The Federal Circuit recently upheld the Patent Office’s decision to reject claims in four separate reexamination cases due to obviousness-type double patenting (ODP). In re Cellect, LLC, Appeal Nos. 22-1293, -1294, -1295, -1296 (Fed. Cir. Aug. 28, 2023). This decision is important because it expands ODP, a doctrine judges developed long ago, when patents received a term of 17 years from the date of issue, rather than 20 years from the date of filing. Unless overturned, this decision will significantly affect patent families that have patents with different expiration dates. This post explains some of the decision’s consequences and explores potential patent prosecution strategies.
On June 30th, the Federal Circuit granted a petition for re-hearing en banc in LKQ Corp. v. GM Global Tech. Operations LLC. LKQ, an auto parts repair vendor for GM, successfully petitioned for inter partes review of GM’s design patent for a front fender design, arguing it was anticipated by a prior art reference (Lain) and obvious over Lian alone or in combination with a brochure for the 2010 Hyundai Tucson. The PTAB ultimately affirmed the patentability of GM’s claimed design, prompting LKQ to appeal to the Federal Circuit. On appeal, LKQ argued that the PTAB’s obviousness analysis utilized tests overruled by the Supreme Court’s decision in KSR, and, as such, the obviousness standard for design patents should mirror the standard for utility patents set forth in KSR. However, a three-judge panel of the Federal Circuit disagreed, noting in relevant part that “it is not clear the Supreme Court has overruled” the tests for obviousness applied by the PTAB.
Can a petitioner’s reply in an IPR proceeding present new arguments and evidence responding to a proposed claim construction first raised in the patent owner’s response? In Axonics, Inc. v. Medtronic, Inc., Nos. 2022-1532, 2022-1533 (Fed. Cir. Aug. 7, 2023), the Federal Circuit answered in the affirmative, vacating the PTAB’s final written decision of no unpatentability and remanding for further proceedings.
After the Supreme Court’s decision in United States v. Arthrex, Inc., the Patent Office implemented an interim process for the Director to review Patent Trial and Appeal Board decisions in AIA trials. The Office sought public feedback on the process last year (link) and received more than 4,000 responses (link)! The process has yet to be formalized via traditional notice and comment rulemaking, though someday, perhaps, it will. Until then, the Patent Office continues to offer new updates and information, most recently on July 24, 2023.
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.
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.
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.
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).
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.
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.