Obvious Variants and the Hand of Fate

Collateral estoppel is a resource-saving shortcut. Judges consider it when an issue previously received sufficient judicial attention. And they apply it when the issue was resolved against the party now seeking, in some way, to circumvent that resolution. In the absence of some intervening change in the law or new evidence, resolution likely would be the same as before. Addressing the issue anew would therefore be a waste of everyone’s resources. So, the judge bars that party from re-litigating the issue and applies the consequences of the prior resolution. Collateral estoppel’s logical simplicity is manifest, but its application is sometimes complicated.

No Weight for Unsupported Expert Witness Testimony

By Sandip H. Patel on February 16, 2023 Posted in Inter Partes Review, Post Grant Review, Trial Procedures

In early February 2023, the Patent Office’s Director designated as precedential the Patent Trial and Appeal Board’s decision in Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022). In this decision, the Board denied a petition seeking inter partes review. The petitioner asserted the challenged patent claims were obvious over printed publication prior art. One of the claimed features was not asserted to be disclosed in the published prior art, but rather asserted to be part of an ordinarily skilled artisan’s common knowledge. The Board characterized this as a “conclusory assertion,” and gave little weight to the accompanying expert witness’s declaration cited in support. Why? Because the declaration, according to the Board, “merely repeats, verbatim, the conclusory assertion for which it is offered to support,” and “does not cite to any additional supporting evidence or provide any technical reasoning [in] support.” Id. at 15.

This Seems Absurd, but …

By Sandip H. Patel on January 31, 2023 Posted in Estoppel, Inter Partes Review, IPR

Last year, a district court applied the doctrine of collateral estoppel to dismiss an infringement suit after the Patent Trial and Appeal Board decided to cancel the asserted patent’s claims in an inter partes review. In the ensuing appeal of the court’s decision, the Federal Circuit granted the patent owner’s (Jump Rope’s) unopposed motion for summary affirmance. Jump Rope Sys., LLC v. Coulter Ventures, LLC, Appeal 22-1624 (Fed. Cir. June 28, 2022). Jump Rope presented the unopposed motion after the Federal Circuit denied its motion that the court go en banc. Jump Rope had sought a determination by the court as a whole that parallel civil litigation seeking to enforce those canceled claims was not moot and could proceed, potentially to an infringement judgment and consequent remedy. Jump Rope has since presented the same argument to the Supreme Court in a petition for a writ of certiorari. Brief of Petitioner, Jump Rope Sys., LLC v. Coulter Ventures, LLC, Sup. Ct. Dkt. 22-298 (Sept. 26, 2022).

PTAB Concludes Artificial Intelligence Medical Device Patent Is Not Obvious

By Ryan N. Phelan on December 12, 2022 Posted in Artificial Intelligence, Inter Partes Review, IPR, Machine Learning, Obviousness

Artificial Intelligence (AI) typically involves certain common aspects. This includes, for example, training data, AI training algorithm(s) that use the training data to train an AI model, and predictions and/or classifications as output from the trained AI model. Could a person of ordinary skill in the art (e.g., a computer scientist) find it obvious to combine these common aspects to arrive at any given AI-based invention? The Patent Trial and Appeal Board recently answered “no” in its final written decision in Intel Corporation v. Health Discovery Corporation, IPR2021-00552, Paper No. 38 (September 12, 2022). Continue Reading

Rigidly Interpreting Precedents May Foreclose an Equitable Doctrine

By Sandip H. Patel on August 29, 2022 Posted in Estoppel, Inter Partes Review, IPR

The Federal Circuit’s Judge Bryson has been presiding over two district court cases where he decided an important and recurring issue regarding collateral estoppel. In a consolidated order, he refused to apply collateral estoppel to certain fact-finding by the Patent Trial and Appeal Board on what prior art publications disclose relative to patent claims the patent owner contends are infringed. IOENGINE, LLC v. PayPal Holdings, Inc., Nos. 18-cv-452-WCB and 18-cv-826-WCB, Dkts. 511 and 450, respectively (D. Del. June 15, 2022) (Memorandum Opinion and Order). Until the Federal Circuit clearly addresses this issue, his decision may influence district judges facing the same issue. Continue Reading

A Decision Poised to Pivot on Credibility

By Sandip H. Patel on July 5, 2022 Posted in Inter Partes Review, IPR, Sections 102/103, Trial Procedures

A Decision Poised to Pivot on Credibility

The Federal Circuit’s recent decision in Google LLC v. IPA Technologies, Inc., Appeals 2021-1179, -1180, and -1185 (Fed. Cir. May 19, 2022), offers three instructive reminders. First, a publication disqualified from consideration as prior art during prosecution may be resurrected as prior art during an AIA trial. Second, the burden of producing evidence is not static, but rather one that shifts among trial participants. Third, when presented with a “highly relevant evidentiary conflict”—like conflicting fact-witness testimony—the Patent Trial and Appeal Board must resolve it “and make appropriate findings of fact.” Google, Slip Op. at 11. When it doesn’t do this, it’s getting the case back. Continue Reading

Satisfying the Duty of Disclosure in AIA Trials

By Sandip H. Patel on June 13, 2022 Posted in Amendments, Inter Partes Review, IPR, Trial Procedures

Regulations & Guidelines - Satisfying the Duty of Disclosure in AIA Trials

In ClearOne, Inc. v. Shure Acquisition Holdings, Inc., Appeal 2021-1517, Slip Op. at 2 (Fed. Cir. June 1, 2022), the Federal Circuit affirmed a Patent Trial and Appeal Board order that refused to authorize a sanctions motion the petitioner requested after the Board issued its final written decision granting (in relevant part) the patent owner’s motion to substitute claims. As basis for the motion the petitioner alleged the patent owner violated its duty to disclose prior art. Continue Reading

No design patents for you!–Extension of Fox Factory Complicates Reliance on Indicia of Non-Obviousness

By Jeremy R. Kriegel on April 12, 2022 Posted in Inter Partes Review, IPR, Sections 102/103

No design patents for you!--Extension of Fox Factory Complicates Reliance on Indicia of Non-Obviousness In Campbell Soup Co. v. Gamon Plus, Inc., the Federal Circuit reversed the PTAB’s finding that Gamon’s design patents on gravity-fed displays for soup were non-obvious. 10 F.4th 1268 (Fed. Cir. Aug. 19, 2021) (“Gamon II”). As the Supreme Court denied Gamon’s petition for writ of certiorari (in which Gamon argued it did not have an opportunity to request review of the PTAB’s decision by a properly-appointed Director of the USPTO), here’s a closer look at the Federal Circuit’s opinion. Continue Reading

Patentee’s Admissions of Obviousness Insufficient Basis for Cancellation in Inter Partes Review

By Thomas L. Duston on March 8, 2022 Posted in Inter Partes Review, IPR, Legislation, Sections 102/103

Admit One - Qualcomm v. Apple

In Qualcomm, Inc. v. Apple, Inc., No. 20-1558 (Fed. Cir. Feb. 1, 2022), the Federal Circuit concluded that a patentee’s admissions concerning the content of the prior art, contained in the specification of the challenged patent, cannot serve as a ground to invalidate that patent in inter partes review. The court, therefore, vacated decisions of the PTAB canceling patent claims asserted by Qualcomm against Apple relating to “integrated circuit devices with power detection circuits for systems with multiple supply voltages.” Continue Reading

Estoppel Evolves

By Sandip H. Patel on March 3, 2022 Posted in Estoppel, Inter Partes Review, IPR

Hands up STOP - Estoppel Evolves

Back in 2016, the Federal Circuit held that a petitioner retains the ability, after an adverse Patent Trial and Appeal Board decision, to assert un-instituted invalidity grounds it presented in its petition. The court reasoned that when the Board chooses not to institute certain petitioned grounds (e.g., due to redundancy), the petitioner could not have raised those grounds during the AIA trial and, therefore, cannot be estopped from pursuing those attacks in later litigation. Shaw Indus. Grp. v. Automated Creel Sys., 817 F.3d 1293, 1300 (Fed. Cir. 2016). Continue Reading