A couple of years ago, in Amerigen Pharmaceuticals Ltd. v. UCB Pharma GmbH, 913 F.3d 1076, 1082 (Fed. Cir. 2019), the Federal Circuit acknowledged its jurisdiction to decide appeals of the Board’s final written decisions in AIA trials, but explained that an appellant (AIA Trial petitioner) must demonstrate it has standing. Quoting from the Supreme Court’s decision in Spokeo, Inc. v. Robins, 136 S. Ct. 1540, 1547 (2016), the court explained the appellant must demonstrate, among other things, that it has “suffered an injury in fact.” Amerigen, 913 F.3d at 1082–83.
Continue Reading The Concrete Injury Necessary for Appellate Standing Is Flexible

In Hunting Titan Inc. v. DynaEnergetics GmbH & Co. KG, Case IPR 2018-00600 (PTAB Jul. 6, 2020), the Patent Trial and Appeal Board’s Precedential Opinion Panel (POP) vacated the decision of another Board panel to deny patent owner’s (DynaEnergetics) motion to amend. In that vacated decision, the Board had sua sponte determined the proposed substitute claims were anticipated, despite the petitioner’s (Hunting Titan) failure to advance such a position. After vacating the decision of the panel, the POP granted DynaEnergetics’ motion to amend and its request for rehearing of that panel’s final written decision finding DynaEnergetics’ claims unpatentable. 
Continue Reading Rare Circumstances in IPRs are Even Rarer With Poor Strategy

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In Donner Technology, LLC v. Pro Stage Gear, LLC, Appeal. No. 20-1104 (Fed. Cir. Nov. 9, 2020), the Federal Circuit vacated and remanded the PTAB’s decision that the Petitioner, Donner Technology, did not sufficiently prove unpatentability because a printed publication on which it relied was not sufficiently analogous to the claimed subject matter.  In doing so, the Federal Circuit reminded the PTAB, and practitioners alike, of the proper standard for determining whether a reference is “analogous,” as well as how to appropriately apply that standard.
Continue Reading PTAB Plays Wrong Tune On Whether Reference is Analogous Art

The Patent Trial and Appeal Board designated as precedential two opinions with opposite outcomes on the issue of discretionary denial of inter partes review (IPR) petitions under 35 U.S.C. §314(a) in July.  In Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (May 13, 2020), the Board denied institution of an IPR due to a parallel district court proceeding in the Western District of Texas, whereas in Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-01393, Paper 24 (June 16, 2020), the Board instituted an IPR despite a parallel district court proceeding also occurring in the Western District of Texas. 
Continue Reading Opinions Designated As Precedential Illuminate How Factors Governing

In Telefonaktiebolaget LM Ericsson, (“Ericsson”), v TCL Corporation, (“TCL”), 2017-2381, -2385 (Fed. Cir. Nov. 7, 2019), the Federal Circuit affirmed the PTAB’s decision that canceled claims in an Ericsson patent that TCL challenged based on its subsidiary finding that a German journal article TCL presented was indeed prior art.  The decision is important because it offers guidance in assessing what type of evidence may be persuasive in a PTAB’s assessment of the public accessibility of a journal article whose publication date is close to the challenged patent’s critical date.
Continue Reading Raiders of the Lost Art

In General Access Solutions, Ltd. v. Sprint Spectrum L.P., Case No. 19-1856 (Fed. Cir. May 11, 2020) (non-precedential), General Access Solutions (“GAS”) appealed from two final written decisions of the Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”) proceeding holding that multiple claims of U.S. Patent Nos. 7,173,916 and 6,891,810 were obvious over prior art cited by Sprint Spectrum L.P. (“Sprint”). Specifically, the Board found certain claims to be unpatentable based on various grounds relying on U.S. Patent No. 7,366,133 (“Ahy”) as prior art under 35 U.S.C. § 102(e).
Continue Reading Incorporating Entire Arguments by Reference Can Lead to Disastrous Outcomes

On July 2, 2020, the Patent Office initiated the “Fast-Track Appeals Pilot Program,” which it designed to reduce the pendency of ex parte appeals. The program, effective for one year, is in a pilot stage to gauge the public’s interest and to assess its longer-term feasibility. The Office neither expects nor intends any delays for appeals that forego the pilot program. So, for now, participation in the program is first come, first served, limited to 500 applications, and requires submission of a short petition and payment of a modest fee. The program is likely welcome news, especially to those who have complained about the lengthy pendency often accompanying appeals.
Continue Reading Fast-Track Decisions on Ex Parte Appeals

In a decision issued on May 5, 2020, the Federal Circuit reversed a PTAB decision upholding patent claims challenged for obviousness. Uber Technologies, Inc. v. X One, Inc., 957 F.3d 1334 (Fed. Cir. 2020). The Board failed to properly apply the obviousness test of KSR International Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), which recognized that a person of skill in the art has good reason to pursue the use of a finite number of identified, predictable solutions to solve a problem.
Continue Reading PTAB’s Obviousness Analysis Inconsistent with KSR

The Federal Circuit, in Arthrex, concluded that the Patent and Trial Appeal Board’s Administrative Patent Judges were unconstitutionally appointed “principal” officers. The court therefore vacated the Board’s decision that canceled claims in an inter partes review and remanded so a new panel of APJs would re-decide the patentability of the claims. What happens, however, when the Board’s pre-Arthrex final written decision does not cancel—but rather upholds the patentability of—the challenged claims? Well, there’s an appeal for that.
Continue Reading The Arthrex Mulligan

On April 20, 2020, the Supreme Court held that PTAB decisions instituting IPR are final and non-appealable and that the language of 35 U.S.C. § 314(d) “indicates that a party generally cannot contend on appeal that the agency should have refused “to institute an inter partes review.”  Thryv Inc. v. Click-To-Call Technologies LP, case number 18-916, 2020 WL 1906544 at *4, __S.Ct. __ (2020).
Continue Reading PTAB Determination on One-Year Time Bar Cannot be Appealed