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  • 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: PTABConstitutionality
  • 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.
     
  • 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.
     
  • 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
  • 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.
     
  • 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 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
  • 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 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.
  • 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.”
  • 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.
  • PTAB Finds Patent Claims Ineligible Under USPTO’s Revised Guidance On Section 101
     
    04/30/2019

    On April 22, 2019, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) made public its Final Written Decision on the patentability of challenged claims in a covered business method patent review (CBM) proceeding.  Fidelity Information Services, LLC v. Mirror Imaging, LLC, CBM Case No. CBM2017-00064 (PTAB Apr. 22, 2019).  The PTAB held the challenged claims were patent ineligible under 35 U.S.C. § 101, consistent with the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).
  • PTAB Goes “Deeper,” Offering Further Guidance On Its Post-SAS Practice
     
    04/16/2019

    On April 5, 2019, the Patent Trial and Appeal Board (“PTAB”) at the United States Patent and Trademark Office designated as “Informative” two prior decisions relating to the PTAB’s discretion about whether to institute inter partes review (“IPR”) proceedings for trial.  In each, the PTAB exercised its discretion to deny institution of an IPR proceeding, even though the Petitioner demonstrated a reasonable likelihood of prevailing on some claims.
    CATEGORIES: Inter-partes reviewIPRsPTAB
  • PTAB Designates Precedential Opinion Allowing Section 101 Consideration Of Proposed Amended Claims
     
    03/26/2019

    On March 18, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential a Decision on Patent Owner’s Request for Rehearing.  Amazon.com, Inc. v. Uniloc Luxembourg S.A., IPR Case No. IPR2017-00948 (PTAB Jan. 18, 2019).  The PTAB held that, while a Petitioner may only challenge patent claims in an inter partes review based on prior art patents and publications under 35 U.S.C. §§ 102 and 103, it is nonetheless proper to consider patent eligibility under 35 U.S.C. § 101 for any proposed substitute claims.
  • Federal Circuit Vacates Patent Trial And Appeal Board Decisions On CBM Proceedings Because the Challenged Patents Were For Technological Inventions And Thus Not Eligible For CBM Review
     
    02/20/2019

    On February 13, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion vacating covered-business-method review (CBM) decisions by the Patent Trial and Appeal Board (PTAB).  Trading Technologies International, Inc. v. IBG LLC, —F.App’x—, (Fed. Cir. Feb. 13, 2019).  The CAFC ruled that the challenged patents were not eligible for CBM review because they were for “technological inventions.”
  • United States District Court For The Eastern District Of New York Finds Patent Defendant Estopped From Asserting Invalidity Grounds That Defendant Did Not Include In Its Petition For Inter Partes Review
     
    02/12/2019

    On Wednesday, January 30, 2019, Judge Kiyo A. Matsumoto of the United States District Court for the Eastern District of New York denied the request of defendant Presidio Components, Inc., (the “Company”) to supplement its invalidity contentions.  American Technical Ceramics Corp. et al. v. Presidio Components, Inc., Case No. 14-cv-6544 (E.D.N.Y. Jan. 30, 2019).  Judge Matsumoto determined that the Company was statutorily estopped from raising invalidity grounds that it did not include in its petition for inter partes review (“IPR”) to the U.S. Patent and Trademark Office (“USPTO”), and, thus barred the Company from supplementing its invalidity contentions in the subsequent district court proceeding. 
    CATEGORIES: Inter-partes reviewIPRsPTAB
  • Patent Trial And Appeal Board Exercises Discretion To Deny Institution Of An IPR Based On Insufficient Use Of Resources Where Petitioner Had Shown A Reasonable Likelihood Of Prevailing On Only A Small Fraction Of Challenged Claims And Grounds
     
    02/05/2019

    On Thursday, January 24, 2019, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) issued a decision exercising its statutorily authorized discretion to deny institution of a petition for inter partes review (IPR).  Deeper, UAB v. Vexilar, Inc., IPR Case No. 2018-01310 (PTAB Jan. 24, 2019).  The PTAB determined that instituting IPR would be an inefficient use of the PTAB’s finite resources because the petitioner had shown a reasonable likelihood of prevailing on its invalidity challenges with respect to only two of the twenty-three challenged claims as to one of the four grounds.
     
    CATEGORIES: Inter-partes reviewPTAB
  • Federal Circuit Affirms Patent Trial And Appeal Board Reconsideration Ruling That Claims Are Unpatentable On Non-Instituted Ground Not Addressed In Final Written Decision
     
    01/15/2019

    On January 9, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a decision on reconsideration by the Patent Trial and Appeal Board (PTAB) that held challenged claims to be unpatentable on a non-instituted ground that was not addressed by the PTAB in its final written decision.  AG Technologies S.A. v. Amazon.com Inc., —F.3d—, (Fed. Cir. Jan. 9, 2019).  The CAFC ruled that the PTAB had not exceeded its statutory authority or deprived the patent owner of fair process by belatedly considering the additional ground.
  • Federal Circuit Affirms PTAB Finding That Assignor Estoppel Does Not Apply To IPRs
     
    11/20/2018

    On Friday, November 9, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming in part a final written decision by the Patent Trial and Appeal Board (PTAB).   Arista Networks, Inc. v. Cisco Sys., Inc., —F.3d— (Fed. Cir. Nov. 9, 2018).  The CAFC ruled that the PTAB had correctly decided that the equitable doctrine of assignor estoppel does not apply in inter partes review (“IPR”) proceedings.
  • Federal Circuit Affirms PTAB Finding That Article Is Not A “Printed Publication”
     
    11/13/2018

    On November 6, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a final written decision by the Patent Trial and Appeal Board (PTAB) finding the patent claims that had been challenged by inter partes review (IPR) to be not unpatentable.   Acceleration Bay, LLC v. Activision Blizzard Inc., —F.3d—, (Fed. Cir. November 6, 2018).  The CAFC ruled that the patent challenger had not proved that an article available on the Internet before the critical date was a “printed publication,” and that the article therefore was not available as prior art.
  • Federal Circuit Clarifies Secondary Meaning And Infringement Tests For Trade Dress
     
    11/06/2018

    On October 30, 2018, the Court of Appeals for the Federal Circuit issued an opinion vacating an earlier decision from the International Trade Commission (“ITC”) regarding a shoe company’s (the “Company”) trademark in its All Star shoes trade dress.  Converse, Inc. v. Int’l Trade Comm’n, —F.3d—, (Fed. Cir. October 20, 2018).  The Court held that the presumption of secondary meaning that applies to registered marks does not apply before the registration.  The Court also clarified the considerations to be assessed in determining whether a mark has acquired secondary meaning. 
    CATEGORIES: ITCPTABTrademark
  • Patent Trial And Appeal Board Relies On References Not Available As IPR Prior Art In Unpatentability Decision
     

    10/31/2018


    On October 23, 2018, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office issued a final written decision in an inter partes review (IPR) challenging United States Patent No. 9,073,641.  C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2017-01275, paper no. 41 (October 23, 2018).  In that decision, the PTAB relied on evidence of prior-art designs to show unpatentability, even though prior art in IPRs is limited to patents and printed publications.

  • USPTO Issues Final Rule Adopting District-Court Claim Construction Standard For AIA Trial Proceedings
     
    10/16/2018
     

    On October 10, 2018, the United States Patent and Trademark Office (“USPTO”) announced that it had published its final rule changing the America Invents Act (“AIA”) trial proceeding claim-construction standard to the same standard used in district court and International Trade Commission (“ITC”) proceedings.  (83 FR 51340.)  As we previously reported, see Shearman & Sterling LLP, USPTO Issues Proposed Rulemaking to Adopt District-Court Claim Construction Standard for AIA Trial Proceedings, the USPTO in May 2018 proposed this change as part of its ongoing efforts to “shape and improve” AIA trial proceedings.

    CATEGORY: PTAB
  • Federal Circuit Affirms PTAB’s Treatment Of Priority-Date Claims
     
    10/09/2018

    On October 1, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a decision by the Patent Trial and Appeal Board (PTAB) cancelling a patent in inter partes reexamination.  Natural Alternatives Int’l, Inc. v. Iancu, —F.3d— (Fed. Cir. Oct. 1, 2018).  The PTAB and the CAFC both rejected the patent-owner’s argument that the patent in question was entitled to claim priority to one of the owner’s earlier patent applications.
    CATEGORY: PTAB
  • Federal Circuit Reverses PTAB Finding Of Patentability
     
    09/25/2018

    On Monday, September 17, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a final written decision by the Patent Trial and Appeal Board (PTAB) and finding the patent claims that had been challenged by inter partes review (IPR) to be unpatentable for obviousness.  E.I. du Pont de Nemours & Co. v. Synvina C.V., —F.3d—, (Fed. Cir. September 17, 2018).  The CAFC first ruled that the patent challenger had standing to appeal, and then on the merits determined that the PTAB had applied the wrong legal standard for obviousness, and therefore reversed.
  • PTAB Exercises Its Discretion To Deny Inter Partes Review Institution Because Of The Advanced Stage Of Parallel District Court Litigation
     
    09/17/2018

    On September 12, 2018, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office issued a decision exercising its statutorily authorized discretion to deny institution of a petition for inter partes review (IPR).  NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR Case No. 2018-00752 (PTAB Sept. 12, 2018).  In doing so, the PTAB ruled that the IPR petition’s reliance on substantially the same arguments that the patent owner overcame during original prosecution justified a discretionary denial in this instance, as did the advanced stage of a parallel litigation involving the same parties.
    CATEGORY: PTAB
  • Federal Circuit Reverses PTAB Rejection Of Design Patent Application
     
    08/28/2018

    On August 20, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a decision of the Patent Trial and Appeal Board (PTAB) in which the PTAB had rejected a design patent application for indefiniteness.  In re Ron Maatita, —F.3d—, (Fed. Cir. Aug. 20, 2018).  The CAFC ruled that the PTAB had wrongly applied the indefiniteness standard in the context of a design patent claiming the design of the sole of an athletic shoe.
    CATEGORIES: Design PatentsPTABSection 112
  • En Banc Federal Circuit Holds That Dismissal Without Prejudice Of District Court Action Does Not Reset IPR Time-Bar Clock
     
    08/21/2018

    On Thursday, August 16, 2018, the Court of Appeals for the Federal Circuit (CAFC), sitting en banc, issued an opinion reversing the Patent and Trial Board’s determination that a dismissal without prejudice of a district-court complaint resets the statutory clock for filing inter partes reviews (IPR), and vacating the Patent and Trial Board’s final written decision.  Oracle Corp. v. Click-to-Call Techs. LP, —F.3d—, (Fed. Cir. August 16, 2018).  The CAFC held that service of an infringement complaint triggers the one-year bar regardless of whether that complaint is later dismissed without prejudice.
  • Federal Circuit Considers Whether RPX Client Is A Real Party-In-Interest To RPX IPRs
     
    07/31/2018

    On July 24, 2018, the Court of Appeals for the Federal Circuit (“CAFC”) unsealed an opinion vacating a final written decision in two inter partes reviews (“IPRs”).  Applications in Internet Time, LLC v. RPX Corp., —F.3d— (Fed. Cir. July 9, 2018).  The CAFC remanded the IPRs to the Patent Trial and Appeal Board (“PTAB”) for further consideration of whether an RPX client was a real party-in-interest (“RPI”) to the IPRs, in which RPX had claimed to be the sole RPI.
    CATEGORIES: IPRsPTAB
  • Federal Circuit Rejects Indian Tribe’s “Sovereign Immunity” Argument Regarding A Validity Challenge To A Patent It Acquired From Allergan, Inc.
     
    07/24/2018

    In Saint Regis Mohawk Tribe et al. v. Mylan Pharmaceuticals Inc. et al., the Federal Circuit held that tribal sovereign immunity cannot be asserted in inter partes review (“IPR”) proceedings before the Patent Trial and Appeal Board (“Board”).
    CATEGORIES: IPRsPTAB
  • Federal Circuit Expands The Supreme Court’s SAS Holding To Require Institution On All Grounds Argued In An IPR Petition
     
    07/10/2018

    On July 2, 2018, a motions panel of the Court of Appeals for the Federal Circuit (CAFC) issued an order remanding an inter partes review (IPR) to the Patent Trial and Appeal Board (PTAB). Adidas AG v. Nike, Inc., Appeal Nos. 2018-1180 and 2018-1181. The CAFC noted that the final written decision that was the subject of the appeal had addressed only one of the two sets of grounds of unpatentability that had been asserted in the petition for inter partes review, and directed the PTAB to issue a new decision addressing both grounds.
  • Patent Trial And Appeal Board Designates As Precedential Opinion Instructing On Claim Amendments.
    06/13/2018

    On June 1, 2018, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential an opinion in which it issued instructions concerning patent claim amendments in inter partes review (“IPR”) proceedings.  Western Digital v. SPEX Techs., Case No. IPR2018-00082, paper no. 13 (April 25, 2018).  The PTAB also made a specific note of the duty of candor applicable to both patent owners and petitioners.

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  • USPTO Issues Proposed Rulemaking To Adopt District-Court Claim Construction Standard For AIA Trial Proceedings
     
    05/15/2018

    As part of its ongoing efforts to “shape and improve” post-grant trial proceedings under the America Invents Act (AIA), the United States Patent and Trademark Office (USPTO) announced on May 8, 2018, a Notice of Proposed Rulemaking to change the AIA trial proceeding claim-construction standard to the same standard used in district court and International Trade Commission (ITC) proceedings.  83 FR 21221.    

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    CATEGORY: PTAB
  • In Split Opinion, Federal Circuit Holds PTO Has Standing To Proceed Without Patent Challenger, As Sole Party Defending PTAB Inter Partes Invalidity Decision

    04/10/2018


    On April 6, 2018, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming an examiner’s rejection of various patent claims in an inter partes reexamination. Knowles Elec. LLC v. Iancu, case no. 2016-1954.  The United States Patent and Trademark Office (“PTO”) had intervened in the appeal to defend the examiner’s rejection.  In its opinion, the CAFC ruled that the PTO had standing to defend the examiner’s rejection even though the petitioner in the inter partes reexamination had abandoned the appeal.
     

  • Federal Circuit Argues Over IPR Appeal Procedure
     
    03/27/2018

    On March 23, 2018, a divided panel of the United States Court of Appeals for the Federal Circuit (CAFC) found that the Patent Trial and Appeal Board (PTAB) had not sufficiently explained its reasoning in a final written decision invalidating certain patent claims, and reversed the invalidity ruling.  DSS Tech. Mgmt. v. Apple Inc., appeal nos. 2016-2523 and 2016-2524.  One member of the panel (Newman, J.) dissented, both on the merits, and on whether the panel should have ordered remand instead of reversing.

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  • Federal Circuit Finds Sufficient Written Description In Species/Genus Disclosure Case
     
    03/20/2018

    On March 14, 2018, the United States Court of Appeals for the Federal Circuit (“CAFC”) ruled that a patent that discloses a technological species (“a fibre optics bundle”) provides written-description support for claims directed to a technological genus (“a light guide”).  Hologic, Inc. v. Smith & Nephew, Inc., appeal no. 2017-1389.  The opinion presents the inverse of the situation in the Knowles case summarized in last week’s Litigation Weekly.

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    CATEGORIES: PTABSection 112
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