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On January 28, 2020, the Federal Circuit issued a non-precedential order that denied IPR petitioner Ciena’s motion to have a judgment vacated and remanded under Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed.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 315(b) one-year limit for filing IPRs after lawsuits. The suit was voluntarily dismissed without prejudice, but Click-To-Call contended that the 2001 lawsuit made the 2013 IPR untimely due to the one-year limit. Slip Op. at 2, 4. The PTAB disagreed with Click-To-Call’s contention and instituted the IPR.

On appeal, the Federal Circuit dismissed Click-To-Call’s appeal for lack a jurisdiction. Thereafter, the Federal Circuit decided Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018) (en banc), where the Federal Circuit decided that time-bar determinations are appealable, and then the Federal Circuit granted a rehearing in the Thryv v. Click-To-Call case. The Federal Circuit then vacated the PTAB’s decision in the 2013 IPR for untimeliness. Slip op. at 4-5.

Upon review, the Supreme Court vacated the Federal Circuit judgment. The Supreme Court reasoned that the PTAB’s decision to institute was “closely tied to the application and interpretation” of the patent statute, rather than a constitutional question, and therefore the bar to appeals under Section 314(d) would control. Slip op. at 7. Thus, the PTAB’s decision to institute the IPR was not appealable.

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

Apple Inc. v. California Institute of Technology, Appeal Nos. 2019-1580, -1581 (Fed. Cir., March 5, 2020).

In January of this year, a jury awarded the California Institute of Technology (Caltech) $837,801,178 for Apple’s infringement of three patents. One of those patents was U.S. Patent No. 7,116,710. The ‘710 patent claimed methods of encoding a signal by partitioning data blocks into sub-blocks, encoding, and interleaving.

The ‘710 patent was the subject of IPR2017-00210 and IPR2017-00219 filed by Caltech. In both IPRs, the ‘710 patent was not held to be unpatentable. Apple appealed. The case was argued on March 4, 2020, and the next day the Federal Circuit issued a summary affirmance pursuant to Rule 36. Accordingly, the IPRs will provide no reason to set aside the jury award.

Image Processing Technologies LLC v. Samsung Electronics Co., LTD. et al., Appeal Nos. 2018-2156, 2019-1408, 2019-1485 (Fed. Cir. March 2, 2020).

The Federal Circuit vacated and remanded the PTAB’s decisions against Image Processing’s U.S. Patent No. 8,983,134 in IPR2017-00353 and IPR2017-01218. The vacatur and remand was based upon the Federal Circuit’s earlier Arthrex decision, which held that the PTAB judges were improperly appointed under the Appointments Clause of the U.S. Constitution. The Arthrex decision from October 2019 is proving to be quite controversial, and the USPTO is seeking an opportunity to have the doctrine reversed by the U.S. Supreme Court. Continue Reading U.S. Government in Search of Arthrex Reversal

General Electric v. United Technologies Corp.

General Electric petitioned for an IPR against a United Technologies patent relating to gas turbine engines. General Electric was unsuccessful against certain claims, and sought to appeal. While there is a statutory right to appeal, the Federal Circuit dismissed General Electric’s appeal for lack of Article III standing. See Gen. Elec. Co . v. United Techs. Corp., 928 F.3d 1349 (Fed. Cir. 2019). Continue Reading Standing to Appeal