IPR Institution Is Not Permanent, and Is Nonappealable

Biodelivery Sciences Int’l, Inc. v. Aquestive Therapeutics, Appeal Nos. 2019-1643, -1644, -1645 (Fed. Cir. August 29, 2019)

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John Isacson

On motion, the Federal Circuit dismissed the second appeals in three IPRs pertaining to oral films used for the delivery of active components.  The PTAB initially instituted the three IPRs, but not on all the grounds contained in the petitions.  In total, there were seventeen grounds in the petitions, and the PTAB instituted on only three.

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A Party Who Lacks Standing Can Still Trigger the Section 315(b) Time Bar

GoPro, Inc. v. 360Heros, Inc., IPR2018-01754 (Precedential Opinion Panel, August 23, 2019)

By John Isacson

Section 315(b) of Title 35 prohibits institution of an IPR where the petition is filed more than one year after service of a complaint alleging patent infringement.

In GoPro v. 360Heros, the Precedential Opinion Panel (POP) considered a situation where GoPro petitioned for an IPR more than one year after 360Heros filed a counterclaim alleging patent infringement.  Before the district court, GoPro successfully challenged 360Heros’ standing to sue on the basis that 360Heros had not been formally assigned title to the asserted patent by the inventor at the time of filing its counterclaim.  Subsequently, 360Heros did receive an assignment.

GoPro filed its petition more than one year after 360Heros’ counterclaim was served.  360Heros sought to have the IPR barred for failure to comply with 35 USC 315(b), which states: Continue reading “A Party Who Lacks Standing Can Still Trigger the Section 315(b) Time Bar”

Federal Circuit Vacates a Board Decision for Failure to Construe a Term as a Means Plus Function Limitation

MTD Products Inc. v. Iancu, Appeal No. 2017-2292 (Fed. Cir. August 12, 2019)

By John Isacson

MTD had a patent for steering and driving systems for zero turn radius vehicles, such as lawn mowers.  The patent was challenged in IPR, where the Board had to construe the claim term “mechanical control assembly … configured to” perform a function.  The Board construed the term as not being governed by 35 U.S.C. §112, ¶6, and held the claims to be obvious.

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