On March 14, April 29, and May 5, 2022, a Sidley IP Litigation and Supreme Court and Appellate team secured three significant appellate victories on behalf of client Auris Health, Inc. at the U.S. Court of Appeals for the Federal Circuit. All three appeals had been argued by Sidley partners in front of the same panel on March 11, 2022. In an almost unprecedented sweeping set of wins, Sidley successfully obtained an affirmance of its win at the Patent Trial and Appeal Board (PTAB), invalidating one patent, and at the same time successfully secured vacate and remand decisions for two other patents that the PTAB had upheld.
In 2018, following FDA approval of its Monarch platform, Auris became the first company in its field to give physicians the technology to diagnose early-stage lung cancer using robotic endoscopy. Later that year, competitor Intuitive Surgical filed a patent case in the U.S. District Court for the District of Delaware against Auris asserting eight patents. Sidley filed a series of inter partes review (IPR) petitions challenging the validity of Intuitive’s patents at the PTAB. In April 2020, the PTAB agreed with Sidley’s arguments and issued adverse judgments against two of Intuitive’s patents. In December 2020, in a sweeping win for Sidley, the PTAB issued a final decision that invalidated all 18 claims of yet another Intuitive patent, to which Intuitive had attributed significant value. The Federal Circuit affirmed that decision on March 14, 2022, after hearing oral argument just days earlier. On April 29, 2022, the Federal Circuit delivered another win to Auris on its appeal of an adverse decision from the PTAB for a different patent. In a precedential decision, the Federal Circuit agreed with Auris that the PTAB erred as a matter of law in assessing the obviousness of Intuitive’s patent, vacating and remanding the PTAB’s decision. And finally, on May 5, 2022, the Federal Circuit delivered a third straight win to Auris in vacating and remanding the majority of the patent claims in yet another patent upheld by the PTAB. It is rare to obtain any vacate and remand opinion for a PTAB adverse decision, but here Sidley obtained two in a row, while at the same time obtaining an affirmance of a win on a different patent.
The Sidley team was led by Ching-Lee Fukuda (New York), Ryan Morris (Washington, D.C.), and Thomas A. Broughan (Washington, D.C.) and included Sharon Lee (New York), Paul Rogerson (Chicago), Timothy Q. Li (New York), and Alice A. Wang (Washington, D.C.).
Members of the Sidley team—Tom Broughan, Ching-Lee Fukuda, and Ryan Morris—together after their oral arguments on March 11, 2022.