Federal Circuit Dismisses the Appeal of the PTAB’s Decision in an Inter Partes Review Because the Appellant Lacks Standing

PHIGENIX, INC. v. IMMUNOGEN, INC., No. 2016-1544 (Fed. Cir. January 9, 2017) (precedential).  On appeal from PTAB.  Before Dyk, Wallach, and Hughes. Procedural Posture: Appellant Phigenix sought IPR of U.S. Patent No. 8,337,856 (“the ’856 patent”), alleging obviousness in view of the provided prior art. In its final written decision, the …

Federal Circuit Rules That P.T.A.B. Can Cite Prior Art References In An IPR Proceeding Even Though the References Were Not Set Forth In An Earlier Institution Decision

Authored by Rose Cordero Prey, Zaed M. Billah, and Ian A. Moore Digest of Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharma. Inc., No. 2015-1720 (Fed. Cir. June 14, 2016) (precedential). On appeal from P.T.A.B. Before Moore, Bryson, and Reyna. Procedural Posture: Appellant patent owner appealed P.T.A.B.’s decision on inter partes review …

Federal Circuit Rules That PTAB Can Cite Prior Art References in an IPR Proceeding Even Though the References Were Not Set Forth in an Earlier Institution Decision

Authored by Rose Cordero Prey, Zaed M. Billah, and Ian A. Moore Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharma. Inc., No. 2015-1720 (Fed. Cir. June 14, 2016) (precedential). On appeal from PTAB. Before Moore, Bryson, and Reyna. Procedural Posture: Appellant patent owner appealed PTAB’s decision on inter partes review that …

Federal Circuit Affirms the PTAB’s Denial of a Motion to Amend a Patent on Pool Cleaning Technology

Authored by Paul Qualey, Ksenia Takhistova, and Roman Khasidov In re Aqua Prods. Inc., No. 2015-1177 (Fed. Cir. May 25, 2016) (precedential).  On appeal from the PTAB.  Before Prost, Reyna and Stark (Chief District Judge, D. Del., sitting by designation). Procedural Posture: Appellant Aqua Products Inc. appealed the PTAB’s final written …

IPR Estoppel Does Not Apply To Grounds That Were Denied Institution

Authored by Rose Cordero Prey and Olena Ierega Digest of Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., Nos. 2015-1116, 2015-1119 (Fed. Cir. Mar. 23, 2016) (precedential). On appeal from P.T.A.B. in Nos. IPR2013-00132, IPR2013-00584. Before Moore, Reyna, and Wallach. Procedural Posture: Petitioner, Shaw, appealed from the Board’s final …