Tag Archives: federal circuit

Successful Appeals of PTAB Decisions: In re Hodges

Obtaining a remand on an appeal from the Patent Trial & Appeal Board (PTAB) is of course a win for the Patent Owner, but may result in an ultimate loss when the case is revisited at the PTAB. The Feb. 12, 2018 Federal Circuit opinion, In Re Hodges, No. 2017-1434, (Fed. Cir. Feb. 12, 2018), highlights … Continue reading this entry

Collateral Estoppel at the Federal Circuit for Inter Partes Review Proceedings

  In Maxlinear, Inc. v. CF CRESPE, LLC, slip op. 2017-1039, the Federal Circuit remanded to the Patent Trial and Appeal Board (“Board”) an inter partes review (“IPR”) proceeding to evaluate the patentability of certain dependent claims, where the unpatentability of their respective independent claims had been previously affirmed by the Federal Circuit.  The fact … Continue reading this entry

Federal Circuit: Effect of Disclaimer Prior to Trial Institution

In Arthrex, Inc. v. Smith & Nephew, Inc., et al., slip op. 2017-1239, the Federal Circuit affirmed the Board’s decision to enter an adverse judgment following Patent Owner’s disclaimer of all claims challenged in an inter partes review petition before the institution of trial.  At the time of entering the adverse judgment, an estoppel effect … Continue reading this entry

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 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

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

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

Proposed Rule Changes For IPR Appeals

On December 3, 2015, the Federal Circuit issued a notice of proposed changes to its Rules of Practice, many of which relate to IPR practice under the AIA. Copies of the proposed revisions is found here and the court’s summary of the revisions can be found here. Some of the proposed changes impact the manner … 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