Left in the wake of the Supreme Court’s SAS decision (discussed here) are a number of appeals pending before the Federal Circuit concerning Patent Trial and Appeal Board final written decisions in inter partes review (IPR) proceedings administered on a subset of claims and grounds presented in the IPR petition. While litigants before the Board scramble to reassess strategies, the Board itself has been offering guidance, including its publication on June 5 of an updated FAQ on how it will administer pending IPRs and decide petitions pending when the Court decided SAS. As for pending appeals, the Federal Circuit explained that it has jurisdiction to address appeals of PTAB final written decisions that have “SAS transition issues.” PGS Geophysical AS v. Iancu, Appeals 2016-2470, -2472, -2474, Slip Op. at 9–11 (Fed. Cir. June 7, 2018). And the court further explained that future appellants will need to request relief regarding those issues, as the court will not act sua sponte. Id. at 11–13.
Continue Reading No SAS-based Relief on Appeal, Unless Requested
Tribal Sovereign Immunity Alone Cannot Protect Patents from IPR
In late March, the Federal Circuit issued an order staying the PTAB proceedings concerning numerous related IPRs of patents issued to Allergan, Inc. (“Allergan”), but assigned to the Saint Regis Mohawk Tribe (“the Tribe”). These IPRs were headed toward a final hearing on the merits previously scheduled for April 3rd. In those IPRs, the PTAB denied the Tribe’s motions to terminate the proceedings based upon the Tribe’s sovereign immunity. Mylan Pharma Inc. v. Saint Regis Mohawk Tribe, Case IPR2016-01127, Paper 130 (February 23, 2018). This post explains the PTAB’s decision that the court will now review on appeal.
Continue Reading Tribal Sovereign Immunity Alone Cannot Protect Patents from IPR
Federal Circuit Remands PTAB Decision to Assess Dependent Claim Patentability
In MaxLinear Inc. v. CF Crespe LLC the Federal Circuit ruled that the PTAB did not address arguments concerning patentability of certain dependent claims of the patent at issue separate from the corresponding independent claims, and vacated and remanded the PTAB’s final written decision.
Continue Reading Federal Circuit Remands PTAB Decision to Assess Dependent Claim Patentability
Claim Term Read Out by PTAB Constituted “Harmless Error”
In a recent non-precedential decision, Snap-on Inc. v. Milwaukee Elec. Tool Corp., No. 2017-1305, 2018 WL 935454 (Fed. Cir. Feb. 16, 2018), the Federal Circuit affirmed the PTAB’s final written decisions in several IPRs that upheld challenged claims of Milwaukee Tool patents as nonobvious, although the court determined that the PTAB erred in construing a disputed claim term.
Continue Reading Claim Term Read Out by PTAB Constituted “Harmless Error”
Collateral Estoppel Not Limited to Identical Claims
The equitable doctrine of collateral estoppel protects a party from having to re-litigate an issue that has already been fully and fairly adjudicated. In Nestlé USA, Inc. v. Steuben Foods, Inc. the Federal Circuit said that application of collateral estoppel is not limited to construing only identical patent claims; but instead, it extends to terms across related patents. Case No. 2017-1193 (Fed. Cir. Mar. 13, 2018).
Continue Reading Collateral Estoppel Not Limited to Identical Claims
PTAB Gets A Math Lesson
In Shinn Fu Co. of America, Inc. v. The Tire Hanger Corp., Dkt. No. 2016-2250 (Fed. Cir. July 3, 2017), Shinn Fu appealed the Board’s holding in IPR2015-00208 (discussed here), a rare case in which the PTAB granted a motion to amend, and determined that substitute claims 6-10 of USPN 6,681,897 were patentable. The claims are drawn to methods of changing the wheels of vehicles on lifts without the operator having to bend while supporting the wheel.
Continue Reading PTAB Gets A Math Lesson
A Split Federal Circuit Panel “at Once Envisaged” Different Conclusions of Anticipation
Can the disclosure in a prior art reference be too extensive for the art not to anticipate? According to a recent decision, the Federal Circuit apparently thinks so.
In Microsoft Corp. v. Biscotti Inc., Case Nos. 2016-2080, -2082, -2083 (Fed. Cir. Dec. 28, 2017), a split Federal Circuit panel affirmed a Board’s decision—also a split decision with one judge dissenting—that the contested claims were not invalid for anticipation, determining that the factual findings of the Board’s majority were supported by substantial evidence. But, in dissent, Judge Newman criticizes the panel majority for misperceiving the law of anticipation and finding that a person of skill in the art would not “at once envisage” the claimed arrangement of limitations due to the breadth of disclosure in the prior art.
Continue Reading A Split Federal Circuit Panel “at Once Envisaged” Different Conclusions of Anticipation
The United States Can Have Standing in AIA Proceedings
Update: On June 10, 2019, the Supreme Court issued a decision, 6-3, reversing the Federal Circuit’s judgment and remanding the case for further proceedings. The Court held that “a federal agency is not a ‘person’ who may petition for post-issuance review under the AIA.” On August 9, 2019, the Federal Circuit issued an order vacating the PTAB’s decision and remanding with instructions that the PTAB dismiss the CBM proceeding for lack of jurisdiction.
PTABWatch Takeaway: When “sued for infringement” within the meaning of 28 U.S.C. § 1498(a), the United States has standing to petition the Patent Office to institute Covered Business Method (CBM) review. Return Mail v. U.S. Postal Service, Appeal 2016-1502 (Fed. Cir. Aug. 28, 2017)
Background
Patentee, Return Mail, Inc., filed suit in the U.S. Court of Federal Claims Court alleging that the United States, through the actions of the United States Postal Service, used without license the subject matter claimed in U.S. Pat. No. 6,826,548.
Continue Reading The United States Can Have Standing in AIA Proceedings
Federal Circuit Again Reminds PTAB that BRI Must Be Reasonable
Last fall, the Federal Circuit reversed a PTAB decision that affirmed an Examiner’s rejection of various claims in an ex parte reexamination because the Examiner’s interpretation of the claims, which the PTAB upheld, was unreasonably broad. In re Smith International, Inc., Appeal No. 2016-2303 (Fed. Cir. Sept. 26, 2017). The court’s decision is noteworthy because it reinforces the bounds of the broadest reasonable interpretation claim construction standard the Patent Office must apply when assessing patentability, bounds that do not encompass the broadest possible interpretation.
Continue Reading Federal Circuit Again Reminds PTAB that BRI Must Be Reasonable
PTAB Not Always Bound By Previous Court Decisions Regarding Patent Validity
In Novartis AG v. Noven Pharm. Inc., Appeal 2016-1678-1679 (April 2017), Novartis appealed two PTAB decisions holding claims of two patents obvious over cited prior art (IPR2014-00549 and IPR2014-00550), arguing that previous judicial holdings of non-obviousness should control the PTAB’s factual findings and that the claims should have been held non-obvious.
The two Novartis patents at issue (U.S. Patent Nos. 6,316,023 and 6,335,031) were from the same patent family and are directed to a pharmaceutical composition comprising rivastigmine (Exelon®) and an antioxidant for the treatment of Alzheimer’s disease.
Continue Reading PTAB Not Always Bound By Previous Court Decisions Regarding Patent Validity