Gish PLLC Client GAF Wins Federal Circuit Affirmance of PTAB Decision
05/06/2024In an opinion issued on May 2, 2024, the U.S. Court of Appeals for the Federal Circuit affirmed
a decision by the Patent Trial and Appeal Board invalidating all claims in U.S. Patent No.
6,308,482 in an inter partes review proceeding initiated by GAF Materials LLC.
Patent Owner Kirsch Research & Development, LLC originally asserted the '482 patent against
GAF in the Northern District of Texas. GAF successfully moved for transfer to the District of
New Jersey (Case No. 2:20-cv-13683) and filed a petition for inter partes review ("IPR") against
claims 1-34 of the '482 patent (Case No. IPR2021-00192). After its IPR petition was granted on
May 25, 2021, GAF successfully obtained a stay of the New Jersey action pending resolution of
the IPR proceeding.
In its Final Written Decision, the PTAB adopted GAF's interpretation of a key claim limitation,
and found that the prior art disclosed that limitation, as well as all other claim elements of all 34
challenged claims. Kirsch appealed the PTAB's decision to the Federal Circuit, challenging that
decision on multiple substantive and procedural grounds. In a unanimous opinion authored by
Judge Leonard P. Stark, the Federal Circuit panel rejected all of Kirsch's challenges.
Gish PLLC partner Ed Tulin was a member of the team that represented GAF at the PTAB and
on appeal to the Federal Circuit. The Federal Circuit case is Kirsch Research and Development
LLC v. GAF Materials LLC, Case No. 22-2063.