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Federal Circuit to Decide Whether KSR Applies to Design Patents

By Ryan J. Schermerhorn and Matt Nealon on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
On June 30th, the Federal Circuit granted a petition for re-hearing en banc in LKQ Corp. v. GM Global Tech. Operations LLC.[1] LKQ, an auto parts repair vendor for GM, successfully petitioned for inter partes review of GM’s design patent for a front fender design,[2] arguing it was anticipated by a prior art reference (Lain) … Continue Reading

Petitioners’ Replies May Respond to Newly Raised Claim Constructions

By Jim Warriner on Posted in Appeals, Claim Construction, Inter Partes Review, IPR
Can a petitioner’s reply in an IPR proceeding present new arguments and evidence responding to a proposed claim construction first raised in the patent owner’s response?  In Axonics, Inc. v. Medtronic, Inc., Nos. 2022-1532, 2022-1533 (Fed. Cir. Aug. 7, 2023), the Federal Circuit answered in the affirmative, vacating the PTAB’s final written decision of no … Continue Reading

Petitioner’s Analogous Art Argument was not so Obvious when Reversing the PTAB

By Joseph S. Sakevich on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
In Sanofi-Aventis Deutschland GMBH v. Mylan Pharms, Inc., No. 21-1981 (Fed. Cir. May 9, 2023), the Federal Circuit reversed the PTAB’s finding that Sanofi’s patent claims were obvious, determining the PTAB used the wrong test for deciding whether an existing patent was “analogous” to the one being challenged.… Continue Reading

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

IPR Institution Despite Arbitration Agreement Is Not Appealable

By Julianne M. Hartzell on Posted in Appeals, Inter Partes Review, IPR, Trial Procedures
Over a thorough dissent by Judge O’Malley, the Federal Circuit determined it lacked jurisdiction to review the Board’s decision to institute IPR despite an arbitration agreement between the parties. In re Maxpower Semiconductor, Inc., 2021-146, 2021-1950, 2021-1951, 2021-1952, 2021-1953, 2021 WL 4130639 (Fed. Cir. Sept. 8, 2021).… Continue Reading

An Invalidated Patent Still Qualifies As 102(e) Art

By Julianne M. Hartzell on Posted in Appeals, Sections 102/103
On May 28, 2021, the Federal Circuit found obvious the claims of a patent directed to telepharmacy, describing a process allowing a pharmacist to remotely supervise and approve the work of non-pharmacists in filling drug orders. The court reversed the PTAB’s decision to the contrary. Becton Dickinson and Co. v. Baxter Corp. Englewood, 998 F.3d … 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

Federal Circuit Finds Lack of Enablement in Prior Art Reference

By William (Bill) J. Samore on Posted in Appeals, Covered Business Method, Inter Partes Review, IPR, Sections 102/103
In Raytheon Technologies v. General Electric Corp., Appeal 2020-1755, (Fed. Cir. April 16, 2021), the Federal Circuit reversed a PTAB inter partes review decision that determined Raytheon’s claims, directed to gas turbine engines, are unpatentable as obviousness over “Knip,” a 1987 NASA technical memo.  In particular, the court determined that Knip did not enable a … Continue Reading

Federal Circuit Finds Loyalty Rewards Claims Ineligible

By William (Bill) J. Samore on Posted in Appeals, CBM, Section 101
In cxLoyalty, Inc. v. Maritz Holdings Inc., Appeals 2020-1307, -1309 (Fed. Cir. Feb. 8, 2021), the Federal Circuit affirmed a PTAB final written decision in a CBM proceeding canceling Maritz’s original claims related to a GUI for a customer loyalty program, as ineligible for patenting under 35 U.S.C. § 101.  The PTAB had granted Maritz’s … Continue Reading

PTAB Plays Wrong Tune On Whether Reference is Analogous Art

By Ryan J. Schermerhorn on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
In Donner Technology, LLC v. Pro Stage Gear, LLC, Appeal. No. 20-1104 (Fed. Cir. Nov. 9, 2020), the Federal Circuit vacated and remanded the PTAB’s decision that the Petitioner, Donner Technology, did not sufficiently prove unpatentability because a printed publication on which it relied was not sufficiently analogous to the claimed subject matter.  In doing … 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

Fitbit Dodges a Bullet—Entitled to Appeal Portion of Apple’s Petition Which It Did Not Join

By Thomas L. Duston on Posted in Amendments, Appeals, Claim Construction, Joinder, Sections 102/103
In Fitbit, Inc. v. Valencell, Inc., Appeal 2019-1048 (Fed. Cir. July 8, 2020), the Federal Circuit determined that Fitbit, who had successfully sought joinder in an IPR petition filed by Apple, had standing to appeal an adverse determination as to certain patent claims, despite Fitbit’s failure to join that portion of Apple’s Petition. The Federal … Continue Reading

Raiders of the Lost Art

By Ryan J. Schermerhorn on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
In Telefonaktiebolaget LM Ericsson, (“Ericsson”), v TCL Corporation, (“TCL”), 2017-2381, -2385 (Fed. Cir. Nov. 7, 2019), the Federal Circuit affirmed the PTAB’s decision that canceled claims in an Ericsson patent that TCL challenged based on its subsidiary finding that a German journal article TCL presented was indeed prior art.  The decision is important because it … Continue Reading

Incorporating Entire Arguments by Reference Can Lead to Disastrous Outcomes

By John J. Lucas on Posted in Appeals, Inter Partes Review, IPR
In General Access Solutions, Ltd. v. Sprint Spectrum L.P., Case No. 19-1856 (Fed. Cir. May 11, 2020) (non-precedential), General Access Solutions (“GAS”) appealed from two final written decisions of the Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”) proceeding holding that multiple claims of U.S. Patent Nos. 7,173,916 and 6,891,810 … Continue Reading

Patent Invalidated Despite Owner’s Argument Reinstated On Appeal

By John J. Lucas on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
In The Chamberlain Group, Inc. v. One World Techs., Inc., Case 18-2112 (Fed. Cir. Dec. 17, 2019), the Federal Circuit held the USPTO erred in determining that Chamberlain raised a new argument during the Board’s final hearing. There, Chamberlain argued that the prior art did not anticipate certain claims of the patent. The Federal Circuit … Continue Reading

Federal Circuit Reaffirms that Software is Patent Eligible

By Ryan N. Phelan on Posted in Appeals, Section 101
In Uniloc USA, Inc. v. LG Electronics USA, Appeal No. 19-1835 (Fed. Cir. Apr. 30, 2020), the Federal Circuit reaffirmed that software inventions are patentable in the U.S. with a bright-line statement: “Our precedent is clear that software can make patent-eligible improvements to computer technology, and related claims are eligible as long as they are directed to … Continue Reading

PTAB Determination on One-Year Time Bar Cannot be Appealed

By Julianne M. Hartzell on Posted in Appeals, Inter Partes Review, IPR, Trial Procedures
On April 20, 2020, the Supreme Court held that PTAB decisions instituting IPR are final and non-appealable and that the language of 35 U.S.C. § 314(d) “indicates that a party generally cannot contend on appeal that the agency should have refused “to institute an inter partes review.”  Thryv Inc. v. Click-To-Call Technologies LP, case number … Continue Reading

PTAB Failed to Apply Standard of Diligence Properly

By Ryan J. Schermerhorn on Posted in Appeals, Inter Partes Review, IPR
In ATI Technologies v. Iancu, 920 F.3d 1362 (Fed. Cir. 2019), the Federal Circuit reversed the PTAB’s decision that the Patent Owner had not presented sufficient evidence to swear behind several prior art references.  In doing so, the Federal Circuit reminded the PTAB, as well as practitioners alike, of the proper standard of proof for … Continue Reading

Federal Circuit Vacates Board Obvious Decision Relying Upon Reference

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
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