IPR Petition Fee Must Be Received Not Merely Tendered for Petition to be Afforded a Filing Date

In this informative opinion, Luv N’ Care, LTD v. McGinley, Case IPR2017-01216, Paper 13 (Sept. 18, 2017) the PTAB clarified that to be accorded a filing date, a petition must be complete, including receipt by the PTO of the petition fee for institution. As a result of a delay in payment of this fee, Luv N’ Care’s IPR petition was accorded a filing date ten days later than the date on which it filed the petition, and was ultimately barred by the one-year filing bar under 35 U.S.C. § 315(b).
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Attorneys’ Fees Not Awardable Expenses in Section 145 Actions

In NantKwest, Inc. v. Iancu, No. 2016-1794 (Fed. Cir. Jul. 27, 2018) (en banc), the Federal Circuit decided en banc that attorneys’ fees are not “expenses” required to be paid by an applicant who appeals an ex parte prosecution case to the Eastern District of Virginia under 35 U.S.C. § 145. A Federal Circuit panel had earlier reached a contrary result, and the court sua sponte vacated the panel decision to take up the issue en banc. Continue Reading

Federal Circuit Puts Nail in Coffin For Petitioner’s Case Challenging Casket Patent

In Matthews International Corporation v. Vandor Corporation, No. 2017-1889 (Fed. Cir. Mar. 27, 2018) (non-precedential), the Federal Circuit affirmed the PTAB’s final written decision to uphold the claims of Vandor’s patent that Matthews challenged in inter partes review. The claims at issue “are directed to ‘a casket arrangement’ made of pliable material, such as cardboard,” in which side and end panels of the casket can be folded to allow the casket to be reconfigured and condensed for ease in shipping and storage. According to the PTAB and the Court, Matthews failed to prove by a preponderance of the evidence that the claims were anticipated by the prior art, even though the claims may be obvious.
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Tradeshow Catalog Qualifies as Prior Art

In a previous blog post, we reported that in a final written decision on October 26, 2016, the PTAB concluded that GoPro, Inc. (GoPro) failed to demonstrate that the challenged claims in a patent owned by Contour IP Holding LLC (Contour) were unpatentable. IPR (IPR2015-01080; “the GoPro IPR”)  GoPro asserted that the challenged claims were unpatentable in view of, among other references, a GoPro product catalog that included information for a digital video camera.
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No Mandamus Relief from Shenanigan-less Non-institution Decision

Absent extraordinary circumstances, the Federal Circuit will not review Patent Trial and Appeal Board decisions refusing to institute inter partes review. The statute and a 2016 Supreme Court decision prohibit such review. 35 U.S.C. § 314(d); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140–42 (2016) (clarifying, however, that appellate review is appropriate to address “shenanigans”). The Federal Circuit has thus repeatedly held that parties may not sidestep this prohibition by styling an appeal as a petition for a writ of mandamus.[1] The court reiterated as much again in In re Power Integrations, Inc., Appeal Nos. 2018‑144, ‑145, ‑146, ‑147 (Fed. Cir. Aug. 16, 2018). Continue Reading

PTAB Properly Applied the Printed Matter Doctrine

In Praxair Distrib. v. Mallinckrodt Hosp. Pdts., (Fed. Circ. May 16, 2018), the Federal Circuit affirmed the PTAB’s application of the printed matter doctrine in an IPR, and determined that all challenged claims were obvious.

Mallinckrodt’s patent is directed to methods of treating newborns having low blood oxygenation with nitric oxide (NO) gas, “to dilate blood vessels in the lungs and … thereby improve blood oxygenation.” Generally, the claims recite methods of providing medical providers with NO gas, and information relating to treatment with NO. Continue Reading

PTAB Was Wrong to Ignore an Applicant’s Prosecution Disclaimer Because of Examiner’s Reasons for Allowance

Despite disagreeing with the PTAB’s preferred claim construction, the Federal Circuit in Arendi S.A.R.L. v. Google LLC, Case No. 2016-1249 (Fed. Cir. Feb. 20, 2018) nevertheless determined that the PTAB had correctly canceled the challenged claims.

The Board had offered two, alternative rulings invalidating all claims on obviousness grounds. In its primary ruling, the Board construed the claims after rejecting the argument that a disclaimer was made during prosecution. Continue Reading

One Year Time Bar Runs from Date of Service, Regardless of Whether Suit is Dismissed

The Federal Circuit recently held that the statutory time bar in 35 U.S.C. § 315(b) precludes the PTAB from deciding an IPR petition filed more than one year after any of the petitioners have been served with a complaint alleging patent infringement, even if that complaint was voluntarily dismissed. Click-To-Call Technologies, LP v. Ingenio, Inc., et al., Case no. 2015-1242, 2018 WL 3893119 (Fed. Cir. Aug 16, 2018). This holding is found in an en banc footnote in a 3-judge panel decision, and is contrary to the PTAB’s long-standing interpretation and application of the § 315(b) time bar. The decision is important to those served with an infringement complaint that is later dismissed without prejudice. If one year has passed since service of that complaint, those parties no longer have an opportunity to challenge the patent’s validity in an IPR. Continue Reading

Federal Circuit Upholds Board’s Use of Control Standard of Privity to Assess Time Bar

It is undisputed that institution of an inter partes review (IPR) is time-barred under 35 U.S.C. § 315(b) if the petition is “filed more than 1 year after the date on which the petitioner, the real party in interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent. The Court of Appeals for the Federal Circuit recently determined that the Patent Trial and Appeal Board’s time bar determinations are appealable. Since that decision, whether a party is considered “a privy of the petitioner” has been the source of recent dispute. Continue Reading

Trial Practice Guide Updates and Future Fee Increases

Today’s Federal Register includes a notice that the Patent Office updated its August 2012 Trial Practice Guide. The Federal Circuit recently noted that the Practice Guide “is a thoughtful and useful resource to which individual Board members and the public might turn for guidance,” but “is not binding on Board panel members.” Application in Internet Time v. RPX Corp., Nos. 2017-1698, -1699, -1701, Slip Op. at 14 n.2 (Fed. Cir. July 9, 2018). The update revises six sections of the guide, including sections focused on the presentation of expert testimony, the Board’s considerations in instituting review, and briefing concerning evidentiary issues and claim amendments. Continue Reading

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