The Current Roundup

BREAKING – Supreme Court: The Government may not seek AIA Review. In a 6-3 decision, the Supreme Court held today that “a federal agency is not a ‘person’ who may petition for post-issuance review under the AIA.” Return Mail, Inc. v. USPS, No. 17-1594 (June 10, 2019) (Sotomayor, with Breyer, Ginsburg, and Kagan dissenting). District …

PTAB Roundup

CAFC: No Standing for Petitioner not practicing challenged claims. The Federal Circuit dismissed an IPR appeal because the appellant petitioner failed to “supply the requisite proof of an injury in fact.” Taking all of its allegations as true, Petitioner did “not show[] that it is engaging in, or has nonspeculative plans to engage in, conduct even arguably covered …

PTAB Roundup

CAFC: Substantial evidence supports nonobviousness finding, and no patent eligibility review on appeal of IPR. The Court affirmed the PTAB’s nonobviousness finding, holding that substantial evidence supported the Board’s underlying findings of fact despite some other evidence to the contrary. In particular, substantial evidence supporting the PTAB’s findings included skepticism expressed by the FDA during …

PTAB Roundup

CAFC: Graphical user interface claims ineligible for patenting. The Court affirmed three PTAB CBM decisions, agreeing that the patents were eligible for CBM review and did not fall into the “technological invention” exception, and were also ineligible for patenting. Although the Court had previously held in non-precedential opinions that related patents claimed technological inventions or …

PTAB Roundup

CAFC: “Reasonably continuous diligence” to a reduction to practice. The Federal Circuit held that the Board erred in rejecting the patent owner’s attempt to antedate a prior-art reference. The conception date of the challenged patent was undisputed, but the Board found a lack of diligence because the evidence showed gaps in the inventor’s activity accounting …

PTAB Roundup

CAFC: Concurrent conflict of interest warrants disqualification. Two lawyers representing a party in several appeals from the District Court and the PTAB were disqualified after moving to a new firm. The adverse patent owners/plaintiffs in their appeals were subsidiaries of a common parent corporation, and their new firm was already representing another subsidiary of the same parent in …

PTAB Roundup

CAFC: Mere possibility not enough for inherency. The Court reversed the Board’s obviousness determination in an IPR’s second trip to the Federal Circuit. The Court vacated the Board’s first decision because it was based on a theory that was not set forth in the petition. This time, the Federal Circuit reversed the Board’s finding that the petitioner demonstrated …

PTAB Roundup

CAFC: Article III standing must be maintained throughout appeal. The Federal Circuit dismissed an IPR petitioner’s appeal because the appellant no longer had a cognizable injury-in-fact. Although the appellant was infringing before and during the IPR, the appellant had since abandoned its development of that product and was no longer engaged in or actively planning any …

PTAB Roundup

CAFC: Joined parties may appeal IPR decision. The Board instituted the first petitioner’s IPR, and three days later, three more parties each filed their own petitions accompanied by motions for joinder. The Board joined all three petitioners, each of which relied on the joinder exception to the one-year bar. The patent owner prevailed on the …

PTAB Roundup

SCOTUS: The AIA did not change the on-sale bar. The Supreme Court ruled unanimously that an inventor’s sale can still qualify as prior art under § 102(a) (post-AIA) even though the purchaser is obligated to keep the invention a secret. Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., No. 18-1229 (Jan. 22, 2019). CAFC: Tentative ANDA approval sufficient to confer Article III …