IPR Estoppel Does Not Apply to ITC Investigative Staff

Judge Cheney of the United States International Trade Commission held that ITC Investigative Staff are not estopped from asserting invalidity of a patent based upon prior art that was previously asserted by a respondent in an IPR. See In the Matter of Certain Magnetic Tape Cartridges and Components Thereof, Inv. No. 337-TA-1058 at *106-107. While this is an initial determination that has not been adopted by the Commission, this determination creates a huge loophole limiting the effect of estoppel before the ITC.

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“Comments Anyone?”: PTO Makes Proposed New IPR Amendment Process

On October 29, 2018, the Patent and Trademark Office published a request for comments on a proposal to establish a new procedure by which patent owners may seek to amend their claims during inter partes review. Comments are due on or before December 14, 2018. The PTO proposes a pilot program implementing the new amendment process to begin shortly after the deadline for comments.

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Rule Changes Will Advance a Famous Judge Rich Axiom

For AIA trial petitions filed after November 12, 2018, the Patent Trial and Appeal Board will construe claims challenged and proposed to be amended (narrowed) in these proceedings using the same claim construction standard that is used to construe the claim in a civil action in federal district court. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In these trials, the Board will also consider claim construction determinations made in proceedings in district courts or the International Trade Commission. A recent Federal Register notice includes the text of rules the Patent Office revised to implement these changes. Continue Reading

Successful IPR Petition Time Barred Under 35 U.S.C. §315(b) by Involuntarily Dismissed Complaint

In Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., Appeal Nos. 2017-1555, 217-1626 (Fed. Cir. Sept. 28, 2018), the Federal Circuit vacated the Patent Trial and Appeal Board’s final written decision in an IPR because institution of the IPR should have been time barred under 35 U.S.C. §315(b).  Additionally, the Federal Circuit declined to consider a challenge to a sanctions order by the Board because the amount of sanctions had not yet been quantified and thus the court lacked jurisdiction to review the order.  The court’s disposition of these issues remind practitioners that procedural timing is just as important as substantive argument in obtaining a desired legal outcome. Continue Reading

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

Update: On November 1, 2018, the CAFC issued a modified opinion and an order denying Contour’s petition for rehearing en banc.  The modified opinion is consistent with the original petition, discussed below, insofar as the PTAB decision was vacated and remanded, but adds the following statement at page 8: “When direct availability to an ordinarily skilled artisan is no longer viewed as dispositive, the undisputed record evidence compels a conclusion that the GoPro Catalog is a printed publication as a matter of law.”  The modified opinion also deleted the following statements, parts of which were quoted in the blog, below: “Contrary to the Board’s conclusion, the attendees attracted to the show were likely more sophisticated and involved in the extreme action vehicle space than an average consumer. Thus, it is more likely than not that persons ordinarily skilled and interested in POV action cameras were in attendance or at least knew about the trade show and expected to find action sports cameras at the show. While the Board found that GoPro did not provide any evidence as to what products the companies at the trade show make, GoPro was not the only manufacturer of POV action cameras. The vendor list provided with Mr. Jones’s declaration listed a number of vendors who likely sell, produce and/or have a professional interest in digital video cameras.”

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

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