IP UPDATE
Exploring the latest in intellectual property law
IP UPDATE
Exploring the latest in intellectual property law
Patent Trial & Appeal Board
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Collateral estoppel remains inapplicable to unchallenged IPR claims

by | Aug 14, 2025 |

Returning to its decision in Kroy IP, the US Court of Appeals for the Federal Circuit denied a petition for panel rehearing and rehearing en banc, leaving undisturbed its prior opinion that collateral estoppel does not apply to the assertion of claims from a patent, even when other patentably indistinct claims from that patent have been found unpatentable in inter partes review (IPR) proceedings before the Patent Trial & Appeal Board. Kroy IP Holdings, LLC v. Groupon, Inc., Case No. 23-1359 (Fed. Cir. Aug. 1, 2025) (per curiam) (Moore, J., concurring) (Dyk, J., dissenting).

Kroy sued Groupon for patent infringement, and Groupon subsequently filed two IPR petitions. The Board ultimately found 21 of the asserted claims unpatentable. Kroy amended its complaint to remove those 21 claims and proceed only with claims that were not at issue in the IPR proceedings. Groupon moved to dismiss the complaint, arguing that Kroy was collaterally estopped from asserting the remaining claims because of the Board’s prior IPR rulings finding other patentably indistinct claims unpatentable. The district court agreed with Groupon, finding that the remaining asserted claims were not materially different from the unpatentable claims in terms of validity and granted the motion to dismiss with prejudice. Kroy appealed.

The Federal Circuit held that a Board determination finding certain patent claims unpatentable under the preponderance of the evidence standard did not collaterally estop Kroy from asserting other unreviewed claims of the same patent in district court litigation against Groupon. Groupon subsequently petitioned for panel rehearing and rehearing en banc, both of which the Federal Circuit denied per curiam.

Chief Judge Moore, joined by Judge Stoll, concurred in the decision. In her concurring opinion, Judge Moore explained that collateral estoppel does not apply where differing standards of proof exist (namely, the preponderance of evidence standard used by the Board versus the clear and convincing evidence standard applied in district courts) because this difference can materially affect a patent’s validity determination. She emphasized that collateral estoppel should apply consistently in patent cases and cautioned against deviating from the established collateral estoppel standards. Judge Moore also noted that policy concerns are mitigated by the ability to file a second IPR petition, because the Board is likely to grant review where a petition raises a substantially similar question of invalidity.

Judge Dyk, joined by Judge Hughes, dissented from the decision. The dissent advocated departing from the traditional burden-of-proof rule applicable in the collateral estoppel context to avoid duplicative litigation regarding patent validity. The dissent argued that the majority opinion conflicted with the Federal Circuit’s 2018 opinion in XY, LLC v. Trans Ova Genetics, which held that collateral estoppel extends between Board decisions and district court proceedings in pending or co-pending actions. According to the dissent, the majority’s approach permits repeated litigation of the validity of patent claims previously found unpatentable in IPR proceedings affirmed on appeal. The dissent expressed concern that applying collateral estoppel in this manner would enable patentees to evade the preclusive effect of adverse IPR [...]

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Game over: Prior interference doesn’t preclude IPR proceeding

by | Jul 31, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board unpatentability determination during an inter partes review (IPR) proceeding, concluding that the Board’s decision to not apply interference estoppel fell within the general rule of unreviewability. IGT v. Zynga Inc., Case No. 23-2262 (Fed. Cir. July 22, 2025) (Prost, Reyna, Taranto, JJ.)

IGT owns an expired patent that addresses the need for gaming machines, such as slot machines and video poker machines, to securely communicate over a public network. The patent was issued in January 2007 from an application filed in April 2002 and published in August 2002. Zynga filed a patent application on August 21, 2003, that included claims copied from IGT’s published application.

In March 2010, the US Patent & Trademark Office (PTO) Board of Patent Appeals & Interferences (predecessor of the Patent Trial & Appeal Board, which Congress created in 2011) declared an interference proceeding between Zynga’s application and IGT’s patent. During the interference proceeding, Zynga argued IGT’s patent was obvious over three pieces of prior art. IGT argued that Zynga lacked standing because the claims in Zynga’s application were unpatentable for a lack of written description. The Board granted IGT’s motion for judgment on the “threshold issue” that Zynga’s application lacked adequate written description support, terminated the interference with a judgment against Zynga, and dismissed the motion that the claims were unpatentable as moot.

In April 2021, IGT sued Zynga alleging infringement of six patents, including the patent that was subject to the interference proceeding. Zynga filed an IPR petition for that patent, asserting obviousness based on new prior art. In its preliminary response, IGT argued that the Board should deny institution based on interference estoppel under 37 C.F.R. § 41.127(a)(1) because Zynga could have raised the newly asserted art in the interference proceeding. The Board rejected IGT’s interference estoppel arguments because:

  • The interference was terminated based on the “threshold issue” of lack of written description and therefore the Board did not analyze or decide any issues of unpatentability.
  • It would be unfair to estop Zynga, and to the extent that estoppel applied, the Board waived its application under 37 C.F.R. § 42.5(b).

IGT requested rehearing and precedential opinion panel review, arguing that interference estoppel barred institution. The PTO Director affirmed the Board’s decision, stating that interference estoppel under § 41.127 did not apply because IPR proceedings are governed by 37 C.F.R. pt. 42, which does not incorporate Part 41 or its estoppel provisions. The PTO Director also noted that the Board’s termination was based on a threshold issue. The Board proceeded with the review and ultimately concluded that all the challenged claims were unpatentable as obvious. IGT appealed.

IGT argued that the Board and PTO Director erred in ruling that interference estoppel did not bar the petition and challenged the Board’s holding that the claims would have been obvious over the newly asserted prior art.

The Federal Circuit concluded that the interference estoppel determination fell within the [...]

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Applicant-admitted prior art may inform but can’t be basis for IPR challenges

by | Jul 24, 2025 |

The US Court of Appeals for the Federal Circuit clarified that while applicant-admitted prior art (AAPA) may be cited as evidence of general background knowledge in inter partes review (IPR) proceedings, it cannot serve as the basis for an IPR ground. The Court also confirmed that the petitioner had Article III standing to cross-appeal based on concrete plans for future activity. Shockwave Medical, Inc. v. Cardiovascular Systems, Inc., Case No. 23-1864 (Fed. Cir. July 14, 2025) (Lourie, Dyk, Cunningham, JJ.)

Shockwave Medical owns a patent directed to treating atherosclerosis using a balloon catheter in combination with shockwaves generated by electrodes and a pulse generator. The patent specification acknowledged that “over-the-wire angioplasty balloon catheters” were well known in the art. Cardiovascular Systems, Inc. (CSI) filed an IPR petition asserting that it would have been obvious to modify a European patent application with the angioplasty balloon catheter disclosed in the AAPA.

The Patent Trial & Appeal Board found all but one claim unpatentable as obvious, relying on the AAPA solely as evidence of background knowledge. Both parties appealed.

Shockwave challenged the Board’s reliance on the AAPA, arguing that 35 U.S.C. § 311(b) prohibits using AAPA as a basis for an IPR petition. The Federal Circuit disagreed, reaffirming its prior decisions in Qualcomm I and Qualcomm II. In Qualcomm I, the Court explained that AAPA cannot be the basis of a ground in an IPR petition but can be evidence of background knowledge. In Qualcomm II, the Court found that the Board erred in determining that the use of AAPA was proper when the petitioner expressly included AAPA in one of its grounds. Relying on these decisions, the Court explained that while AAPA cannot form the basis of a ground in an IPR petition, it may be used to demonstrate the general knowledge of a person of ordinary skill in the art and to supply missing claim limitations.

Shockwave pointed to a table in the Board’s final written decision listing AAPA under “reference(s)/basis” as evidence that the Board improperly relied on AAPA as a ground. The Federal Circuit rejected this argument, distinguishing Qualcomm II and emphasizing that the petitioner, not the Board, defines the grounds for review. Because CSI did not rely on AAPA as a ground, its use was permissible.

CSI cross-appealed the Board’s finding that one claim was not obvious. Shockwave challenged CSI’s standing, but the Federal Circuit found that CSI had Article III standing because it had concrete plans to begin clinical trials and because of Shockwave’s public statements suggesting it would assert the patent. The Court concluded that these facts created a substantial risk of future infringement.

On the merits, the Federal Circuit agreed with CSI that the Board erred by failing to consider the prior art as a whole. The Court reiterated that the obviousness inquiry requires evaluating the combined teachings of the prior art, not individual references in isolation. Finding no evidence to support the Board’s conclusion, the Court reversed the Board’s decision as to the remaining [...]

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Prosecution history primacy: “Consisting essentially of” means what applicant said it meant

by | Jul 10, 2025 | ,

In a decision that underscores the primacy of prosecution history to determine claim scope, the US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s interpretation of the transitional phrase “consisting essentially of,” holding that the patentee’s actions during prosecution narrowed the claims beyond the conventional construction. Eye Therapies, LLC v. Slayback Pharma, LLC, Case No. 23-2173 (Fed. Cir. June 30, 2025) (Scarsi, Dist. J., by designation; Taranto, Stoll, JJ.)

The case involved a method for reducing eye redness using low concentrations of brimonidine, a vasoconstrictive compound. Eye Therapies owns a patent that claims methods of administering brimonidine “consisting essentially of” the active ingredient. During inter partes review (IPR), the Board applied the typical construction of that transitional phrase, allowing for the presence of other active agents as long as they did not materially affect the invention’s basic and novel properties. Based on that reading, the Board found the claims obvious over prior art references that disclosed brimonidine in combination with other drugs. On appeal, Eye Therapies argued that the Board’s construction was too broad and inconsistent with the prosecution history.

The Federal Circuit agreed. Although “consisting essentially of” is generally understood to permit unlisted ingredients that don’t materially affect the invention, the Court emphasized that this meaning can be overridden by the intrinsic record. In this case, the applicant amended the claims to avoid prior art and repeatedly argued that the invention involved only brimonidine, with no other active agents. During the original prosecution, the examiner allowed the claims on that basis. The Court found these statements to be definitional, particularly in light of the applicant’s use of “i.e.” to equate the claim language with a brimonidine-only method. Given the clarity and consistency of the applicant’s position, the Court concluded that the prosecution history required a narrower reading than the one the Board used based on the phrase’s conventional meaning.

The Federal Circuit acknowledged that the patent specification disclosed embodiments containing additional active agents. That alone, however, did not justify a broader construction. The narrowing amendment came after the specification was drafted, and the Court reiterated that not every embodiment must fall within the scope of the claims, particularly when the claims have been narrowed during prosecution. The Court also noted that other embodiments in the specification were fully consistent with the narrower interpretation. Taken together, these factors reinforced the conclusion that the applicant’s prosecution statements – not the broader illustrative disclosures – defined the proper scope of the claims.

The Federal Circuit distinguished its 2009 decision in Ecolab v. FMC, where it declined to apply prosecution history disclaimer despite similar language. In Ecolab, the patentee initially stated that peracetic acid was the “sole antimicrobial agent,” but the examiner clarified that “consisting essentially of” did not mean “solely.” The applicant never repeated the statement and secured allowance on other grounds. The specification in Ecolab also described compositions that included other known antimicrobial agents, which supported the broader interpretation. In contrast, the applicant here amended the claims, consistently [...]

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Seeing double? Director instructs Board to resolve claim construction pre-institution

by | Jul 2, 2025 |

The acting director of the US Patent & Trademark Office (PTO) vacated and remanded a Patent Trial & Appeal Board decision to institute two inter partes review (IPR) petitions that challenged the same claims. The acting director determined that the two petitions primarily differed with respect to claim construction. In a decision designated as “informative,” he authorized the Board to resolve claim construction pre-institution in view of the Consolidated Trial Practice Guide’s (CTPG) direction that “one petition should be sufficient to challenge the claims of a patent in most situations.” CrowdStrike, Inc. v. GoSecure, Inc., IPR2025-00068; -00070 (PTAB June 25, 2025) (Stewart, Act. Dir.) The PTO designates a decision as informative when it provides “norms on recurring issues, guidance on issues of first impression to the Board, guidance on Board rules and practices, and guidance on issues that may develop through analysis of recurring issues in many cases.”

CrowdStrike submitted two IPR petitions that challenged the same claims of GoSecure’s patent. The Board instituted both IPRs. GoSecure requested director review, asserting that instituting both petitions was an abuse of the Board’s discretion. On review, the acting director determined that the Board abused its discretion in view of the CTPG’s direction.

The acting director concluded that the two petitions did not reflect an exception to the CTPG’s direction. He determined that CrowdStrike’s petitions were primarily distinguished by the constructions applied to a claim term. The acting director explained that the Board should have construed the term at issue prior to granting institution, concluding that the Board’s institution decision amounted to improper expansion of CrowdStrike’s permitted word count and placed a substantial and unnecessary burden on the Board and GoSecure that could raise fairness, timing, and efficiency concerns. The acting director vacated and remanded the Board’s institution decision.

The acting director also instructed the Board that the patent owner should be allowed to “submit whatever arguments are necessary for the panel to make a claim construction determination” even if the patent owner has not addressed the issue.



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CRISPR Clarity: Enablement Is Analyzed Differently Under §§ 102 and 112

by | Jun 18, 2025 | ,

In a decision underscoring the distinct standards governing enablement under §§ 102 and 112, the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that a prior art reference was enabling for purposes of anticipation, even in the absence of working examples. Agilent Technologies, Inc. v. Synthego Corp., Case Nos. 23-2186; -2187 (Fed. Cir. June 11, 2025) (Prost, Linn, Reyna, JJ.)

The case centers on CRISPR, the gene-editing technology that has reshaped the frontiers of biology and biotechnology. Agilent owns patents that claim chemically modified guide RNAs (gRNAs) designed to improve stability and performance in CRISPR-Cas systems. Synthego filed an inter partes review (IPR) petition asserting that the patents were unpatentable. The Board found all claims unpatentable, relying on a 2014 publication by Pioneer Hi-Bred that disclosed similar modified gRNAs. Agilent appealed.

Agilent challenged the Board’s finding that the prior art was enabling, arguing that Pioneer Hi-Bred merely proposed a research plan without demonstrating which specific modifications would yield functional gRNAs. Agilent emphasized that the reference lacked working examples and disclosed numerous nonfunctional sequences, contending that a skilled artisan would not have been able to identify a successful embodiment without undue experimentation. It also argued that the nascent state of CRISPR technology in 2014 compounded the unpredictability, making the reference non-enabling. In support, Agilent relied heavily on the Supreme Court’s 2023 decision in Amgen v. Sanofi, where the Supreme Court invalidated a broad genus claim for failing to enable its full scope.

The Federal Circuit was not persuaded. The Court drew a clear distinction between enablement under § 112 (which governs patent validity) and enablement under § 102 (which governs anticipation). The Court explained that the bar is lower for the latter, and that a prior art reference need only enable a single embodiment within the scope of the claim. While Amgen involved § 112, the Court emphasized that this case turned on § 102, where the standard is less demanding.

The Federal Circuit grounded this distinction in both the statutory text and the underlying purpose of the respective provisions. Statutorily, § 112 requires that a patent specification enable a person of ordinary skill in the art to “make and use” the invention. Section 102, by contrast, contains no such requirement. This divergence reflects a difference in purpose: § 112 ensures that the patentee does not claim more than they have taught, thereby preventing overbroad monopolies. As the Supreme Court explained in Amgen, “[t]he more a party claims, the broader the monopoly it demands, the more it must enable.” But the Federal Circuit emphasized that the Supreme Court’s reasoning in Amgen was rooted in the patentee’s burden to support the full scope of a genus claim under § 112. That concern, the Court explained, does not apply in the § 102 context, where the question is not how much the prior art claims, but whether it teaches enough for a skilled artisan to practice at least one embodiment without undue [...]

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Speculation of Harm Isn’t Standing: Not Every Adverse Board Decision Is Ticket to Appeal

by | Jun 12, 2025 | ,

After assessing whether a patent owner had standing to appeal the Patent Trial & Appeal Board’s final written decision, the US Court of Appeals for the Federal Circuit found no injury in fact to support Article III jurisdiction and dismissed the appeal. Dolby Labs. Licensing Corp. v. Unified Patents, LLC, Case No. 23-2110 (Fed. Cir. June 5, 2025) (Moore, Clevenger, Chen, JJ.)

Dolby owns a patent covering a prediction method involving an in-loop filter. Unified Patents, claiming to be the sole real party in interest (RPI), filed an inter partes review (IPR) challenging several patent claims as anticipated and obvious. Dolby contested the challenge, identifying nine additional entities it argued should have been named as RPIs (alleged RPIs). The Board declined to rule on Dolby’s inclusion, however, and proceeded with Unified as the sole RPI.

In its final written decision, the Board found that Unified failed to establish the unpatentability of any challenged claims. Consistent with the US Patent & Trademark Office’s practice, it also declined to address the RPI dispute, finding it immaterial – there was no evidence the alleged RPIs were estopped from filing their own IPRs later or that Unified had advantageously or strategically omitted them. Dolby appealed.

The Federal Circuit explained that when it reviews final Board decisions, its jurisdiction is constrained by Article III’s “Cases” and “Controversies” requirement. To establish standing, an appellant must demonstrate:

  • A concrete and particularized injury in fact that is actual or imminent, not speculative.
  • A causal link between the injury and the appellee’s challenged conduct.
  • A likelihood that the injury will be redressed by a favorable ruling.

Dolby asserted standing to appeal the Board’s refusal to address the RPI dispute based on three grounds:

Its statutory right to appeal as a “dissatisfied” party under 35 U.S.C. § 319.

  • The denial of its right to information under 35 U.S.C. § 312(a)(2).
  • An injury in fact arising from potential breaches of license agreements by the alleged RPIs and possible conflicts of interest involving the Board’s administrative patent judges.

The Federal Circuit rejected Dolby’s argument that it had a right to appeal based solely on dissatisfaction with the Board’s decision. The Court explained that the right to appeal a Board decision under the America Invents Act (AIA) requires Article III standing. The Court also dismissed Dolby’s argument for a statutory right to RPI information, finding that the AIA does not create an informational right. The Court explained that unlike statutes such as the Federal Advisory Committee Act or the Federal Election Campaign Act, which expressly grant public access to information, the AIA lacks a public access provision and explicitly limits judicial review of IPR-related determinations, including RPI disclosures.

As to Dolby’s right to appeal the Board decision, the Federal Circuit found Dolby’s argument too speculative to establish standing, citing four key deficiencies:

Dolby failed to assert that any alleged RPIs were party to license agreements, undermining its claim of potential breach.



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X-Ray Vision: Court Sees Through Implicit Claim Construction

by | Jun 5, 2025 |

The US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s final determination that challenged patent claims were not unpatentable, finding that the Board’s decision relied on an erroneous implicit claim construction. Sigray, Inc. v. Carl Zeiss X-Ray Microscopy, Inc., Case No. 23-2211 (Fed. Cir. May 23, 2025) (Dyk, Prost, JJ.; Goldberg, Chief Distr. J., sitting by designation).

Zeiss owns a patent related to X-ray imaging systems that incorporate projection magnification. Sigray filed a petition requesting inter partes review (IPR) of all claims in the patent. After institution, the Board issued its final written decision, which declined to hold any of the challenged claims unpatentable. Sigray appealed.

On appeal, Sigray argued that the claims were unpatentable based on a single prior art reference, Jorgensen. The Jorgensen reference “describes a system that uses an X-ray source to generate an X-ray beam, which then passes through a sample before being received by a detector.” Sigray argued that Jorgensen anticipated or rendered the challenged claims obvious. The parties agreed that Jorgensen explicitly disclosed all the limitations of the independent claim except for one reading “a magnification of the projection X ray stage . . . between 1 and 10 times.”

The parties’ arguments centered on whether the magnification limitation was inherently disclosed in Jorgensen. The Board concluded that “viewing the record as a whole, . . . [Sigray] has not shown persuasively that Jorgensen inherently discloses projection magnification within the claimed range. Sigray argued, and the Federal Circuit agreed, that the Board’s findings incorrectly relied on a flawed understanding of the claimed range. In Sigray’s view, “the Board implicitly and incorrectly construed the limitation ‘between 1 and 10’ to exclude unspecified, small divergence resulting in projection magnifications only slightly greater than 1.” This was illustrated by the Board’s determination that Sigray “failed to show that the . . . X-ray beam in Jorgensen diverges enough to result in projection magnification between 1 and 10 times.”

The Federal Circuit found that the Board’s use of the term “enough” indicated that the evidence it relied on supported a finding of some divergence in the X-ray beams. Because the beams were not completely parallel, the Court reasoned that some magnification necessarily resulted, and that even a miniscule amount (as disclosed in the prior art) fell within the claimed magnification range of 1 to 10. Since the Board made only one evidence-supported finding relevant to anticipation, the Court reversed on the independent claim and two dependent claims without remand. However, the Court remanded the case to the Board to determine whether the three remaining challenged claims, which recited further material limitations, would have been obvious.



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Clickbait: Actual Scope (Not Intended Scope) Determines Broadening Reissue Analysis

by | May 15, 2025 |

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s rejection of a proposed reissue claim for being broader than the original claim, denying the inventors’ argument that the analysis should focus on the intended scope of the original claim rather than the actual scope. In re Kostić, Case No. 23-1437 (Fed. Cir. May 6, 2025) (Stoll, Clevenger, Cunningham, JJ.)

Miodrag Kostić and Guy Vandevelde are the owners and listed inventors of a patent directed to “method[s] implemented on an online network connecting websites to computers of respective users for buying and selling of click-through traffic.” Click-through links are typically seen on an internet search engine or other website inviting the user to visit another page, often to direct sales. Typical prior art transactions would require an advertiser to pay the search engine (or other seller) an upfront fee in addition to a fee per click, not knowing in advance what volume or responsiveness the link will generate. The patent at issue discloses a method where the advertiser and seller first conduct a trial of click-through traffic to get more information before the bidding and sale process. The specification also discloses a “direct sale process” permitting a seller to bypass the trial and instead post its website parameters and price/click requirement so advertisers can start the sale process immediately.

The independent claim recites a “method of implementing on an online network connecting websites to computers of respective users for buying and selling of click-through traffic from a first exchange partner’s web site.” The claim requires “conducting a pre-bidding trial of click-through traffic” and “conducting a bidding process after the trial period is concluded.” A dependent claim further requires “wherein the intermediary web site enables interested exchange partners to conduct a direct exchange of click-through traffic without a trial process.”

The patent was issued in 2013, and the inventors filed for reissue in 2019. The reissue application cited an error, stating that the “[d]ependent claim [] fails to include limitations of [the independent] claim,” where the dependent claim “expressly excludes the trial bidding process referred to in the method of [the independent] claim,” which would render it invalid under 35 U.S.C. § 112. To fix the error, the inventors attempted to rewrite the dependent claim as an independent claim that omitted a trial process.

The examiner issued a nonfinal Reissue Office Action rejecting the reissue application as a broadening reissue outside of the statutory two-year period. The examiner found that the original dependent claim is interpreted to require all steps of the independent claim, including the trial period, and further to require a direct sale without its own trial, beyond the trial claimed in the independent claim. The inventors attempted to rewrite the dependent claim as the method of independent claim with “and/or” language regarding the trial process versus direct to sale process. The amendment was rejected for the same reasons. The Board affirmed on appeal.

Whether amendments made during reissue enlarge the scope of [...]

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No Article III Appellate Standing Under the Sun

by | May 15, 2025 |

The US Court of Appeals for the Federal Circuit dismissed Incyte’s appeal of a Patent Trial & Appeal Board decision, holding that a disappointed validity challenger lacked appellate standing to challenge the Board’s final written decision. Incyte Corp. v. Sun Pharmaceuticals Industries, Inc., Case No. 23-1300 (Fed. Cir. May 7, 2025) (Moore, C.J.; Hughes, Cunningham, JJ.) (Hughes, J., concurring).

After the Board upheld the validity of challenged claims of a patent owned by Sun Pharmaceuticals in a post-grant review proceeding (PGR), Incyte appealed and sought a determination that the claims were unpatentable. Sun Pharmaceuticals challenged whether Incyte had Article III standing to support an appeal to the Federal Circuit based on a lack of injury-in-fact.

The Federal Circuit focused on its jurisdiction to hear the appeal as a threshold issue and whether Incyte, as the party seeking review, met its burden of establishing Article III standing at the time it filed its appeal.

As context, the Federal Circuit noted that standing requires a concrete, actual, or imminent injury that is traceable to the challenged conduct and likely to be redressed by the court’s decision. Incyte asserted it had standing to appeal based on potential infringement liability and under the competitor standing doctrine.

Addressing potential infringement liability, the Federal Circuit noted Incyte’s reliance on a supplemental declaration from an in-house business development leader submitted during briefing. Noting that Incyte’s Article III standing was “not self-evident,” the Court ruled that Incyte should have presented evidence prior to its reply brief and declined to consider the supplemental evidence. Incyte was on notice that its appellate standing was challenged, and that evidence of its standing should have been submitted at the earliest possible opportunity. Finding no good cause for the delay, the Court declined to exercise its discretion to consider Incyte’s supplemental evidence and, based only on earlier submitted evidence, found that Incyte failed to establish that it had “concrete plans for future activity” that would create a “substantial risk of future infringement.”

In its discussion of the competitor standing doctrine, which allows competitors to challenge patents that could harm their competitive position, the Federal Circuit found the doctrine inapplicable because Incyte failed to show it would suffer economic harm from the Board’s ruling on patent validity. Rather, the Board’s ruling upholding specific patent claims “does not, by the operation of ordinary economic forces, naturally harm a [challenger] just because it is a competitor in the same market as the beneficiary of the government action (the patentee).” As the Court explained, “it is not enough to show a benefit to a competitor to establish injury in fact; the party seeking to establish standing must show a concrete injury to itself.”

The Federal Circuit held that because Incyte had not shown it was currently engaged in or had non-speculative plans to engage in conduct covered by the challenged patent, it was unable to establish injury-in-fact.

In his concurrence, Judge Hughes stated that while Incyte lacked Article III standing, he believed that Federal Circuit precedent was [...]

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