In three recent cases decided by the Federal Circuit Court of Appeals, jurisdictional issues have limited the options available to patent litigants. The general effect of the decisions has been to restrict the ability to appeal and, in the case of appeals of proceedings before the Patent Trial and Appeals Board (PTAB), to direct the appellant to the Federal Circuit, eliminating an intermediate level of review by local district courts.
1. Intellectual Ventures II LLC v. JP Morgan Chase Co. began when IV sued JPMC for infringement of five patents. JPMC moved to have the district court stay further proceedings until it filed petitions for covered business method (“CBM”) review with the PTAB. (CBM review is a type of post-grant review that allows a company accused of infringing a business method patent related to the administration of a financial product or service to challenge the validity of the patent.) Before the district court ruled on its motion for a stay, JPMC filed its CBM review petitions with the PTAB. The district court denied JPMC’s motion before the PTAB acted on the CBM review petitions. JPMC then asked the Federal Circuit to review the denial.
The America Invents Act (“AIA”) gave the Federal Circuit jurisdiction to hear appeals of this nature when the PTAB has commenced proceedings. In May 2015 the Federal Circuit ruled, however, that filing a petition for a CBM review did not commence a PTAB proceeding for purposes of the AIA. Since at the time the district court denied the motion the PTAB had not acted on the JPMC petitions, proceedings had not commenced and thus the Federal Circuit had no jurisdiction to hear the appeal.
As a result of this case, a business accused of infringing a business method patent and that seeks CBM review will have to wait until the PTAB decides to initiate a proceeding if it wishes to have a right to appeal a district court’s denial of a motion to stay.
2. Biogen Idec MA Inc. v. Japanese Foundation for Cancer has history dating back to the early 1980’s with a series of patent interference disputes between Walter Fiers (who assigned his patent to Biogen) and Haruo Sugano (who assigned his to JFC) relating to claims to certain DNA sequences. Biogen filed the most recent suit in federal court in Massachusetts in December 2013 to set aside a PTAB decision against Fiers in an interference that was declared earlier that year. (An interference is a pre-AIA proceeding to determine who was the first to invent of two or more competing patent applicants.) The district court concluded it no longer had jurisdiction to hear the appeal from the PTAB after the enactment of the AIA, and transferred the case to the Federal Circuit. (More)
1. Intellectual Ventures II LLC v. JP Morgan Chase Co. began when IV sued JPMC for infringement of five patents. JPMC moved to have the district court stay further proceedings until it filed petitions for covered business method (“CBM”) review with the PTAB. (CBM review is a type of post-grant review that allows a company accused of infringing a business method patent related to the administration of a financial product or service to challenge the validity of the patent.) Before the district court ruled on its motion for a stay, JPMC filed its CBM review petitions with the PTAB. The district court denied JPMC’s motion before the PTAB acted on the CBM review petitions. JPMC then asked the Federal Circuit to review the denial.
The America Invents Act (“AIA”) gave the Federal Circuit jurisdiction to hear appeals of this nature when the PTAB has commenced proceedings. In May 2015 the Federal Circuit ruled, however, that filing a petition for a CBM review did not commence a PTAB proceeding for purposes of the AIA. Since at the time the district court denied the motion the PTAB had not acted on the JPMC petitions, proceedings had not commenced and thus the Federal Circuit had no jurisdiction to hear the appeal.
As a result of this case, a business accused of infringing a business method patent and that seeks CBM review will have to wait until the PTAB decides to initiate a proceeding if it wishes to have a right to appeal a district court’s denial of a motion to stay.
2. Biogen Idec MA Inc. v. Japanese Foundation for Cancer has history dating back to the early 1980’s with a series of patent interference disputes between Walter Fiers (who assigned his patent to Biogen) and Haruo Sugano (who assigned his to JFC) relating to claims to certain DNA sequences. Biogen filed the most recent suit in federal court in Massachusetts in December 2013 to set aside a PTAB decision against Fiers in an interference that was declared earlier that year. (An interference is a pre-AIA proceeding to determine who was the first to invent of two or more competing patent applicants.) The district court concluded it no longer had jurisdiction to hear the appeal from the PTAB after the enactment of the AIA, and transferred the case to the Federal Circuit. (More)
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