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
Patent Owners May Struggle to Get IPR Petitions Denied: Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC
By Grant B. Lukas on
Posted in About the PTAB
Thanks to a decision handed down by the Patent Office’s Patent Trial and Appeal Board (“PTAB”) last month, patent owners may find some difficulty in having petitions to institute inter partes review (“IPR”) dismissed based on the PTAB’s discretion under Section 314(a) of the patent act. In Sand Revolution II, LLC v. Continental Intermodal Group…
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…
USPTO Rulemaking for Post-Grant Proceedings Open for Public Comments
By Richard E. Waterman on
Posted in About the PTAB
On May 27, 2020, the U.S. Patent and Trademark Office (“USPTO”) proposed amendments to its rules governing post-grant proceedings, addressing three topics. First, petitions for post-grant proceedings would require institution of all claims or denial of the petition. Second, patent owners would be permitted to file sur-replies to principal briefs. Third, the rules would eliminate…
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…
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…
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…
Federal Circuit Confirms: SAS Remands Do Not Force PTAB to Affirmatively Institute on All Grounds
By Grant B. Lukas on
Posted in Appellate Decisions
In BioDelivery Sciences International v. Aquestive Therapeutics, Inc., the Federal Circuit recently denied a petition for a rehearing en banc after the Patent Trial and Appeal Board (“PTAB” or “the Board”) interpreted its remand order to “implement the [Supreme] Court’s decision in [SAS Institute v. Iancu]”[1] by modifying its institution decision, denying…