Tag Archives: Joinder

Fitbit Dodges a Bullet—Entitled to Appeal Portion of Apple’s Petition Which It Did Not Join

By Thomas L. Duston on Posted in Amendments, Appeals, Claim Construction, Joinder, Sections 102/103
In Fitbit, Inc. v. Valencell, Inc., Appeal 2019-1048 (Fed. Cir. July 8, 2020), the Federal Circuit determined that Fitbit, who had successfully sought joinder in an IPR petition filed by Apple, had standing to appeal an adverse determination as to certain patent claims, despite Fitbit’s failure to join that portion of Apple’s Petition. The Federal … Continue Reading

CAFC Hears IPR Appeal From Parties That Were Time-Barred From Filing Petition

thumbnail image of DNA strandBy Eric M. Brusca, Ph.D. on Posted in Biotechnology, Inter Partes Review, IPR, Joinder
Research Corporation Technologies, Inc. (RCT) sued Mylan Pharmaceuticals, Inc. (Mylan), Breckenridge Pharmaceutical, Inc. (Breckinridge), and Alembic Pharmaceuticals Ltd. (Alembic), in federal district court, accusing them of infringing United States Reissued Patent No. RE38,551. The patent claims pharmaceutical compositions useful in the treatment of epilepsy and other central nervous system disorders. Within one year of being … Continue Reading

Adding Two More to the List of Serious Questions about AIA Trials

By Sandip H. Patel on Posted in Appeals, Institution / Denial, Joinder, Trial Procedures
In a routine AIA trial, the PTAB determined that challenged claims in a patent directed to HVAC systems were unpatentable as being obvious and anticipated by prior art. This trial was unusual, however, because the Board premised its anticipation conclusion on a joined IPR petition that successfully rectified evidentiary deficiencies in the same petitioner’s earlier … Continue Reading

IPR Challenge May Proceed Even in the Absence of Some Patent Owners

By Lynn L. Janulis, Ph.D. on Posted in Institution / Denial, Inter Partes Review, IPR, Joinder
When a patent is co-owned by a state university and another party, an IPR may proceed against the remaining party even after the state university co-owner has been determined to have sovereign immunity from the proceeding.  Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., [Case No. IPR2017-00572, Paper 32 (July 13, 2017)]. This recent decision … Continue Reading

One-Year Time Bar Does Not Apply to a Request for Joinder of IPR Proceedings

thumbnail image of DNA strandBy Eric M. Brusca, Ph.D. on Posted in Biotechnology, Inter Partes Review, IPR, Joinder
Teva Pharmaceuticals USA, Inc. (“Teva”) filed a Petition, seeking an IPR of claims 1–20 of Allergan’s U.S. Patent No. 8,642,556. [IPR2017-00579, Paper No. 9]  Along with the Petition, Teva filed a Motion for Joinder to join Mylan Pharmaceuticals Inc. v. Allergan, Inc., IPR2016-01129.  This blog has previously reported on the topic of joinder in IPR … Continue Reading

Joinder Does Not Prevent Application of IPR Estoppel Provision

By Ryan J. Schermerhorn on Posted in Appeals, Estoppel, Inter Partes Review, IPR, Joinder, Sections 102/103
A little more than a month after the Delaware district court narrowly interpreted the IPR estoppel provision to suggest that it may not be necessary to include all known grounds so as to avoid estoppel in district court litigation, the same court issued a decision suggesting that the IPR estoppel provision may not be so … Continue Reading

The Possibility of Inconsistent Results Inherent to Congress’s Design of AIA Trial Reviews

By Sandip H. Patel on Posted in Estoppel, Institution / Denial, Inter Partes Review, IPR, Joinder, Legislation, Trial Procedures
In Cuozzo Speed Technologies, LLC v. Lee, the Supreme Court recognized that a “district court may find a patent claim to be valid, and the agency may later cancel that claim in its own review.”  The Court also recognized that because of the different evidentiary burdens in court versus before the agency—the Patent Office—“the possibility … Continue Reading

Split PTAB Ruling Allows Parties to Join Their Own Petitions

By Eric M. Brusca, Ph.D. and Michael J. Allikian on Posted in Institution / Denial, Inter Partes Review, Joinder
An expanded, split panel of the PTAB recently decided that it may be appropriate to join the same party’s serially-filed IPR petitions into a single proceeding, even when one such petition would otherwise be time-barred but for the joinder.  Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp., IPR2015-00762, Paper 16 (PTAB Oct. 5, … Continue Reading
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