News & Analysis as of

Jurisdiction Patent Litigation Inter Partes Review (IPR) Proceeding

Akin Gump Strauss Hauer & Feld LLP

Delay in Correcting Disclosure of Real Parties-in-Interest not Procedurally Fatal to IPR Petition

The Patent Trial and Appeal Board instituted an inter partes review over patent owner’s objections that the petition did not timely identify all real parties-in-interest (RPI) and was filed by a phantom legal entity after...more

McDermott Will & Emery

Testing Negative: Collateral Order Doctrine Precludes Appellate Jurisdiction

McDermott Will & Emery on

Addressing appellate jurisdiction in view of the collateral order doctrine, the US Court of Appeals for the Federal Circuit dismissed an appeal of a district court’s ruling denying a motion to dismiss because the district...more

WilmerHale

Federal Circuit Patent Watch: Section 285 Does Not Extend to Recovery of IPR Fees

WilmerHale on

Precedential and Key Federal Circuit Opinions - 1.  ZIRCON CORP. v. ITC (2022-1649, 05/08/2024) (Lourie, Bryson, and Stark) - Bryson, J. The Court affirmed the Commission’s determination regarding the domestic...more

WilmerHale

Federal Circuit Patent Watch: Printed Matter Doctrine Applies to Communicative Content, Not All Communications

WilmerHale on

Precedential and Key Federal Circuit Opinions - 1.  IOENGINE, LLC V. VIDAL (21-1227 Lourie, Chen, Stoll) - Chen, J.  The Court reversed in part and affirmed in part the Final Written Decisions of the Patent Trial and...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Atlanta Gas Light Co. v. Bennett Regulator Guards,...

Atlanta Gas petitioned for inter partes review of Bennett’s ’029 patent. The Board initially rejected Bennett’s argument that Atlanta Gas was time barred from petitioning for inter partes review under 35 U.S.C. § 315(b) and...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

WilmerHale

Federal Circuit Patent Watch: Cancellation of claim in reexamination eliminates patent owner standing in appeal from IPR; Accused...

WilmerHale on

Precedential Federal Circuit Opinions - BEST MEDICAL INTERNATIONAL, INC. v. ELEKTA INC. [OPINION]  (2021-2099, 2021-2100, 8/29/22) (Hughes, Linn, and Stoll) - Stoll, J. Dismissing-in-part the appeal from Best Medical...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2022 #5

Best Medical International, Inc. v. Elekta Inc., Appeal Nos. 2021-2099, -2100 (Fed. Cir. Aug. 26, 2022) - In this week’s Case of the Week, the Federal Circuit addressed issues of jurisdiction where a challenged claim was...more

Knobbe Martens

No Standing in IPR Appeal for Sublicensee’s Speculative Royalty-Based Injuries

Knobbe Martens on

MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION - Before Lourie, O’Malley, and Stoll.  Appeal from the Patent Trial and Appeal Board. Summary: Sublicensee’s theory of royalty-based injury was too speculative to...more

WilmerHale

CAFC Patent Cases - September 2021 #3

WilmerHale on

Precedential Federal Circuit Opinions IN RE: JUNIPER NETWORKS, INC. [OPINION]  (2021-160, September 2, 2021) (Lourie, Bryson, and Taranto) - Per curiam. Issuing writ of mandamus directing the United States District Court...more

Knobbe Martens

Federal Circuit Review - August 2021

Knobbe Martens on

It’s No Secret That a Related Company’s Physical Presence in a Jurisdiction May Not Be Enough For Proper Venue - In Andra Group, LP v. Victoria’s Secret Stores, LLC, Appeal No. 20-2009, The Federal Circuit held that an...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (September 6-10): The (Un)Enforceability Of Arbitration Agreements At The PTAB

The Federal Circuit issued just one precedential opinion the week of Labor Day (along with several non-precedential opinions and Rule 36 judgments). But it’s an interesting one, addressing the interplay between arbitration...more

Haug Partners LLP

Standing to Appeal Post-Grant Proceedings: A Brief Review of Recent Federal Circuit Opinions

Haug Partners LLP on

On April 7, 2021, the Federal Circuit decided Apple Inc. v. Qualcomm Inc., where it held that Apple lacked standing to appeal the final written decisions in two inter partes review (“IPR”) proceedings before the U.S. Patent...more

Jones Day

Institution Mandamus Review Limited to Colorable Constitution Claims

Jones Day on

In Mylan Labs Ltd. v. Janssen Pharmaceutica N.V., the Federal Circuit reaffirmed it lacked jurisdiction over appeals from the PTAB denying IPR institution, noted that it had jurisdiction over requests for mandamus, but that...more

McDermott Will & Emery

The Road Less Traveled: IPR Denial Decisions Appealable via Mandamus

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit concluded that while it did not have jurisdiction to consider the direct appeal of a Patent Trial & Appeal Board decision denying institution, it could review the decision under...more

Morrison & Foerster LLP - Federal Circuitry

Order of Interest – Can You Challenge The Denial Of Institution Without Showing A Deprivation Of Life, Liberty, Or Property?

Originating tribunal: Patent Trial and Appeal Board - Date: March 12, 2021 - Panel: Judges Newman, Moore, and Stoll, with Judge Moore writing the precedential order - Result: Appeal dismissed, and mandamus...more

Knobbe Martens

Federal Circuit Cannot Review Denial of Institution of IPR, Unless Extraordinary Circumstances Are Shown

Knobbe Martens on

MYLAN LABS. LTD. v. JANSSEN PHARMACEUTICA, N.V. Before Newman, Moore, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: The Federal Circuit lacks jurisdiction over appeals from decisions denying...more

Knobbe Martens

Federal Circuit Has Jurisdiction to Review Joinder Decisions in IPRs

Knobbe Martens on

FACEBOOK, INC., V. WINDY CITY INNOVATIONS LLC Before Prost, Plager, and O’Malley.  Appeal from the Patent Trial and Appeal Board. Summary:  The Federal Circuit has jurisdiction to review challenges to the Board's joinder...more

Mintz - Intellectual Property Viewpoints

IPR and Fast-Moving District Court Litigation: PTAB Formalizes the Analysis for Balancing Efficiency and Fairness

The Patent Trial and Appeal Board (“PTAB”) has designated two key institution decisions as “Informative.” With these informative decisions, the PTAB has provided guidance on how the PTAB will apply efficiency and fairness...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - March 2020: 315(b) Jurisdictional Issues Can Still Be Waived if not Raised at the Board

In Acoustic Technology v. Itron Networked Solutions, the Federal Circuit was faced with a situation in which the Petitioner’s real party-in-interest/privy changed after institution, although the change was in the works before...more

BakerHostetler

[Webinar] Patent Law: 2019 Year End Review (and 2020 Preview) - February 26th, 12:00 pm ET

BakerHostetler on

This timely and fast-moving webinar provides insight for business leaders and legal counsel, highlighting many of the significant holdings by the Supreme Court and Federal Circuit in patent cases in 2019 and what issues are...more

Bradley Arant Boult Cummings LLP

District Courts Lack Jurisdiction to Review Attacks on Collateral IPR Decisions - Intellectual Property News

In a precedential decision last week, the Federal Circuit held that CBS will not have to pay a $1.3 million infringement award because a podcasting patent was invalidated in an inter partes review (IPR) at the Patent Trial...more

McDermott Will & Emery

No Concrete Controversy if There Are No Claims

McDermott Will & Emery on

In reversing a district court decision as to whether a validity issue remained justiciable after the challenged claims were disclaimed, the US Court of Appeals for the Federal Circuit explained that the patent owner’s...more

Nutter McClennen & Fish LLP

5 Patent Law Petitions to Watch at the Supreme Court

As the 2018-2019 Supreme Court term nears its end, several consequential patent law petitions still await certiorari rulings before the Justices recess for the summer, while other patent cases are scheduled to be briefed and...more

Goodwin

Federal Circuit Dismisses Momenta’s Appeal of Adverse Final Written Decision in Abatacept IPR

Goodwin on

This morning, the Federal Circuit issued a precedential opinion dismissing Momenta’s appeal from the PTAB’s final written decision upholding the patentability of Bristol-Myers Squibb’s abatacept patents against Momenta’s IPR...more

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