The Current Roundup

CAFC: Reasonable expectation of success finding lacks substantial evidence in “highly unpredictable” art. The Federal Circuit reversed the Board’s determination in an IPR that using a particular drug to treat a particular cancer would have been obvious. The Court first found that, contrary to the Board’s “clear inference,” the art did not disclose “any data or …

PTAB Roundup

CAFC: Cannot raise a new theory in an IPR reply brief. Petitioner presented a new theory in its reply brief based on an alleged admission made by Patent Owner’s expert during cross-examination. The PTAB refused to consider the new theory and found that Petitioner failed to demonstrate unpatentability under the theories presented in its petition. The Federal Circuit affirmed. Because IPRs are …

PTAB Roundup

CAFC: Vacating institution decision on remand forecloses second appeal. The Court dismissed Petitioner/Appellant’s appeals on three IPRs’ second trip to the Federal Circuit. On the first trip, the Court granted Petitioner/Appellant’s post-SAS motion to remand to consider the non-instituted grounds because the PTAB had instituted on only one ground in each of the three petitions. On remand, the PTAB modified its …

PTAB Roundup

CAFC: Retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the 5th Amendment. In affirming the Board’s unpatentability decisions, the Federal Circuit found that this case presented “exceptional circumstances in which [its] discretion is appropriately exercised to hear [Appellant’s] constitutional challenge even though it was not raised below.” The Court held that a successful IPR of …

PTAB Roundup

CAFC: More on standing and printed publications. The Federal Circuit held that Appellant possessed Article III standing to appeal the PTAB’s IPR decisions because it licensed the patent-at-issue as part of a standard-essential patent pool. Appellant suffered a cognizable injury because, under the terms of the pool, Appellant would collect higher royalties for its own patents …

PTAB Roundup

CAFC: No Article III standing for direct competitor. The Federal Circuit dismissed an IPR appeal because Appellant failed to demonstrate “a real, particularized injury” from its competitor’s patent. The products at issue, turbofan engines for airplanes, take up to 8 years to develop, and Appellant, who was never sued or threatened with suit, explained that the …

PTAB Roundup

BREAKING – Supreme Court will decide whether one-year bar decisions are appealable. The Supreme Court granted cert today in Dex Media Inc., agreeing to review whether 35 U.S.C. § 314(d) permits appeal of the PTAB’s decision to institute an inter partes review upon finding that 35 U.S.C. § 315(b)’s time bar did not apply. The Court declined to review …

PTAB 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 …