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Federal Circuit Rules PTAB Erred on Successor-in-Interest Issue in Crocs Case

Reported By La’Cee Conley on IPWatchdog

After U.S.A. Dawgs, Inc. appealed from a United States Patent and Trademark Office (USPTO) decision finding Crocs, Inc.’s design patent patentable, U.S.A. Dawgs and Mojave Desert Holdings, LLC moved to substitute Mojave as U.S.A. Dawgs’s successor-in-interest. The Board expunged and dismissed Mojave’s request. However, the Federal Circuit granted the motion. Specifically, the court concluded that Mojave is the successor-in-interest to U.S.A. Dawgs, and thus has standing to pursue the challenge to Crocs’ patent. Finally, the court found that the Patent Trial and Appeal Board erred in not substituting Mojave for U.S.A. Dawgs as the third-party requester during inter partes review. La’Cee Conley summarizes the Board’s initial decision:

First, the Board found that Mojave’s submissions [were] insufficient to establish Mojave as a real party-in-interest and/or Requester in the instant inter partes reexamination proceeding, “because the initial transfer of assets from U.S.A. Dawgs, Inc. to U.S.A. Dawgs Holdings, LLC . . . appears to be silent about any rights with regard to the instant inter partes reexamination proceeding.” Second, based on its interpretation of the transfer of assets, the Board rejected Mojave’s filing because Mojave was “not a party to the instant inter partes reexamination proceeding” and did “not have standing to update the real party-in-interest in the proceeding…” And third, the Board concluded that Mojave did not file its submission “within 20 days of any change [of the real party-in-interest] during the proceeding,” as required by 37 C.F.R. § 41.8(a), making it untimely.

After U.S.A. Dawgs and Mojave filed the Motion to Substitute in late 2019, Crocs argued that the Board correctly determined that Mojave is not the successor-in-interest to U.S.A. Dawgs citing five reasons. The Federal Circuit rejected all of these arguments. With respect to the argument that “the interest of a requester cannot be assigned under the statute governing appeals from inter partes one of the arguments,” the court cited the Supreme Court case, Sprint Communications Co. v. APCC Services, Inc. As Conley explains, that case recognized that, according to the CAFC, “at common law, choses in action were generally assignable and appears to hold that this general rule is applicable to federal causes of action.”

Apple Asks To Postpone March Patent Trial Due To COVID-19

Reported By Adam Lidgette on Law360

The Federal Circuit has already moved the patent trial to March, but Apple now requests that the trial be pushed back even further so that trial participants can have an opportunity to be vaccinated first. Apple argues that such a postponement would prejudice either side. Apple further contends that “proceeding with trial now will limit the parties’ opportunity to present a full and fair case because several witnesses outside of Texas will be unable to safely appear at trial.” In March 2019, Maxell sued Apple claiming it infringed ten patents covering a broad array of technology including cellphones, batteries, and cameras. Per the court’s request, however, Maxwell narrowed the case down to six patents.

In a separate case, Apple has asked the Federal Circuit for en banc review of a panel decision dismissing five appeals of Patent Trial and Appeal Board decisions denying inter partes review.

Maxell has opposed that bid at the appellate court, saying the U.S. Supreme Court has properly held that the PTAB’s decisions on whether to undertake a patent review are not subject to appellate review. Ruling otherwise, Maxell said, would contravene the America Invents Act by opening “the floodgates to mandatory appellate review of thousands of [U.S. Patent and Trademark Office] institution decisions.”