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Kate Nuehring Su protects and enforces the intellectual property rights of her clients in all phases of complex litigation and patent prosecution. In addition to her legal experience, Ms. Nuehring Su has a background in engineering, including a degree in biomechanical engineering from Stanford University. Her extensive legal and technical knowledge enables her to devise successful strategies for clients across a range of industries. Read full bio here.

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 v. Veeam Software Corp., 835 F.3d 1406 (Fed. Cir. 2016), which vacated the Board’s earlier disposition of the IPR and remanded the case to the Board to reconsider the substitute claims it previously denied.  These decisions offer at least a partial framework by which the PTAB may assess motions to amend during inter partes reviews.
Continue Reading Board Decision Grants Motion to Amend With Respect to One Substitute

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 reciting these types of features may be assessed by the Patent Office and the Federal Circuit. 
Continue Reading Rejection of Claims Containing Functional Language and a Negative Limitation Affirmed by Federal Circuit

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 the matter because the PTAB failed to adequately explain its findings, noting that the PTAB’s “disagreement with [the petitioner] … does not amount to a satisfactory explanation for its finding” that those claims are not unpatentable.  Google at 12.
Continue Reading Attorney Argument Doesn’t Provide Substantial Evidence To Support PTAB

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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 action that the party has not sustained its burden of proving the invalidity of the patent claim, the party may neither initiate nor maintain a challenge to the patent claim in an inter partes reexamination. The decision is an interesting contrast to the decision in Novartis AG v. Noven Pharmaceuticals Inc. where the Federal Circuit affirmed the PTAB’s inter partes review decisions finding obvious certain patents that were previously found nonobvious in district court. The contrast is grounded in differences in the statutory estoppel provisions that apply to the different proceedings.Continue Reading Different Invalidity Conclusions by PTAB and Federal Courts Prohibited

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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 the portion that concluded that the same combination does not render dependent claim 3 obvious. The decision is interesting because the Board and the Federal Circuit concluded that the reduced effectiveness of the combined references as compared to a single reference  alone would not deter a person of skill in the art from having a reasonable expectation of success in making the invention.
Continue Reading Federal Circuit Finds Portion of Board’s Obviousness Decision Supported

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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 generating limited-use transaction codes to be given to a merchant by a customer for the purchase of goods and services.  The court determined that the Board’s decisions rested on an unreasonable claim interpretation of a “single-merchant” claim limitation, noting that, contrary to the Board’s claim interpretation, “[t]he prosecution history reinforces the evident meaning of the single-merchant limitation as requiring limiting, to one, the number of merchants that may use the transaction code, without identifying the merchant.” The court’s decision serves as a good example of how the prosecution history may aid a patentee in defending against patentability challenges in AIA trials.
Continue Reading Federal Circuit Vacates Board’s Decision Cancelling Method Claims

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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” was given an implicit definition in the specification.
Continue Reading Federal Circuit Affirms Board’s Decision Cancelling Claims for Oil Drilling Equipment Based on Broad Claim Construction

Route 22 signA 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 addressing and ultimately disagreeing with the Board’s analysis of the patent in a parallel IPR. The Board opined, but did not decide, that the same patent claims may be invalid for indefiniteness and decided not to institute an IPR. This seemingly places a patent challenger in a Catch 22 position insofar as the Board won’t institute IPR to address prior art patentability because it cannot construe the claim, yet the court won’t conclude the claim is indefinite because it disagrees with the Board.
Continue Reading District Court Rejects Indefiniteness Argument Despite No Findings

3d render - Telephone directoryIn 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 coordination between a first computer program displaying a document and a second computer program for searching an external information source. The Board determined that the claims were obvious over a single reference (Pandit), although Pandit did not expressly disclose a step of “performing a search” of an information source, as recited in the claims. 
Continue Reading Federal Circuit Identifies Limits to the Application of “Common Sense” in an Obviousness Analysis