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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 from a PTAB final written decision in an inter partes review does not necessarily establish Article III standing for the appeal.
Continue Reading Federal Circuit Dismisses Appeal where IPR Petitioner Lacked Standing to Appeal

Form Over FunctionIs 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 Os, Case No. 2015-1975 (January 3, 2017), the Court reversed and remanded the Board’s finding of obviousness, rejecting the Board’s conclusion that the combination of prior art references would have been “intuitive.” The case concerned an appeal of the Board’s decision to sustain the patent examiner’s rejection of Apple’s U.S. Patent Application No. 12/364,470 directed to a touchscreen interface in a portable electronic device that allowed a user to rearrange icons on a display.
Continue Reading Intuitive to Use Versus Use of an Element for its Intended Purpose – Is There a Difference?

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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 generating limited-use transaction codes to be given to a merchant by a customer for the purchase of goods and services.  The court determined that the Board’s decisions rested on an unreasonable claim interpretation of a “single-merchant” claim limitation, noting that, contrary to the Board’s claim interpretation, “[t]he prosecution history reinforces the evident meaning of the single-merchant limitation as requiring limiting, to one, the number of merchants that may use the transaction code, without identifying the merchant.” The court’s decision serves as a good example of how the prosecution history may aid a patentee in defending against patentability challenges in AIA trials.
Continue Reading Federal Circuit Vacates Board’s Decision Cancelling Method Claims

The Federal Circuit has once again vacated and remanded a PTAB decision on the basis that the PTAB did not adequately explain its reasons for finding a claimed invention obvious, but this time in the context of an appeal decision affirming an examiner’s rejection of pending claims.

In In re: Marcel Van Os et al., Appeal No. 2015-1975 (Fed. Cir. Jan. 3, 2017), the Federal Circuit vacated and remanded the PTAB’s affirmance, on appeal, of the examiner’s rejection of claims 38-41 of U.S. Patent Application No. 12/364,470 (“the 470 application”) as being obvious over U.S. Patent No. 7,231,229 (“Hawkins”) in view of U.S. Pub. No. 2002/0191059 (“Gillespie”).
Continue Reading Federal Circuit to PTAB (Once Again) – Explain Yourself!!!

"Gavel on copy of escrow agreement, soft shadow. White background, soft shadow. Gavel has seen much use. Please see more gavel photos:"An updated discussion of this issue is available here: PTAB’s Time Bar Determinations Are Reviewable by the Federal Circuit

As we had predicted in a previous post, the Federal Circuit, on January 4, 2017, granted patent owner Wi-Fi One LLC’s petitions for rehearing en banc regarding the interpretation of, and interplay between, 35 U.S.C. § 314(d) (the No Appeal provision) and § 315(b) (the Time Bar provision).  A few months ago, we wrote about the related decision Wi-Fi One, LLC v. Broadcom Corp., Appeal 2015-1944 (Fed. Cir. Sept. 16, 2016), which the court’s order vacates:

In Wi­Fi, the patent owner (Wi­Fi One, LLC) argued that the IPR petitioner (Broadcom Corporation) was in privity with entities accused (and eventually adjudged) in parallel district court litigation of infringing the challenged patent. Those entities, the patent owner argued, would have been time­barred from seeking IPR under 35 USC § 315(b).
Continue Reading Federal Circuit to take AIA Time Bar issue En Banc

In Apple, Inc. v. Ameranth, Inc. (Fed. Cir. 2016), the Federal Circuit reviewed the final written decisions in CBM reviews of three related patents owned by Ameranth, Inc., directed to computerized systems for generating and displaying menus for use in the restaurant industry.  The court determined that the PTAB properly construed all disputed claim terms, determined that the patents are CBM patents, and determined that most challenged claims were unpatentable under § 101, but that the PTAB erred in concluding that some dependent claims were not unpatentable under § 101.

More specifically, the claims in the disputed Ameranth patents are directed to a “first menu that has categories and items, and software that can generate a second menu from the first menu by allowing categories and items to be selected.” 
Continue Reading PTAB Should Have Canceled All Challenged Claims in CBM Reviews

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The Federal Circuit has once again vacated and remanded a PTAB final written decision on the basis that the PTAB did not adequately explain its reasons for finding a claimed invention obvious.  In In re Nuvasive, Appeal No. 15-1670 (Fed. Cir. Dec. 7, 2016), the Federal Circuit reviewed the PTAB’s final written decision in IPR2013-00506 that concluded various claims of  NuVasive, Inc’s U.S. Patent No. 8,361,156 were invalid as obvious over a combination of prior art references.  The patent claims spinal fusion implants, and were challenged by Medtronic Inc.
Continue Reading Federal Circuit to PTAB (Again) – Explain Yourself!!

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Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is closely related to its decision whether to institute inter partes review and is therefore rendered nonappealable by§314(d).”

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On January 19, 2018, the Federal Circuit issued an order vacating the decision discussed in the post below and reinstating the appeal for reconsideration in view of the court’s en banc decision in Wi-Fi One LLC v. Broadcom Corporation, which we discuss here. A new decision on the merits may be expected later in 2018.

Original Post: In Click-to-Call Techs. v. Oracle Corp., Appeal 15-1242 (Fed. Cir. Nov. 17, 2016) (non-prec.), on remand from the Supreme Court for further consideration in view of Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) (as we discussed here), the Federal Circuit again dismissed the patent owner’s (Click-to-Call’s) appeal, concluding that the court lacks jurisdiction to review a decision by the PTAB to institute an Inter Partes Review (IPR) petition over a patent owner’s objections that the IPR petition is time barred.
Continue Reading Federal Circuit Dismisses Appeal Based on AIA Time Bar, But Two Judges Call for En Banc Review

Heads or TailsAs a standard of appellate review, “substantial evidence” is not peculiar to the Federal Circuit’s review of patent decisions from district courts and the Patent Office. All circuit courts are familiar with that review standard. They apply it routinely in deciding appeals. The standard originated with appeals of jury verdicts, in recognition of the role of credibility at trial. Under this standard, a judge determines not whether a jury’s decision was correctly made, but whether its decision could reasonably have been made based on the evidence it received. Recent opinions make apparent, however, that the Federal Circuit judges are divided and disagree on how to apply that standard.
Continue Reading The Federal Circuit’s Disagreement About What Constitutes “Substantial Evidence”

Woman Upset Hitting Forehead with her HandIn IPR 2015-01127, PAR Pharmaceuticals, challenged claims 1-11 of USPN 8,404,215 owned by Horizon Therapeutics, LLC on grounds of obviousness over various combinations of six references.  Lupin Ltd. and Lupin Pharmaceuticals, Inc. filed another challenge to the claims of the ‘215 patent on the same grounds using the same arguments and evidence as used by PAR.  The Board joined the two proceedings and construed the claims-at-issue in accordance with the plain meaning of the recited terms, crediting the unrebutted testimony of Petitioners’ expert in holding the claims unpatentably obvious under 35 U.S.C. § 103(a) over various combinations of the cited art.
Continue Reading Ignore Occam’s Razor at your Peril

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.