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 Cir. 2017), the Federal Circuit in a non-precedential opinion vacated the PTAB’s decision canceling patent claims in an ex parte reexamination as being obvious over prior art.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 proposed modification was within the knowledge of a person having ordinary skill in the art. The PTAB’s decision, according to the court, lacked a sufficient factual basis for why the skilled artisan would have modified the prior art to arrive at the claimed invention—a fact needed to support a conclusion of obviousness.
Continue Reading PTAB’s Conclusion of Obviousness Overturned as Lacking Sufficient Justification
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, were mis-applied and reversed the Board’s decision on anticipation, as well as obviousness of some claims.
Continue Reading Claim Construction Sends Duke’s Patent Back to PTAB for Reconsideration, In Part
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 supporting seemingly strong arguments with expert witness testimony. Further, the decisions highlight the consequence of not explaining how facts implicate esoteric nuances in the patent laws.Continue Reading Federal Circuit Signals that PTAB Correctly Construed Most Signal Terms but Misconstrued one Other
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. 8,601,154 (“the ’154 patent”) directed to a data communication system connecting on-line networks with on-line and off-line computers. Google challenged the validity of the ’154 patent in an IPR. The PTAB determined the challenged claims of the ’154 patent were not invalid, concluding that Google failed to identify in the prior art “a central broadcast server,” recited in the challenged claims. Google appealed the PTAB’s final written decision, and argued that the PTAB erred in its interpretation of this limitation.
Continue Reading Failing to Articulate Desired Claim Construction Before PTAB May Lead to Waiver
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 U.S. Patent No. 6,271,840 (“Finseth”). The sole issue before the Federal Circuit was whether Hill and Finseth teach away from the claimed invention.
The ’096 patent teaches a directory website that contains (1) a plurality of links to supplier websites, (2) “a supplier descriptive portion” located near a corresponding supplier link, (3) “a descriptive title portion” describing the class of goods or services listed on the website, and (4) “a rollover view area” that displays information about at least one of the suppliers corresponding to a link.
Continue Reading Teaching Away for Dummies
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 narrow after all. The decision adds to the growing confusion over the scope of the estoppel provision Congress wrote into the AIA.
On December 20, 2013, Parallel Networks Licensing, LLC (“Parallel Networks”) sued International Business Machines Corporation (“IBM”) in the Delaware district court for infringement of U.S. Patent Nos. 5,894,554 (“the ‘554 Patent”) and 6,415,335 (“the ‘335 Patent”). Parallel Networks Licensing, LLC v. International Bus. Machs. Corp., Case No. 13-2072 (D. Del.). IBM answered and counterclaimed seeking declaratory judgments of non-infringement and invalidity based on anticipation and obviousness.
Continue Reading Joinder Does Not Prevent Application of IPR Estoppel Provision
CBM Eligibility: Patent Must Have a Claim that Contains, However Phrased, a Financial Activity Element
Update: The Federal Circuit’s decision in this case was vacated as moot, on the basis that the challenged claims had been canceled in a separate IPR proceeding. PNC Bank Nat’l Assoc. v. Secure Axcess, LLC, 138 S. Ct. 1982 (2018).
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. 7,631,191 (“the ’191 patent) is a CBM patent. The Board had concluded that the method and apparatus claimed by the ’191 patent “perform operations used in the practice, administration, or management of a financial product or services and are incidental to a financial activity.” (Op. at 18). The Court concluded that the Board had improperly broadened the scope of the statute that defines a CBM patent, and that under proper scope, the ’191 patent is not a CBM patent.
Continue Reading CBM Eligibility: Patent Must Have a Claim that Contains, However Phrased, a Financial Activity Element
Federal Circuit Finds Portion of Board’s Obviousness Decision Supported
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 the portion that concluded that the same combination does not render dependent claim 3 obvious. The decision is interesting because the Board and the Federal Circuit concluded that the reduced effectiveness of the combined references as compared to a single reference alone would not deter a person of skill in the art from having a reasonable expectation of success in making the invention.
Continue Reading Federal Circuit Finds Portion of Board’s Obviousness Decision Supported
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 ’205 patent describes a system and method for providing wireless network subscribers with prioritized search results based on the location of the mobile device. Claim 1 is the sole independent claim of the ’205 patent and recites “farther-over-nearer ordering” in the context of wireless location-based services. We previously discussed a related CBM review between the same parties.
Continue Reading Federal Circuit Affirms Cancellation of Claims Based on Analogous Art
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 final written decision. Despite the correct claim construction, the court vacated the decision and remanded the case to the PTAB for reconsideration of the merits of its decision on obviousness.
Apple filed an IPR petition challenging claims of Personal Web’s patent directed to methods of locating data and controlling access to the data by giving a data file a substantially unique name that depends on the file’s content. In determining that the challenged claims were unpatentable for obviousness, the PTAB construed the claim term “content-based identifier” and related terms, applying the BRI standard.
Continue Reading What Claim Construction Standard Applies If a Patent Expires During IPR Appeal?