News & Analysis as of

Appeals Inter Partes Review (IPR) Proceeding Article III

Alston & Bird

Patent Case Summaries | Week Ending May 9, 2025

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Ingenico Inc., et al. v. IOENGINE, LLC, No. 2023-1367 (Fed. Cir. (D. Del.) May 7, 2025). Opinion by Hughes, joined by Dyk and Prost. Ingenico filed a declaratory judgment action against IOENGINE relating to two patents owned...more

Jones Day

PTAB Retains Jurisdiction Of Expired Patents

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The Federal Circuit rejected a recent argument that the PTAB does not have inter partes review (IPR) jurisdiction over expired patents. Because even expired patents involve the grant of public rights, the court explained that...more

Erise IP

Eye on IPRs, September 2024: PTAB Issues Fintiv Denial on Wireless Carriers’ IPR, Federal Circuit Denies Standing for IPR Appeal

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Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: PTAB Issues Fintiv Denial, Leaving Wireless Carrier Patent to E.D. Texas - ...more

Jones Day

Lack of Injury In Fact Scuttles Appeal

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The Federal Circuit dismissed Platinum Optics Technology Inc.’s (PTOT) appeal from an IPR decision, finding the challenged claims of Viavi’s U.S. Patent No. 9,354,369 not unpatentable, because PTOT failed to establish an...more

Akin Gump Strauss Hauer & Feld LLP

Without Concrete Evidence of Potential Infringement Liability, Petitioner Lacked Standing to Challenge PTAB’s Final Written...

The Federal Circuit dismissed an appeal from an inter partes review (“IPR”) final written decision for lack of standing where it found the appellant failed to provide evidence sufficient to show it suffered an injury in fact....more

McDermott Will & Emery

Blurred Vision: Appeal Dismissed for Lack of Standing

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The US Court of Appeals for the Federal Circuit dismissed a patent challenger’s appeal in an inter partes review (IPR) because the challenger could not meet the injury-in-fact requirement for Article III standing. Platinum...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2024 #3

Allergan USA, Inc. v. MSN Laboratories Private Ltd., Appeal No. 2024-1061 (Fed. Cir. August 13, 2024) In this week’s Case of the Week, the Federal Circuit clarifies rules relating to when an applicant’s patent can be...more

McDermott Will & Emery

See Here: No Standing Based on Vague Future Plans or Adverse Priority Findings

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The US Court of Appeals for the Federal Circuit dismissed an appeal from a final written decision in an inter partes review (IPR) proceeding, finding that the petitioner lacked standing because it suffered no injury in fact....more

Fitch, Even, Tabin & Flannery LLP

No Standing to Appeal IPR Decision on Claim Canceled in Reexamination

On August 26, in Best Medical International, Inc. v. Elekta Inc., the Federal Circuit held that a patent owner lacked standing to appeal an inter partes review (IPR) decision as to a claim the patent owner had previously...more

McDermott Will & Emery

Check Your Expert Skills and Standing

The US Court of Appeals for the Federal Circuit dismissed a portion of an appeal from the Patent Trial & Appeal Board (Board) regarding obviousness because the patentee did not have standing to challenge the decision...more

McDermott Will & Emery

Shots Fired: Challenger Must Have Requisite Standing Before Appealing Unfavorable IPR Decisions

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The US Court of Appeals for the Federal Circuit found, in the context of an appeal from an inter partes review (IPR) decision, that the appellant had Article III standing and affirmed a Patent Trial & Appeal Board (Board)...more

Knobbe Martens

No Standing in IPR Appeal for Sublicensee’s Speculative Royalty-Based Injuries

Knobbe Martens on

MODERNATX, INC. v. ARBUTUS BIOPHARMA CORPORATION - Before Lourie, O’Malley, and Stoll.  Appeal from the Patent Trial and Appeal Board. Summary: Sublicensee’s theory of royalty-based injury was too speculative to...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Appealing IPR Decisions – Art. III Standing in the Context of Litigation Settlements and Licenses

The Federal Circuit has provided additional guidance about an appellant’s standing to appeal IPR decisions after settling the related litigations and entering into patent license agreements. In its second decision between...more

McDermott Will & Emery

No More Bites at the Apple: Imminent and Non-Speculative Standing Still Required

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The US Court of Appeals for the Federal Circuit reiterated that a patent challenger did not have Article III appellate standing to obtain review of a final Patent Trial & Appeal Board (PTAB) ruling because the underlying...more

Knobbe Martens

No Standing for Second Bite at the Apple

Knobbe Martens on

APPLE, INC. v. QUALCOMM, INC. Before Newman, Prost, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: Apple lacked standing to appeal an IPR decision upholding patents that Apple licenses from...more

McDermott Will & Emery

Old Dawg, Still the Same Tricks: Bankruptcy Asset Successor is Also Inter Partes Re-Exam Successor

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit issued a modified opinion correcting certain facts relating to a decision in which it originally concluded that because a plaintiff was a successor in bankruptcy, it was a...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2021 #2

ABS Global, Inc. v. Cytonome/ST, LLC, Appeal No. 2019-2051 (Fed. Cir. Jan. 6, 2021) For the second time in two weeks, our Case of the Week concerns issues relating to Article III justiciability of an appeal from an IPR...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (January 4-8): Mooting your opponent’s appeal

Now that the new year has started, we’re seeing an uptick in precedential opinions.  This week we decided to turn back to patent appeals, taking a look at IPRs and Article III—always a fun topic.  Below we provide our usual...more

McDermott Will & Emery

“Non-Limiting” Prior Art Claims Support Obviousness After Standing Is Established

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Addressing the issue of Article III standing and obviousness in an appeal of an inter partes review (IPR) decision, the US Court of Appeals for the Federal Circuit found that the petitioner had standing to appeal because past...more

McDonnell Boehnen Hulbert & Berghoff LLP

Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corp. (Fed. Cir. 2020)

Last week, the Federal Circuit had the occasion to address anew the requirements for standing to appeal an adverse decision of the Patent Trial and Appeal Board in an inter partes review proceeding under Article III of the...more

McDermott Will & Emery

Article III Standing Required to Appeal Final Decisions by the PTAB

Addressing the issue of Article III standing in an appeal of an inter partes review (IPR) decision, the US Court of Appeals for the Federal Circuit dismissed the appeal because the party appealing failed to establish an...more

Akin Gump Strauss Hauer & Feld LLP

Generic Drug Developer Lacks Standing to Appeal Adverse IPR Ruling

The Federal Circuit recently held a generic drug developer lacked Article III standing to appeal an adverse patentability determination by the Patent Trial and Appeal Board (PTAB) because it failed to prove that it suffered...more

Goodwin

Federal Circuit Finds Pfizer’s RUXIENCE Plans Insufficient to Establish Standing to Appeal IPR

Goodwin on

On April 27, 2020, the Federal Circuit issued a non-precedential opinion ruling that Pfizer failed to establish Article III standing in a pair of IPR appeals.  At the PTAB, Pfizer had challenged the validity of Chugai’s...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 PTAB Year in Review: Analysis & Trends: Challenges to the Constitutionality of the Patent Trial and Appeal Board

Since the Patent Trial and Appeal Board’s inception, it has faced questions regarding its constitutionality. This past year was no different. In 2019, aggrieved patent owners raised numerous constitutional challenges...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions: AVX Corp. v. Presidio Components, Inc., 923 F.3d 1357...

AVX Corporation, a company that manufactures and sells a variety of electronic components including capacitors, petitioned for inter partes review (IPR) of Presidio Components, Inc.’s patent directed to single-layer ceramic...more

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