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  • Product Operating Manuals Distributed To Customers Are “Printed Publications,” Notwithstanding Confidentiality Provisions And Limited Dissemination
     
    02/21/2024


    On February 8, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) reversed and vacated several Patent Trial and Appeal Board decisions related to the patentability of U.S. Patent Nos. 10,639,812 and 10,625,436. The patents relate to high-speed slicers used to slice and package food products.

    CATEGORIES : Prior ArtPTAB
  • Federal Circuit Finds PTAB Implicitly And Incorrectly Construed Claim In Final Decision
     
    02/13/2024


    On February 7, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) reversed a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”) finding the challenged claims of the ’753 patent not unpatentable. Google LLC v. EcoFactor, Inc., __ F.3d __ (Fed. Cir. Feb. 7, 2024). In its precedential decision reversing and remanding, the CAFC found that the PTAB relied on an implicit construction of a claim limitation and that this construction was wrong.

    CATEGORIES : IPRsPTAB
  • Federal Circuit Affirms PTAB’s Final Written Decision, Holding That Obviousness Does Not Require An Actual, Physical Substitution Of Elements
    01/31/2024

    On January 22, 2024, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) invalidating the claims of U.S. Patent No. 9,458,814 (“’814 patent”) on obviousness grounds. The ’814 patent is directed to a remote start system for a vehicle. The system includes a remote start transmitter physically separate from the vehicle. The transmitter is configured to receive a signal from a user and transmit the signal to the vehicle. The vehicle, upon receiving the transmitted signal, automatically performs multiple functions: a vehicle brake is operated, a climate control system is activated, and the engine is started.

    CATEGORIES : IPRsObviousnessPTAB
  • Federal Circuit Affirms PTAB’s Final Written Decision, Holding That The Passing Of The Statutory Deadline Did Not Deprive The Board Of Authority To Issue Its Decision
     
    12/13/2023

    On November 21, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) finding claims 1–17 of U.S. Patent No. 9,693,961 (“’961 patent”) unpatentable for lack of written description and anticipation.
    CATEGORIES : Post-Grant ReviewPTAB
  • Federal Circuit Finds PTAB Sufficiently Addressed Arguments Actually Raised In IPR Petitions
     
    11/07/2023

    On October 25, 2023, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed two final written decisions from the U.S. Patent Trial and Appeal Board (“PTAB”), determining that appellant IPR petitioner did not meet its burden of proving unpatentability.  Netflix Inc. v. DivX LLC, __ F.3d __ (Fed. Cir. October 25, 2023).  In its precedential decision, the CAFC found no error in how the PTAB understood appellant’s petition arguments and further found that certain other arguments newly raised by appellant on appeal had been forfeited.
    CATEGORIES : IP Litigation ProcedureIPRsPTAB
  • The Federal Circuit Reminds The PTAB Of The Meaning Of “A”
     
    11/01/2023

    On October 19, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion that reversed-in-part, vacated, and remanded the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that the prior art, including Claire Simonnet & Alex Groisman, High-Throughput and High-Resolution Flow Cytometry in Molded Microfluidic Devices, 78 Analytical Chemistry 5653 (2006) (“Simonnet”), did not render unpatentable Appellee Cytonome/ST, LLC’s (“Cytonome”) U.S. Patent No. 10,583,439 (the “’439 patent”), pursuant to 35 U.S.C. §§ 102 and 103.  ABS Glob., Inc. v. Cytonome/St, LLC, No. 2022-1761, 2023 WL 6885009 (Fed. Cir. Oct. 19, 2023).
    CATEGORIES : IPRsObviousnessPrior ArtPTAB
  • Federal Circuit Affirms PTAB Claim Construction Interpretation And Upholds Refusal To Allow Impermissibly Broad Substitute Claims
     
    10/11/2023

    On September 1, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion upholding the Patent Trial and Appeal Board’s (“PTAB”) (i) construction of the claim term “connection rejection message” as having its plain and ordinary meaning; (ii) finding that the proposed substitute independent claim was impermissibly broader than the original claim; and (iii) finding that the proposed substitute claims that were dependent on the impermissible independent claim were also impermissibly broadened.  Sisvel International S.A. v. Sierra Wireless, Inc., No. 2022-1387, -- F.4th --, 2023 WL 5659063 (Fed. Cir. Sept. 1, 2023).
    CATEGORIES : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Tells PTAB To Base Its Decision On Grounds The Parties Raise
     
    10/11/2023

    On September 11, 2023, the United States Court of Appeals for the Federal Circuit issued an opinion, vacating the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that the prior art, including U.S. Patent No. 7,859,588 (“Parulski”), did not render unpatentable Appellee Corephotonics, Ltd.’s (“Corephotonics”) U.S. Patent No. 10,225,479 (the “’479 patent”) pursuant to 35 U.S.C. § 103.  Apple Inc. v. Corephotonics, Ltd., No. 2022-1350, 2023 WL 5838695 (Fed. Cir. Sept. 11, 2023).
    CATEGORIES : IPRsObviousnessPrior ArtPTAB
  • Federal Circuit Affirms PTAB On Motivation To Combine And Reasonable Expectation Of Success
     
    10/11/2023

    On September 21, 2023, the United States Court of Appeals for the Federal Circuit affirmed a decision by the United States Patent and Trademark Office, Patent Trial and Appeal Board (“PTAB”), holding that claims of U.S. Patent No. 7,295,648 (the “’648 patent”) owned by Elekta Limited (“Elekta”) were unpatentable as obvious.  Elekta Ltd. v. ZAP Surgical Sys., Inc., No. 2021-1985 (Fed. Cir. Sept. 21, 2023).  The CAFC panel (Reyna, Stoll and Stark) reviewed the PTAB’s legal conclusions de novo and its factual findings for substantial evidence.  In affirming the PTAB, the CAFC concluded that the PTAB’s factual findings as to both the motivation to combine prior art references and the reasonable expectation of success in making the combination were supported by substantial evidence.
    CATEGORIES : IPRsObviousnessPTAB
  • Federal Circuit Vacates PTAB’s Final Written Decisions Because The Board Erred In Its Obviousness Analysis
     
    08/01/2023

    Medtronic, Inc., asserted U.S. Patent Nos. 8,626,314 and 8,036,756 against Axonics, Inc., in a patent infringement lawsuit.  In response, Axonics challenged various claims of the Medtronic patents for obviousness in inter partes reviews (IPRs).  In both IPRs, the Patent Trial and Appeal Board concluded that Axonics had failed to prove any of the challenged claims unpatentable.  Axonics appealed.  On July 10, 2023, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating the Board’s final written decisions in both IPRs.
    CATEGORIES : IPRsObviousnessPTAB
  • Federal Circuit Holds That Pure AIA Patents Are Not Subject To Interferences
     
    08/01/2023

    On July 14, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion reversing the decision of the Patent Trial and Appeal Board (“PTAB”), holding that a patent that has only ever contained claims with an effective filing date that postdates the effective date of the America Invents Act (“AIA”) may not be subject to an interference—even if the allegedly interfering patent has a priority date prior to the AIA.  SNIPR Technologies Limited v. Rockefeller University, No. 2022-1260, -- F.4th --, 2023 WL 4536369 (Fed. Cir. July 14, 2023).
    CATEGORIES : IP Litigation ProcedurePTAB
  • Federal Circuit Affirms PTAB, Citing Recent SCOTUS Opinion On Enablement
     
    07/06/2023

    On June 27, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed a decision by the United States Patent and Trademark Office, Patent Trial and Appeal Board (“PTAB”), holding that proposed substitute claims were not patentable for lack of written description and lack of enablement under 35 U.S.C. § 112.  Medytox, Inc., v. Galderma S.A., No. 2022-1165 (Fed. Cir. June 27, 2023).  The CAFC panel (Dyk, Reyna, and Stark) reviewed the PTAB’s legal conclusions de novo and its factual findings for substantial evidence.  In affirming the PTAB, the CAFC concluded that the substitute claims were not enabled because a skilled artisan would not have been able “to make and use all of what is claimed.”
  • PTAB Finds Unified Patents’ Members Are Real Parties In Interest, But USPTO Director Says Determination Was Unnecessary And Vacates
     
    06/21/2023

    The PTAB recently released public versions of earlier decisions about the implications of Unified Patents’ business model and when the PTAB should decide disputes about identification of real parties in interest (“RPIs”).  On March 8, 2023, the PTAB issued a determination that Unified Patents should have identified its members Apple and Samsung as RPIs in its IPR challenge of MemoryWeb’s patent, which had been asserted against those members.  Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 56 (P.T.A.B. Mar. 8 2023).  On May 16, 2023, USPTO Director Vidal granted director review of the decision and vacated the RPI determination, finding it had been unnecessary to resolve the proceeding.  Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 76 (P.T.A.B. May 22, 2023).
    CATEGORIES : IPRsPTABReal Party In Interest
  • The Federal Circuit Affirms Patentability Of Teleflex Patents And Confirms Low Bar For Corroboration Of Prior Inventorship
     
    06/13/2023

    On May 24, 2023, the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) issued an opinion affirming the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the “Board”) decision that U.S. Patent 7,736,355 to Itou, et al. (“Itou”) could not be used as prior art to invalidate five Teleflex Innovations S.à.R.L. (“Teleflex”) patents, which were on appeal.  Medtronic, Inc. v. Teleflex Innovations S.à.R.L., No. 2021-2356, 2023 WL 3606143 (Fed. Cir. May 24, 2023).
    CATEGORIES : IPRsObviousnessPrior ArtPTAB
  • Federal Circuit Affirms Unpatentability Of Gaming Machine Patent
     
    06/01/2023

    On May 9, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the unpatentability decision of the Patent Trial and Appeal Board (“Board”), finding, with respect to the independent claims, that the Board either did not misconstrue the claims or that any error with respect to the Board’s claim construction was harmless.  With respect to the dependent claims, the CAFC found that there was a sufficient motivation to combine the asserted prior art references.  Bot M8 LLC v. Sony Interactive Entertainment LLC, No. 2022-1291, -- F.4th --, 2023 WL 3311550 (Fed. Cir. May 9, 2023).
    CATEGORIES : IPRsObviousnessPTAB
  • Federal Circuit Affirms PTAB Final Written Decision Finding Fluorescence Detection Patent Not Unpatentable as Obvious
     
    05/09/2023

    On April 24, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“Board”) finding that Leica Microsystems, Inc. (“Leica”) failed to show that the claims of a patent directed to a fluorescence detection system were unpatentable as obvious. Leica Microsystems, Inc. v. Regents of the University of Michigan, Appeal No. 22-1445 (Fed. Cir. Apr. 24, 2023).
    CATEGORIES : IPRsObviousnessPTAB
  • Federal Circuit Revives Lawsuit Challenging The USPTO Director’s Fintiv Instructions On A Limited Basis To Determine Whether They Were Improperly Issued Without A Notice-and-Comment Period
     
    03/24/2023

    ​On March 13, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed-in-part and reversed-in-part an order of the United States District Court for the Northern District of California (N.D. Cal.) dismissing as unreviewable a lawsuit challenging the instructions of the Director of the U.S. Patent and Trademark Office (“USPTO”) regarding the standard for discretionary denial of petitions for inter partes review (IPR) based on pending parallel litigation involving the same patents.  Apple Inc. v. Vidal, No. 2022-1249, —F.4th— (Fed. Cir. Mar. 13, 2023).  The CAFC affirmed the unreviewability dismissal of the challenge to the Fintiv instructions as contrary to statute and arbitrary and capricious but reversed and remanded the dismissal of the challenge to the instructions as improperly issued without a notice-and-comment period.
    CATEGORIES : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Reverses PTAB’s Finding That Challenged Claim Was Not Unpatentable Where PTAB Committed Legal Error By Requiring “Bodily Incorporation” Of Obviousness Combination
     
    03/24/2023

    On February 24, 2023, the United States Court of Appeals for the Federal Circuit (CAFC) reversed a final written decision by the Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”), finding the challenged claim not unpatentable as obvious.  Intel Corp. v. PACT XPP Schweiz AG, No. 2022-0138 (Fed. Cir. Feb. 24, 2023).  In doing so, the CAFC held that the PTAB improperly required the petitioner to show the prior art references could be “bodily incorporated.”
  • Federal Circuit Affirms PTAB Decision Allowing IPR Claim Amendments That Go Beyond Addressing Instituted Grounds
     
    11/22/2022

    On November 14, 2022, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the Patent Trial and Appeal Board (PTAB) allowing claim amendments during inter partes review (IPR) proceedings that addressed issues additional to those raised by the grounds relied upon for institution of the IPR. Am. Nat’l Mfg. Inc. v. Sleep No. Corp., Nos. 2021-1321, 1323, 1379, 1382, (Fed. Cir. Nov. 14, 2022). The Court found that the PTAB had not erred when it permitted Sleep Number, the patent owner, to submit claim amendments in IPR that addressed Section 112 issues (which were additional to amendments addressing the instituted grounds).
    CATEGORIES : IP LitigationIPRsPTABSection 112
  • Federal Circuit Finds Appellant Patentee Lacks Standing In An Appeal From An Inter Partes Review Finding Unpatentable A Claim Previously Cancelled In Ex Parte Reexamination
     
    09/07/2022

    On August 29, 2022, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion in a consolidated appeal relating to two inter partes reexamination (“IPR”) decisions from the Patent Trial and Appeal Board (“PTAB”) finding all challenged claims of United States Patent 6,393,096 unpatentable.  Best Medical Int’l., Inc. v. Elekta Inc., Nos. 2021-2099, 2021-2100 (Fed. Cir. Aug. 29, 2022).  The CAFC held, inter alia, that Appellant patentee lacked standing to appeal the PTAB’s IPR unpatentability decision with respect to a claim that Appellant previously had canceled in an ex parte reexamination (“reexamination”).
    CATEGORIES : IPRsPTAB
  • Federal Circuit Holds IPR Estoppel Applies To A Patent Claim Identified In An IPR Petition But Not Considered In The Final Written Decision
     
    09/07/2022

    On August 17, 2022, the Federal Circuit reversed a district court’s grant of summary judgment of invalidity, finding that IPR estoppel under 35 U.S.C. § 315(e)(2) barred Ingenio, Inc.’s invalidity argument, even though the challenged claim had not been addressed by the PTAB in the final written decision in Ingenio’s IPR.  Click-to-Call Techs. LP v. Ingenio, Inc., No. 2022-1016 (Fed. Cir. Aug. 17, 2022).
  • Federal Circuit Affirms PTAB Decision Finding Claims Unpatentable Based On A Patent Application Publication’s Incorporation By Reference Of A Provisional Application
     
    05/17/2022

    On May 6, 2022, the United States Court of Appeals for the Federal Circuit (“CAFC”) affirmed a final written decision from the U.S. Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office.  Konda v. Flex Logic Techs., Inc., No. 2022-1162, __ F. App’x __ (Fed. Cir. May 6, 2022).  The PTAB agreed that a prior art reference rendered unpatentable the challenged claims.
    CATEGORIES : Inter Partes ReviewIPRsPrior ArtPTAB
  • PTAB Exercises Discretion To Deny IPR Institution Due To ITC Investigation Despite Multiple Stayed District Court Cases
     
    04/05/2022

    On March 18, 2022, the Patent Trial and Appeal Board of the United States Patent and Trademark Office exercised its discretion under 35 U.S.C. § 314(a) to deny institution of a petition for inter partes review filed by Google LLC challenging a patent asserted against it in an ITC investigation and a parallel district court case. Google LLC v. EcoFactor, Inc., IPR2021-01578, Paper 9 (PTAB Mar. 18, 2022).  The PTAB’s denial relied primarily on the late stage of the ITC investigation.
  • Federal Circuit Holds That Applicant Admitted Prior Art Cannot Be The Basis For An IPR Challenge
     
    02/08/2022

    On February 2, 2022, the United States Court of Appeals for the Federal Circuit vacated a decision from the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, finding that the Board erred in concluding that applicant admitted prior art (“AAPA”) constitutes “prior art consisting of patents or printed publications” under 35 U.S.C. § 311(b).  Qualcomm Inc. v. Apple Inc., __ F.4th __ (Fed. Cir. Jan. 27, 2022).
  • The District Court For The Eastern District Of Texas Denies Motion To Stay Pending Ex Parte Reexamination
     
    01/19/2022

    On January 6, 2022, Chief Judge Gilstrap of the United States District Court for the Eastern District of Texas denied a motion to stay pending ex parte reexamination (“EPR”) of the patent asserted in the litigation, and found that defendant was relying on the EPR as part of a strategy of “examiner shopping.”  Longhorn HD LLC v. NetScout Systems, Inc., 2-20-cv-00349.
    CATEGORIES : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Decides IPR Petitioner’s Standing In Two Appeals, With Different Outcomes
     
    12/08/2021

    On December 1, 2021, the United States Court of Appeals for the Federal Circuit (CAFC) issued two opinions related to the same inter partes review (IPR) petitioner’s standing to appeal two decisions of the Patent Trial and Appeal Board (PTAB).  ModernaTx, Inc. v. Arbutus Biopharma Corp, — F.4th — (Fed. Cir. Dec. 1, 2021); ModernaTx, Inc. v. Arbutus Biopharma Corp f/k/a Protiva Biotherapeutics, Inc., — F.4th — (Fed. Cir. Dec. 1, 2021).  In the first opinion, the CAFC found that petitioner had established standing by demonstrating a sufficient risk of an infringement suit based on the patent owner’s statements and actions.  In the second opinion, the CAFC found that petitioner lacked standing at the time the appeal was filed because petitioner’s evidence of financial burden from the validity of the patent at issue was too speculative.
    CATEGORIES : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Rejects Arguments That The USPTO Is Unconstitutionally Structured
     
    10/19/2021

    On October 13, 2021, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued an opinion rejecting a patentee’s arguments challenging the constitutionality of the U.S. Patent and Trademark Office’s (USPTO’s) structure based on its purported financial interest in instituting inter partes reviews (IPRs).  Mobility Workx, LLC v. Unified Patents, LLC, --- F.3d --- (Fed. Cir. Oct. 13, 2021).  The CAFC found that the financial interests of the Patent Trial and Appeal Board (PTAB) leadership and of individual administrative patent judges (APJs) were too remote to violate due process under the U.S. Supreme Court’s decision in Tumey v. Ohio.
    CATEGORIES : IP Litigation ProcedureIPRsPTAB
  • Federal Circuit Affirms PTAB’s Non-Obviousness Decision Due To Lack Of Motivation To Combine
     
    04/20/2021

    On April 13, 2021, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), finding that the claims of the challenged patent had not been proved obvious because the petition for inter partes review (IPR) failed to show that there would have been a motivation to combine the two allegedly invalidating prior art references.  Apple Inc. v. INVT SPE LLC, —F.3d — (Fed. Cir. Apr. 13, 2021).
    CATEGORIES : IPRsObviousnessPTAB
  • Federal Circuit Affirms PTAB’s Rejection Of Claims Directed To More Accurate Genetic Data Interpretation As Patent Ineligible
     
    04/06/2021

    On March 25, 2021, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a ruling of the Patent Trial and Appeal Board (“PTAB”) finding patent claims directed to methods of interpreting genetic data to be patent ineligible.  In re Bd. of Trs. of the Leland Stanford Junior Univ., --- F.3d --- (Fed. Cir. Mar. 25, 2021).  The CAFC found that the rejected claims are drawn to patent-ineligible abstract mathematical calculations and statistical modeling, and that the claim limitations do not establish an inventive concept sufficient to transform such subject matter into patentable subject matter.
  • Federal Circuit Affirms PTAB’s Decision Related To Estoppel Over IPR Joined Parties And Obviousness
     
    03/17/2021

    On March 9, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming estoppel and obviousness rulings by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”).  Uniloc 2017 LLC v. Facebook Inc., ___ F.3d ___ (Fed. Cir. March 9, 2021).  The CAFC ruled that it had jurisdiction to review the PTAB’s decision as to estoppel related to the inter partes review (“IPR”) estoppel provision of Section 315(e)(1).  The CAFC further ruled that a joined party to a first IPR was not barred from maintaining review of claims that the primary challenger became estopped from challenging based on a decision in a second IPR to which the challenger was joined.
     
  • Federal Circuit Affirms PTAB’s Substitution-Based Obviousness Decision Related to Refrigerant Mixture
     
    03/02/2021

    On February 24, 2021, 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). Daikin Indus., LTD v. The Chemours Co. FC, LLC, __ F.3d __ (Fed. Cir. Feb. 24, 2021).  The CAFC found that the petition for inter partes review (IPR) properly set forth a substitution-based theory of obviousness and that the PTAB’s substitution analysis was supported by substantial evidence.
     
    CATEGORIES : IPRsObviousnessPTAB
  • PTAB Denies IPR Institution Due To Co-Pending ITC Investigation
     
    11/24/2020

    On November 18, 2020, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) denied institution of a petition for inter partes review (IPR).  Google LLC v. EcoFactor Inc., case no. IPR2020-00946 (PTAB Nov. 18, 2020).  In its decision, the PTAB exercised its discretion under 35 U.S.C. § 314(a) to deny institution because of a co-pending investigation before the International Trade Commission (ITC) involving the challenged patent.
     
  • PTAB Institutes IPR Over Patent Owner’s Section 325(d) Argument That The Same Art And Arguments Were Already Considered By The Patent Office
     
    10/13/2020

    On October 6, 2020, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) instituted an inter partes review (IPR) proceeding, rejecting Patent Owner’s argument that the PTAB should exercise its discretion under 35 U.S.C. § 325(d) to deny institution because the same prior art and arguments were before the Patent Office Examiner during original prosecution.  Sony Interactive Entertainment LLC v. Bot M8, LLC, Case No. IPR2020-00726 (PTAB Oct. 6, 2020).  In doing so, the PTAB agreed with Petitioner that the Examiner overlooked a reference’s teaching. 
     
  • Federal Circuit Affirms PTAB’s Claim Construction, Despite Recitation Of Incorrect Legal Standard, And Concludes That Substantial Evidence Supports Its Unpatentability Findings
     
    10/08/2020

    On September 30, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”), finding certain challenged claims unpatentable under the PTAB’s claim construction of “low-power radio frequency signal,” and finding that substantial evidence supports the PTAB’s underlying factual findings relating to the challenged claims.  Emerson Electric Co. v. SIPCO, LLC, __ F.3d __ (Fed. Cir. Sept. 30, 2020).
     
    CATEGORIES : IPRsPTAB
  • Federal Circuit Limits Scope Of IPR Estoppel, And Vacates Claim Construction That Was Based On Expert Testimony
     
    09/29/2020

    On September 24, 2020, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming-in-part, reversing-in-part, vacating, and remanding a final judgment of the United States District Court for the Eastern District of Texas that Appellant’s patent claims are not infringed; that Cross-appellant is estopped from raising certain validity challenges based on its joinder to an inter partes review (“IPR”) before the Patent Trial and Appeal Board (“PTAB”); and that asserted claim 6 was not improperly broadened during reexamination.  Network-1 Technologies, Inc. v. Hewlett-Packard Co., __ F.3d __ (Fed. Cir. Sept. 24, 2020).  In its decision, the CAFC vacated the district court’s judgment of non-infringement as based on incorrect claim construction, vacated the district court’s judgment as a matter of law (“JMOL”) on validity for improperly applying statutory estoppel, and affirmed the district court’s decision with respect to improper claim broadening.
     
    CATEGORIES : IP Litigation ProcedureIPRsPTAB
  • ITC Suspends Enforcement Of Remedial Orders Pending Appeal Of IPR Final Written Decision
     
    09/15/2020

    On September 8, 2020, the United States International Trade Commission (“ITC”) issued an opinion suspending enforcement of remedial orders pending appeal of the Patent Trial and Appeals Board’s (“PTAB”) final written decision (“FWD”) of unpatentability in a parallel inter partes review (“IPR”) proceeding.  Certain Unmanned Aerial Vehicles and Components Thereof, Inv. No. 337-TA-1133, Comm’n Op. (Sept. 8, 2020); Certain Unmanned Aerial Vehicles and Components Thereof, Inv. No. 337-TA-1133, Final Determination (Aug. 20, 2020).  In its opinion, the ITC relied on its broad discretion in selecting a remedy, its recognition of the PTAB’s leading role in assessing the validity of patent claims, and Congress’s goal for IPRs to be a substitute for litigation on patent validity issues.
     
    CATEGORIES : IP Litigation ProcedureIPRsITCPTAB
  • Patent Office Issues Binding Memorandum Concerning Use Of Applicant Admitted Prior Art In Inter Partes Review Proceedings
     
    09/01/2020

    On August 18, 2020, Director Iancu of the U.S. Patent and Trademark Office (“USPTO”) issued a Memorandum entitled “Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Reviews Under § 311.”  The Memo provides binding guidance concerning the USPTO’s view of the use of “applicant admitted prior art” (referred to as “AAPA” or “APA,” for short) by a petitioner to support a patentability challenge in an inter partes review (“IPR”).
     
    CATEGORIES : IPRsPTAB
  • Federal Circuit Affirms District Court’s Dismissal Of Declaratory Judgment Suit Challenging The Constitutionality Of Retroactive Application Of Inter Partes Review
     
    08/25/2020

    On August 20, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the decision of the U.S. District Court for the Northern District of California dismissing plaintiff-appellant Security People, Inc.’s suit under the Administrative Procedure Act (“APA”) challenging the constitutionality of the cancellation of its patent in an inter partes review proceeding (“IPR”).  Security People, Inc. v. Iancu, __ F.3d __ (Fed. Cir. Aug. 20, 2020).
     
    CATEGORIES : IPRsPTAB
  • Federal Circuit Holds That Patent Owner’s Substitute Claims Presented During IPR Are Subject To A Full Examination
     
    07/28/2020

    On July 22, 2020, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeal Board’s (PTAB) denial of a rehearing on a motion to amend the claims of a patent challenged in an inter partes review (IPR).  Uniloc 2017 LLC v. Hulu, LLC & Netflix, Inc., No. 19-1686, __ F.3d __ (Fed. Cir. Jul. 22, 2020).  The CAFC held that the PTAB may consider any ground of unpatentability—not just anticipation or obviousness grounds based on patents or printed publications under Section 311(b)—when considering the patentability of substitute claims during an IPR.
     
  • Federal Circuit Expands Arthrex  To Ex Parte  Appeals From Original Prosecution
     
    07/14/2020

    On July 7, 2020, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an Order on Motion vacating and remanding the underlying decisions in ex parte appeals of the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office (“USPTO”) affirming the examiner’s rejection of patent application claims.  In re Boloro Global Ltd., No. 2019-2349 (Fed. Cir. July 7, 2020).  In doing so, the CAFC applied the reasoning from its decisions in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) and VirnetX Inc. v. Cisco Sys., Inc., No. 2019-1671, 2020 WL 2462797 (Fed. Cir. May 13, 2020), which held that administrative patent judges (“APJs”) were “principal officers” and not constitutionally appointed at the time the PTAB issued its final decisions in the underlying inter partes review and re-exam proceedings, respectively.
     
    CATEGORIES : ConstitutionalityPTAB
  • 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
  • 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 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.
     
    CATEGORIES : IP Litigation ProcedureIPRsPTAB
  • 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 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.
     
    CATEGORIES : IP Litigation ProcedureIPRsPTAB
  • 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 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
  • 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
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