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

By Kate Nuehring Su on Posted in Institution / Denial, Inter Partes Review, IPR
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. Fintiv, Inc., IPR2020-00019, Paper 15 (May 13, 2020), the Board denied institution of an IPR due to a parallel … Continue Reading

Federal Circuit Vacates Board Obviousness Decision Relying Upon Reference in Non-Instituted Ground for Motivation to Combine

By Kate Nuehring Su on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
In In Re: IPR Licensing, Inc., Appeal Nos. IPR2014-00525, IPR2015-00074 (Fed. Cir. Nov. 22, 2019), the Federal Circuit vacated the Patent Trial and Appeal Board’s decision that a claim was invalid as obvious.  The claim had previously been in front of the Federal Circuit in an appeal in which Federal Circuit found insufficient record support … Continue Reading

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

By Kate Nuehring Su on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
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 … Continue Reading

Federal Circuit Affirms Obviousness Decision by Board, Discusses Impact of Standing on Triggering of §315(b)’s Time Bar

By Kate Nuehring Su on Posted in Appeals, Claim Construction, Inter Partes Review, Sections 102/103
In Hamilton Beach Brands, Inc. v. F’real Foods, LLC, Appeal No. IPR2016-01107 (Fed. Cir. Nov. 16, 2018), the Federal Circuit affirmed the Patent Trial and Appeal Board’s final written decision in an IPR upholding the patentability of a patent claim under 35 U.S.C. § 103. Additionally, the court discussed but did not determine whether improper … Continue Reading

Successful IPR Petition Time Barred Under 35 U.S.C. §315(b) by Involuntarily Dismissed Complaint

By Kate Nuehring Su on Posted in Appeals, Institution / Denial, Inter Partes Review, IPR, Real Party-in-Interest
In Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., Appeal Nos. 2017-1555, 217-1626 (Fed. Cir. Sept. 28, 2018), the Federal Circuit vacated the Patent Trial and Appeal Board’s final written decision in an IPR because institution of the IPR should have been time barred under 35 U.S.C. §315(b).  Additionally, the Federal Circuit declined to … Continue Reading

Federal Circuit Reverses, i.e. Overturns, Board’s Anticipation Decision Due to Overbroad Claim Construction

By Kate Nuehring Su on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
In TF3 Ltd. v. Tre Milano, LLC, Appeal 2016-2285 (Fed. Cir. July 13, 2018), the Federal Circuit reversed the Patent Trial and Appeal Board’s final written decision canceling claims directed to a hair styling device as anticipated by prior art.  The court concluded that the Board improperly broadened two claim terms beyond the description in … Continue Reading

Federal Circuit Remands Decision on Motion to Amend to Board to Apply and Interpret Aqua Products and SAS Institute

By Kate Nuehring Su on Posted in Inter Partes Review, Obviousness, PTAB
The Federal Circuit’s recent decision in Sirona Dental Systems GMBH v. Institut Straumann AG, Appeals 2017-1341, 2017-1403 (Fed. Cir. June 19, 2018) tasked the PTAB with reconciling the Supreme Court’s SAS Institute decision (discussed here) with its en banc decision in Aqua Products regarding the burden of proof on motions to amend (discussed here).… Continue Reading

Motion to Amend Substituting Claims Granted in Full, Possibly Reflecting the Change Wrought By Aqua Products

By Kate Nuehring Su on Posted in Amendments, Inter Partes Review
The Board recently granted a motion to amend, to replace unpatentable claims with proposed substitute claims, a rare occurrence that may signal a change compelled by Aqua Products (summarized here). In Apple, Inc. v. Realtime Data, LLC, Case No. IPR2016-01737 (PTAB March 13, 2018), the Board determined that all challenged claims were unpatentable and then … Continue Reading

Avoid Creating Bad Blood with the Board

By Kate Nuehring Su on Posted in Institution / Denial, Section 101, Sections 102/103
The Board recently denied a post grant review petition because the challenge was deemed redundant of the Patent Office’s earlier examination of similar claims in a related application. Live Nation Entertainment, Inc. v. Complete Entertainment Resources  B.V., Case No. PGR2017-00038 (PTAB January 16, 2018). The decision offers a cautionary tale for patent practitioners.  The Board … Continue Reading

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

By Kate Nuehring Su on Posted in Amendments, Inter Partes Review, IPR, Trial Procedures
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 … Continue Reading

Board Decision Grants Motion to Amend With Respect to One Substitute Claim and Denies Motion to Amend With Respect to Other Substitute Claim

By Kate Nuehring Su on Posted in Amendments, Inter Partes Review, IPR
The Board’s recent decision in Veeam Software Corp. v. Veritas Technologies, LLC, Case No. IPR2014-00090 (PTAB July 17, 2017), provides patent practitioners with a framework for analyzing proposed substitute claims.  The Board’s decision, granting patent owner’s motion to amend in part, should be considered in conjunction with the Federal Circuit’s decision in Veritas Technologies LLC … Continue Reading

Rejection of Claims Containing Functional Language and a Negative Limitation Affirmed by Federal Circuit

By Kate Nuehring Su on Posted in Appeals, Sections 102/103
The Federal Circuit’s recent decision in In re Chudik, Appeal 2016-2673 (Fed. Cir. August 25, 2017) (non-prec.), offers patent practitioners a cautionary tale and good teaching points about the propriety of negative limitations and functional claim language.  No two situations are the same, of course, but the case offers a real-world example of how claims … Continue Reading

Statement of Agreement or Disagreement with Attorney Argument Alone Does Not Provide Substantial Evidence To Support PTAB Findings

By Kate Nuehring Su on Posted in Inter Partes Review, IPR, Sections 102/103
In Google Inc. v. Intellectual Ventures II LLC, Appeal 2016-1543, 2016-1545 (Fed. Cir. July 10, 2017), the Federal Circuit affirmed the PTAB’s final written decision canceling some claims of U.S. Patent No. 6,121,960, but vacated the portion of the decision that refused to cancel other claims.  With respect to the upheld claims, the court remanded … Continue Reading

Different Invalidity Conclusions by PTAB and Federal Courts Prohibited in Inter Partes Reexamination But Permissible in IPR

By Kate Nuehring Su on Posted in Inter Partes Review, Sections 102/103
In Fairchild (Taiwan) Corp. v. Power Integrations, Inc., Appeal 2017-1002 (Fed. Cir. Apr. 21, 2017), the Federal Circuit determined that no inter partes reexamination proceeding can be brought or maintained on issues that a party raised or could have raised in a since-concluded civil action. Specifically, once the court issues a final judgment in the civil … Continue Reading

Federal Circuit Finds Portion of Board’s Obviousness Decision Supported by Substantial Evidence Despite Reduced Effectiveness of Combined Prior Art References

By Kate Nuehring Su on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
In Slot Speaker Techs., Inc. v. Apple Inc., Nos. 2015-2038, 2015-2039 (Fed. Cir. February 17, 2017) (non-prec.), the Federal Circuit affirmed a portion of the PTAB’s decision in an IPR that concluded claims 1 and 2 of U.S. Patent No. 7,433,483 would have been obvious over a combination of two prior art references, but reversed … Continue Reading

Federal Circuit Vacates Board’s Decision Cancelling Method Claims for Purchasing Goods and Services Based on Unreasonable Claim Interpretation

By Kate Nuehring Su on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
The Federal Circuit recently vacated PTAB final written decisions that rested on a claim construction contradicted by the patent’s prosecution history. Specifically, in D’Agostino v. Mastercard Int’l Inc., No. 2016-1592, 2016-1593 (Fed. Cir. December 22, 2016), the court vacated the Board’s IPR decisions of unpatentability of method claims in two patents directed to processes for … Continue Reading

Federal Circuit Affirms Board’s Decision Cancelling Claims for Oil Drilling Equipment Based on Broad Claim Construction

By Kate Nuehring Su on Posted in Claim Construction, Inter Partes Review
In Schoeller Bleckmann Oilfield v. Churchill Drilling Tools U.S., No. 2016-1494 (Fed. Cir. November 9, 2016) (non-prec.), the court affirmed the Board’s IPR decision of unpatentability of claims directed to oil-drilling equipment.  The court refused to construe the challenged claims as limited to a disclosed embodiment, rejecting the patentee’s argument that the claim term “ball-like” … Continue Reading

District Court Rejects Indefiniteness Argument Despite Board Finding of No Corresponding Structure for Means-Plus-Function Claim

By Kate Nuehring Su on Posted in Claim Construction, Inter Partes Review, Section 112
A pair of recent decisions, one from a federal district court and another from the PTAB, highlight the potential of inconsistent results regarding patent validity. In Microwave Vision, S.A. v. ETS-Lindgren Inc., Civ. Action No. 1:14-CV-1153-SCJ (D. Ga. Sept. 20, 2016), the court denied an accused infringer’s (ETS’s) motion for summary judgment of invalidity, after … Continue Reading

Federal Circuit Identifies Limits to the Application of “Common Sense” in an Obviousness Analysis

By Kate Nuehring Su on Posted in Inter Partes Review, Sections 102/103
In Arendi S.A.R.L. v. Apple, Inc., Appeal No. 2015-2073 (Fed. Cir. 2016), the Federal Circuit reversed the PTAB’s final written decision canceling claims for obviousness, on the basis that the PTAB improperly relied on “common sense” to determine that the claims were obvious. The challenged patent is directed to a computer-implemented method for providing beneficial … Continue Reading
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