Federal Circuit Affirms Obviousness Decision by Board, Finds No APA Violation Based on New Characterization of Passage Providing Motivation to Combine

In Smith & Nephew, Inc. v. Arthrocare Corp., Appeal No. IPR2016-00918 (Fed. Cir. Aug. 21, 2019), the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision in an IPR to invalidate patent claims on the basis of obviousness, determining that the Board did not violate the Administrative Procedure Act (APA) by describing the motivation to combine the teachings of the prior art in different language than that used in the petition.  Additionally, the court affirmed the Board’s claim construction as reasonable and found that subjecting a pre-AIA patent to inter partes review was constitutional when the patent issued after the passage of the AIA.  Continue Reading

Federal Circuit Addresses Constitutional Issue Supreme Court Left Open

In consolidated appeals of a trio of Board decisions canceling pre-AIA patents in inter partes reviews (IPR), the Federal Circuit held “that the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.” Celgene Corp. v. Peter, Appeals 2018-1167, -1168, -1169, Slip Op. at 3 (Fed. Cir. July 30, 2019). As we previously discussed (link), the Supreme Court’s decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365, 1379 (2018), left open this issue. The Board’s decisions on appeal pre-date Oil States and unsurprisingly, perhaps, Celgene did not therefore raise the issue before the Board. But Celgene and the Patent Office briefed this constitutional issue in the appeal and then addressed it at oral argument to the Federal Circuit’s satisfaction. In further view of the growing number of appeals raising this issue in the wake of Oil States, the court exercised its discretion to decide the issue. Continue Reading

A Reference is Publicly Accessible if a Person of Ordinary Skill in the Art Could Access the Reference

In a recent decision vacating the PTAB’s finding that a draft standard for video coding emailed to a listserv was not publicly accessible, the Federal Circuit again corrected the PTAB’s application of the legal standard to determine the public accessibility of prior art. Samsung Electronics Co., Ltd. v. Infobridge Pte. Ltd., case no. 2018-2007, 2018-2012, 2019 WL 3047113 (Fed. Cir. July 12, 2019). Although multiple means of accessibility were alleged, the PTAB’s analysis was upheld with respect to all but the listserv distribution. Continue Reading

Corroboration Required to Prove Earlier Invention Date

As we have discussed (here and here), owners of pre-AIA patents may be able to “swear behind” alleged prior art references by providing evidence of an earlier invention date, but the inventors’ testimony concerning conception of the invention must be corroborated by independent evidence. In Kolcraft Enterprises, Inc. v. Graco Children’s Products, Inc., No. 2018-1259 (Fed. Cir. Jul. 2, 2019), the patent owner was unable to swear behind alleged prior art because it did not provide sufficient corroborating evidence. Continue Reading

Federal Circuit Upholds Patent Ineligibility of Dice Game

The Federal Circuit recently issued a decision in In re Marco Guldenaar Holding B.V., ruling the claims at issue were directed to the abstract idea of rules for playing a dice game.  Finding that the recited elements did not amount to significantly more than that abstract idea itself, the court found the claims ineligible for patent protection.   Continue Reading

Is the Written Description Requirement a Nose of Wax?

In re Global IP Holdings LLC, Appeal 2018-1426 (Fed. Cir. July 5,2019), concerns patent law’s written description requirement, under 35 USC § 112. The patentee is trying to reissue its patent on a carpeted load floor of a car. The patented floor includes thermoplastic components. The components, according to the patentee, ought not have been limited to thermoplastics, rather each should have been any plastic. So, the patentee sought to reissue the patent with a claim to the broader invention. The Patent Office examiner rejected the revised claim. Continue Reading

Four Decisions to Know regarding the PTAB’s Treatment of the new 2019 Patent Eligibility Guidelines

PTABWatch Takeaway: The Patent Trial and Appeal Board (PTAB) designated as “informative” four decisions applying the Patent Office’s 2019 patent eligibility guidance (PEG) regarding 35 U.S.C. § 101. While the decisions are not binding on future PTAB panels, the decisions provide useful insights into how the PTAB may approach issues of patent eligibility on ex parte appeal, and what type of claims are likely to be found patent-eligible.

An overview of the PEG, including a description of how to analyze abstract ideas under the Patent Office’s newly revised step 2A, may be found in our previous posting titled How the PTAB Reviews Software Inventions Under the 2019 Revised Subject Matter Eligibility Guidance. Continue Reading

PTAB Precedential Decisions on Discretion to Institute Inter Partes Review

In May 2019, the PTAB designated precedential two IPR decisions related to its discretion to institute inter partes review.

In Valve Corp. v. Electronic Scripting Products, Inc., the Board denied institution under 35 U.S.C. § 314(a), applying the precedential General Plastic factors to deny institution of a follow-on petition.  See General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 17-18 (PTAB Sept. 6, 2017)(precedential) and our post about this case.  The Board determined that all the General Plastic factors weighed against institution. Continue Reading

USPTO to Patent Owners – Don’t Forget About Reexams and Reissues

Recently updated statistics from the USPTO provide little comfort for patent owners seeking to amend claims during an IPR proceeding.  The Motion to Amend Study, Installment 5 through FY2018, updated March 2019, reports that patent owners have filed a motion to amend in 326 of the 3,599 completed trials (9%) and in 90 of the 670 pending trials (13%).  Of the 326 motions filed in completed trials, the Board decided a motion to amend requesting to substitute claims in 205 trials (63%), and of those decided motions, Board granted or granted-in-part a motion to amend in only 21 of the 205 trials (10%). Continue Reading

State University Patents Are Not Immune from Inter Partes Review

The Federal Circuit on June 14 affirmed Patent Office decisions in inter partes review (IPR) proceedings canceling patents the University of Minnesota owned, concluding that “state sovereign immunity does not apply to these proceedings.” The court’s conclusion is not limited to instances where, for example, a state university waives its sovereign immunity by asserting a patent in federal court proceedings. One broad import of the court’s holding therefore is that all state university patents are vulnerable to attack in PTO proceedings. Regents of the Univ. of Minn. v. LSI Corp., Appeal 2018-1559 (Fed. Cir. June 14, 2019); Regents of the Univ. of Minn. v. Ericsson Inc., Appeals 2018-1560 et seq. (Fed. Cir. June 14, 2019).

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