Seven years after the PTAB instituted the first AIA derivation proceeding, the Federal Circuit finally issued its first opinion in an appeal of a derivation decision, Global Health Solutions, LLC v. Selner, No. 23-2009 (Fed. Cir. 2025), affirming the Board’s decision that the petitioner did not carry its burden to show respondent (Selner)
In ParkerVision, Inc. v. Qualcomm Inc., No. 2022-1755, -2221 (Fed. Cir. Sept. 6, 2024) (“ParkerVision III”), the Federal Circuit held that, due to the difference in burdens of proof in PTAB IPR proceedings and in district court cases, collateral estoppel cannot be applied in a district court case based on findings made
In Hologic, Inc. v. Minerva Surgical, Inc., Case 19-2054 (Fed. Cir. Apr. 22, 2020), the Federal Circuit held that an assignor of a patent may rely on a PTAB unpatentability decision as a defense in infringement litigation, although the equitable doctrine of “assignor estoppel” prevents the assignor from directly challenging validity in the litigation. In Additional Views, Judge Stoll suggests that the en banc court reconsider the issue of assignor estoppel, because the court’s precedent permits an assignor of a patent to “circumvent the doctrine of assignor estoppel by attacking the validity of a patent claim in the Patent Office.”
Continue Reading Assignor Estoppel Does Not Prevent Reliance on PTAB Decision Canceling Claims
Since the Federal Circuit’s 2018 en banc decision in Wi-Fi One, LLC v. Broadcom Corporation, (discussed here) the court has reviewed a number of PTAB decisions on whether an IPR petition was filed more than one year after the petitioner was served with a complaint asserting the challenged patent, and thus time-barred under 35 U.S.C. § 315(b) (see here, here, here). But a patent owner’s time-bar challenge must be timely raised before the PTAB, and may be waived if raised for the first time on appeal.
Continue Reading Time Bar Challenge Must Be Raised before the Board, Not Saved for Appeal
In Henny Penny Corp. v. Frymaster LLC (Fed. Cir. 2019), the Federal Circuit again upheld the PTAB’s application of its rule prohibiting petitioners from raising new arguments in a reply brief, and upheld the challenged claims as not unpatentable for obviousness, relying in part on secondary considerations evidence.
Continue Reading Don’t Save New Fish to Fry in Reply
As we have discussed (here and here), owners of pre-AIA patents may be able to “swear behind” alleged prior art references by providing evidence of an earlier invention date, but the inventors’ testimony concerning conception of the invention must be corroborated by independent evidence. In Kolcraft Enterprises, Inc. v. Graco Children’s Products, Inc., No. 2018-1259 (Fed. Cir. Jul. 2, 2019), the patent owner was unable to swear behind alleged prior art because it did not provide sufficient corroborating evidence.
Continue Reading Corroboration Required to Prove Earlier Invention Date
In AVX Corp. v. Presidio Components, Inc., No. 2018-1106 (Fed. Cir. May. 13, 2019), the Federal Circuit determined that a manufacturer did not have standing to appeal an adverse decision in an IPR challenging a competitor’s patent, because the petitioner did not have a present or nonspeculative interest in engaging in conduct arguably covered by the patent. The decision leaves open the question of whether a petitioner that lacks standing to appeal would be bound by petitioner estoppel under 35 U.S.C. § 315(e).
Continue Reading Estoppel May Not Apply When Petitioner Lacks Standing to Appeal IPR Decision
Under 35 U.S.C. § 312(a), an IPR petition must identify “all real parties in interest,” and, an IPR petition is time-barred under 35 U.S.C. § 315(b) if “filed more than 1 year after the date on which the petitioner, the real party in interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent.” As we have discussed, PTAB decisions on whether § 315(b) has been satisfied are reviewable on appeal.
Continue Reading Petitioner Has Burden of Persuasion on Real Party in Interest
In E.I du Pont de Nemours & Co. v. Synvina C.V., No. 2017-1977 (Fed. Cir. Sept. 17, 2018), the Federal Circuit determined that the IPR petitioner, DuPont, had Article III standing to appeal an IPR final decision, although it had not been accused of infringement of patent owner Synvina’s patent, or engaged in activity that could be accused of infringement. The court explained that a controversy of sufficient immediacy and reality existed because DuPont, an avowed competitor of the patent owner, had taken and planned to take “action that would implicate” the patent under review. Specifically, DuPont had standing because it had built a manufacturing plant capable of operating within the parameters of the patent under review and had planned to engage in activities that could be accused of infringement. The court also noted that the record showed that DuPont had a non-hypothetical risk of infringement liability because the patent owner had refused to grant DuPont a covenant not to sue, and had argued before the PTAB that DuPont copied its patented process.
Continue Reading Chemical Company Developing Industrial Process Had Standing to Appeal
Update: On March 4, 2019, the Supreme Court granted the Government’s cert. petition to review the Federal Circuit’s judgment in NantKwest, Inc. v. Iancu, discussed in the post below. The Court’s docket for this case is 18-801.
In NantKwest, Inc. v. Iancu, No. 2016-1794 (Fed. Cir. Jul. 27, 2018) (en banc), the Federal Circuit decided en banc that attorneys’ fees are not “expenses” required to be paid by an applicant who appeals an ex parte prosecution case to the Eastern District of Virginia under 35 U.S.C. § 145. A Federal Circuit panel had earlier reached a contrary result, and the court sua sponte vacated the panel decision to take up the issue en banc.
Continue Reading Attorneys’ Fees Not Awardable Expenses in Section 145 Actions