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
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 so holding, the court affirmed the district court’s summary judgment that Apple Inc’s AirPlay feature does not infringe the asserted claims of U.S. Patent No. RE 44,412. Critical to the district court’s judgment was its claim construction of the limitation “wherein the CPP logic is invoked” to “require only the CPP logic is invoked.” (emphasis added). The Patent Owner’s arguments presented during the pre-institution phase of the IPR proceeding compelled the district court to construe the claim so narrowly that the court also concluded that the accused AirPlay feature does not infringe.Continue Reading Patent Owner’s Optional Preliminary Response Avoids IPR, But Dooms Infringement Action
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 initially petitioned the PTAB for an inter partes review of all claims of U.S. Patent No. 7,581,688 (“the ’688 patent”), assigned to Whirlpool, arguing that the claims were invalid as anticipated by U.S. Patent No. 6,609,821 (“the ’821 patent”).
Continue Reading Federal Circuit Overturns PTAB’s Finding of Patent Validity
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 rejection based on “routine optimization” for failing to explain why one of ordinary skill would arrive at the claimed subject matter.
Continue Reading Assertion of “Routine Optimization” Without Additional Reasoning Insufficient to Support Obviousness Conclusion
Interim Director Matal Expresses High Confidence in Constitutionality of AIA Trials
An updated discussion of this issue is available here: The Supreme Court Finds IPR Proceedings Constitutional
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 by the PTAB’s decisions in AIA trials. He expressed high confidence that the Supreme Court will soon determine, unanimously, that these trials do not violate the Constitution even if they extinguish property rights through a non-Article III forum without a jury.
Continue Reading Interim Director Matal Expresses High Confidence in Constitutionality of AIA Trials
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 reciting these types of features may be assessed by the Patent Office and the Federal Circuit.
Continue Reading Rejection of Claims Containing Functional Language and a Negative Limitation Affirmed by Federal Circuit
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 (3) the claim does not recite any function for the means term to perform.
In Skky, Inv. v. MindGeek, SARL, Appeal 16-2018 (Fed. Cir. June 7, 2017), the Federal Circuit upheld the PTAB’s decision that the claim term “wireless device means” of U.S. Patent 7,548,875 (the “’875 patent”) was not a means-plus-function term pursuant to Section 112 ¶ 6.Continue Reading How to Overcome a Section 112 ¶ 6 Means-Plus-Function Presumption
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 IPR petition, which the Board granted only on obviousness grounds. The later IPR petition would have been time-barred but for the Board’s conclusion, according to an expanded panel of administrative patent judges (APJs), that the statutory joinder provision “permits joinder of issues, including new grounds of unpatentability, presented in the petition that accompanies the request for joinder.”
Continue Reading Adding Two More to the List of Serious Questions about AIA Trials
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 proceedings at the PTAB. Enactment of this Act would severely diminish the usefulness of AIA proceedings.
Continue Reading Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings
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 concluded that two patents it issued to Stanford’s inventors and their pending application lacked an adequate description of the interfering invention and, thus, entered judgment against Stanford. The Federal Circuit determined, however, that the PTAB failed to properly assess the description in Stanford’s patents and application and, thus, vacated the PTAB’s decisions. The court’s disposition is an example of how even a fact-intensive inquiry, reviewed on appeal with substantial deference, can be shown to have been misguided, leading to an appellant’s success.
Continue Reading Reluctant to Reverse, the Federal Circuit Offers the PTAB a Mulligan