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Brian Comack Image

Brian Comack

is a Partner with Amster Rothstein & Ebenstein. He has extensive experience in intellectual property, including litigation, patent prosecution, counseling clients, and rendering legal opinions. He has focused on intellectual property issues relating to broad range of technologies, including laser-induced fluorescence detectors, lithographic printing plates, disposable absorbent products, high-speed manufacturing processes, rechargeable batteries, telephony, photomasks, semiconductors, liquid crystal displays, computer software and hardware, biomedical devices, and business methods.

For more information or to contact Brian, please visit his Firm Profile Page.

https://www.arelaw.com/professional/bcomack/

Recent Articles by Brian Comack

In Support of the Right of Dissatisfied Parties to Appeal Adverse IPR Decisions

On January 11th, Askeladden LLC (Askeladden) filed an amicus brief in support of the Supreme Court accepting certiorari from JTEKT Corp. v. GKN Automotive Ltd., No. 2017-1828 (Fed. Cir. 2018). This case raises the important question of whether the U.S. Court of Appeals for the Federal Circuit can refuse to hear an appeal by a non-defendant petitioner from an adverse final written decision in an inter partes review (IPR) proceeding on the basis of a lack of a patent-inflicted injury-in-fact, even though Congress has statutorily created the right for “dissatisfied” parties to appeal to the Federal Circuit. 35 U.S.C. § 319.

Ultimately, the panel held that JTEKT failed to establish an actual injury sufficient to confer Article III standing because “the[] declarations [did] not establish that [JTEKT’s] planned product would create a substantial risk of infringing [the] patent or likely lead to charges of infringement[.]” Id. Further, the panel did not agree with JTEKT’s argument that the “creation of estoppel based on [JTEKT’s] participation in the IPR constitute[d] a separate, and independent, injury[.]” Id. Therefore, the appeal was dismissed.

According to the brief: “The issue raised is whether meeting the statutory requirements of Section 319 of Title 35 of the United States Code is an intangible injury-in-fact that is enough to meet the “case or controversy” requirements of Article III of the U.S. Constitution.”

Can the Federal Circuit Refuse an Appeal by a Non-defendant Petitioner in an IPR?

JTEKT Corp. v. GKN Automotive Ltd., No. 2017-1828 (Fed. Cir. 2018) raises the important question of whether the Court of Appeals for the Federal Circuit can refuse to hear an appeal by a non-defendant petitioner from an adverse final written decision in an inter partes review (“IPR”) proceeding, on the basis of a lack of a patent-inflicted injury-in-fact, when Congress has statutorily created the right for “dissatisfied” parties to appeal to the Federal Circuit.