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Teaching Away for Dummies

In Meiresonne v. Google, Inc., No. 2016-1755 (Fed. Cir. Mar. 7, 2017), the Federal Circuit affirmed the PTAB’s final written decision in IPR2014-01188 that the challenged claims in U.S. Patent No. 8,156,096 (the “’096 patent”) are unpatentable as obvious over the 1997 book “World Wide Web Searching for Dummies, 2nd Edition” by Brad Hill (“Hill”) and … Continue Reading

Joinder Does Not Prevent Application of IPR Estoppel Provision

A little more than a month after the Delaware district court narrowly interpreted the IPR estoppel provision to suggest that it may not be necessary to include all known grounds so as to avoid estoppel in district court litigation, the same court issued a decision suggesting that the IPR estoppel provision may not be so … Continue Reading

CBM Eligibility: Patent Must Have a Claim that Contains, However Phrased, a Financial Activity Element

A patent that is merely incidental to a financial activity is not sufficient to render that patent eligible for CBM review.  Secure Access, LLC v. PNC Bank National Association et. al, Case No. 2016-1353 (Fed. Cir. Feb. 21, 2017).  In Secure Access, the Federal Circuit reversed and vacated the PTAB’s decision that U.S. Patent No. … Continue Reading

Federal Circuit Finds Portion of Board’s Obviousness Decision Supported by Substantial Evidence Despite Reduced Effectiveness of Combined Prior Art References

In Slot Speaker Techs., Inc. v. Apple Inc., Nos. 2015-2038, 2015-2039 (Fed. Cir. February 17, 2017) (non-prec.), the Federal Circuit affirmed a portion of the PTAB’s decision in an IPR that concluded claims 1 and 2 of U.S. Patent No. 7,433,483 would have been obvious over a combination of two prior art references, but reversed … Continue Reading

Federal Circuit Affirms Cancellation of Claims Based on Analogous Art

In Unwired Planet, LLC v. Google Inc., the Federal Circuit affirmed the PTAB’s IPR decision that the challenged claims are invalid as obvious and dismissed the PTAB’s CBM review as moot. Petitioner Google filed IPR and CBM petitions challenging claims 1-6 of U.S. Patent No. 7,024,205 (“the  ’205 patent”) owned by Unwired Planet, LLC.  The … Continue Reading

What Claim Construction Standard Applies If a Patent Expires During IPR Appeal?

In Personal Web Technologies, LLC v. Apple, Inc., Case No. 2016-1174 (Fed. Cir. Feb. 14, 2017), the Federal Circuit upheld the PTAB’s construction of disputed claim terms, but did not resolve a dispute over whether the broadest-reasonable-interpretation standard (BRI) or Phillips standard should apply when the challenged patent expires shortly after the PTAB issues its … Continue Reading

Federal Circuit Dismisses Appeal where IPR Petitioner Lacked Standing to Appeal

In Phigenix, Inc. v. ImmunoGen, Inc., No. 2016-1544 (Fed. Cir. Jan. 9, 2017), the Federal Circuit dismissed, for lack of standing under Article III of the Constitution, a petitioner-appellant’s (Phigenix) appeal of a PTAB final written decision that refused to cancel claims challenged in an IPR. The court’s decision demonstrates that statutory right of appeal … Continue Reading

Intuitive to Use Versus Use of an Element for its Intended Purpose – Is There a Difference?

Is there a difference between saying that it would be intuitive to use the features of one prior art reference in combination with another, versus saying that such a combination merely uses a prior art element for its established function? According to two recent decisions, the Federal Circuit apparently thinks so. In In re: Van … Continue Reading

Federal Circuit Vacates Board’s Decision Cancelling Method Claims for Purchasing Goods and Services Based on Unreasonable Claim Interpretation

The Federal Circuit recently vacated PTAB final written decisions that rested on a claim construction contradicted by the patent’s prosecution history. Specifically, in D’Agostino v. Mastercard Int’l Inc., No. 2016-1592, 2016-1593 (Fed. Cir. December 22, 2016), the court vacated the Board’s IPR decisions of unpatentability of method claims in two patents directed to processes for … Continue Reading

Federal Circuit to take AIA Time Bar issue En Banc

As we had predicted in a previous post, the Federal Circuit, on January 4, 2017, granted patent owner Wi-Fi One LLC’s petitions for rehearing en banc regarding the interpretation of, and interplay between, 35 U.S.C. § 314(d) (the No Appeal provision) and § 315(b) (the Time Bar provision).  A few months ago, we wrote about … Continue Reading

PTAB Should Have Canceled All Challenged Claims in CBM Reviews

In Apple, Inc. v. Ameranth, Inc. (Fed. Cir. 2016), the Federal Circuit reviewed the final written decisions in CBM reviews of three related patents owned by Ameranth, Inc., directed to computerized systems for generating and displaying menus for use in the restaurant industry.  The court determined that the PTAB properly construed all disputed claim terms, … Continue Reading

Federal Circuit to PTAB (Again) – Explain Yourself!!

The Federal Circuit has once again vacated and remanded a PTAB final written decision on the basis that the PTAB did not adequately explain its reasons for finding a claimed invention obvious.  In In re Nuvasive, Appeal No. 15-1670 (Fed. Cir. Dec. 7, 2016), the Federal Circuit reviewed the PTAB’s final written decision in IPR2013-00506 … Continue Reading

Federal Circuit Dismisses Appeal Based on AIA Time Bar, But Two Judges Call for En Banc Review

An updated discussion of this issue is available here: Federal Circuit to Take AIA Time Bar Issue En Banc In Click-to-Call Techs. v. Oracle Corp., Appeal 15-1242 (Fed. Cir. Nov. 17, 2016) (non-prec.), on remand from the Supreme Court for further consideration in view of Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) … Continue Reading

The Federal Circuit’s Disagreement About What Constitutes “Substantial Evidence”

As a standard of appellate review, “substantial evidence” is not peculiar to the Federal Circuit’s review of patent decisions from district courts and the Patent Office. All circuit courts are familiar with that review standard. They apply it routinely in deciding appeals. The standard originated with appeals of jury verdicts, in recognition of the role … Continue Reading

Ignore Occam’s Razor at your Peril

In IPR 2015-01127, PAR Pharmaceuticals, challenged claims 1-11 of USPN 8,404,215 owned by Horizon Therapeutics, LLC on grounds of obviousness over various combinations of six references.  Lupin Ltd. and Lupin Pharmaceuticals, Inc. filed another challenge to the claims of the ‘215 patent on the same grounds using the same arguments and evidence as used by … Continue Reading

PTAB’s Reconsideration of Institution Decision Unreviewable on Appeal

In denying a petition for rehearing, the Federal Circuit determined in Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc. that under Cuozzo, the court lacks authority to review a PTAB decision that reconsidered an IPR institution decision, and then terminated the IPR because the petition failed to identify the real party in interest. As we have … Continue Reading

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

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 … Continue Reading

Supreme Court Declines to Weigh in on AIA Issues

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 … Continue Reading

PTAB Failed to Properly Apply Incorporation by Reference Standard for Anticipation

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 … Continue Reading

PTAB Accords Little Weight to Evidence without Analysis or Explanation

The PTAB recently issued a final written decision in an inter partes review (IPR), refusing to cancel claims in Verinata Health, Inc.’s U.S. Patent No. 8,318,430.  Ariosa Diagnostics v. Verinata Health, Inc., Cases IPR2013-00276 and -00277 (P.T.A.B. Aug. 15, 2016). The claims are directed to methods for determining the presence or absence of fetal aneuploidy … Continue Reading

Who Must Bear the Burden of Proof Regarding Patentability of Amended Claims?

On August 12, 2016, the Federal Circuit issued an order vacating its decision in In re Aqua Products, Inc., 823 F.3d 1369 (Fed. Cir. 2016), and reinstating the appeal after granting the aggrieved patent owner’s petition for rehearing en banc.  We wrote about this decision a few months ago: The Federal Circuit confirmed in a … Continue Reading

PTAB Improperly Shifted Burden of Proof in IPR

In In Re Magnum Oil Tools International Ltd., the Federal Circuit reversed the PTAB’s final decision cancelling challenged claims for obviousness because the record did not include substantial evidence of a motivation to combine references, and because the PTAB improperly shifted the burden of proof on this issue to the patent owner. Petitioner McClinton Energy … Continue Reading

Federal Circuit Confirms Prevailing Party Cannot Appeal to Correct PTAB’s Claim Construction

The prevailing party in a PTAB proceeding cannot appeal the claim construction used. In SkyHawke Tech. LLC v. Deca Int’l Corp., Appeal Nos. 2016-1325 and 2016-1326, Patent Owner SkyHawke prevailed in an inter partes reexamination filed by Deca challenging claims of SkyHawke’s U.S. Patent No. 7,118,498.  Unsatisfied with the PTAB’s claim construction used in reaching that … Continue Reading
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