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  • PTAB Grants Petition For Review Despite Overlap With Earlier Filed Petitions And Advanced Stage Of Parallel Litigation
     
    06/30/2020

    On June 23, 2020, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) instituted a third inter partes review (IPR) of U.S. Patent No. 7,039,435.  LG Electronics Inc. v. Bell Northern Research LLC, case numbers IPR2020-00318.  In its decision, the PTAB declined to exercise its discretion under 35 U.S.C. § 314(a) to deny review on efficiency and fairness grounds.
     
    CATEGORIES: IPRsPTAB
  • Federal Circuit Reverses Fees Award For Failure To Meet The Threshold For Exceptional Case
     
    06/16/2020

    On June 8, 2020, the Court of Appeals for the Federal Circuit (CAFC) reversed an order of the United States District Court for the Central District of California (CDCA) awarding fees under 35 U.S.C. § 285 and 15 U.S.C. § 1117(a).  Munchkin, Inc. v. Luv N’ Care, Ltd., No. 2019-1454, __ F.3d __ (Fed. Cir. Jun. 8, 2020).  The CAFC found that the CDCA abused its discretion because the facts relied upon by the movant did not support a determination that plaintiff acted unreasonably in bringing and maintaining its case.
     
  • Southern District Of New York Grants Motion To Dismiss Patent And Trade Secret Claims, Finding Patents Ineligible Under Section 101 And That Trade Secret Claim Failed To Identify A Protectable Secret
     
    06/09/2020

    On May 29, 2020, the U.S. District Court for the Southern District of New York issued an opinion granting defendant StoneCastle Cash Management LLC’s motion to dismiss related to plaintiff Island Intellectual Property, LLC’s patent infringement, misappropriation of trade secrets, and related state law claims.  Island Intellectual Property, LLC v. StoneCastle Asset Management LLC, No. 19-CV-4792 (JPO) (S.D.N.Y. May 29, 2020).  The Court first ruled that the two groups of asserted patents, directed towards computer-implemented, multibank reciprocal-deposit systems, failed the Supreme Court’s two-step Alice test, and were therefore unpatentable under 35 U.S.C. § 101.  The Court also ruled that Island’s misappropriation of trade secrets claims were too generalized to survive a motion to dismiss. 
     
  • PTAB Institutes IPR, Despite Primary References Having Been Considered During Original Patent Prosecution
     
    06/01/2020

    On May 22, 2020, the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office issued a decision instituting inter partes review (“IPR”) over Patent Owner’s argument that the PTAB should exercise its discretion to deny institution because the IPR petition relied on several references that were considered by the patent examiner during prosecution of the application leading to the patent-at-issue.  Medacta USA, Inc. v. RSB Spine, LLC, IPR Case No. 2020-00264, Paper 24 (PTAB May 22, 2020).  The PTAB found that the examiner “erred in a manner material to the patentability of the challenged claims” by overlooking certain aspects of the prior art references.
     
  • Federal Circuit Affirms PTAB’s Obviousness Decision And Finds Challenge To “Real Party In Interest” Requirement Non-Appealable
     
    05/27/2020

    On May 19, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the obviousness decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), and finding non-appealable the PTAB’s decision to institute inter partes review (IPR) notwithstanding a challenge that Petitioner-Appellee failed to identify “all real parties in interest.”  ESIP Series 2, LLC v. Puzhen Life USA, LLC, __ F.3d __ (Fed. Cir. May 19, 2020).  The CAFC found that substantial evidence supported the PTAB’s finding that a skilled artisan would have been motivated to combine the teachings of each prior art reference to arrive at the claimed invention, and that Patent Owner-Appellant’s challenge to the PTAB’s “real parties in interest” determination was not appealable.
     
  • Federal Circuit Affirms PTAB’s Refusal To Import Limitation, And Finding Of Obviousness
     
    05/21/2020

    On May 14, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a final decision by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that appellant’s patent claims are unpatentable.  Lone Star Silicon Innovations LLC v. Iancu, __ F.3d __ (Fed. Cir. May 14, 2020).  In its affirmance, the CAFC found that the PTAB had correctly construed a disputed claim term and that substantial evidence supported the PTAB’s finding of obviousness.
     
    CATEGORIES: IPRsObviousnessPTAB
  • Federal Circuit Holds That The Filing Of An IPR Petition Results In A Waiver Of Appointments Clause Challenges
     
    05/12/2020

    On Friday, May 5, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) re-designated as precedential its January 28, 2020 order in Cienna Corp. v. Oyster Optics, LLC and Andrei Iancu, __ F.3d __, (Fed. Cir. May 5, 2020).  The order affirmed the judgement of the Patent Trial and Appeal Board (“Board”) finding the challenged claims patentable.
     
    CATEGORY: IPRs
  • Federal Circuit Dismisses IPR Appeal For Petitioner’s Lack Of Article III Standing
     
    05/05/2020

    On April 23, 2020, the Court of Appeals for the Federal Circuit (CAFC) dismissed an appeal of an inter partes review (IPR) proceeding for lack of Article III standing.  Argentum Pharms. LLC v. Novartis Pharms. Corp., No. 2018-2273, __ F.3d __ (Fed. Cir. Apr. 23, 2020).  The Federal Circuit found that the petitioner failed to prove that it suffered an injury in fact.
     
  • Supreme Court Holds PTAB Time-Bar Decision Is Not Appealable
     
    04/28/2020

    On April 20, 2020, the Supreme Court of the United States issued an opinion holding that an inter partes review (“IPR”) institution decision by the United States Patent and Trademark Office’s Patent Trial & Appeal Board (“PTAB”) on the impact of a dismissal-without-prejudice of a district court complaint on 35 U.S.C. § 315(b)’s one-year time-bar limitation to file an IPR is not appealable.  Thryv, Inc. v. Click-to-Call Techs., LP, No. 18-916, 590 U.S. ____ (2020).  According to the Court, 35 U.S.C. § 314(d)’s prohibition on appeal of IPR institution decisions and the Court’s decision in Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 579 U.S. ___ (2016) were determinative.
     
  • Federal Circuit Reverses Eastern District Of Texas Decision Holding Patent Claims Patentable Under Section 101
     
    04/21/2020

    On April 14, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing a finding of patentability by the U.S. District Court for the Eastern District of Texas.  Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., No. 2018-2003, __ F.3d __ (Fed. Cir. 2020).  The CAFC first found in favor of appellant TCL on the procedural issue of whether it could decide TCL’s ineligibility argument, despite the issue not being raised below in its motion for judgment as a matter of law.  Then, on the merits, the CAFC reversed the district court’s denial of TCL’s summary judgment motion that the asserted patent claims failed the Supreme Court’s two-step Alice test, and were therefore unpatentable under 35 U.S.C. §101.
     
  • ITC ALJ Finds Inequitable Conduct In Patent Office Renders Patent Unenforceable
     
    04/14/2020

    On April 7, 2020, the United States International Trade Commission (ITC) published the public version of an earlier final initial determination by an ITC administrative law judge (ALJ) finding that the applicants of the asserted patent, directed at harness-type child carriers, intentionally made false statements to the United States Patent Office (PTO) during examination.  In re Certain Child Carriers and Components Thereof, Inv. No. 337-TA-1154.  The ALJ ruled that this intentional misconduct was egregious misconduct rendering the patent unenforceable.
     
    CATEGORY: ITC
  • Federal Circuit Holds Patentee To Its Choice During Prosecution, Invalidating Key Patents
     
    04/07/2020

    On March 26, 2020, the Court of Appeals for the Federal Circuit (CAFC) affirmed the judgement of the Patent Trial and Appeal Board (Board) concerning claim construction.  Genentech, Inc. v. Iancu, F.3d __, (Fed. Cir. Mar. 26, 2020).  The CAFC found a single statement in the prosecution history instructive on claim construction where the claims and specification do not clearly define the claimed term.  The claims were clearly under that claim construction.

     
    CATEGORY: IPRs
  • Federal Circuit Finds That 35 U.S.C. § 315(c) Does Not Permit New-Party Or New-Issue Joinder In IPR Proceedings
     
    04/02/2020

    On March 18, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) found that the Patent Trial and Appeal Board (“PTAB”) erred in allowing same-party and new-issue joinder in inter partes review (“IPR”) proceedings.  Facebook, Inc. v. Windy City Innovations, Inc., Nos. 2018-1400, 2018-1401, 2018-1402, 2018-1403, 2018-1537, 2018-1540, 2018-1541, __ F.3d __ (Fed. Cir. Mar. 18, 2020).  The CAFC vacated the PTAB’s final written decisions with respect to the claims that were improperly added through joinder.
     
  • Update On Key Patent Court Scheduling Adjustments In View Of COVID-19
     
    03/24/2020

    COVID-19 has taken an unprecedented toll on the United States and the world at large.  It has impacted nearly every facet of both professional and personal life and, with that, the patent landscape, too—especially as it pertains to the interplay between in-person events (trials, hearings, depositions and the like) and the need for “social distancing.”
     
    CATEGORY: No category
  • District Of Delaware Rejects Plaintiff’s Law-Of-The-Case Argument And Grants Motion For Judgment On The Pleadings Based On Patent-Ineligible Subject Matter
     
    03/17/2020

    On March 5, 2020, the United States District Court for the District of Delaware issued an Opinion granting defendant’s motion for judgment on the pleadings based on patent-ineligible subject matter.  CG Tech. Dev., LLC v. Fanduel, Inc., Case No. 1:17-cv-01041-RGA (D. Del. Mar. 5, 2020).  The Court rejected plaintiff’s law-of-the-case argument and held that the claim-at-issue failed the Supreme Court’s two-step Alice test, and was therefore unpatentable under 35 U.S.C. §101.
     
  • Federal Circuit Affirms PTAB Final Written Decision Holding Advertising Patent Claims Unpatentable Under Section 101
     
    03/11/2020
    On March 6, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an Opinion affirming a final written decision by the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”).  Customedia Techs., LLC v. Dish Network Corp., Case Nos. 2018-2239, 2019-1000, ____ F.3d ____ (Fed. Cir. Mar. 6, 2020).  The CAFC held that the PTAB correctly found that the challenged patent claims were unpatentable under 35 U.S.C. § 101 because they were directed to patent ineligible subject matter, as interpreted by the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).
  • Federal Circuit Finds That Cessation Of Sales Of Unmarked Patented Articles Does Not Excuse Noncompliance With The Statutory Notice Requirement
     
    03/03/2020

    On February 19, 2020, the Court of Appeals for the Federal Circuit (CAFC) affirmed the judgment of the United States District Court for the Southern District of Florida concerning the notice requirement for collecting back-damages in cases of patent infringement.  Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., ___ F.3d __ (Fed. Cir. Feb. 19, 2020).  In particular, the CAFC found that the statutory patent marking requirement continues to limit damages after a patentee or licensee ceases sales of unmarked products, and that willful infringement does not establish actual notice under the statute.  35 U.S.C. § 287. 
     
    CATEGORY: Damages
  • Federal Circuit Finds Presence Of Google’s Cache Servers In The Eastern District Of Texas Does Not Justify Venue
     
    02/25/2020

    On February 13, 2020, the Court of Appeals for the Federal Circuit (CAFC) granted a writ of mandamus, ordering the Eastern District of Texas (“EDTX”) to dismiss or transfer the patent infringement suit filed there against Google LLC (“Google”).  In re Google LLC, No. 2019-126, __ F.3d __ (Fed. Cir. Feb, 13, 2020).  Applying In re Cray, CAFC found that the EDTX lacked venue under the 28 U.S.C. § 1400(b).
     
  • District Of Delaware Denies Motion To Dismiss Infectious Unenforceability Counterclaims
     
    02/11/2020

    On January 7, 2020, Magistrate Judge Christopher Burke of the District of Delaware issued a Report and Recommendation recommending denial of plaintiff’s motion to dismiss counterclaims of unenforceability based on the doctrine of infectious unenforceability.  Guardant Health, Inc. v. Foundation Medicine, Inc., Case No. 1:17-cv-1616-LPS-CJB, D.I. 343 (D. Del. Jan. 7, 2020).  The Court found defendants’ allegations supported the existence of an “immediate and necessary” relation between plaintiff’s alleged concealment of the true inventorship of certain earlier-issued patents and enforcement of the patent at issue in the counterclaims.
  • Federal Circuit Affirms PTAB’s Finding That General Knowledge Can Supply Missing Claim Limitations In Obviousness Analysis
     
    02/05/2020

    On January 30, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the a final decision by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that appellant’s patent claims are unpatentable.  Koninklijke Philips NV v. Google LLC, __ F.3d __ (Fed. Cir. Jan. 30, 2020).  While the CAFC ruled that the PTAB lacked the discretion to institute review inter partes review (IPR) based on grounds not presented in an IPR petition, it affirmed the PTAB’s obviousness decision based on a ground that was contained in appellee’s petition.
     
    CATEGORIES: IPRsObviousnessPTAB
  • District Court Holds That Certain Communications Between Defendant And Non-Party Distributor Were Protected By The Common Interest Doctrine, While Other Communications That Were Primarily Business-In-Nature Were Not
     
    01/22/2020

    On January 14, 2020, the United States District Court for the Northern District of Illinois issued a ruling on a motion to compel documents withheld as being privileged, containing attorney work product, and subject to the common interest doctrine.  Beijing Choice Elec. Tech. Co. v. Contec Med. Sys. USA, Inc., slip op. (N.D. Ill. Jan 14, 2020).  The Court granted-in-part and denied-in-part the motion.
    CATEGORIES: Common InterestPrivilege
  • Federal Circuit Rejects A Wide Scope Inquiry Into Options Available At The Time Of Invention In An Obvious-To-Try Analysis
     
    01/14/2020

    On January 6, 2020, the Court of Appeals for the Federal Circuit (CAFC) reversed the Patent Trial and Appeal Board (PTAB) judgment in an inter partes examination (IPR) of a U.S. patent.  Google LLC v. Koninklijke Philips N.V., Appeal No. 2019-1234 (Fed. Cir. Jan. 6, 2020) (nonprecedential).  The CAFC applied the obvious-to-try inquiry and found that the claims were obvious.
    CATEGORIES: ObviousnessPTAB
  • Federal Circuit Affirms Obviousness Of Patents Covering Extended-Release Hydrocodone Formulations
     
    01/07/2020

    On December 27, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of invalidity on obviousness grounds of the United States District Court for the District of Delaware.  Persion Pharms. LLC v. Alvogen Malta Operations Ltd., __ F.3d __ (Fed. Cir. Dec. 27, 2019).  The CAFC found no clear error in the district court’s reliance on inherency in its analysis or in its factual findings.
    CATEGORIES: ANDAObviousness
  • Federal Circuit Clarifies Test For Claim Scope Disavowal
     
    12/19/2019

    On Thursday, December 12, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a final determination and vacating exclusion orders from the International Trade Commission (ITC) against appellant garage door opener importers.  Techtronic Indus. Co. v. Int’l Trade Comm’n, —F.3d— (Fed. Cir. Dec. 12, 2019).  The CAFC held that the ITC erred in its claim construction, and confirmed that, where a patentee consistently describes an invention as having a particular feature, the patentee’s claims must be construed as including that feature. 
    CATEGORY: ITC
  • Federal Circuit Finds Term Of Court-Imposed FRAND License Violated Seventh Amendment Right To A Jury Trial
     
    12/10/2019

    On December 5, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating-in-part, reversing-in-part and remanding for further proceedings the decision and order of the United States District Court for the Central District of California imposing “fair, reasonable and non-discriminatory” (FRAND) rates in a binding worldwide license between an owner of certain standard-essential patents (SEPs) and a manufacturer of mobile devices that implement technology covered by the SEPs.  TCL Commc’n Tech. Holdings Limited v. Telefonaktiebolaget LM Ericsson, F.3d (Fed. Cir. Dec. 5, 2019).  The CAFC ruled that the district court deprived the SEP owner of its right to a jury trial when the district court decided from the bench to impose a term of the FRAND license that was—in substance—compensatory relief for the mobile phone manufacturer’s past wrongful acts.
     
  • Federal Circuit Reverses District Court’s Grant Of 12(c) Motion Under Section 101 Because Claims Were Not Directed To An Abstract Idea  
     
    11/26/2019

    On November 15, 2019, the Court of Appeals for the Federal Circuit (CAFC) reversed a decision by the United States District for the District of Delaware granting defendants’ motion for judgment on the pleadings based on patent-ineligible subject matter.  Koninklijke KPN N.V. v. Gemalto M2M GmbH, __ F.3d __ (Fed. Cir. Nov. 15, 2019).  The CAFC held that the claims-at-issue are directed to a non-abstract improvement in the functionality of an existing technological process, and thus, the claims passed muster under 35 U.S.C. § 101, as interpreted by the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014).
     
  • Federal Circuit Considers Analogous Art In Obviousness Analysis
     
    11/19/2019

    On November 8, 2019, the Court of Appeals for the Federal Circuit (CAFC) vacated the judgment of the Patent Trial and Appeal Board (PTAB) reversing the patent examiner’s rejection of new claims presented by Firepass Corp. (Firepass) in an inter partes reexamination of a U.S. patent.  Airbus S.A.S. v. Firepass Corp., __ F.3d __, (Fed. Cir. Nov. 8, 2019).  The CAFC found that the PTAB erred in its analysis of analogous art.
     
    CATEGORY: Obviousness
  • Federal Circuit Affirms Public Availability Of Foreign Publication
     
    11/12/2019

    On November 7, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a Patent Trial and Appeal Board (“PTAB”) decision finding invalidity on obviousness grounds.  Telefonaktiebolaget LM Ericsson v. TCL Corp. et al., __ F.3d __ (Fed. Cir. Nov. 7, 2019).  The CAFC ruled that the PTAB did not abuse its discretion in admitting late-submitted evidence regarding the public availability of a foreign publication and in finding that the foreign publication was available as prior art.
    CATEGORIES: IPRsPrior ArtPTAB
  • Federal Circuit Vacates PTAB’s Obviousness Finding For Failure To Consider Evidence Of Copying
     
    11/05/2019

    On October 30, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that Liqwd, Inc.’s patent claims are unpatentable as obvious.  Liqwd, Inc. v. L'Oreal USA, Inc., __ F.3d __ (Fed. Cir. Oct. 30, 2019).  The CAFC ruled that the PTAB erred in concluding that evidence of copying the patented invention was legally irrelevant.
     
    CATEGORIES: ObviousnessPTAB
  • Federal Circuit Affirms PTAB’s Finding That Claims Are Not Unpatentable As Anticipated Or Obvious
     
    10/29/2019

    On October 23, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the finding of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that Koninklijke Philips N.V.’s patent claims are not unpatentable.  Google LLC v. Koninklijke Philips N.V., __ Fed. Appx. __ (Fed. Cir. Oct. 23, 2019).  The CAFC ruled that the PTAB correctly found that Google failed to meet its burden of establishing that the claims were unpatentable as anticipated and that it was not an abuse of discretion for the PTAB to decline to consider Google’s untimely, backup obviousness argument.
     
  • Federal Circuit Finds That Patent Sublicenses Do Not Automatically Terminate Upon Termination Of The Main License Agreement
     
    10/22/2019

    On October 17, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) vacated the judgement of the United States District Court for the District of Delaware granting a motion to dismiss for failure to state a claim on the ground that the defendant had a valid license to the patents-in-suit.  Fraunhofer-Gesellschaft v. Sirius XM Radio Inc., __ F.3d __ (Fed. Cir. Oct. 17, 2019).  The CAFC found that the license defense could not be resolved on a motion to dismiss because the license was ambiguous, and remanded to the district court. 
     
  • PTAB Denies Customer’s “Follow-On” IPR Petition Based On Supplier’s Prior Petition 
     
    10/17/2019

    On October 3, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office issued a Decision Denying Institution of Inter Partes Review (IPR) under 35 U.S.C. § 314(a).  PayPal, Inc. v. IOENGINE LLC, IPR Case No. IPR2019-00884, Paper 22 (PTAB Oct. 3, 2019).  The PTAB exercised its statutorily-authorized discretion to deny institution based primarily on a customer-supplier relationship between the instant petitioner and a prior petitioner.
     
  • Federal Circuit Affirms Ineligibility Of Patent Claiming Methods For Manufacturing Automotive Components
     
    10/08/2019

    On October 3, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the patent-ineligibility judgment of the United States District Court for the District of Delaware.  Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, __ F.3d __ (Fed. Cir. Oct. 3, 2019).  The CAFC ruled that the district court properly granted summary judgment that a patent directed to methods for manufacturing propshafts with liners capable of simultaneously damping two modes of vibrations was patent-ineligible under 35 U.S.C. § 101.
  • Federal Circuit Finds “Technological Invention” Exception May Bar CBM Review
     
    10/01/2019

    On September 25, 2019, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating a final written decision by the Patent Trial and Appeal Board (“PTAB”) finding certain patent claims eligible for covered-business-method-patent (“CBM”) review.  SIPCO, LLC v. Emerson Elec. Co., —F.3d—, (Fed. Cir. September 25, 2019).  The CAFC remanded to the PTAB for further consideration of the statutory “technical invention” exception to CBM eligibility.
    CATEGORIES: CBMsPTAB
  • Federal Circuit Vacates And Remands For Dismissal District Court’s Jurisdictional Finding That Parties’ Claims Arose Under U.S. Patent Law
     
    09/24/2019

    On September 18, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating and remanding the jurisdictional finding of the United States District Court for the Southern District of Florida.  Inspired Development Group, LLC v. Inspired Products Group, LLC, __ F.3d __ (Fed. Cir. Sept. 18, 2019).  The CAFC ruled that the district court lacked subject matter jurisdiction because the parties’ claims did not arise under the patent laws of the United States pursuant to 28 U.S.C. § 1338(a).
    CATEGORY: Jurisdiction
  • PTAB Designates Precedential Two Opinions Regarding IPR Time Bar And Pre-Institution Disclaimer
     
    09/17/2019

    On September 9, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated two decisions as precedential.  Infiltrator Water Technologies, LLC v. Presby Patent Trust, IPR Case No. IPR2018-000224, Paper 18 (PTAB Oct. 1, 2018) (designated: Sept. 9, 2019); General Electric Company v. United Technologies Corporation, IPR Case No. IPR2017-00491, Paper 9 (PTAB July 6, 2017) (designated: Sept. 9, 2019).  In Infiltrator Water, the PTAB held that a dismissal of a complaint without prejudice for lack of personal jurisdiction does not reset the one-year time bar for a petitioner to file a petition for inter partes review.  In General Electric, the PTAB denied institution where the patent owner disclaimed the challenged claims.
  • PTAB Designates As Precedential Decision Barring IPR Filed More Than One Year After Patent Challenger Filed District Court Action That Was Dismissed Without Prejudice
     
    09/10/2019

    On August 29, 2019, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) designated as precedential a January 31, 2019 decision in Cisco Systems, Inc. v. Chrimar Systems, Inc., Case IPR2018-01511 (PTAB Jan. 31, 2019) (Paper 11).  The PTAB found that 35 U.S.C. § 315(a) bars a patent challenger from challenging a patent at the PTAB more than one year after filing a declaratory judgement (“DJ”) action in district court challenging the same patent, even if the patent challenger voluntarily withdrew the DJ action without prejudice.
    CATEGORIES: IPRsPTAB
  • Federal Circuit Vacates And Remands District Court’s Decision For Failing To Construe Claims Before Ruling On Patent Eligibility
     
    09/04/2019

    On August 16, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating and remanding the United States District Court for the Northern District of California’s decision granting a Rule 12(c) motion for judgment on the pleadings.  MyMail, Ltd. V. ooVoo, LLC, __ F.3d __ (Fed. Cir. Aug. 16, 2019).  The CAFC held that the district court erred by declining to resolve a claim construction dispute prior to its ruling that the patents asserted by plaintiff MyMail are directed to unpatentable subject matter.
  • Federal Circuit Dismisses Appeals Challenging PTAB’s Decision To Terminate IPRs On Remand
     
    09/04/2019

    On August 29, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion dismissing three related appeals, each challenging the decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) to terminate an inter partes review (IPR). Biodelivery Scis. Int’l v. Aquestive Therapeutics, Inc.__ F.3d __ (Fed. Cir. Aug. 29, 2019).  The CAFC found that 35 U.S.C. § 314(d) bars it from reviewing the PTAB’s decision, even though the PTAB had previously issued a final written decision of patentability in each IPR.
  • Federal Circuit Vacates And Remands PTAB’s Obviousness Finding Predicated On Incorrect Claim Construction
     
    08/20/2019

    On August 12, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding the obviousness finding of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”).  MTD Products Inc. v. Iancu, __ F.3d __ (Fed. Cir. Aug. 12, 2019).  The CAFC ruled that the PTAB’s claim construction on which its obviousness finding was premised was incorrect because the construction conflated corresponding structure in the patent’s specification with a structural definition for the term, instead of construing the term as a means-plus-function term under 35 U.S.C. § 112, ¶ 6.  
  • PTAB Designates Precedential Two Additional Opinions Regarding Discretionary Denials Of IPR Institution Under Sections 314(a) And 325(d)
     
    08/13/2019

    On August 2, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential two Decisions on Institution.  Valve Corp. v. Elecs. Scripts Prods. Inc., IPR Case Nos. IPR2019-00064, -00065, -00085, Paper 10 (PTAB May 1, 2019) (designated: Aug. 2, 2019); Becton, Dickinson & Co. v. B Braun Melsungen AG, Case No. IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (designated: Aug. 2, 2019).  In Valve, the PTAB held that General Plastic factor 1—concerning discretionary denials under 35 U.S.C. § 314(a) for “follow-on” petitions—applied to a joined petitioner.  In Becton, Dickinson, the PTAB delineated a list of factors to consider when determining whether to exercise its discretion to deny a petition under 35 U.S.C. § 325(d) where “the same or substantially the same prior art or arguments previously were presented to the Board.”
  • Applying The Doctrine Of Argument-Based Estoppel, Federal Circuit Affirms District Court’s Dismissal Of Infringement Claims
     
    08/06/2019

    On July 29, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a decision of the District Court for the District of Delaware dismissing a patent-infringement complaint for failure to state a claim.  Amgen Inc. v. Computer Biosciences. Inc., __ F.3d __ (Fed. Cir. July 29, 2019).  The CAFC affirmed the District Court’s application of the doctrine of argument-based estoppel and held that the patent owner could not succeed on its infringement claim.
  • Federal Circuit Affirms Summary Judgment Of Validity of Automotive-Part Design Patents, Rejecting The Argument That In The Automotive Context, The Parts’ Aesthetic Appeal Is Functional
     
    07/30/2019

    On July 23, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) made public an opinion affirming a district court’s sua sponte summary judgment that design patents covering the hood and headlamps of Ford’s F-150 truck are not invalid for claiming functional features.  Automotive Body Parts Assoc. v. Ford Global Techs., LLC, ___ F.3d ___ (Fed. Cir. July 23, 2019).  The CAFC rejected arguments that the aesthetic appeal of replacement parts that match the original equipment makes the designs functional.  The CAFC also rejected an argument for a design-patent-specific exception to the permissible-repair doctrine.
    CATEGORY: Design Patents
  • ITC Affirms ALJ’s Determination That Patent Claims To An Automated Paving Machine Are Directed To Unpatentable Subject Matter
     
    07/23/2019

    On Monday, July 15, 2019, the International Trade Commission (ITC) issued the public version of an opinion affirming in part an initial determination issued by Administrative Law Judge (ALJ) Dee Lord.  In re Certain Road Construction Machines and Components Thereof, Investigation No. 337-TA-1088,—Fed. Reg.—(July 15, 2019).  The ITC affirmed the ALJ’s determination that asserted patent claims directed to automated paving machines were directed to patent-ineligible subject matter and therefore invalid.
  • Federal Circuit Finds That Direct Competitor Lacks Standing To Appeal Unfavorable IPR Decision
     
    07/23/2019

    On July 10, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion dismissing for lack of standing an appeal of a Patent Trial and Appeal Board (PTAB) inter partes review (IPR) decision finding certain patent claims not unpatentable.  General Electric Co. v. United Technologies Corp., —F.3d—, (Fed. Cir. July 10, 2019).  The CAFC ruled that the patent challenger lacked standing to appeal the adverse decision even though, among other things, it is a direct competitor of the patent owner.
    CATEGORIES: IPRsPTAB
  • Supreme Court Will Consider Appealability Of The PTAB’s Section 315(b) One-Year Bar Rulings
     
    07/02/2019

    On June 24, 2019, the United States Supreme Court granted certiorari to review whether a decision by the Patent Trial and Appeal Board (PTAB) to institute an inter partes review (IPR) is an appealable decision.
  • Federal Circuit Rules That State Sovereign Immunity Does Not Bar IPRs
     
    06/18/2019

    On June 14, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming Patent Trial and Appeal Board (“PTAB”) decisions declining to dismiss petitions for inter partes review (IPR).  Regents of the Univ. of Minn. v. LSI Corp. et al., —F.3d—, (Fed. Cir. June 14, 2019).  The CAFC ruled that the doctrine of sovereign immunity does not bar IPR of state-owned patents.
    CATEGORIES: IPRsPTAB
  • Applying The Doctrine Of Issue Preclusion, Federal Circuit Affirms PTAB Unpatentability Finding
     
    06/04/2019

    On May 23rd, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the Patent Trial and Appeal Board’s inter partes review (IPR) unpatentability decision.  Papst Licensing GmbH v. Samsung Elec. Am. Inc., __ F.3d __(Fed. Cir. May 23, 2019).  The CAFC ruled that claim-construction and prior-art rulings in an earlier IPR created issue preclusion barring the patent owner from contesting those issues in the appeal of a later IPR.
  • Federal Circuit Reverses Summary Judgment Granted Pursuant To The Sham-Affidavit Doctrine
     
    05/29/2019

    On May 21, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing a summary judgment of patent invalidity granted by the U.S. District Court for the District of Delaware.  Quest Integrity USA, LLC, v. Cokebusters USA Inc., __ F.3d__ (Fed. Cir. May 21, 2019).  The CAFC ruled that the district court abused its discretion and wrongly applied the sham-affidavit doctrine when it disregarded affidavits submitted by the patent owner, and that those affidavits created a material issue of disputed fact and should have blocked summary judgment.
  • Federal Circuit Finds Competitor Lacks Article III Standing To Appeal Adverse IPR Decision
     
    05/23/2019

    On May 13, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion on an appeal from a Final Written Decision in an inter partes review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office.  AVX Corp. v. Presidio Components, Inc., __ F.3d__ (Fed. Cir. May 13, 2019).  The CAFC held that the appellant, AVX, lacked standing to appeal the decision and therefore dismissed the appeal.
    CATEGORIES: Article III StandingIPRs
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