Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc. (No. 2017-1487, 5/11/18) (O'Malley, Schall, Wallach)
Wallach, J. Reversing PTAB decision of non-obviousness in a post-grant review proceeding and remanding. The Court found that petitioner had standing to pursue the appeal. “Although we do not decide whether [the estoppel effect of the post-grant review] is sufficient independently to establish standing, the estoppel effect in this case further support’s [petitioner’s] claimed injury in fact.” Also, the PTAB abused its discretion by refusing to consider petitioner’s reply evidence. The petitioner’s initial filing included a declaration explaining test results that allegedly invalidate the challenged claims. The patent owner response then challenged the declarant’s qualifications. The petitioner then filed a reply declaration explaining the declarant’s qualifications. The PTAB erred by according no weight to the declarations and finding that the declarant had not been timely qualified as an expert. “To the extent the PTAB was concerned about [patent owner’s] ability to respond to the extensive qualifications set forth in the [second declaration], the PTAB could have permitted patent owner to file a surreply.” Schall, J. dissented regarding standing.