Rachel Elsby Quoted by Bloomberg Law on Challenge to Fed. Circ. Patent Review

For its article “Federal Circuit’s Patent Power on the Line in Full Rehearing Bid,” Akin Gump intellectual property partner Dr. Rachel Elsby was quoted by Bloomberg Law. The article discusses how Atlanta Gas Light Co. has requested the full Federal Circuit to review a recent split ruling in which it found that, on timeliness grounds, it did not have the ability to review a Patent Trial and Appeal Board (PTAB) reversal of a decision to review a contested patent. The Federal Circuit, Bloomberg reports, had remanded the suit to the PTAB, which found it shouldn’t have reviewed the patents at all.

Said Elsby, whose practice focuses on patent infringement and trade secret litigation and appeals to the Federal Circuit Court of Appeals, “What was remanded to the PTAB was a sanctions order, and the fact that it had the effect of wiping out an IPR [inter partes review] proceeding that had already been reviewed by the Federal Circuit is a concern. The fact that this was issued as a precedential opinion that could be applied in other scenarios raises real questions about things like finality at the PTAB.”

Elsby said that, for the Federal Circuit to take a case en banc, i.e., with all judges participating, there need to be both an identifiable problem and a solution that the court can provide. She noted that most cases presented for en banc consideration do not meet both criteria.

Elsby said, “I hesitate to predict that the Federal Circuit would take en banc action because it’s been so reluctant to do so. I do think this is one of those cases where it’s procedural and specific to the court’s jurisdiction that, in my view, it’s a good candidate for the court to consider.”