Federal Circuit Provides Two-Part Analysis for Determining Reviewability of PTAB Institution Decisions

Author: Anthony A. Hartmann
Editor: James D. Stein

The Federal Circuit in Husky Injection Molding Systems, Inc. v. Athena Automation Ltd., No. 2015-1726 (Fed. Cir. Sep. 23, 2016) recently dismissed Husky’s appeal from a final written decision in IPR. The court found it “lack[ed] jurisdiction to review the Board’s determination on whether assignor estoppel precludes it from instituting inter partes review.” Slip op. at 19.

Assignor estoppel generally prevents an assignor of a patent from later asserting that the patent is invalid. Here, a co-inventor of the patent at issue was Husky’s former owner and president, who had assigned the patent to Husky. After assigning the patent, he formed Petitioner Athena and alleged unpatentability of the patent in IPR. The Board found that assignor estoppel does not apply in an IPR, instituted review, and found certain claims unpatentable.

On appeal to the Federal Circuit, after reviewing the prevailing case law, the court identified a two-part framework to determine whether it may review a challenge to an institution decision:

Continue reading

Tagged , , , ,

On Fifth Anniversary of AIA, PTAB Bar Association Launches

Author: James D. Stein
Editor: Jason E. Stach

On Friday, September 16, 2016—the fifth anniversary of the enactment of the AIA—the newly-formed Patent Trial and Appeal Board (PTAB) Bar Association officially launched. The creation of the PTAB Bar Association has involved collegial collaboration among more than 45 law firms over the past several months. The Association’s mission is to promote the highest professional and ethical standards among lawyers and stakeholders who appear before the PTAB; to help establish best practices for the unique practice and skills required before the PTAB; and to foster communication among its various stakeholders.

It has been more than 30 years since a national bar association of this scope has been formed. The PTAB Bar Association will provide a forum for communications between the legal community and PTAB officials and its Administrative Patent Judges, particularly to share best practices and stay abreast of the rule making, procedure, and jurisprudence emanating from the PTAB.

Continue reading

Tagged , ,

Federal Circuit PTAB Appeal Statistics – September 2016

Authors: Daniel F. Klodowski, Elliot C. CookDavid C. Seastrunk
Editor: Jason E. Stach

Finnegan is proud to introduce statistics covering the disposition of cases appealed to the Court of Appeals for the Federal Circuit from the USPTO’s Patent Trial and Appeal Board (PTAB). The Federal Circuit faces an increasing number of such appeals, corresponding to the increasing number of Final Written Decisions issued over time in PTAB proceedings. More statistics regarding PTAB Final Written Decisions are found here.

Since the inception of PTAB proceedings through September 1, 2016, the Federal Circuit decided 113 PTAB appeals. The Federal Circuit affirmed the PTAB on every issue in 90 (79.65%) of the cases, and reversed or vacated the PTAB on every issue in 8 (7.08%) of the cases. A mixed outcome on appeal, where at least one issue was affirmed and at least one issue was vacated or reversed, occurred in 10 (8.85%) of the cases.


Continue reading

Tagged , , , , , , , , ,