Esip Series 2, LLC v. Puzhen Life USA, Appeal No. 2019-1659 (Fed. Cir., May 19, 2020)
Puzhen petitioned for an IPR against Esip’s patent relating to a combining of germicidal protection and aromatic diffusion in an enclosed space. Some of the claims were held to be obvious by the PTAB and the Federal Circuit affirmed on that issue.
Continue Reading Another Non-Appealable Issue
Virnetx Inc. v. Cisco Systems, Inc., Appeal No. 2019-1671 (Fed. Cir., May 13, 2020).
Inter partes reexamination was a non-trial procedure that allowed third parties to participate in patent reexamination, and has now been replaced by inter partes and post-grant reviews. Inter partes reexaminations were conducted before a panel of examiners, and then subject to review by the PTAB in an appeal capacity. Here, Cisco and the Director of the USPTO sought rehearing of a decision that extended the Arthrex doctrine to inter partes reexaminations.
Continue Reading Arthrex and Reexamination
Caterpillar Paving Products Inc. v. Wirtgen America, Inc., Appeal No. 2020-1261 (Fed Cir., May 6, 2020).
On May 5, 2020, the Federal Circuit issued a precedential order holding that IPR petitioners cannot seek the Arthrex do-over. One day later, the Federal Circuit placed another limitation on the applicability of the Arthrex doctrine.
Continue Reading Another Arthrex Limit
Ciena Corp. v. Oyster Optics, LLC, Appeal No. 2019-2117 (Fed. Cir., May 5, 2020).
On January 28, 2020, the Federal Circuit issued a non-precedential order that denied IPR petitioner Ciena’s motion to have a judgment vacated and remanded under Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). The order was made precedential on May 5, 2020.
Continue Reading Arthrex Is Not for Everyone
Grit Energy Solutions, LLC v. Oren Technologies, LLC, Appeal No. 2019-1063 (Fed. Cir.. April 30, 2020).
Grit Energy filed a petition for inter partes review against Oren’s U.S. Patent No. 8,585,341 pertaining to systems of storing and discharging proppants, such as sand. The PTAB found the Grit Energy did not satisfy its burden to show that the claims of the ‘341 patent were obvious.
Continue Reading The Federal Circuit Finds Article III Standing
Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corp., Appeal No. 2018-2273 (Fed. Cir., April 23, 2020).
Argentum and other petitioners filed IPRs against Novartis’ patent related to methods of treating relapsing-remitting multiple sclerosis. Novartis prevailed before the PTAB. All petitioners then settled but for Argentum.
Continue Reading Article III Standing Strikes Again
Thryv, Inc. v. Click-To Call Technologies, LP, et al., 590 U.S. ___, Case No. 18-916 (slip op., April 20, 2020)
IPR petitioner Thryv challenged patent owner Click-To-Call’s patent and several claims were cancelled. Click-To-Call sought judicial review of the IPR institution decision.
Click-To-Call alleged that a 2001 lawsuit between predecessor companies triggered the Section
Nike, Inc. v. Adidas AG, Appeal No. 2019-1262 (Fed. Cir., April 9, 2020)
The PTAB has never shown an affinity for permitting amendments in IPRs. This appeal marks the second time that a proposed amendment in an IPR was before the Federal Circuit for review.
Continue Reading No Notice, No Decision
Ex parte Grillo-Lopez, Appeal No. 2018-006082 (April 7, 2020).
On April 7, 2020, The PTAB denied rehearing in Ex parte Grillo-Lopez (August 28, 2019) and issued a precedential decision explaining the denial. The appeal concerned final rejections that the examiner issued based upon an FDA transcript, which applicants argued was not prior art. The FDA transcript in question was the subject of previous IPRs, where the PTAB held that the FDA transcript was not shown to have been a printed publication. Opinion at 2, fn 2.
Continue Reading IPRs and Patent Prosecution Are Not the Same
Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 2018-2140 (Fed. Cir., March 23, 2020).
In a 62-page order and accompanying opinions, the Federal Circuit denied an en banc rehearing of the Arthrex decision from October 2019. The Arthrex decision concerned the constitutionality of the PTAB, and is discussed in detail in our November 1, 2019 post.
Continue Reading Arthrex Redux
