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Patent Litigation Appeals Standing

Erise IP

Eye on IPRs, September 2024: PTAB Issues Fintiv Denial on Wireless Carriers’ IPR, Federal Circuit Denies Standing for IPR Appeal

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Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: PTAB Issues Fintiv Denial, Leaving Wireless Carrier Patent to E.D. Texas - ...more

Jones Day

Lack of Injury In Fact Scuttles Appeal

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The Federal Circuit dismissed Platinum Optics Technology Inc.’s (PTOT) appeal from an IPR decision, finding the challenged claims of Viavi’s U.S. Patent No. 9,354,369 not unpatentable, because PTOT failed to establish an...more

A&O Shearman

Platinum Optics Tech. Inc. v. Viavi Sols. Inc.

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In Platinum Optics Tech. Inc. v. Viavi Sols. Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on the requirements for standing to appeal from an inter partes review (IPR) final...more

Knobbe Martens

Platinum Cannot Stand on Speculation

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Before Moore. Appeal from the Patent Trial and Appeal Board. Summary: Standing based on potential infringement liability requires concrete plans for future activity which will create a substantial risk of future infringement...more

McDermott Will & Emery

Getting to the Core of It: Assignment Clause Is Ambiguous

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit vacated and remanded a district court’s grant of summary judgment, finding that the language used in an invention assignment clause was subject to more than one reasonable...more

McDermott Will & Emery

Standing Ovation…Denied!

The US Court of Appeals for the Federal Circuit reversed a district court’s decision in a patent dispute for a lack of subject matter jurisdiction because the plaintiff lacked constitutional and statutory standing....more

McDermott Will & Emery

R&D Expenditures Need Only Relate to Subset of Domestic Industry Product

Addressing a decision by the US International Trade Commission finding a violation of Section 337 based on importation of certain TV products, the US Court of Appeals for the Federal Circuit agreed that the patent holder had...more

McDermott Will & Emery

See Here: No Standing Based on Vague Future Plans or Adverse Priority Findings

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The US Court of Appeals for the Federal Circuit dismissed an appeal from a final written decision in an inter partes review (IPR) proceeding, finding that the petitioner lacked standing because it suffered no injury in fact....more

McDermott Will & Emery

Show Your Work: PTO Director’s Procedure for Issuing Instructions Is Reviewable

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The US Court of Appeals for the Federal Circuit affirmed the district court’s finding under the Administrative Procedure Act (APA) that the substance of the US Patent & Trademark Office (PTO) Director’s instructions is...more

Knobbe Martens

It Is Not Controversial: Factual and Legal Specificity Needed in Standing Dismissals

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MITEK SYS., INC. V. UNITED SERVS. AUTO. ASS’N - Before Dyk, Taranto, and Cunningham.  Appeal from the U.S. District Court for the Eastern District of Texas. Summary:  Declaratory judgment plaintiffs must identify...more

Dechert LLP

UK Court of Appeal rules on the rights of licensees to bring patent infringement claims

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The UK Court of Appeal has issued its judgment in one of the latest hearings in Neurim Pharmaceuticals v Generics (UK) relating to Neurim’s insomnia drug, Circadin. The Court of Appeal ruled that an exclusive licensee has...more

McDermott Will & Emery

Too Much to Say? Word Limits Don’t Prevent Estoppel

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The US Court of Appeals for the Federal Circuit found that the Patent Trial & Appeal Board (Board) did not err in finding that a petitioner was estopped from maintaining a third inter partes review (IPR) of a patent claim...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2022

Intel Corp. v. Qualcomm Inc., Appeal Nos. 2020-1828, -1867 (Fed. Cir. Dec. 28, 2021) - The Federal Circuit issued two precedential decisions this week—both arising from IPRs filed by Intel against patents owned by...more

McDermott Will & Emery

Shots Fired: Challenger Must Have Requisite Standing Before Appealing Unfavorable IPR Decisions

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The US Court of Appeals for the Federal Circuit found, in the context of an appeal from an inter partes review (IPR) decision, that the appellant had Article III standing and affirmed a Patent Trial & Appeal Board (Board)...more

McDermott Will & Emery

Exclusive Licensee Has Constitutional but Not Statutory Standing

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The US Court of Appeals for the Federal Circuit vacated the dismissal of an exclusive licensee’s complaint for lack of statutory and constitutional standing, despite affirming that the licensee had no statutory standing where...more

Knobbe Martens

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

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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

Rothwell, Figg, Ernst & Manbeck, P.C.

Appealing IPR Decisions – Art. III Standing in the Context of Litigation Settlements and Licenses

The Federal Circuit has provided additional guidance about an appellant’s standing to appeal IPR decisions after settling the related litigations and entering into patent license agreements. In its second decision between...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - November 2021 #2

Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A., Appeal Nos. 2020-2073, -2142 (Fed. Cir. Nov. 24, 2021) - Our Case of the Week this week focuses on the written description requirement when the patent claims a range. The...more

McDermott Will & Emery

No More Bites at the Apple: Imminent and Non-Speculative Standing Still Required

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The US Court of Appeals for the Federal Circuit reiterated that a patent challenger did not have Article III appellate standing to obtain review of a final Patent Trial & Appeal Board (PTAB) ruling because the underlying...more

Fitch, Even, Tabin & Flannery LLP

Again, Federal Circuit Holds Apple Lacked Standing to Appeal IPRs It Initiated

On November 10, in Apple Inc. v. Qualcomm Incorporated, for the second time, and in a 2-1 decision by a different panel, the Federal Circuit held that Apple lacked standing to appeal final decisions in inter partes review...more

Knobbe Martens

No Standing for Second Bite at the Apple

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APPLE, INC. v. QUALCOMM, INC. Before Newman, Prost, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: Apple lacked standing to appeal an IPR decision upholding patents that Apple licenses from...more

McDermott Will & Emery

Employee Agreement of What “Shall Be” is Future Promise, Not Present Assignment

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The US Court of Appeals for the Federal Circuit concluded that university bylaws did not automatically effectuate a present automatic assignment of patent rights and affirmed the district court’s denial of a motion to dismiss...more

Jones Day

Final Written Decision Not Enough For Assertion Of Amended Claims

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Claims added or amended during inter partes review (“IPR”) do not become part of a patent until the Patent Office officially says so by issuing an IPR certificate under 35 U.S.C. § 318(b). The patentee needs more than a Final...more

Foley & Lardner LLP

. License Agreement Not Enough for Standing on Appeal of an IPR Apple Inc. v. Qualcomm Inc.

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In a precedential decision, the Federal Circuit held that Apple lacked standing to appeal from its loss as petitioner in a couple of inter partes reviews (IPRs) against patent owner Qualcomm. Background - Qualcomm sued...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Finds No Alternative Holding in District Court Opinion and Rejects Appeal

On April 20, in Sebela Ireland v. Prinston Pharmaceutical, the Federal Circuit held that Sebela’s appeal challenged only contingent patent invalidity findings and dismissed the appeal for lack of constitutional standing. In...more

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