Sitting By Designation, Judge Albright Pens First Federal Circuit Opinion Vacating PTAB Decision for Failing to Consider Petitioner’s Reply Brief Claim Construction Arguments

Sitting By Designation, Judge Albright Pens First Federal Circuit Opinion Vacating PTAB Decision for Failing to Consider Petitioner’s Reply Brief Claim Construction Arguments

by Dennis Crouch

The Federal Circuit’s 2023 decision in Axonics, Inc. v. Medtronic, Inc. marked an important change in inter partes review procedure, ensuring petitioners have an opportunity to respond patentee’s newly proposed arguments, with the hope of discouraging patent owners from holding-back (“sandbagging”) at the institution stage.  Case-in-point is the Federal Circuit’s recent Apple v. Omni MedSci decision authored by Judge Alan D. Albright sitting by designation.

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In his first appellate opinion, Judge Alan D. Albright of the Western District of Texas (sitting by designation at the Federal Circuit) authored the appellate court’s recent unanimous decision in Apple v. Omni MedSci, No. 23-1034 (Fed. Cir. June 21, 2024).  The decision sides with petitioner Apple who had challenged Omni MedSci’s US10517484 via inter partes review.  The Board invalidated some claims of the ‘484 patent, but concluded some claims were “not proven unpatentable.” On appeal, Judge Albright reversed-in-part, finding that the Board abused its discretion by refusing to consider Apple’s claim construction arguments even though made for the first time in its reply brief at the merits stage.

The patent here is directed to a wearable device that measures physiological parameters and works in conjunction with a smartphone or tablet.

Continue reading Sitting By Designation, Judge Albright Pens First Federal Circuit Opinion Vacating PTAB Decision for Failing to Consider Petitioner’s Reply Brief Claim Construction Arguments at Patently-O.

Sitting By Designation, Judge Albright Pens First Federal Circuit Opinion Vacating PTAB Decision for Failing to Consider Petitioner’s Reply Brief Claim Construction Arguments

Sitting By Designation, Judge Albright Pens First Federal Circuit Opinion Vacating PTAB Decision for Failing to Consider Petitioner’s Reply Brief Claim Construction Arguments

by Dennis Crouch

The Federal Circuit’s 2023 decision in Axonics, Inc. v. Medtronic, Inc. marked an important change in inter partes review procedure, ensuring petitioners have an opportunity to respond patentee’s newly proposed arguments, with the hope of discouraging patent owners from holding-back (“sandbagging”) at the institution stage.  Case-in-point is the Federal Circuit’s recent Apple v. Omni MedSci decision authored by Judge Alan D. Albright sitting by designation.

= = =

In his first appellate opinion, Judge Alan D. Albright of the Western District of Texas (sitting by designation at the Federal Circuit) authored the appellate court’s recent unanimous decision in Apple v. Omni MedSci, No. 23-1034 (Fed. Cir. June 21, 2024).  The decision sides with petitioner Apple who had challenged Omni MedSci’s US10517484 via inter partes review.  The Board invalidated some claims of the ‘484 patent, but concluded some claims were “not proven unpatentable.” On appeal, Judge Albright reversed-in-part, finding that the Board abused its discretion by refusing to consider Apple’s claim construction arguments even though made for the first time in its reply brief at the merits stage.

The patent here is directed to a wearable device that measures physiological parameters and works in conjunction with a smartphone or tablet.

Continue reading Sitting By Designation, Judge Albright Pens First Federal Circuit Opinion Vacating PTAB Decision for Failing to Consider Petitioner’s Reply Brief Claim Construction Arguments at Patently-O.