Appeals from the PTAB
About
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.
Contacts
Experience
Finnegan represented Bausch & Lomb’s licensee Eye Therapies, LLC in an appeal at the U.S. Court of Appeals for the Federal Circuit from a Patent Trial and Appeal Board (PTAB) decision finding Eye Therapies’ patent directed to a low-dose brimonidine treatment for eye redness (Lumify®) to be unpatentable. In a precedential decision, the Federal Circuit agreed with Finnegan’s arguments and found that the Board had wrongly invalidated the patent based on an incorrect claim construction, vacating and remanding the case back to the PTAB. The proceeding settled shortly thereafter
23-2173, Fed. Cir., Judges Taranto, Stoll, Scarsi
Secured a covenant-not-to-sue and zero-dollar walkaway for BMW Group in a declaratory judgment action, concluding Arigna’s high-profile patent enforcement campaign involving current amplification technology. This outcome follows a decisive ITC victory, the dismissal of parallel District Court litigation, and multiple concurrent patent office challenges pending at the time of resolution.
1:23-cv-01190, D.D.C., Judge Contreras
2:21-cv-00173, E.D. Tex.
IPR2021-01531, PTAB, Judges Baer, Fenick, Iftikhar
23-1931, Fed. Cir.
90/019,261, USPTO
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
Successfully represented Alzheon, Inc. before the Patent Trial and Appeal Board (PTAB) in securing denial of petitions for inter partes reviews (IPR) and post-grant review (PGR) challenging two of Alzheon’s patents related to ALZ-801/valitramiprosate, a treatment for Alzheimer’s Disease. Also successfully represented Alzheon before the Federal Circuit in an appeal related to isotopically enriched forms of ALZ-801/valitramiprosate.
IPR2022-01200, PGR2022-00051, PTAB, Judges Newman, Snedden, Wisz
22-2232, Fed. Cir.
21-1517, Fed. Cir., Judges Moore, Newman, Hughes
IPR2019-00683, PTAB, Judges Zecher, Jurgovan, Zado
