News & Analysis as of

Patent Litigation Article III

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

McDermott Will & Emery

Blurred Vision: Appeal Dismissed for Lack of Standing

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The US Court of Appeals for the Federal Circuit dismissed a patent challenger’s appeal in an inter partes review (IPR) because the challenger could not meet the injury-in-fact requirement for Article III standing. Platinum...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2024 #3

Allergan USA, Inc. v. MSN Laboratories Private Ltd., Appeal No. 2024-1061 (Fed. Cir. August 13, 2024) In this week’s Case of the Week, the Federal Circuit clarifies rules relating to when an applicant’s patent can be...more

Morrison & Foerster LLP

Federal Circuit Wades Into Article III Standing in Patent Cases Once Again

In the precedential decision of Intellectual Tech LLC v. Zebra Techs. Corp., the U.S. Court of Appeals for the Federal Circuit reversed a ruling from the U.S. District Court for the Western District of Texas that dismissed a...more

Pillsbury Winthrop Shaw Pittman LLP

Constitutional Standing Not Required for 337 Investigations

While a complainant does not need to have constitutional standing to bring a complaint in the International Trade Commission (ITC), at least one complainant must be the owner or exclusive licensee of the underlying asserted...more

Axinn, Veltrop & Harkrider LLP

Puma and the Pitfalls of the “Narrow” Exclusive License

8 Puma Biotechnology is the latest victim of standing requirements in patent cases that continue to wreak havoc on plaintiffs’ ability to recover a full measure of damages. In Puma Biotechnology, Inc. v. AstraZeneca...more

Knobbe Martens

Federal Circuit Review - November 2023

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Federal Circuit Orders District Court to Consider Extrinsic Evidence in Claim Construction - In Actelion Pharmaceuticals Ltd. v. Mylan Pharmaceuticals Inc., Appeal No. 22-1889, the Federal Circuit held that where a...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

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Intel Corp. v. Qualcomm Inc., 21 F.4th 801 (Fed....

Intel filed three IPR petitions against Qualcomm’s ’949 patent, which is directed to “boot code” in a multi-processor system. Apple, who was not a party to any of the IPRs, uses Intel’s baseband processors in certain iPhone...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Best Medical Int’l, Inc. v. Elekta Inc., 46 F.4th...

Varian filed two petitions for IPR of BMI’s ’096 patent, which the Board instituted. Elekta filed copycat petitions and successfully joined Varian’s two instituted IPRs. A previously filed, parallel ex parte reexamination on...more

Robins Kaplan LLP

Novartis Pharms Corp. v. Crystal Pharm. (Suzhou) Co., Ltd.

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Case Name: Novartis Pharms Corp. v. Crystal Pharm. (Suzhou) Co., Ltd., No. 20-md-2930-RGA, 2022 WL 16921985 (D. Del. Nov. 14, 2022) (Andrews, J.)  Drug Product and Patent(s)-in-Suit: Entresto® (sacubitril/valsartan); U.S....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

Knobbe Martens

Failure to Vacate Adverse Standing Decision Upon Settlement Stops Subsequent Suits

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UNILOC USA, INC. v. MOTOROLA MOBILITY LLC - Before Lourie, Dyk, and Hughes.  Appeal from U.S. District Court for the District of Delaware. Summary: Failure to vacate an adverse ruling regarding a lack of standing when...more

Hudnell Law Group

Fifth Circuit Denies Patent Owners’ Attempt To Formalize PTAB’s Discretionary Denials

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In 2021, an organization of patent owners and various patent-holding companies sued the USPTO in the Eastern District of Texas.  The patent owners sought to force the USPTO Director to engage in notice-and-comment rulemaking...more

Procopio, Cory, Hargreaves & Savitch LLP

What’s the Best Court For Your Patent Infringement Suit? The Answer May Have Just Changed

From the moment he first took the bench in the Waco Division of the United States District Court for the Western District of Texas four years ago, Judge Alan Albright made it known that he welcomed the filing of patent cases...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2022 #3

Mitek Systems, Inc. v. United Services Automobile Association, Appeal No. 2021-1989 (Fed. Cir. May 20, 2022) - Our Case of the Week this week is a declaratory judgment action brought against USAA. In a 27-page opinion,...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

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

Knobbe Martens

Federal Circuit Review - November 2021

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Venue and Pleading Infringement in Hatch-Waxman Litigation Turn on Location and Identity of ANDA Filer - In Celgene Corp. v. Mylan Pharm. et al., Appeal No. 21-1154, the Federal Circuit held that in Hatch-Waxman...more

Troutman Pepper

High Court TransUnion Ruling May Enhance PTAB Autonomy

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Although the U.S. Supreme Court’s decision in TransUnion LLC v. Ramirez is not related to either patent or administrative law, its effects on constitutional standing are broad-reaching and may insulate the Patent Trial and...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

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

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

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