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Obvious Variants and the Hand of Fate

By Sandip H. Patel on Posted in Appeals, Estoppel, Inter Partes Review, IPR
Collateral estoppel is a resource-saving shortcut. Judges consider it when an issue previously received sufficient judicial attention. And they apply it when the issue was resolved against the party now seeking, in some way, to circumvent that resolution. In the absence of some intervening change in the law or new evidence, resolution likely would be … Continue Reading

No Weight for Unsupported Expert Witness Testimony

By Sandip H. Patel on Posted in Inter Partes Review, Post Grant Review, Trial Procedures
In early February 2023, the Patent Office’s Director designated as precedential the Patent Trial and Appeal Board’s decision in Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022). In this decision, the Board denied a petition seeking inter partes review. The petitioner asserted the challenged patent claims were obvious over printed publication … Continue Reading

This Seems Absurd, but …

By Sandip H. Patel on Posted in Estoppel, Inter Partes Review, IPR
Last year, a district court applied the doctrine of collateral estoppel to dismiss an infringement suit after the Patent Trial and Appeal Board decided to cancel the asserted patent’s claims in an inter partes review. In the ensuing appeal of the court’s decision, the Federal Circuit granted the patent owner’s (Jump Rope’s) unopposed motion for … Continue Reading

Rigidly Interpreting Precedents May Foreclose an Equitable Doctrine

By Sandip H. Patel on Posted in Estoppel, Inter Partes Review, IPR
The Federal Circuit’s Judge Bryson has been presiding over two district court cases where he decided an important and recurring issue regarding collateral estoppel. In a consolidated order, he refused to apply collateral estoppel to certain fact-finding by the Patent Trial and Appeal Board on what prior art publications disclose relative to patent claims the … Continue Reading

A Decision Poised to Pivot on Credibility

By Sandip H. Patel on Posted in Inter Partes Review, IPR, Sections 102/103, Trial Procedures
The Federal Circuit’s recent decision in Google LLC v. IPA Technologies, Inc., Appeals 2021-1179, -1180, and -1185 (Fed. Cir. May 19, 2022), offers three instructive reminders. First, a publication disqualified from consideration as prior art during prosecution may be resurrected as prior art during an AIA trial. Second, the burden of producing evidence is not … Continue Reading

Satisfying the Duty of Disclosure in AIA Trials

By Sandip H. Patel on Posted in Amendments, Inter Partes Review, IPR, Trial Procedures
In ClearOne, Inc. v. Shure Acquisition Holdings, Inc., Appeal 2021-1517, Slip Op. at 2 (Fed. Cir. June 1, 2022), the Federal Circuit affirmed a Patent Trial and Appeal Board order that refused to authorize a sanctions motion the petitioner requested after the Board issued its final written decision granting (in relevant part) the patent owner’s … Continue Reading

Estoppel Evolves

By Sandip H. Patel on Posted in Estoppel, Inter Partes Review, IPR
Back in 2016, the Federal Circuit held that a petitioner retains the ability, after an adverse Patent Trial and Appeal Board decision, to assert un-instituted invalidity grounds it presented in its petition. The court reasoned that when the Board chooses not to institute certain petitioned grounds (e.g., due to redundancy), the petitioner could not have … Continue Reading

So, You Invented a Numerical Range

By Sandip H. Patel on Posted in Claim Construction, Inter Partes Review, IPR
In Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A., Appeals 2020-2073, -2142 (Fed. Cir. Nov. 24, 2021), the Federal Circuit affirmed a Patent Trial and Appeal Board’s final decision canceling claims in Indivior’s patent claiming a polymer matrix-containing film. Certain claims in the patent recited an amount of polymer matrix inadequately disclosed, according to the … Continue Reading

Bizarre Facts Beget Bizarre Result

By Sandip H. Patel on Posted in Ex Parte, Inter Partes Review, IPR, Reexamination
Before the Federal Circuit’s recent decision in In re Vivint, Inc., Appeal 2020-1992 (Fed. Cir. Sept. 29, 2021), the Patent Trial and Appeal Board affirmed a reexamination examiner’s final rejection of Vivint’s patent claims as unpatentable over prior art. In due course, the Patent Office would have issued a certificate canceling those claims. But Vivint … Continue Reading

The Headaches in Claiming Antibody-based Inventions Broadly

thumbnail image of DNA strandBy Sandip H. Patel on Posted in Biotechnology, Inter Partes Review, IPR, Sections 102/103
Recent Federal Circuit decisions call into question the value of patents broadly claiming inventions on antibodies and their function in treating debilitating diseases. The decisions in these cases originated in district courts and arguably swept aside the merits of scientific breakthroughs because the inventions claimed were not enabled or were otherwise insufficiently described to justify … Continue Reading

The Supreme Court Decides Arthrex, Giving the PTO Director Discretion to Review PTAB Decisions

By Sandip H. Patel on Posted in Appeals, Inter Partes Review, IPR
On June 21, 2021, the Supreme Court issued a decision vacating the Federal Circuit’s judgment in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). As we previously explained, the Federal Circuit in Arthrex held that the AIA was unconstitutional in that administrative patent judges (APJs) have the authority of principal … Continue Reading

Mine Your Patent Application and You Might Find a Licensee

By Sandip H. Patel on Posted in Appeals, Claim Construction, Interferences, Section 112
A patent interference is an adversarial proceeding where each party is trying deprive its opponent of a patent on an invention that that the Patent Office has already decided is patentable. Long after the AIA became effective to phase out interferences, the Patent Trial and Appeal Board continues to declare and administer them where at … Continue Reading

Supreme Court to Review the Arthrex Decision

By Sandip H. Patel on Posted in Appeals, CBM, Covered Business Method, Inter Partes Review, IPR, Post Grant Review
The Supreme Court issued an order on October 13, 2020, granting and consolidating three certiorari petitions seeking review of the Federal Circuit’s judgment in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), reh’g denied, 953 F.3d 760 (Fed. Cir. 2020). We discussed the Federal Circuit’s judgment here and its decision … Continue Reading

Denying a Stay and Building an Airplane While Flying It

By Sandip H. Patel on Posted in Institution / Denial, Inter Partes Review, IPR, Stays
A decision to stay patent infringement litigation falls within a federal court’s power to control its docket. But in determining whether to stay litigation pending the Patent Office’s inter partes review (IPR) of the patent, courts still are guided by three factors: (1) whether the stay will simplify the litigation, (2) whether a stay would unduly prejudice … Continue Reading

Does Section 285 Permit an Award of Attorney’s Fees for Patent Office Proceedings?

By Sandip H. Patel on Posted in Inter Partes Review, IPR, Reexamination, Stays
Back in 1988, the Federal Circuit reversed a district court decision that refused to award a party its reasonable attorney’s fees incurred in successfully litigating a patent’s validity before the Patent Office. PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565 (Fed. Cir. 1988). The Office determined that the patent asserted in litigation—stayed … Continue Reading

Fast-Track Decisions on Ex Parte Appeals

By Sandip H. Patel on Posted in Ex Parte
On July 2, 2020, the Patent Office initiated the “Fast-Track Appeals Pilot Program,” which it designed to reduce the pendency of ex parte appeals. The program, effective for one year, is in a pilot stage to gauge the public’s interest and to assess its longer-term feasibility. The Office neither expects nor intends any delays for … Continue Reading

The Arthrex Mulligan

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Stays, Trial Procedures
The Federal Circuit, in Arthrex, concluded that the Patent and Trial Appeal Board’s Administrative Patent Judges were unconstitutionally appointed “principal” officers. The court therefore vacated the Board’s decision that canceled claims in an inter partes review and remanded so a new panel of APJs would re-decide the patentability of the claims. What happens, however, when … Continue Reading

The Long Run

By Sandip H. Patel on Posted in Amendments, Inter Partes Review, IPR
Adidas successfully petitioned the Patent Trial and Appeal Board in 2012 to review a Nike shoe patent. During that review, Nike filed a motion to amend the patent by canceling all claims and substituting four new claims. The Board canceled the patent claims and found the new claims unpatentable. Among other things, the Board said … Continue Reading

A Fine Mess

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
Update (Apr. 3, 2020): The Federal Circuit recently denied rehearing petitions in the Polaris appeals referenced below (see link and link), and also denied the PTO’s request to stay the mandate in the Arthrex appeal (see link). The Federal Circuit recently issued an order denying multiple rehearing petitions in Arthrex Inc. v. Smith & Nephew, … Continue Reading

Come on, Board, Finish What You Started

By Sandip H. Patel on Posted in Claim Construction, Inter Partes Review, IPR, Section 112, Sections 102/103
The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., Appeals 2019-1169, -1260 (Fed. Cir. Feb. 4, 2020), is remarkable, but not for its holding: “the Board may not cancel claims for indefiniteness in an IPR proceeding.” After 10,000 IPRs, hardly anyone thought otherwise. But it’s interesting nonetheless that someone so … Continue Reading

POP Hits a Softball

By Sandip H. Patel on Posted in Inter Partes Review, IPR, Printed Publication
On Winter’s eve, the Board’s Precedential Opinion Panel (POP) finally answered a question it posed in an April order: “What is required for a petitioner to establish that an asserted reference qualifies as [a] ‘printed publication’ at the institution stage?” As we earlier noted, the April order granted an aggrieved petitioner’s request for rehearing of … Continue Reading

Haste Makes Waste?

By Sandip H. Patel on Posted in Appeals, Covered Business Method, Inter Partes Review, Interferences
If the Federal Circuit’s decision in Arthrex wasn’t sufficiently newsworthy, then look at what lurks in its wake. The day after the decision, the court issued precedential orders indicating that a timely Constitutional challenge apparently must be presented to the court in an opening brief. A few days after those orders, two of the court’s … Continue Reading
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