So Long, and Thanks for All the Fish

In a recent precedential decision, the Federal Circuit affirmed a Patent Trial and Appeal Board decision, upholding an examiner’s final rejection of claims to a fishing method as unpatentable under 35 U.S.C. § 101.  In re Rudy, Case 2019-2301, Slip Op. (Fed. Cir. Apr. 24, 2020).  Appeals to both the Board and the Federal Circuit were cast by a pro se applicant, who is also a patent attorney. Continue Reading

Supreme Court to Review the Arthrex Decision

The Supreme Court issued an order on October 13, 2020, granting and consolidating three certiorari petitions seeking review of the Federal Circuit’s judgment in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), reh’g denied, 953 F.3d 760 (Fed. Cir. 2020). We discussed the Federal Circuit’s judgment here and its decision denying rehearing here. The Supreme Court, at the government’s recommendation, asks the parties to address the following two questions. Continue Reading

Opinions Designated As Precedential Illuminate How Factors Governing Discretionary Denial of IPR Petitions Under 35 U.S.C. §314(a) Are Applied

The Patent Trial and Appeal Board designated as precedential two opinions with opposite outcomes on the issue of discretionary denial of inter partes review (IPR) petitions under 35 U.S.C. §314(a) in July.  In Apple Inc. v. Finitiv, Inc., IPR2020-00019, Paper 15 (May 13, 2020), the Board denied institution of an IPR due to a parallel district court proceeding in the Western District of Texas, whereas in Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-01393, Paper 24 (June 16, 2020), the Board instituted an IPR despite a parallel district court proceeding also occurring in the Western District of Texas.  Continue Reading

Denying a Stay and Building an Airplane While Flying It

A decision to stay patent infringement litigation falls within a federal court’s power to control its docket. But in determining whether to stay litigation pending the Patent Office’s inter partes review (IPR) of the patent, courts still are guided by three factors: (1) whether the stay will simplify the litigation, (2) whether a stay would unduly prejudice (or present a clear tactical disadvantage to) the patent owner, and (3) whether the litigation has progressed to some advanced stage (e.g., discovery is complete, a trial date is set, etc.). Yet since the Supreme Court’s 2018 decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) (discussed here), courts in the Eastern District of Texas have erected an unnecessarily high bar for stay-movants to leap. Continue Reading

Fitbit Dodges a Bullet—Entitled to Appeal Portion of Apple’s Petition Which It Did Not Join

In Fitbit, Inc. v. Valencell, Inc., Appeal 2019-1048 (Fed. Cir. July 8, 2020), the Federal Circuit determined that Fitbit, who had successfully sought joinder in an IPR petition filed by Apple, had standing to appeal an adverse determination as to certain patent claims, despite Fitbit’s failure to join that portion of Apple’s Petition. The Federal Circuit went on to rule that the PTAB had erred in rejecting Apple’s arguments as to those claim, and remanded the matter to the Board for further review. Continue Reading

Raiders of the Lost Art

In Telefonaktiebolaget LM Ericsson, (“Ericsson”), v TCL Corporation, (“TCL”), 2017-2381, -2385 (Fed. Cir. Nov. 7, 2019), the Federal Circuit affirmed the PTAB’s decision that canceled claims in an Ericsson patent that TCL challenged based on its subsidiary finding that a German journal article TCL presented was indeed prior art.  The decision is important because it offers guidance in assessing what type of evidence may be persuasive in a PTAB’s assessment of the public accessibility of a journal article whose publication date is close to the challenged patent’s critical date. Continue Reading

Does Section 285 Permit an Award of Attorney’s Fees for Patent Office Proceedings?

Back in 1988, the Federal Circuit reversed a district court decision that refused to award a party its reasonable attorney’s fees incurred in successfully litigating a patent’s validity before the Patent Office. PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565 (Fed. Cir. 1988). The Office determined that the patent asserted in litigation—stayed pending the Office’s review—was invalid and obtained through inequitable conduct. Nobody contested the district court’s conclusion that the case was exceptional. Continue Reading

Incorporating Entire Arguments by Reference Can Lead to Disastrous Outcomes

In General Access Solutions, Ltd. v. Sprint Spectrum L.P., Case No. 19-1856 (Fed. Cir. May 11, 2020) (non-precedential), General Access Solutions (“GAS”) appealed from two final written decisions of the Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”) proceeding holding that multiple claims of U.S. Patent Nos. 7,173,916 and 6,891,810 were obvious over prior art cited by Sprint Spectrum L.P. (“Sprint”). Specifically, the Board found certain claims to be unpatentable based on various grounds relying on U.S. Patent No. 7,366,133 (“Ahy”) as prior art under 35 U.S.C. § 102(e). Continue Reading

Fast-Track Decisions on Ex Parte Appeals

On July 2, 2020, the Patent Office initiated the “Fast-Track Appeals Pilot Program,” which it designed to reduce the pendency of ex parte appeals. The program, effective for one year, is in a pilot stage to gauge the public’s interest and to assess its longer-term feasibility. The Office neither expects nor intends any delays for appeals that forego the pilot program. So, for now, participation in the program is first come, first served, limited to 500 applications, and requires submission of a short petition and payment of a modest fee. The program is likely welcome news, especially to those who have complained about the lengthy pendency often accompanying appeals. Continue Reading

PTAB’s Obviousness Analysis Inconsistent with KSR

In a decision issued on May 5, 2020, the Federal Circuit reversed a PTAB decision upholding patent claims challenged for obviousness. Uber Technologies, Inc. v. X One, Inc., 957 F.3d 1334 (Fed. Cir. 2020). The Board failed to properly apply the obviousness test of KSR International Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), which recognized that a person of skill in the art has good reason to pursue the use of a finite number of identified, predictable solutions to solve a problem. Continue Reading

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