Statement of Agreement or Disagreement with Attorney Argument Alone Does Not Provide Substantial Evidence To Support PTAB Findings

In Google Inc. v. Intellectual Ventures II LLC, Appeal 2016-1543, 2016-1545 (Fed. Cir. July 10, 2017), the Federal Circuit affirmed the PTAB’s final written decision canceling some claims of U.S. Patent No. 6,121,960, but vacated the portion of the decision that refused to cancel other claims.  With respect to the upheld claims, the court remanded the matter because the PTAB failed to adequately explain its findings, noting that the PTAB’s “disagreement with [the petitioner] … does not amount to a satisfactory explanation for its finding” that those claims are not unpatentable.  Google at 12. Continue Reading

Cases to Watch

Pending Supreme Court Decisions

The Supreme Court will decide during its October 2017 term “Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.” Oil States Energy Services, LLC v. Green’s Energy Group, LLC, Sup. Ct. Dkt. 16-712.  Read more.

The Supreme Court also will decide during its October 2017 term whether the PTAB must issue a final written decision as to every patent claim challenged by a petitioner.  SAS Institute, Inc. v. Matal, Sup. Ct. Dkt. 16-969.  Read more.

Pending En Banc CAFC Decisions

An en banc panel of the Federal Circuit will soon decide whether, on appeal, patent owners may challenge the PTAB’s determination that petitioners have satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review. Wi-Fi One, LLC v. Broadcom Corp., Fed. Cir. Dkt. 2015-1944. Read more.

An en banc panel of the Federal Circuit will soon decide whether a patent owner moving to amend claims in inter partes review must bear the burden of persuasion or production regarding patentability of the amended claims, and whether the PTAB may sua sponte challenge the patentability of the claims. In re Aqua Prods., Inc., Fed. Cir. Dkt. 2015-1177. Read more.

Pay-Per-Click Patent Found Ineligible Under Section 101

In a final written decision issued on April 24, 2017, the PTAB canceled all four challenged claims of U.S. Patent No. 8,671,057, directed to detecting invalid and fraudulent clicks in pay-per-click web advertising (Google Inc. v. Zuili, CBM2016-00008 (Paper 56)). The PTAB found all four claims unpatentable under 35 U.S.C § 101, and obvious under 35 U.S.C. § 103 over a combination two prior art documents related to a study on online advertising reporting and auditing. Continue Reading

Reluctant to Reverse, the Federal Circuit Offers the PTAB a Mulligan

The Federal Circuit recently vacated the PTAB’s decisions in three interferences. Board of Trustees of Leland Stanford Jr. Univ. v. Chinese Univ. of Hong Kong, Appeal 2015-2011 (Fed. Cir. June 27, 2017). These interferences concern which parties’ inventors first conceived methods for diagnosing fetal aneuploidies using cell-free fetal DNA from maternal blood samples. The PTAB concluded that two patents it issued to Stanford’s inventors and their pending application lacked an adequate description of the interfering invention and, thus, entered judgment against Stanford. The Federal Circuit determined, however, that the PTAB failed to properly assess the description in Stanford’s patents and application and, thus, vacated the PTAB’s decisions. The court’s disposition is an example of how even a fact-intensive inquiry, reviewed on appeal with substantial deference, can be shown to have been misguided, leading to an appellant’s success. Continue Reading

Look to the Claims for Estoppel

In three recent decisions, the Federal Circuit reiterated the importance of determining estoppel in PTAB proceedings on a claim-by-claim basis.

In the earlier related decisions, In re Affinity Labs of Texas, LLC [1] , 856 F.3d 883 (Fed. Cir. 2017) and In re Affinity Labs of Texas, LLC [2], 856 F.3d 902 (Fed. Cir. 2017), the court addressed the effects of a district court judgment and settlement of a district court litigation on pending pre-AIA reexamination proceedings. Continue Reading

PTAB’s Conclusion of Obviousness Overturned as Lacking Sufficient Justification

"part of a hard disk, toned image"In In re Schweickert, No. 2016-1266 (Fed. Cir. 2017), the Federal Circuit in a non-precedential opinion vacated the PTAB’s decision canceling patent claims in an ex parte reexamination as being obvious over prior art. The Federal Circuit determined that the PTAB’s conclusion of obviousness was based on no more than a broadly-stated assertion that the proposed modification was within the knowledge of a person having ordinary skill in the art. The PTAB’s decision, according to the court, lacked a sufficient factual basis for why the skilled artisan would have modified the prior art to arrive at the claimed invention—a fact needed to support a conclusion of obviousness.

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Kyle Bass Gets Fresenius’ Diprivan Claims Canceled in IPR

Cancelled in RedOn June 7, 2017, the PTAB issued a final written decision in IPR 2016-00254 canceling claims in a Fresenius Kabi USA, LLC (Fresenius) patent covering Diprivan®. The PTAB instituted the IPR in response to a petition filed by hedge fund manager Kyle Bass and his colleague Erich Spangenberg. Diprivan® is the commercial name for propofol, an intravenous anesthetic agent used during surgery and other medical procedures.

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Uncorroborated Declaration Not Sufficient to Avoid § 102(e) Prior Art

combustion fumes coming out of car exhaust pipe as concept of damage in the climate change and global warming

In EmeraChem Holdings, LLC v. Volkswagen Group of American, Inc. (Fed. Cir. June 15, 2017), the Federal Circuit determined that the Patent Owner’s uncorroborated declaration was insufficient to show that asserted prior art under pre-AIA 35 U.S.C. § 102(e) represented the work of the same inventive entity as the challenged claims, and with respect to certain claims the PTAB failed to provide sufficient notice and opportunity to respond. Accordingly, the court affirmed in part and vacated in part the PTAB’s decision that the challenged claims were unpatentable for obviousness.

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PTAB Exercised Discretion to Terminate Ex Parte Reexaminations in Ariosa v. Illumina; CAFC to Review

Illustration and Painting

Third parties seeking to challenge pre-AIA patents in the USPTO often choose between IPR and ex parte reexamination.  In some cases, petitioners pursue both proceedings, sequentially or in parallel, taking advantage of different timelines to completion, different standards for institution, and using insights gained in one proceeding in the other.  The PTAB recently exercised its discretion to terminate three reexaminations filed against patents also challenged by IPR in Ariosa Diagnostics, Inc. v. Illumina, Inc., IPR2014-01093, Paper 81 (May 24, 2016).  In the pending appeal, the stage is set for the Federal Circuit to consider the extent of the PTAB’s discretion in terminating post-grant proceedings in these circumstances.  Case Nos. 2016-2388, 2017-1020 (Fed. Cir.). Continue Reading

One-Year Time Bar Does Not Apply to a Request for Joinder of IPR Proceedings

Merging concept illustrated by two different jigsaw piece a silver and a gold one.

Teva Pharmaceuticals USA, Inc. (“Teva”) filed a Petition, seeking an IPR of claims 1–20 of Allergan’s U.S. Patent No. 8,642,556. [IPR2017-00579, Paper No. 9]  Along with the Petition, Teva filed a Motion for Joinder to join Mylan Pharmaceuticals Inc. v. Allergan, Inc., IPR2016-01129.  This blog has previously reported on the topic of joinder in IPR Petitions here and here.

Teva’s Petition was not timely, having been filed more than one year after Allergan filed a complaint alleging infringement of the ‘556 patent against Teva.  Teva’s Motion for Joinder, however, was filed within one month of the date that the Board instituted review in response to Mylan’s Petition.  Under 37 C.F.R. § 42.122(b), Teva’s Motion for Joinder with Mylan’s Petition was timely. Continue Reading