In REG Synthetic Fuels (“REG”), the PTAB found anticipated all challenged claims 1-5 and 8 of U.S. Patent 8,231,804. These claims covered even-carbon-number paraffins and methods of making them. Claims 1, 3, 4, and 8 were found anticipated based on a U.S. patent to Craig, and claims 1-3, 5, and 8 were found anticipated based
Supreme Court
Two More Federal Circuit Judges Question Achates and Wi-Fi One
By Elizabeth Brenner-Leifer on
Posted in Appellate Decisions
In Click-To-Call, two Federal Circuit judges called for en banc review of the Achates and Wi-Fi One decisions holding that 35 U.S.C. § 314(d)[i] precludes appellate review of a Board’s IPR determination underlying institution that the petitioner could overcome the one-year time bar under 35 U.S.C. § 315(b).[ii]
Concluding that it is…
A Win for Patent Owners at the Federal Circuit on When the Cited Art is Not a Bar
By Michael V. Battaglia & Nancy J. Linck on
Posted in Appellate Decisions
In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., Olympus Medical Systems Corp., IPR2014-00233 (Fed. Cir. Nov. 15, 2016) (Judges Moore, Schall, and O’Malley), the Federal Circuit vacated and remanded the Board’s decision invalidating certain claims of U.S. Patent 6,030,384 (“’384 patent”). The Board’s decision was based on prior art under pre-AIA §102(a). This…
Limitations on the Scope of Appellate Review in the Aftermath of Cuozzo v. Lee
Posted in Appellate Decisions
In Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., the Federal Circuit considered the impact of Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) on the scope of appellate review of a PTAB decision to vacate an inter partes review institution decision and terminate the proceeding and concluded there…
The Federal Circuit Reaffirms Achates’ “Ultimate Authority to Invalidate” Test and Establishes a “Two-Part Inquiry” for Deciding Reviewability Husky Injection Molding v. Athena Automation, Nos. 2015-1726, -1727 (Fed. Cir. Sept. 23, 2016)
By Derek F. Dahlgren & Nancy J. Linck on
Posted in Appellate Decisions
In Husky Injection Molding v. Athena Automation, the Federal Circuit has again refused to review a decision underlying the Board’s institution decision, in this case, whether the Petitioner was barred from filing an inter partes review petition based on assignor estoppel. As in Achates, the court concludes that it lacks jurisdiction to conduct…
Click-To-Call–Still Ringing (For Now)–But Will We Get An Answer On Judicial Review Of PTAB Institution Decisions
By Martin M. Zoltick & Daniel R. McCallum on
Posted in Appellate Decisions
On Monday, June 27, the Supreme Court granted Click-to-Call’s petition for writ of certiorari, vacated the Federal Circuit’s judgment below, and remanded the case “for further consideration in light of Cuozzo Speed Technologies, LLC v. Lee, 579 U. S. ___ (2016).” Click-to-Call Technologies, LP v. Oracle, Corp., No. 15-1014. This so-called “GVR” order…
The Supreme Court’s Cuozzo Decision Leaves Many Questions Unanswered
By Derek F. Dahlgren on
Posted in Appellate Decisions
On June 20, 2016, the Supreme Court issued its opinion in Cuozzo Speed Technologies v. Lee. On its face, it is a broad win for the Patent Office. The Supreme Court affirmed the use of the “broadest reasonable interpretation” standard for claim construction in Patent Office review proceedings and the limited reviewability of the…