Error in Claim Construction Leads to Reversal of IPR Decision and Cancelation of Claims

Two recent Federal Circuit decisions illustrate how an error in construing claims may lead the court to reverse a PTAB final written decision. In Organik Kimya AS v. Rohm & Haas Co., the Federal Circuit determined that the PTAB correctly construed the disputed claim term, “swelling agent,” and therefore affirmed the PTAB’s decisions upholding the patentability of challenged claims directed to processes for preparing emulsion polymers. In contrast, in Owens Corning v. Fast Felt Corp., decided on the same day, the court determined that the PTAB erred in construing the term “roofing or building cover material” too narrowly, and thus reversed the PTAB’s decision canceling claims directed to methods of applying polymer “nail tabs” on roofing and building cover material.   Continue Reading

Petitioners Will Pay More for Immensely Popular AIA Trials

In the November 14, 2017, Federal Register, the Patent Office issued its final rule setting and adjusting the fees the Office charges for its products and services, including relatively substantial increases for standard AIA trial fees (as shown below). As a simple example, a petitioner challenging all claims of a patent containing 30 claims will pay 37% more in fees for inter partes review ($42,500 v. $31,000), and 33% more in fees for post grant or covered business method review ($54,125 v. $40,750). These AIA trial fees become effective on January 16, 2018. Continue Reading

Patent Agent Privilege Recognized in Final Rulemaking Issued by USPTO

On November 7, 2017, the USPTO issued a Final Rule recognizing that communications between U.S. and foreign patent practitioners and their clients that are reasonably necessary and incident to the scope of the patent practitioners’ authority shall receive the same protections of privilege under Federal Law as if the communication were between a client and a U.S. attorney.  82 Fed. Reg. 51570-75 (Nov. 7, 2017).  The privilege extends to communications during all aspects of USPTO practice, including traditional prosecution as well as PTAB proceedings. See 82 Fed. Reg. at 51571 (“the purpose of the rule is to protect any communication with authorized counsel from discovery in PTAB, not just communication about the instant proceedings”). The final rule is effective December 7, 2017. Continue Reading

Board Decision Grants Motion to Amend With Respect to One Substitute Claim and Denies Motion to Amend With Respect to Other Substitute Claim

The Board’s recent decision in Veeam Software Corp. v. Veritas Technologies, LLC, Case No. IPR2014-00090 (PTAB July 17, 2017), provides patent practitioners with a framework for analyzing proposed substitute claims.  The Board’s decision, granting patent owner’s motion to amend in part, should be considered in conjunction with the Federal Circuit’s decision in Veritas Technologies LLC v. Veeam Software Corp., 835 F.3d 1406 (Fed. Cir. 2016), which vacated the Board’s earlier disposition of the IPR and remanded the case to the Board to reconsider the substitute claims it previously denied.  These decisions offer at least a partial framework by which the PTAB may assess motions to amend during inter partes reviews. Continue Reading

PTAB says 58% of Patents Survive Post-grant Proceedings Unchanged

On October 24, 2017, the PTAB held its inaugural “Chat with the Chief” webinar. The main topic of the webinar was to discuss multiple petitions filed against the same patent. The PTAB sought to address concerns that have been raised by patent owners that challengers just keep filing petitions until something sticks, and that petitioners presenting multiple petitions unfairly gain an advantage by obtaining information from the Patent Owner’s response to the first petition or the Board’s Institution Decision that help provide a roadmap for the subsequent petition. The PTAB presents results from an internal study that appears intended to alleviate these concerns. Continue Reading

Patent Owner’s Optional Preliminary Response Avoids IPR, But Dooms Infringement Action

Earlier this year, the Federal Circuit held “that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be considered for claim construction and relied upon to support a finding of prosecution disclaimer.” Aylus Networks, Inc., v. Apple Inc., Appeal 2016-1599 (Fed. Cir. May 11, 2017). In so holding, the court affirmed the district court’s summary judgment that Apple Inc’s AirPlay feature does not infringe the asserted claims of U.S. Patent No. RE 44,412. Critical to the district court’s judgment was its claim construction of the limitation “wherein the CPP logic is invoked” to “require only the CPP logic is invoked.” (emphasis added). The Patent Owner’s arguments presented during the pre-institution phase of the IPR proceeding compelled the district court to construe the claim so narrowly that the court also concluded that the accused AirPlay feature does not infringe.

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Federal Circuit Overturns PTAB’s Finding of Patent Validity

In a split opinion in Homeland Housewares, LLC v. Whirlpool Corporation, the Federal Circuit has again overturned a final written decision issued by the PTAB determining that challenged claims in an IPR were not unpatentable, a development that should at least cast doubt on the validity of patents that survive challenges at the PTAB.

Homeland initially petitioned the PTAB for an inter partes review of all claims of U.S. Patent No. 7,581,688 (“the ’688 patent”), assigned to Whirlpool, arguing that the claims were invalid as anticipated by U.S. Patent No. 6,609,821 (“the ’821 patent”).   Continue Reading

Aqua Products Dissent Would Keep Burden for Amendments on Patent Owners

As discussed here, the en banc Federal Circuit vacated and remanded the PTAB’s decision in Aqua Products, Inc. v. Matal, determining that the PTAB erred in placing the burden of persuasion on the patent owner for proposed claim amendments. Four judges on the eleven-judge en banc panel dissented, and would have upheld the PTO’s rule, 37 C.F.R. § 42.42(c), that places the burden of persuasion on the moving party, and agreed with the PTO that this rule applies to patent owners who move to amend claims during an IPR. Continue Reading

Fractured Federal Circuit Reallocates Burden of Proof in AIA Trials

An eleven-judge en banc panel of the Federal Circuit issued its long awaited decision in Aqua Products, Inc. v. Matal, Appeal 2015-1777, on October 4, 2017, vacating and remanding the IPR final decision for the PTAB to determine whether the patent owner’s proposed amended claims are patentable. The court’s decision includes five separate opinions, though no majority opinion. The salient take-away, as Circuit Judge O’Malley’s opinion for a five-judge plurality concludes, is that “very little said over the course of the many pages that form the five opinions in this case has precedential weight.”  Continue Reading

Assertion of “Routine Optimization” Without Additional Reasoning Insufficient to Support Obviousness Conclusion

Recent Federal Circuit decisions reversing or remanding PTAB holdings of obviousness have faulted the Board for failing to clearly articulate its reasoning.  See our previous posts here and here.  In In re Stepan Co., No. 2016-1811 (Fed. Cir. Aug. 25, 2017), a split CAFC panel vacated a PTAB ex parte appeal decision affirming an obviousness rejection based on “routine optimization” for failing to explain why one of ordinary skill would arrive at the claimed subject matter. Continue Reading

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