020), seems closer to a law school teaching aid than an actual inter partes review (“IPR”) appeal. Without addressing the asserted grounds
Federal Circuit
Federal Circuit Grants Remand in Ex Parte Reexam While World Waits for Supreme Court to Weigh in on Arthrex
By Nicole M. DeAbrantes on
Posted in Appellate Decisions
On June 18, 2020, the Federal Circuit granted JHO Intellectual Property Holdings, LLC’s (“JHO”) motion to vacate the PTAB’s final written decision and remand the case in light of the court’s decision in Arthrex. In an ex parte reexamination proceeding, the PTAB denied JHO’s request for rehearing of its decision affirming the Examiner’s rejections…
Delays, Denials and Uncertainty: Developments in the Arthrex Redo Case Line
By Nicole M. DeAbrantes & Grant B. Lukas on
Posted in Appellate Decisions
The Halloween 2019 decision, Arthrex v. Smith & Nephew,[1] created a new right to rehearing in the Patent Trial and Appeal Board (“PTAB”), and has sent ripples through the judiciary and legislative branches that will continue to be felt for the foreseeable future. In the case, the Federal Circuit opinion announced that the…
Court of Appeals Affirms PTAB Decision on Person Eligibility for Post-Issuance Review and Patentable Subject Matter
By Emily N. Sandhaus on
Posted in Appellate Decisions
The Court of Appeals for the Federal Circuit issued its decision in Bozeman Financial LLC v. Federal Reserve Bank Of Atlanta, Case No. 19-1018 (Fed. Cir. Apr. 10, 2020) [hereinafter Bozeman], holding that Federal Reserve banks (hereinafter “the Banks”) are people under the AIA, capable of petitioning for post-issuance review. The Court further…
Federal Circuit Denies Stay of Arthrex Remands: PTAB Must Start Working on Rehearings
By Grant B. Lukas on
Posted in Appellate Decisions
On March 30, 2020, the Federal Circuit denied the federal government’s unopposed motion to stay a mandate of the court’s final judgment in Arthrex v. Smith & Nephew, meaning the United States Patent Office’s Patent Trial and Appeal Board (“PTAB”) must reopen and rehear up to 81 cases decided by the PTAB before the…
No Same-Party Joinder and Joinder of New Issues Through § 315(c)
By Patrick Moon on
Posted in Appellate Decisions
On March 18, 2020, in Facebook, Inc. v. Windy City Innovations, LLC, the Federal Circuit held that 35 U.S.C. § 315(c) does not authorize same-party joinder and does not authorize joinder of new issues.
Windy City Innovations, LLC (“Windy City”) brought a patent infringement suit against Facebook, Inc. (“Facebook”) in a district court. Exactly…
Customedia Technologies: An Exploration in Patent Eligible Technological Improvements v. Abstract Ideas for Data Delivery Systems
By Jennifer B. Maisel on
Posted in Appellate Decisions
In Customedia Techs., LLC v. DISH Network Corp., the Federal Circuit affirmed the Patent Trial and Appeal Board’s final written decisions holding that claims 1-6, 8, 17, and 23 of U.S. Pat. No. 8,719,090 (the “’090 Patent”) and claims 1-4, 6-7, 16-19, 23-24, 26-28, 32-36, and 41 of U.S. Pat. No. 9,053, 494…
The § 315(b) Time-Bar and a New Real-Party-In-Interest
By Richard E. Waterman on
Posted in Appellate Decisions
The Federal Circuit was recently asked to review the interplay of real-parties-in-interest and the inter partes review (“IPR”) time-bar. Acoustic Technology, Inc., Appellant v. Itron Networked Solutions, Inc., Nos. 2019-1059, 2019-1060 (Fed. Cir. Feb. 13, 2020) (opinion available here). The facts raised an interesting question of how business mergers can affect IPR and…
Uptick in PTAB Motions to Amend Demonstrate Increasing Importance of this Strategy
By Spencer J. Johnson on
Posted in PTAB Decisions
On Monday, February 24, 2020, in Reactive Surfaces LTD., LLP v. LG Chem LTD., IPR2018-01520, the Patent Trial and Appeal Board (PTAB) allowed substitute claims by granting a motion to amend for the fourth time this year, matching the total number of grants for such motions from 2013 through 2017. This is a growing…
The Growing Split in the Federal Circuit: Will the Petitions for En Banc Rehearing of Arthrex be Granted?
By Anjali Jenna (AJ) Teigen on
Posted in Appellate Decisions
Since Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) was decided three and a half months ago, the Federal Circuit has vacated and remanded four cases to the Patent Trial and Appeal Board (the “PTAB” or “Board”) for proceedings consistent with the decision.[1] In two of the decisions…