Attempting to “swear behind” an alleged prior art reference has been common practice in IPRs, going back to the first IPR, Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC, IPR2012-00001 (PTAB 2013), aff’d sub nom. In re Cuozzo Speed Tech., LLC, 793 F.3d 1268 (Fed. Cir. 2015), aff’d sub nom., Cuozzo Speed Tech., LLC v. Lee, 136 S. Ct. 2131 (2016). In that case, Cuozzo was unsuccessful in swearing behind (for failure to exercise reasonable diligence toward reduction to practice), and as we have discussed, patent owners are often unsuccessful in these efforts, for failure to satisfy the legal requirements for proving an earlier invention date.
Continue Reading Inventor’s Uncorroborated Testimony Not Sufficient to Swear Behind Reference
Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims
On April 24, 2018, the Supreme Court issued its decision in SAS Institute, Inc. v. Iancu, holding that if the Patent Office institutes an inter partes review (IPR) proceeding, it must issue a final written decision with respect to the patentability of every patent claim challenged by the petitioner. The Court reversed the Federal Circuit’s judgment, which upheld the Patent Trial and Appeal Board’s (PTAB) common practice of instituting review on some, but not all challenged claims, and then issuing a final written decision addressing only the claims for which review was instituted.
Continue Reading Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims
Is the PTAB Bound by a Prior Federal Circuit Claim Construction?
In Knowles Electronics LLC v. Cirrus Logic, Inc., No. 2016-2010 (Fed. Cir. Mar. 1, 2018), the Federal Circuit affirmed a PTAB decision that upheld an examiner’s rejection of claims for anticipation in an inter partes reexamination (IPX). The same claims had earlier been challenged, and determined to be not invalid (over different prior art), in an ITC decision that was also affirmed by the Federal Circuit. MEMS Tech. Berhad v. Int’l Trade Comm’n, 447 F. App’x 142 (Fed. Cir. 2011). The decision in the IPX appeal turned on construction of a particular claim term (“package”), and according to a dissent authored by Judge Newman, the court should have reversed the PTAB’s decision due to claim preclusion, because the court had earlier construed the same term differently.
Continue Reading Is the PTAB Bound by a Prior Federal Circuit Claim Construction?
Patent Owner Estoppel May Apply When Patent Owner Cancels Claims Before IPR Institution
In Arthrex, Inc. v. Smith & Nephew, Inc., No. 2017-1239 (Fed. Cir. Jan. 24, 2018), the Federal Circuit affirmed the PTAB’s entry of adverse judgment against Patent Owner Arthrex, before instituting inter partes review. Specifically, the PTAB entered judgment after Arthrex had disclaimed all challenged claims, but before the PTAB decided whether to institute a trial. As a result of the PTAB’s adverse judgment, the Patent Owner is estopped, under 37 C.F.R. § 42.73(d)(3)(1), from obtaining another claim in a continuation application, for example, that is “not patentably distinct” from a canceled claim. Estoppel would not have applied if the PTAB would have instead decided not to institute the IPR.
Continue Reading Patent Owner Estoppel May Apply When Patent Owner Cancels Claims Before IPR Institution
PTAB Should Have Considered Argument Raised in “Redundant,” Non-instituted Ground
In CRFD Research Ltd. v. Matal, No. 2016-2198 (Fed. Cir. Dec. 5, 2017), the Federal Circuit determined that the PTAB erred in its obviousness analysis, in part by failing to consider an argument the IPR petitioner made in a ground that the PTAB determined was “redundant” to the instituted grounds.
Petitioner Hulu, LLC, challenged claims of CRFD Research Ltd.’s patent directed to methods of transferring an ongoing software-based session from one device to another, allowing the user to begin a session on one device, such as a cell phone, and then transferring the session to another device, such as a laptop computer.
Continue Reading PTAB Should Have Considered Argument Raised in “Redundant,” Non-instituted Ground
Error in Claim Construction Leads to Reversal of IPR Decision and Cancelation of Claims
Two recent Federal Circuit decisions illustrate how an error in construing claims may lead the court to reverse a PTAB final written decision. In Organik Kimya AS v. Rohm & Haas Co., the Federal Circuit determined that the PTAB correctly construed the disputed claim term, “swelling agent,” and therefore affirmed the PTAB’s decisions upholding the patentability of challenged claims directed to processes for preparing emulsion polymers. In contrast, in Owens Corning v. Fast Felt Corp., decided on the same day, the court determined that the PTAB erred in construing the term “roofing or building cover material” too narrowly, and thus reversed the PTAB’s decision canceling claims directed to methods of applying polymer “nail tabs” on roofing and building cover material.
Continue Reading Error in Claim Construction Leads to Reversal of IPR Decision and Cancelation of Claims
Aqua Products Dissent Would Keep Burden for Amendments on Patent Owners
As discussed here, the en banc Federal Circuit vacated and remanded the PTAB’s decision in Aqua Products, Inc. v. Matal, determining that the PTAB erred in placing the burden of persuasion on the patent owner for proposed claim amendments. Four judges on the eleven-judge en banc panel dissented, and would have upheld the PTO’s rule, 37 C.F.R. § 42.42(c), that places the burden of persuasion on the moving party, and agreed with the PTO that this rule applies to patent owners who move to amend claims during an IPR.
Continue Reading Aqua Products Dissent Would Keep Burden for Amendments on Patent Owners
Petitioner Made Rebuttal Argument in Reply, Not an Improper New Argument
PTAB rules prohibit raising new arguments in a reply brief, but it can be difficult to distinguish between an improper reply argument and a proper rebuttal. In Idemitsu Kosan Co. v. SFC Co., No. 2016-2721 (Fed. Cir. Sept. 15, 2017), the Federal Circuit determined that the IPR petitioner properly made a rebuttal argument—not a belated, new argument—in its reply brief, and the court affirmed the PTAB’s decision canceling the challenged claims for obviousness.
Continue Reading Petitioner Made Rebuttal Argument in Reply, Not an Improper New Argument
PTAB Correctly Construed “Said” and Canceled Claims—but Was the Patent CBM Eligible?
In a CBM appeal, TransPerfect Global, Inc. v. Matal, No. 2016-1121 (Fed. Cir. July 12, 2017) (non-prec.), the Federal Circuit determined that the PTAB correctly construed the word “said” in the claim term “said hyperlink,” and determined that TransPerfect’s challenged claims were unpatentable for lack of written description. The court’s claim construction analysis is thorough and well supported, but the treatment of the challenged patent as CBM-eligible appears to be inconsistent with Federal Circuit precedent.
Continue Reading PTAB Correctly Construed “Said” and Canceled Claims—but Was the Patent CBM Eligible?
Uncorroborated Declaration Not Sufficient to Avoid § 102(e) Prior Art
In EmeraChem Holdings, LLC v. Volkswagen Group of American, Inc. (Fed. Cir. June 15, 2017), the Federal Circuit determined that the Patent Owner’s uncorroborated declaration was insufficient to show that asserted prior art under pre-AIA 35 U.S.C. § 102(e) represented the work of the same inventive entity as the challenged claims, and with respect to certain claims the PTAB failed to provide sufficient notice and opportunity to respond. Accordingly, the court affirmed in part and vacated in part the PTAB’s decision that the challenged claims were unpatentable for obviousness.Continue Reading Uncorroborated Declaration Not Sufficient to Avoid § 102(e) Prior Art