PTAB’s Time Bar Determinations Are Reviewable by the Federal Circuit

In Wi-Fi One, LLC v. Broadcom Corporation, an en banc panel of the Federal Circuit decided on January 8, 2018, that the PTAB’s application of the 35 U.S.C § 315(b) time bar to institution of inter partes review (IPR) proceedings is reviewable on appeal. The decision overrules Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015), which held to the contrary. The decision is important because, in the context of an appeal of a PTAB final written decision, patent owners may now raise the issue of whether an IPR was improperly instituted due to the § 315(b) time bar.

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The United States Can Have Standing in AIA Proceedings

PTABWatch Takeaway: When “sued for infringement” within the meaning of 28 U.S.C. § 1498(a), the United States has standing to petition the Patent Office to institute Covered Business Method (CBM) review.  Return Mail v. U.S. Postal Service, Appeal 2016-1502 (Fed. Cir. Aug. 28, 2017)

Background

Patentee, Return Mail, Inc., filed suit in the U.S. Court of Federal Claims Court alleging that the United States, through the actions of the United States Postal Service, used without license the subject matter claimed in U.S. Pat. No. 6,826,548. Continue Reading

Federal Circuit Again Reminds PTAB that BRI Must Be Reasonable

Last fall, the Federal Circuit reversed a PTAB decision that affirmed an Examiner’s rejection of various claims in an ex parte reexamination because the Examiner’s interpretation of the claims, which the PTAB upheld, was unreasonably broad. In re Smith International, Inc., Appeal No. 2016-2303 (Fed. Cir. Sept. 26, 2017). The court’s decision is noteworthy because it reinforces the bounds of the broadest reasonable interpretation claim construction standard the Patent Office must apply when assessing patentability, bounds that do not encompass the broadest possible interpretation. Continue Reading

PTAB Should Have Considered Argument Raised in “Redundant,” Non-instituted Ground

In CRFD Research Ltd. v. Matal, No. 2016-2198 (Fed. Cir. Dec. 5, 2017), the Federal Circuit determined that the PTAB erred in its obviousness analysis, in part by failing to consider an argument the IPR petitioner made in a ground that the PTAB determined was “redundant” to the instituted grounds.

Petitioner Hulu, LLC, challenged claims of CRFD Research Ltd.’s patent directed to methods of transferring an ongoing software-based session from one device to another, allowing the user to begin a session on one device, such as a cell phone, and then transferring the session to another device, such as a laptop computer. Continue Reading

CAFC: PTAB Abused Its Discretion When It Refused to Admit Expert’s Trial Testimony

In Ultratec, Inc. v. CaptionCall, LLC, No. 2016-1706 (Fed. Cir. Aug. 28, 2017), the Federal Circuit vacated and remanded multiple IPR decisions where the PTAB failed to consider material evidence and failed to explain its decisions to exclude the evidence.

Ultratec and CaptionCall are currently litigating in both district court and before the PTAB.  Ultratec sued CaptionCall for infringement in the Western District of Wisconsin where a jury found the patents infringed and not invalid.  Continue Reading

Board Issues Guidance on Motions to Amend in View of Aqua Products

The PTAB’s Chief Administrative Patent Judge issued a memorandum on November 21, 2017, providing guidance on motions to amend in view of the en banc decision of the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (discussed here and here).  The court in Aqua Products determined that the Board could not the place burden of persuasion with respect to the patentability of substitute claims on the patent owner.  The memorandum stated that the Board will determine whether substitute claims submitted in a motion to amend compliant with 35 U.S.C. § 316(d) are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner.  Continue Reading

PTAB Not Always Bound By Previous Court Decisions Regarding Patent Validity

In Novartis AG v. Noven Pharm. Inc., Appeal 2016-1678-1679 (April 2017), Novartis appealed two PTAB decisions holding claims of two patents obvious over cited prior art (IPR2014-00549 and IPR2014-00550), arguing that previous judicial holdings of non-obviousness should control the PTAB’s factual findings and that the claims should have been held non-obvious.

The two Novartis patents at issue (U.S. Patent Nos. 6,316,023 and 6,335,031) were from the same patent family and are directed to a pharmaceutical composition comprising rivastigmine (Exelon®) and an antioxidant for the treatment of Alzheimer’s disease.   Continue Reading

Eli Lilly’s Pemetrexed Therapy Claims Survive Challenge At PTAB

The Federal Circuit’s decision in Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., 845 F.3d 1357 (Fed. Cir. 2017) attracted much attention for applying the theory of divided infringement in the context of pharmaceutical therapeutic regimen claims.  Before the Federal Circuit decision, a scrum of petitioners successfully petitioned for IPR of the Lilly patent, alleging that the claims were obvious in view of a combination of references that included prior art considered by the court in the litigation. Our previous post highlighted the potential for inconsistent results that AIA trials may present relative to district court actions concerning the same patent.  Continue Reading

Cases to Watch

Pending Supreme Court Decisions

The Supreme Court will decide during its October 2017 term “Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.” Oil States Energy Services, LLC v. Green’s Energy Group, LLC, Sup. Ct. Dkt. 16-712.  Read more.

The Supreme Court also will decide during its October 2017 term whether the PTAB must issue a final written decision as to every patent claim challenged by a petitioner.  SAS Institute, Inc. v. Matal, Sup. Ct. Dkt. 16-969.  Read more.

On November 27, 2017, the Supreme Court heard oral arguments in these two cases.  A transcript of the argument in the Oil States case is available at this link, and a transcript of the oral argument in the SAS Institute case is available at this link.

Decisions in both cases can be expected in the spring of 2018.

Error in Claim Construction Leads to Reversal of IPR Decision and Cancelation of Claims

Two recent Federal Circuit decisions illustrate how an error in construing claims may lead the court to reverse a PTAB final written decision. In Organik Kimya AS v. Rohm & Haas Co., the Federal Circuit determined that the PTAB correctly construed the disputed claim term, “swelling agent,” and therefore affirmed the PTAB’s decisions upholding the patentability of challenged claims directed to processes for preparing emulsion polymers. In contrast, in Owens Corning v. Fast Felt Corp., decided on the same day, the court determined that the PTAB erred in construing the term “roofing or building cover material” too narrowly, and thus reversed the PTAB’s decision canceling claims directed to methods of applying polymer “nail tabs” on roofing and building cover material.   Continue Reading

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