Category Archives: Federal Circuit Decisions

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CAFC Eases Amendment Process In IPR Proceedings

Today in Aqua Products, Inc. v. Matal, a fractured Court of Appeals for the Federal Circuit (CAFC) sitting en banc decided to flip the burden of persuasion onto petitioners in IPR proceedings to show that an amendment is not patentable, removing from patent owners the burden previously placed upon them by the PTAB.  In its conclusion, the … Continue reading this entry

Federal Circuit Finds No Standing Requirement For Appellees

In Personal Audio LLC v. Electronic Frontier Foundation, the Federal Circuit ruled that an IPR petitioner does not need to satisfy Article III standing requirements in order to participate in a patent owner’s appeal from a Patent Trial and Appeal Board decision in an IPR proceeding. This ruling on appellee standing complements the decision in Phigenix … Continue reading this entry

Fairness in Evaluation: Federal Circuit Remand to Board For Failure to Fully Consider Petitioner’s Arguments Against Motion to Amend

In Shinn Fu Company of America, Inc. et al. v. The Tire Hanger Corp., slip op. 2016-2250 (Fed. Cir. July 3, 1997) (non-precedential), the Federal Circuit reversed a Board’s decision granting a motion to amend claims challenged in IPR2015-00208.  During the IPR, Patent Owner Tire Hanger conceded that the original claims were unpatentable and filed … Continue reading this entry

Federal Circuit Again Reverses PTAB Obviousness Determination

In what is becoming a familiar basis for reversal of PTAB decisions, the Federal Circuit yet again reversed the PTAB for its failure to adequately explain the basis for combining multiple prior art references in support of its conclusion of obviousness in Personal Web Technologies, LLC v. Apple, Inc.  Specifically, the Federal Circuit (Taranto, Chen, Stoll) … Continue reading this entry

CAFC Upholds Preliminary Injunction Despite Unpatentability Ruling of PTAB

This week in Tinnus Enterprises LLC v. Telebrands Corp. (Moore, Wallach and Stoll), the Federal Circuit upheld the grant of a preliminary injunction by the Eastern District of Texas, despite a PTAB Final Written Decision finding the claims at issue to be indefinite.  While the petitioner’s failure to directly raise the PTAB’s grounds as a basis to … Continue reading this entry

Federal Circuit Finds IPR Petitioner Lacks Standing To Appeal

Yesterday in Phigenix, Inc. v. Immunogen, Inc., the Federal Circuit held that petitioner Phigenix lacked standing to appeal an adverse final written decision in an IPR.  While acknowledging that the AIA permits a party without Article III standing to file an IPR, the Federal Circuit confirmed that the AIA does not eliminate the need for … Continue reading this entry

Reduced Scope of Post-IPR Estoppel Imperils Litigation Stays

In Depomed, Inc. v. Purdue Pharma LP et al., 3-13-cv-00571 (NJD November 4, 2016, Mem. Op. Dkt. 238) (Bongiovanni, MJ), the Court analyzed and applied recent Federal Circuit decisions limiting the scope of post-IPR estoppel under 35 U.S.C. § 315(e) to only those claims and grounds subject to a final written decision from the PTAB.  … Continue reading this entry

Seeking Balance: A Review of the First 4 Years of the PTAB

Looking back on the major developments that have shaped AIA proceedings over the first four years, three sources have contributed to changes: (1) rulemaking, (2) informative decisions by the PTAB, and (3) key appellate decisions of the US Supreme Court and the Court of Appeals for the Federal Circuit.  While a number of improvements have been … Continue reading this entry

Magnum Offers New Path for Challenging AIA Decisions: Burden of Production

Yesterday, the Court of Appeals for the Federal Circuit (CAFC) held in In re Magnum Oil Tools International (Newman, O’Malley & Chen) that the burden of production to show unobviousness does not shift to a patent owner based upon the Board’s institution decision.  In particular, the CAFC found that Cuozzo’s prohibition of appealing institution decisions does not prevent patent owners from … Continue reading this entry

The Latest Twist In The Apple v. VirnetX IPRs: Appeals Court Issues Temporary Stay

On March 7, 2016, the Federal Circuit issued a temporary stay to permit briefing by the parties on the question of whether the PTAB properly ruled that Apple could use the joinder process in Mangrove Capital’s IPR against VirnetX to avoid the one-year bar that prevents a litigation defendant like Apple from filing its own … Continue reading this entry

Federal Circuit Sanctions PTO’s Authority To Institute IPR On A Claim-By-Claim Basis in Synopsis v. Mentor Graphics

In Synopsys, Inc. v. Mentor Graphics Corp., a split panel of the Federal Circuit found “that there is no statutory requirement that the Board’s final decision address every claim raised in a petition for inter partes review.” Appeal Nos. 2014-1516, 2014-1530, slip op. at 12 (Feb. 10, 2016). The panel majority held that 35 U.S.C. … Continue reading this entry

CAFC Partially Relaxes IdleFree Requirements for Amendments During IPR

Today in Nike v. Adidas (Fed. Cir. 2016), the Federal Circuit partially relaxed the hurdle for a patent owner to amend claims during an IPR or other AIA proceeding. This follows the PTAB’s own earlier partial relaxation of the hurdle for patent owners to amend in its Masterimage decision (featured in an earlier post: “What … Continue reading this entry

High Stakes Race Between Apple and VirnetX: Will PTAB Trump The Texas Jury's Award of $625M?

A Texas jury today raised the stakes even higher in a race involving parallel proceedings between the PTAB and Texas district court when it found that Apple infringed the VirnetX patents and awarded to VirnetX $625M in damages. While the Texas jury found the patents to be valid and infringed in today’s verdict, the PTAB … Continue reading this entry

Split Federal Circuit Upholds Constitutionality of Single PTAB Panels Rendering Both Institution & Final Written Decisions

On January 13, 2016, the Federal Circuit affirmed the decision of the PTAB in Ethicon Endo-Surgery, Inc. v. Covidien LP, IPR2013-00209, that all of the claims of U.S. Patent 8,317,070 are obvious. While the obviousness analysis in both the PTAB decision and the subsequent appeal were unremarkable, the Federal Circuit’s decision was nevertheless precedential for … Continue reading this entry

Federal Circuit Backs PTAB Decision Curtailing A Party's Use Of "Supplemental" Information

In Redline Detection v. Star Envirotech, the Federal Circuit confirmed that the PTAB can decline to consider timely filed “supplemental” information from a petitioner (after filing its petition) pursuant to 37 C.F.R. § 42.123(a). While some PTAB decisions have permitted very limited use of Rule 123(a) by petitioners to supplement their petition after an institution … Continue reading this entry

Federal Circuit Affirms PTAB's IPR Decision Invalidating A Pharmaceutical Patent

Today in Merck v. Gnosis, the Federal Circuit affirmed the PTAB’s IPR Decision finding a pharmaceutical patent invalid for obviousness. Justice Newman vigorously dissented from the majority’s view (Justices Hughes and Plager) that a “substantial evidence” standard should apply to review of PTAB IPR decisions, which may encourage the patent owner to pursue a request … Continue reading this entry

Federal Circuit Confirms Constitutionality of IPR Proceedings

Today, in MCM Portfolio LLC v. Hewlett-Packard Co., a panel of the Federal Circuit unanimously upheld the constitutionality of IPR proceedings, finding that delegation of patent invalidity determinations to a non-Article III Court (in this case, the PTAB) is permissible and that Article 7 of the Constitution is not violated when a patentee cannot bring … Continue reading this entry

Federal Circuit Orders IPR Remand On Board's Treatment Of Evidence

In Ariosa Diagnostics v. Verinata Health, Inc., the Federal Circuit vacated and remanded two parallel final written decisions in favor of the Patent Owner, because it could not discern whether the Board had incorrectly limited its consideration of one of the Petitioner’s exhibits. This IPR remand decision reveals the level of scrutiny the court may be willing to apply to Board … Continue reading this entry

Lessons Learned From the 1st Successful Pharmaceutical IPR Defense of Orange Book Listed Patents

In three petitions filed on the same day in 2013, styled Amneal v. Supernus, Amneal filed what appears to be the first challenge of Orange Book listed pharmaceutical patents that led to institution followed by a final decision in which the patent owner prevailed.[1]  Several lessons are apparent from a review of the first successful defense … Continue reading this entry

An Invalidity Argument Without a Home? The PTAB's Discretion to Ignore Grounds for Invalidity

By Shaun R. Snader[1] & George C. Beck The post-grant proceedings established by the America Invents Act – inter partes review (IPR), covered business method (CBM) review, and post-grant review (PGR) –promise faster, less expensive results as compared to district court litigation, and an adjudicative body with expertise in patent law. A significant tradeoff to these … Continue reading this entry

Federal Circuit Answers Questions About Covered Business Method Review Proceedings

In Versata Development Group, Inc. v. SAP America, Inc., the Federal Circuit outlined the permitted extent of judicial review of Covered Business Method (CBM) patent review proceedings conducted by the USPTO Patent Trial and Appeal Board (PTAB). While the court held that it has jurisdiction to review PTAB determinations that underlie decisions to institute CBMs and CBM decisions … Continue reading this entry

Federal Circuit Upholds Broadest Reasonable Interpretation in Inter Partes Review

A divided Federal Circuit denied the petition for rehearing en banc that would have required the court to revisit its decision in In re Cuozzo Speed Technologies, LLC (Fed Cir 2015), that upheld the USPTO’s use of the “broadest reasonable interpretation” of the claims in Inter Partes Review (IPR) proceedings. Thus, it will be up to Congress to … Continue reading this entry