Posts Tagged: "appeals"

Clarifying Competitor Standing in PTAB Appeals

To seek relief in Federal Court, a plaintiff must demonstrate a personal, legally protectable interest in the outcome of the dispute for which relief is being sought, i.e., must demonstrate standing. The legally protectable interest may be under threat because of a government conduct. In patent disputes, the plaintiff may be an inter partes review (IPR) petitioner who has challenged a patent and is dissatisfied with the final written decision of the Patent Trial and Appeal Board (PTAB) regarding upholding of patent claims by the PTAB. Here, the decision upholding the claims would be the government conduct complained of. The dissatisfied petitioner may appeal to the Federal Circuit and, to prove standing, allege that it is injured because the decision upholding the claims reduces its ability to compete with the patent owner. If the petitioner has no current interest in practicing the claims, would it have standing? No, it would not, according to the Federal Circuit in Avx Corporation v. Presidio Components, Inc. 2018-1106 (Fed. Cir. May 13, 2019) (“Avx Corp.”), where this scenario played out. The court explained that although “competitor standing” can be found to challenge government actions in certain situations, this was not one of them, as the petitioner was unable to demonstrate any present or nonspeculative interest in engaging in conduct even arguably covered by the claims at issue. Avx Corp. at 9.

Winning Strategies for Getting Past the Five Types of Patent Examiner

Any patent attorney knows that each patent examiner can vary greatly in approach to examination. In this article, five different types of patent examiners and suggest prosecution strategies for each to help you get better outcomes for your clients.

PTAB is Bogged Down by Eligibility Appeals

The low allowance rates and nearly blanket eligibility-rejection issuance in the business-method art units is not without consequence. Beyond disincentivizing innovation, the examination of business-method applications is protracted as the workload at the PTAB is increased. Not only do these results affect the PTO’s operation of handling matters currently at issue, but it results in an unjust postponement of guidance. After the recent adjustments of the eligibility thresholds, examiners and applicants alike are awaiting more precedence to know what can be patent eligible in this space as new patent applications are filed. However, the PTAB has been slow to respond to business-method appeal briefs (surely due to the high volume of appeals), such that decisions are frequently issued at a time when the applicable case law has shifted relative to the filings of the correspond appeal briefs.

ABA asks Federal Circuit to reverse panel’s decision awarding lawyer fees in patent appeal cases

The American Bar Association filed an amicus brief today with the United States Court of Appeals for the Federal Circuit, arguing that a provision of U.S. patent law does not give the government the right to be reimbursed for its lawyers’ expenses regardless of which side prevails in a court appeal of an administrative patent decision… The Federal Circuit split 2-1 in determining that the language approved by Congress includes lawyer fees for the USPTO win or lose. The ABA’s amicus brief supports the petition by Nantkwest Inc., which owns the cancer treatment patent application in question, and asks the full Federal Circuit to reverse that decision.

Federal Circuits invalidates patent covering starting a session on one communication-enabled device and transferring it to another

The Federal Circuit decision in the case of CRFD Research v. Matal resolves three appeals involving a single patent: CRFD’s ‘233 patent describing methods and systems that allow a user to begin a session on one communication-enabled device and transfer it to another… Lack of anticipation based on a single reference does not preclude a finding of obviousness based on the same reference. Even if a reference’s is insufficient for anticipation, which is a question of fact, that same reference teachings may be used to find obviousness, a question of law based on underlying factual findings.