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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 … Continue Reading

Patent Owner’s Optional Preliminary Response Avoids IPR, But Dooms Infringement Action

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 … Continue Reading

Federal Circuit Overturns PTAB’s Finding of Patent Validity

In a split opinion in Homeland Housewares, LLC v. Whirlpool Corporation, the Federal Circuit has again overturned a final written decision issued by the PTAB determining that challenged claims in an IPR were not unpatentable, a development that should at least cast doubt on the validity of patents that survive challenges at the PTAB. Homeland … Continue Reading

Assertion of “Routine Optimization” Without Additional Reasoning Insufficient to Support Obviousness Conclusion

Recent Federal Circuit decisions reversing or remanding PTAB holdings of obviousness have faulted the Board for failing to clearly articulate its reasoning.  See our previous posts here and here.  In In re Stepan Co., No. 2016-1811 (Fed. Cir. Aug. 25, 2017), a split CAFC panel vacated a PTAB ex parte appeal decision affirming an obviousness … Continue Reading

Interim Director Matal Expresses High Confidence in Constitutionality of AIA Trials

Joe Matal, interim director of the Patent Office, addressed the IPO’s 45th Annual Meeting on September 19, 2017, in San Francisco. He said that the Office, and particularly the PTAB, experienced a productive yet tumultuous five years since the passage of the AIA, and acknowledged that the Federal Circuit’s docket of appeals today is dominated … Continue Reading

Rejection of Claims Containing Functional Language and a Negative Limitation Affirmed by Federal Circuit

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 … Continue Reading

How to Overcome a Section 112 ¶ 6 Means-Plus-Function Presumption

PTABWatch Takeaway: Claims that recite the term “means” may trigger the means-plus-function presumption under pre-AIA 35 U.S.C. § 112 ¶ 6 (Section 112(f) of the AIA), but the presumption can be overcome where: (1) the means term itself recites structure; (2) that structure is “common parlance” to those of ordinary skill in the art; and … Continue Reading

Adding Two More to the List of Serious Questions about AIA Trials

In a routine AIA trial, the PTAB determined that challenged claims in a patent directed to HVAC systems were unpatentable as being obvious and anticipated by prior art. This trial was unusual, however, because the Board premised its anticipation conclusion on a joined IPR petition that successfully rectified evidentiary deficiencies in the same petitioner’s earlier … Continue Reading

Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings

The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate.  The Act is an updated version of the STRONG Patents Act of 2015 that stalled in Congress.  Like its predecessor, the STRONGER Patents Act is designed to significantly modify the AIA trial … Continue Reading

Reluctant to Reverse, the Federal Circuit Offers the PTAB a Mulligan

The Federal Circuit recently vacated the PTAB’s decisions in three interferences. Board of Trustees of Leland Stanford Jr. Univ. v. Chinese Univ. of Hong Kong, Appeal 2015-2011 (Fed. Cir. June 27, 2017). These interferences concern which parties’ inventors first conceived methods for diagnosing fetal aneuploidies using cell-free fetal DNA from maternal blood samples. The PTAB … Continue Reading

PTAB’s Conclusion of Obviousness Overturned as Lacking Sufficient Justification

In In re Schweickert, No. 2016-1266 (Fed. Cir. 2017), the Federal Circuit in a non-precedential opinion vacated the PTAB’s decision canceling patent claims in an ex parte reexamination as being obvious over prior art. The Federal Circuit determined that the PTAB’s conclusion of obviousness was based on no more than a broadly-stated assertion that the … Continue Reading

Claim Construction Sends Duke’s Patent Back to PTAB for Reconsideration, In Part

In a recent appeal from a PTAB final written decision, the Federal Circuit reversed the Board’s determination that all claims of a Duke patent were unpatentable (Duke Univ. v. BioMarin Pharm. Inc., Appeal No. 2016-1106 (Fed. Cir., April 25, 2017). The court concluded that certain of the Board’s claim constructions were incorrect, and that others, while appropriate, … Continue Reading

Federal Circuit Signals that PTAB Correctly Construed Most Signal Terms but Misconstrued one Other

In Wasica Finance GmbH v. Continental Automotive Sys., Inc., (Fed. Cir. Apr. 4, 2017), the Federal Circuit affirmed-in-part and reversed-in-part two PTAB final written decisions cancelling some but not all challenged claims  of U.S. Patent No. 5,602,524 (“the ‘524 patent”). The PTAB and court decisions are interesting because together they highlight the consequence of not … Continue Reading

Failing to Articulate Desired Claim Construction Before PTAB May Lead to Waiver

In the latest development in the ongoing patent battle between Google and SimpleAir Inc., a Federal Circuit panel agreed with SimpleAir that Google waived a claim construction it asserted on appeal because Google had failed to argue that construction before the PTAB. SimpleAir originally asserted a series of patents against Google, including U.S. Patent No. … Continue Reading

Teaching Away for Dummies

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 … Continue Reading

Joinder Does Not Prevent Application of IPR Estoppel Provision

A little more than a month after the Delaware district court narrowly interpreted the IPR estoppel provision to suggest that it may not be necessary to include all known grounds so as to avoid estoppel in district court litigation, the same court issued a decision suggesting that the IPR estoppel provision may not be so … Continue Reading

CBM Eligibility: Patent Must Have a Claim that Contains, However Phrased, a Financial Activity Element

A patent that is merely incidental to a financial activity is not sufficient to render that patent eligible for CBM review.  Secure Access, LLC v. PNC Bank National Association et. al, Case No. 2016-1353 (Fed. Cir. Feb. 21, 2017).  In Secure Access, the Federal Circuit reversed and vacated the PTAB’s decision that U.S. Patent No. … Continue Reading

Federal Circuit Finds Portion of Board’s Obviousness Decision Supported by Substantial Evidence Despite Reduced Effectiveness of Combined Prior Art References

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 … Continue Reading

Federal Circuit Affirms Cancellation of Claims Based on Analogous Art

In Unwired Planet, LLC v. Google Inc., the Federal Circuit affirmed the PTAB’s IPR decision that the challenged claims are invalid as obvious and dismissed the PTAB’s CBM review as moot. Petitioner Google filed IPR and CBM petitions challenging claims 1-6 of U.S. Patent No. 7,024,205 (“the  ’205 patent”) owned by Unwired Planet, LLC.  The … Continue Reading

What Claim Construction Standard Applies If a Patent Expires During IPR Appeal?

In Personal Web Technologies, LLC v. Apple, Inc., Case No. 2016-1174 (Fed. Cir. Feb. 14, 2017), the Federal Circuit upheld the PTAB’s construction of disputed claim terms, but did not resolve a dispute over whether the broadest-reasonable-interpretation standard (BRI) or Phillips standard should apply when the challenged patent expires shortly after the PTAB issues its … Continue Reading

Federal Circuit Dismisses Appeal where IPR Petitioner Lacked Standing to Appeal

In Phigenix, Inc. v. ImmunoGen, Inc., No. 2016-1544 (Fed. Cir. Jan. 9, 2017), the Federal Circuit dismissed, for lack of standing under Article III of the Constitution, a petitioner-appellant’s (Phigenix) appeal of a PTAB final written decision that refused to cancel claims challenged in an IPR. The court’s decision demonstrates that statutory right of appeal … Continue Reading

Intuitive to Use Versus Use of an Element for its Intended Purpose – Is There a Difference?

Is there a difference between saying that it would be intuitive to use the features of one prior art reference in combination with another, versus saying that such a combination merely uses a prior art element for its established function? According to two recent decisions, the Federal Circuit apparently thinks so. In In re: Van … Continue Reading

Federal Circuit Vacates Board’s Decision Cancelling Method Claims for Purchasing Goods and Services Based on Unreasonable Claim Interpretation

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 … Continue Reading
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