Developing appeal strategies based on PTAB and Federal Circuit insights
Decisions by the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) are appealed directly to the U.S. Court of Appeals for the Federal Circuit, where Finnegan attorneys have briefed and argued hundreds of cases, possibly more than any other law firm. We know firsthand the procedural intricacies of both the PTAB and the Federal Circuit. And we understand how to leverage the nuanced differences between these forums on appeal. With only one or two briefs and 15 minutes of oral argument to make your case at the Federal Circuit, Finnegan brings the type of experience that can make all the difference.
As the body of case law develops around PTAB trials, we are constantly monitoring decisions at the Federal Circuit as well as the PTAB, and we use those insights for developing case strategies. Our attorneys are particularly well-suited to analyze the likelihood of success for each possible issue on appeal, counsel clients on which issues to raise, and provide the best overall appeal strategy to succeed and meet our client’s business needs.
In a rare rehearing proceeding, successfully represented petitioner Incyte in an inter partes review (IPR) challenging the validity of Concert’s patent before the Patent Trial and Appeal Board (PTAB). Continued representation of appellee Incyte before the Federal Circuit and secured a unanimous affirmance of the PTAB’s obviousness determination.
IPR2017-01256, PTAB, Judges Fitzpatrick, Hulse, Yang, Smith, Franklin
19-2011, Fed. Cir., Judges Hughs, Linn, Stark
22-2012, Fed. Cir., Judges Hughes, Reyna, Stark
IPR2021-00181, PTAB, Judges Deshpande, Hagy, Wieker
1:20-cv-01907, N.D. Ga., Judge Grimberg
1:21-cv-00030, D. Del., Judge Bryson
21-1517, Fed. Cir., Judges Moore, Newman, Hughes
IPR2019-00683, PTAB, Judges Zecher, Jurgovan, Zado
Represented Intuitive Surgical Operations on appeals from petitions for inter partes review (IPR) filed by Auris Health, Inc.
21-1473, -1732, -1733, Fed. Cir., Judges Prost, Dyk, Reyna
IPR2019-01173, -01533, -01547, PTAB, Judges Franklin, Hulse, Jenks, Worth, Yang
4:21-cv-00940, E.D. Tex., Judge Mazzant
22-156, Fed. Cir., Judges Dyk, Reyna, Taranto
IPR2022-01405, -01456, -01457, PTAB, Judges Iftikhar, Kahn, Parvis
18-2024, -2025, Fed. Cir., Judges Prost, Wallach, Hughes
IPR2017-00118, -00472, PTAB, Judges Kim, Ippolito, Cherry
Media Mention
Women in Business Law Americas Awards 2024: Three Finnegan Attorneys Shortlisted
April 7, 2024
Award/Ranking
Managing IP Americas Awards 2024: Finnegan Shortlisted for Nine Awards, Including Firm of the Year
March 12, 2024
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