Aug 22, 2022Legal
Fresh From the Bench: Latest Federal Circuit Court Case


This week, we provide extensive write-ups about two consequential decisions issued by the United States Court of Appeals for the Federal Circuit concerning two procedural issues under the America Invents Act (“AIA”), both following Supreme Court decisions.  In In re: Palo Alto Networks, Inc., Appeal No. 2022-145 (Fed. Cir. Aug. 16, 2022), we discuss the Federal Circuit’s decision concerning whether a party is entitled to Director Rehearing of a decision by the Patent Trial and Appeal Board (PTAB) to deny institution of inter partes review (IPR) or post grant review petitions.

Our first Case of the Week, however, covers the Federal Circuit’s most recent decision concerning the scope of the estoppel provision found in 35 U.S.C. §  315(e)(2), which concerns limitations on arguments that can be made in district court by petitioners who pursued the IPR path.

Click-To-Call Techs. LP v. Ingenio, Inc., Appeal No. 2022-1016 (Fed. Cir. Aug. 17, 2022)

This appeal is the sister case to the Supreme Court’s decision in Thryv, Inc v. Click-to-Call Techs., LP, 140 S. Ct. 1367 (2020).  That case concerned whether time bar decisions by the PTAB were reviewable by the Federal Circuit.  The appeal here concerns the parallel district court litigation that concerned the same patents, and actually involves the effect of a different Supreme Court case - SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).

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By Nika Aldrich

In re: Palo Alto Networks, Inc., Appeal No. 2022-145 (Fed. Cir. Aug. 16, 2022)

In our second Case of the Week, the Federal Circuit considered whether Patent Trial and Appeal Board litigants are entitled to Director review of decisions denying institution of America Invents Act proceedings.  Petitioner/appellant Palo Alto Networks (PAN) argued that the USPTO Director’s stated policy of refusing to consider such requests for review ran afoul of the Appointments Clause of the United States Constitution, and sought a writ of mandamus compelling the Director to consider its requests for review of Board decisions denying institution on its petitions for inter partes review (IPR) and post grant review (PGR) of patents owned by Centripetal Networks, Inc.  The Court denied mandamus relief, finding that the Appointments Clause requires only that the Director have the authority to review institution decisions, not that the Director actually exercise that authority.

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By Jason A. Wrubleski


Par Pharmaceutical, Inc. v. Eagle Pharmaceuticals, Inc., Appeal No. 2021-2342 (Fed. Cir. Aug. 18, 2022)

In an appeal from a district court decision, the Federal Circuit addressed challenges to the lower court’s holding of non-infringement and denial of declaratory judgment. First, finding no clear error, the Court affirmed the district court’s holding of non-infringement, explaining that the district court properly relied on the specifications. Next, the Court affirmed the district court’s denial of Par’s request for declaratory relief, finding that there was no clear error as the district court properly relied on the specifications and Eagle’s expert testimony. The Court affirmed the district court’s decision.

The opinion can be found here.

By Annie White

Edited by Nika Aldrich and Scott D. Eads, Schwabe, Williamson & Wyatt

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