Pending Supreme Court Decisions
An updated discussion of this issue is available here: The Supreme Court Finds IPR Proceedings Constitutional
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
Earlier this year, the Federal Circuit held “that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be considered for claim construction and relied upon to support a finding of prosecution disclaimer.” Aylus Networks, Inc., v. Apple Inc., Appeal 2016-1599 (Fed. Cir. May 11, 2017). In so holding, the court affirmed the district court’s summary judgment that Apple Inc’s AirPlay feature does not infringe the asserted claims of U.S. Patent No. RE 44,412. Critical to the district court’s judgment was its claim construction of the limitation “wherein the CPP logic is invoked” to “require only the CPP logic is invoked.” (emphasis added). The Patent Owner’s arguments presented during the pre-institution phase of the IPR proceeding compelled the district court to construe the claim so narrowly that the court also concluded that the accused AirPlay feature does not infringe.Continue Reading Patent Owner’s Optional Preliminary Response Avoids IPR, But Dooms Infringement Action
In a final written decision issued on April 24, 2017, the PTAB canceled all four challenged claims of U.S. Patent No. 8,671,057, directed to detecting invalid and fraudulent clicks in pay-per-click web advertising (Google Inc. v. Zuili, CBM2016-00008 (Paper 56)). The PTAB found all four claims unpatentable under 35 U.S.C § 101, and obvious under 35 U.S.C. § 103 over a combination two prior art documents related to a study on online advertising reporting and auditing.
Continue Reading Pay-Per-Click Patent Found Ineligible Under Section 101
In Meiresonne v. Google, Inc., No. 2016-1755 (Fed. Cir. Mar. 7, 2017), the Federal Circuit affirmed the PTAB’s final written decision in IPR2014-01188 that the challenged claims in U.S. Patent No. 8,156,096 (the “’096 patent”) are unpatentable as obvious over the 1997 book “World Wide Web Searching for Dummies, 2nd Edition” by Brad Hill (“Hill”) and U.S. Patent No. 6,271,840 (“Finseth”). The sole issue before the Federal Circuit was whether Hill and Finseth teach away from the claimed invention.
The ’096 patent teaches a directory website that contains (1) a plurality of links to supplier websites, (2) “a supplier descriptive portion” located near a corresponding supplier link, (3) “a descriptive title portion” describing the class of goods or services listed on the website, and (4) “a rollover view area” that displays information about at least one of the suppliers corresponding to a link.
Continue Reading Teaching Away for Dummies
The PTAB is not often persuaded by objective evidence of non-obviousness, i.e., secondary considerations, when the scope and content of the prior art includes all of the features recited in the claims. However, a pair of recent PTAB decisions, Innopharma Licensing, Inc. v. Senju Pharmaceutical Co., LTD., IPR2015-00902, Paper 90, and IPR2015-00903, Paper 82 (PTAB July 28, 2016), provides a rare example where the PTAB completely changed its mind after instituting the IPRs. The decisions offer the same message, and this post focuses on the decision in IPR2015-00902, where the PTAB found all of the challenged claims of U.S. Patent No. 8,669,290 not obvious over the applied prior art references based on the objective evidence of non-obviousness.
Continue Reading Secondary Considerations Change Panel’s Mind after Institution
In two recent PTAB decisions, Tissue Transplant Technology Ltd. & Human Biologics of Texas, Ltd., v. Mimedx Group, Inc., Case IPR2015-00420, Paper 25 (PTAB July 7, 2016) and Dexcowin Global, Inc., v. Aribex, Inc. Case IPR2016-00440, Paper 13 (PTAB July 7, 2016), the Board reached opposite conclusions regarding whether the petitioner’s prior art was analogous to the challenged patents. It is well established that art is analogous when it is: (1) from the same field of endeavor as the claimed invention; or (2) reasonably pertinent to the particular problem faced by the inventor, if the art is not from the same field of endeavor. In re Bigio, 381 F.3d 1320, 1325-1326 (Fed. Cir. 2004). However, as these two decisions demonstrate, overcoming a non-analogous art challenge depends on how the petitioner characterizes the problem to be solved by the challenged claims and whether the petitioner can point to some area of overlap in the fields of endeavor of the prior art reference and the patented invention.
Continue Reading Analogous Art: A Tale of Two Decisions
If a patented mobile phone app can locate a nearby ATM machine, are the claims of that patent subject to CBM review because ATMs are used in financial transactions? What if the claim could cover a business entity that, incidentally, might also push advertisements to a mobile phone? Is it enough that a claim is merely “incidental to” a financial product or service, or, must a claim actually require that something be used to practice, administer, or manage a financial product or service? These are central questions currently under consideration at the CAFC in Unwired Planet LLC v. Google Inc., Nos. 15-1810 and 15-1812 (audio recordings). The PTAB found these facts sufficiently supported CBM review. However, during recent oral arguments on appeal, the judges of the CAFC panel seemed skeptical, focusing on the text of the underlying statute and its implementing rules.
Continue Reading For CBM Standing, Is “Incidental To” a Financial Product or Service Enough?
The PTAB has continued the trend of pushing the -“antibody exception” to written description into an ever-smaller corner. Claims to methods of using antibodies that bind Siglec-15 to impair osteoclast differentiation and inhibit bone resorption were deprived of priority because the parent application failed to disclose the “antigenic regions useful for generating antibodies having the desired functional properties.” Consequently, the claims were anticipated by the cited reference under 35 U.S.C. §102(a), and Patentee’s other evidence of prior conception, diligence and reduction to practice was insufficient to antedate the reference. Daiichi Sankyo Co., Ltd. v. Alethia Biotherapeutics, Inc., IPR2015-00291 (Paper No. 75, June 14, 2016) (final written decision).
Continue Reading Squeezing the ‘Antibody Exception’ to Written Description into a Corner
Update: The Supreme Court issued a decision on April 20, 2020 holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is closely related to its decision whether to institute inter partes review and is therefore rendered nonappealable by§314(d).”
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Original Post: The Patent Trial and Appeal Board recently designated five opinions as “precedential.” Each of these opinions addresses procedural aspects of AIA proceedings, including requests for additional discovery, the one-year time period for filing a petition, amending claims, and requirements for PTAB consideration of a petition. A summary of each opinion follows.
Continue Reading PTAB Provides Procedural Guidance with Five Precedential Opinions
In a pair of decisions from related IPR appeals, the Federal Circuit reversed and remanded portions of two final written decisions related to the same patent and parties because the PTAB’s construction of the claims was unreasonably broad. See, PPC Broadband, Inc. v. Corning Optical Comm’ns, Appeal Nos. 2015-1361, et al. (Fed. Cir., Feb. 22, 2016); PPC Broadband, Inc. v. Corning Optical Comm’ns, Appeal No. 2015-1364 (Fed. Cir., Feb. 22, 2016). The Federal Circuit highlighted the differences between the BRI standard applied by the USPTO and the PTAB and the Phillips standard applied in the courts, and in analyzing the PTAB’s application of the BRI standard, the CAFC focused extensively on the reasonableness of the PTAB’s construction, differentiating between a broadest possible interpretation, which may be overly broad, and the broadest reasonable interpretation in light of the claims and specification.
Continue Reading CAFC Puts the “Reasonable” Back in the BRI Standard