Federal Circuit Declares Unreviewable PTAB’s Refusal to Apply Assignor Estoppel

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The Federal Circuit continues to declare aspects of the PTAB’s work to be beyond its review.  Most recently, in Husky Injection Molding Systems Ltd., v. Athena Automation Ltd., Case Nos. 2015-1726, 2015-1727 (Fed. Cir. Sept. 23, 2016), the Federal Circuit, in a 2-1 decision, concluded that it lacked authority to question the PTAB’s refusal to extend the equitable doctrine of assignor estoppel to PTAB proceedings. We previously reported on the Federal Circuit’s opinion regarding the merits of the PTAB’s Final Decision invalidating the Husky patent. The following discussion instead focuses on those aspects of the Federal Circuit’s opinion concerning appellate review of the Board’s decision to institute review. Continue Reading

Supreme Court Declines to Weigh in on AIA Issues

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The Supreme Court recently issued orders (Oct. 3 and Oct. 11) denying several petitions for certiorari challenging aspects of AIA trials. As we previously reported, two of those petitions challenged the constitutionality of AIA trials and the Patent Office’s authority to cancel patent rights between private parties. Cooper v. Lee, __ S.Ct. __, 2016 WL 361681 (Oct. 11, 2016); MCM Portfolio v. Hewlett-Packard Co., et al., __ S.Ct. __, 2016 WL 1724103 (Oct. 11, 2016). On the same day, the Court denied Merck’s petition challenging the Federal Circuit’s deferential standard of review of the PTAB’s AIA trial decisions. Merck & Cie, et al. v. Gnosis S.P.A. et al.,__S.Ct. __, 2016 WL 4014485 (Oct. 11, 2016). We covered the Federal Circuit decision at issue here. Continue Reading

PTAB Failed to Properly Apply Incorporation by Reference Standard for Anticipation

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This blog previously referenced Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., IPR2013-00290 as an example of the Board granting a request for rehearing, but ultimately confirming its original decision.  On appeal, the Federal Circuit vacated the Board’s decision on the particular issues raised by the Petitioner in the request for rehearing, suggesting that if at first you don’t succeed, try again at the Federal Circuit.  Husky Injection Molding Systems Ltd. v. Athena Automation Ltd., 2015-1726, 2015-1727 (Fed. Cir. Sep. 23, 2016). (As we will discuss separately, on the Patent Owner’s cross-appeal, the Federal Circuit determined that it lacked authority to review the PTAB’s refusal to extend the equitable doctrine of assignor estoppel to PTAB proceedings.) Continue Reading

Petition Solicits Supreme Court Review of PTAB’s Authority to Institute IPRs

Magnifying GlassWe previously reported on the Federal Circuit’s decision in Ethicon Endo-Surgery, Inc. v. Coviden, No. 2014-1771 (Fed. Cir. 2016) that the AIA does not preclude the same PTAB panel from rendering both institution and final decisions in an IPR, and we previously reported on the Federal Circuit’s denial, over Judge Newman’s strong dissent, of the Patent Owner’s petition for an en banc hearing of this decision.  On September 20, 2016, the Patent Owner, Ethicon, filed a petition for a writ of certiorari with the Supreme Court, requesting Supreme Court review, and reversal of, the Federal Circuit’s decision. Continue Reading

Patent Office Proposes to Increase AIA Trial Fees

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In the October 3, 2016, Federal Register, the Patent Office published a notice of proposed rulemaking to adjust various fees the Office charges for its services, including 18% to 56% increases for AIA trial fees (as shown below).

According to the notice, the Patent Trial and Appeal Board has received more than 4,700 AIA trial petitions since 2012, and it received over 1,900 in the fiscal year that ended September 30, 2016. In setting the fee structure for administering those trials, the Patent Office had to estimate the demand and workload based on limited data from its administration of inter partes reexamination and interference proceedings. Continue Reading

District Court Rejects Indefiniteness Argument Despite Board Finding of No Corresponding Structure for Means-Plus-Function Claim

Route 22 signA pair of recent decisions, one from a federal district court and another from the PTAB, highlight the potential of inconsistent results regarding patent validity. In Microwave Vision, S.A. v. ETS-Lindgren Inc., Civ. Action No. 1:14-CV-1153-SCJ (D. Ga. Sept. 20, 2016), the court denied an accused infringer’s (ETS’s) motion for summary judgment of invalidity, after addressing and ultimately disagreeing with the Board’s analysis of the patent in a parallel IPR. The Board opined, but did not decide, that the same patent claims may be invalid for indefiniteness and decided not to institute an IPR. This seemingly places a patent challenger in a Catch 22 position insofar as the Board won’t institute IPR to address prior art patentability because it cannot construe the claim, yet the court won’t conclude the claim is indefinite because it disagrees with the Board. Continue Reading

No Written Description, No Problem when Prosecution History Disclaimer is Applied

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The Patent and Trial Appeal Board invoked the doctrine of prosecution history disclaimer to construe the claims at issue narrowly for the inter partes review of U.S. Patent No. 5,884,033; and thus, concluding that the claims had not been shown to be unpatentable in light of prior art. The Board rejected the Petitioner’s additional arguments that the claims as construed were not adequately described in the specification. The Board noted that it was not proper for it to consider whether the claims as construed were valid under 35 U.S.C. §112, first paragraph. Continue Reading

Federal Circuit Again Refuses to Review PTAB’s Application of the Time Bar to AIA Petitions

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The Federal Circuit has again concluded it may not review the PTAB’s institution of inter partes review (IPR) over a patent owner’s objections that the IPR petition is time barred. Wi-Fi One, LLC v. Broadcom Corp., Appeal 2015-1944 (Fed. Cir. Sept. 16, 2016). The court’s conclusion may be somewhat surprising because earlier this summer, in another case, the Supreme Court issued an order vacating the Federal Circuit’s decision that reached a similar conclusion. Click-to-Call Technologies, LP v. Oracle Corp., 622 Fed. Appx. 907 (Fed. Cir. 2015) (per curiam), vacated, 136 S. Ct. 2508 (Mem) (2016). We discussed that case and the Court’s order here. Continue Reading

PTAB Bar Association Officially Launched

We are pleased to share that the new Patent Trial & Appeal Board (PTAB) Bar Association launched Friday, September 16, 2016.  The organization will provide a forum for communications between the legal community and PTAB officials and its Administrative Patent Judges (APJs), particularly to share best practices and stay abreast of the rule making, procedure and jurisprudence emanating from the PTAB.  Marshall Gerstein is one of the founding firms.

The Inaugural Annual Conference of the PTAB Bar Association will take place March 1 & 2, 2017 in Washington, D.C. To become a member of the PTAB Bar Association, and for more details on its events and functions, please visit www.PTABBar.org.

ChIPs Conference Coverage

Trade SecretsI had the opportunity to attend the ChIPs (Chiefs of Intellectual Property) conference in Washington DC this week and thought that several of the panels that I attended would be of interest to the PTABWatch readership.  The organization is focused on the advancement of women in tech, law, and policy and enjoys strong participation from the judiciary, PTO, copyright office, and many prominent in-house and private-practice attorneys. For more information about ChIPs, check out the website at chipsnetwork.org. Continue Reading