Now Precedential: IPR Petitioner who Waived Arthrex issue cannot Raise it on Appeal after Losing the IPR

Cienna Corp. v. Oyster Optics, LLC and Andrei Iancu (Fed. Cir. 2020)

In this case, the Federal Circuit held that an IPR petitioner did not have a right to raise the Arthrex appointments issue on appeal unless the issue was first raised before the PTAB. The court’s basic reasoning is actual and equitable waiver.

The problem with Ciena’s request is that, unlike the patent owner in Arthrex, Ciena requested that the Board adjudicate its petition. It, thus, affirmatively sought a ruling from the Board members, regardless of how they were appointed. Ciena was content to have the assigned Board judges adjudicate its invalidity challenges until the Board ruled against it. Under those circumstances, we find that Ciena has forfeited its Appointments Clause challenge. . . .

In this case, Ciena not only consented to adjudication by the Board, but it affirmatively sought to delay any consideration of its patent challenges by seeking a stay of the district court litigation initiated by Oyster. Any constitutional concern regarding the appointment of the Board judges in this case is negated by Ciena’s forfeiture.

This decision was originally released in January 2020 as a non-precedential opinion. However, on petition from the USPTO, the court has now re-designated the decision as precedential.

In its petition for redesignation, the PTO explained that losing petitioners “continue to raise the same argument [on appeal]. A precedential opinion would reduce that motions practice and save the Court time.”  Examples of pending cases:

  • Moderna Therapeutics v. Protiva Biotherapeutics, Nos. 20-1184, -1186, ECF No. 37 (Fed. Cir. motion filed Mar. 6, 2020);
  • Valve Corporation v. Ironburg Inventions, Nos. 20-1315, -1379, ECF No. 24 (Fed. Cir. motion filed Feb. 28, 2020);
  • Valve Corporation v. Ironburg Inventions, No. 20-1316, ECF No. 22 (Fed. Cir. motion filed Feb. 22, 2020);
  • Palo Alto Networks, Inc. v. Finjan, Inc., No. 19-2151, ECF No. 56, at 4, 32, 49 (Fed. Cir. blue brief filed Nov. 27, 2019);
  • United Fire Protection Corp. v. Engineered Corrosion Solutions, No. 20-1272, ECF No. 16 (Fed. Cir. motion filed Jan. 9, 2020);
  • Comcast Cable Comm. v. Promptu Sys. Corp., No. 19-1947, -1948, ECF No. 26, at 66 (Fed. Cir. blue brief filed Nov. 15, 2019);
  • Comcast Cable Comm. v. Promptu Sys. Corp., No. 19-2287, -2288, ECF No. 18, at 66 (Fed. Cir. blue brief filed Nov. 15, 2019);
  • Baby Trend, Inc. v. Wonderland Nurserygoods, No. 19-2309, ECF No. 28, at 65-66 (Fed. Cir. corrected blue brief filed Feb. 24, 2020).



3 thoughts on “Now Precedential: IPR Petitioner who Waived Arthrex issue cannot Raise it on Appeal after Losing the IPR

  1. 3

    I see many patent owners consenting as well. At least they are not objecting to the particular APJs on their case. Arthrex treated this as a technicality. It was not. Most of these fake judges could not pass Senate confirmation, and there are good reasons. Most are not “persons of competent legal knowledge and scientific ability” as required by §6(a) of Title 35. Look at their invalidation rates, many are over 80%. Sit through a hearing and listen their stupid questions and failure to comprehend the technology. Look at who they worked for. Anyone who doesn’t object to an Apple attorney presiding over a petition by Apple deserves to lose their patent.

    Arthrex said they can be removed from office, but none have been asked to be removed. Patent owners are going to have to have fake judges removed from their cases one at a time. It doesn’t work to just whine about the Constitution. You have show it matters.

  2. 2

    If the Sup. Ct. denies cert from the Fed. Cir. and its en banc discussions on this Arthrex issue of all PTAB APJs appointments validity and status, I assume this whole issue will just go away, even if Congress refuses to act? If cert is granted, will things get a bit wild, with extensive stay or other delays in both ex parte appeals and IPRs [but little end-result differences]? Any predictions anyone?

  3. 1

    Interesting. The re-designated decision would not be addressing a factor that I am left wondering about.

    How many of the others that have since filed the same type of motion would otherwise have standing to appeal (at all)?

    Is it safe to presume that all such parties seeking an Arthrex style appeal have a right to be in the Article III forum?

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