Federal Circuit Reaffirms the Board’s Decision to Terminate a Reexamination As to Only Litigated Claims in a Civil Action

IN RE AFFINITY LABS OF TEXAS, LLC: May 5, 2017. Before Taranto, Chen, Stoll. Takeaway: The estoppel provision under 35 U.S.C. 317(b) does not extend to all parties and all claims, but rather only to an inter partes requester that was a party to the civil action (or its privies) …

The Federal Circuit Finds Standing to Appeal Reexamination Decisions Even Though the Reexamination Requestor Had Not Been Sued For Infringement At the Time the Reexaminations Were Filed and Decided, but Nonetheless Dismissed the Appeal as Moot Due to Patentee’s Covenant Not to Sue

PPG INDUS., INC. v. VALSPAR SOURCING, INC.: Feb. 9, 2017. Before Newman, Chen, and Stoll. Takeaways: A reexamination requestor has standing to appeal the PTAB’s reexamination decisions even though the requestor had not been sued for infringement at the time the reexaminations were initiated and decided, if the reexamination requestor …

Federal Circuit Dismisses Third Party Appeal of Reexamination Proceeding for Lack of Standing

Authored by Georg Reitboeck, Michael Turner, and Srikant Cheruvu Digest of Agilent Technologies, Inc. v. Waters Technology Corp., No. 2015-1280 (Fed. Cir. Jan. 29, 2016) (precedential). On appeal from P.T.A.B. in No. 95/001,947. Before Moore, O’Malley, and Taranto. Procedural Posture: Third party Agilent Technologies, Inc. appealed the Board’s denial of …

Federal Circuit Clarifies Applicability of Administrative Procedure Act to Non-Final PTO Action

Authored by Georg C. Reitboeck, David J. Kaplan, Srikant Cheruvu Digest of Automated Merchandising Sys., Inc. v. Lee, No. 2014-1728 (Fed. Cir. Apr. 10, 2015) (precedential). On appeal from E.D. Va. Before Prost, Taranto, and Fogel. Procedural Posture: Patentee Automated Merchandising Systems (“AMS”) appealed from the District Court’s decision that the Administrative …

CAFC Rules on Issues of Claim Construction, Infringement, Evidence, and Reasonably Royalty Determination

  Digest of VirnetX, Inc. v. Apple, Inc., No. 2014-1489 (Fed. Cir. Sept. 16, 2014) (precedential). On appeal from E.D. Tex. Before Prost and Chen. Procedural posture: Appellant accused infringer appealed from a final judgment that the asserted patents were valid and infringed. CAFC affirmed on validity, affirmed-in-part and reversed-in-part on …