The Patent Office is not supposed to issue separate patents for the same invention to competing inventors. Several statutory provisions empower the Office to reject pre-AIA patent application claims of the later inventor. But sometimes it’s not clear who is the later inventor. Those provisions are therefore unhelpful. So, the Patent Trial and Appeal Board administers an increasingly rare proceeding called an “interference” to assesses which inventor was the last to invent. Through this proceeding, the Office cancels as unpatentable (under pre-AIA 35 USC § 102(g)) the claims of the inventor the Board determines was last to invent.Continue Reading Patent Interferences May Not Involve Pure AIA Patent

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In Sanofi-Aventis Deutschland GMBH v. Mylan Pharms, Inc., No. 21-1981 (Fed. Cir. May 9, 2023), the Federal Circuit reversed the PTAB’s finding that Sanofi’s patent claims were obvious, determining the PTAB used the wrong test for deciding whether an existing patent was “analogous” to the one being challenged.

Mylan Pharmaceuticals had asserted all claims

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The Patent Office’s Director recently notified the Patent Public Advisory Committee (PPAC) of the Office’s intent to set or adjust several fees that patent applicants, patent owners, and those challenging patents in AIA trials must pay. For applicants, this includes fee increases for filing applications and tiered fees for filing terminal disclaimers. This also includes tiered fees for filing continuation applications more than three or seven years after the earliest claimed benefit application was filed. Part of those fees are to offset the lost maintenance fees that patents issuing from those applications would otherwise incur had they been filed and issued earlier—obtaining revenue from maintenance fees purportedly helps reduce examination costs.Continue Reading Patent Office Proposes Increasing AIA Trial Fees

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On February 9, 2023 the PTAB issued a Final Written Decision in Early Warning Services, LLC and Samsung Electronics Co., Ltd. v. WePay Global Payments LLC, determining the design claim of US D930,702 (“D’702”) unpatentable, as both anticipated and obvious based on a single reference, Reddy, US 2018/0260806 A1 (“Reddy”). See Consolidated PGR2022-00031 and PGR2022-00045, Paper No. 34. D’702 claimed a display screen having an animated graphical user interface (GUI).Continue Reading PTAB Invalidates GUI, but Leaves Obviousness Test Gooey

Cut Expenses

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.Continue Reading Obvious Variants and the Hand of Fate

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.Continue Reading No Weight for Unsupported Expert Witness Testimony

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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).Continue Reading This Seems Absurd, but …

PTAB Concludes Artificial Intelligence Medical Device Patent Is Not Obvious
PTAB Concludes Artificial Intelligence Medical Device Patent Is Not Obvious

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 PTAB Concludes Artificial Intelligence Medical Device Patent Is Not Obvious

Rigidly Interpreting Precedents May Foreclose an Equitable Doctrine - Cutting Expenses
Rigidly Interpreting Precedents May Foreclose an Equitable Doctrine – Cutting Expenses

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 Rigidly Interpreting Precedents May Foreclose an Equitable Doctrine

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 A Decision Poised to Pivot on Credibility