The Current Roundup

CAFC: Petitioners waive Arthrex challenge by seeking IPR. Patent Owner moved to vacate and remand for a new hearing before a different panel in light of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). The Federal Circuit denied the motion, holding that Arthrex’s reach does not extend to petitioners because they, unlike patent owners, “affirmatively sought …

PTAB Roundup

Supreme Court: The PTAB’s time-bar decisions are nonappealable. The Board instituted an IPR petition even though the petition was filed more than one year after Petitioner was served with an infringement complaint, reasoning that service of the complaint could not trigger the one-year bar of § 315(b) because the suit was later voluntarily dismissed without prejudice. On …

PTAB Roundup

District Court: IPR estoppel warrants summary judgement of no invalidity. Plaintiff moved for summary judgement of no invalidity, contending that Defendant’s unsuccessful IPRs precluded its §§ 102 and 103 defenses (all of which relied on patents and printed publications) under the IPR estoppel set forth in § 315(e)(2). The Court agreed. It applied the “skilled searcher” standard, and because Defendant submitted its invalidity contentions before filing …

PTAB Roundup

CAFC: Only new parties, not new issues, may join an existing IPR. The Federal Circuit held that “the clear and unambiguous meaning of § 315(c) does not authorize joinder of two proceedings and does not authorize the Director to join a person to a proceeding in which that person is already a party.” In doing so, the Court essentially …

PTAB Roundup

District Court: Unpatentability in IPR supports award of attorneys’ fees. Defendant argued, and the Court agreed, that the case was exceptional despite the presumption of validity: Plaintiff initiated suit without adequately investigating the validity of the asserted patent, insisted on maintaining suit despite mounting evidence of invalidity, and obfuscated the fact that the patent was invalid. Specifically, the …

PTAB Roundup

CAFC: Patent owner waived time-bar argument that arose, but was not raised, during IPR. In two appeals decided the same day, the Federal Circuit affirmed the PTAB’s final decisions of unpatentability in three IPRs. Shortly after institution, Petitioner merged with an entity that was “undisputedly time-barred” under 35 U.S.C. § 315(b) and promptly updated its mandatory notices to reflect …

PTAB Roundup

CAFC: PTAB abused its discretion by refusing to consider arguments in a Reply. The Federal Circuit held that an IPR Petitioner’s reply brief did not raise an improper new argument when it “merely demonstrate[d] another example of the same algorithm [cited in the petition] to further explain why” the raised references met the challenged claim. The Court upheld …

PTAB Roundup

CAFC: Rehearing en banc denied in Biodelivery – Board’s decision to vacate institution decision on remand forecloses second appeal. The full Federal Circuit denied a petition for rehearing in BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., 935 F.3d 1362 (Fed. Cir. 2019). As reported in the September 9, 2019, PTAB Roundup, the Federal Circuit granted Petitioner/Appellant’s post-SAS motion for remand to consider the non-instituted grounds. On remand, the Board modified its …

PTAB Roundup

District Court: Cross-forum, cross-patent collateral estoppel. The Court granted the Defendants’ motion for summary judgment of invalidity based on collateral estoppel. In previous IPRs, the PTAB found that two patents related to the patents-in-suit were unpatentable as obvious and the Federal Circuit affirmed. Here, the Court found that the asserted claims of the patents-in-suit were similar to or broader than the claims held unpatentable in the IPRs, …

PTAB Roundup

District Court: Cross-forum, cross-patent collateral estoppel. The Court granted the Defendants’ motion for summary judgment of invalidity based on collateral estoppel. In previous IPRs, the PTAB found that two patents related to the patents-in-suit were unpatentable as obvious and the Federal Circuit affirmed. Here, the Court found that the asserted claims of the patents-in-suit were similar to or broader than the claims held unpatentable in the IPRs, …