SNF Holding Co. v. BASF Corp. (Federal Circuit 2017)
Important petition for en banc rehearing filed by the Duffy-Dabney team (Hughes Hubbard) with three questions presented:
- Whether 35 U.S.C. § 144 requires this Court to issue an opinion when exercising original jurisdiction under 35 U.S.C. §§ 141–144.
- Whether 35 U.S.C. § 316 authorizes the USPTO to change an instituted ground of inter partes review (“IPR”), post-institution, in a manner that conflicts with the ground as stated in the petition on which IPR was instituted.
- Whether a patentee, in an instituted IPR, can impeach its own admissions in the specification of a challenged patent.
Read the petition: 2017-11-16 Petition. The case revolves around BASF’s US Patent No. 5,633,329. The PTAB instituted review, but ultimately affirmed patentability of the claims – although with a changed claim construction in the final decision.