Claim Construction

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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

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

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In Rovalma, S. A. Böhler-Edelstahl GmbH & Co., No. 2016-2233 (Fed. Cir. May 11, 2017), the Federal Circuit vacated the PTAB’s final written decision and remanded the case for the PTAB to provide a further explanation for its determination that the challenged claims were obvious. According to the court, the PTAB’s decision lacked sufficient detail necessary for the court to determine if the PTAB’s findings were supported by substantial evidence, or if the PTAB provided the Patent Owner proper notice and opportunity to respond to the PTAB’s claim construction and theory of unpatentability.Continue Reading Owner of Hot-Work Steel Processing Patent Burned by Its Own IPR Evidence

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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

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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

Business people standing in line under a magnifying glass, as a metaphor for employee performance evaluation, EPS 8 vector illustration, no transparencies The House of Representatives recently sent to the Senate its bill (H.R.5) that combines six previous regulatory reform bills, including, as Title II of the bill, the “Separation of Powers Restoration Act.”  Section 202 of the bill effectively removes the option for courts to apply Chevron deference to agency rulemaking and interpretations.  Thus, rather than deciding whether a regulation is permissible as reasonably related to the purposes of the enabling legislation, by amending 5 U.S.C. § 706, the bill will require a reviewing court to “decide de novo all relevant questions of law, including the interpretation of constitutional and statutory provisions, and rules made by agencies.”  To eliminate any doubt about its intent, the amendment specifically states that the court shall not interpret any gap or ambiguity in a statue or regulatory provision as an implicit delegation of legislative rulemaking authority to an agency, and the court shall not defer to an agency’s interpretation on a question of law.  As a result, rather than simply deciding whether an agency’s construction of silent or ambiguous statutory provisions are permissible as a matter of statutory interpretation, the reviewing court must make its own, independent interpretation.  The change in the statute would mean that prior court approvals of agency rules, applying Chevron deference, will not dictate the outcome of future challenges under the doctrine of stare decisis.
Continue Reading Pending Bill Would Deliver More Judicial Scrutiny to USPTO and FDA Rules

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In MPHJ Technology Investments, LLC v. Ricoh Americas Corp., Appeal 2016-1243 (Fed. Cir. Feb. 13, 2017), the Federal Circuit affirmed the PTAB’s final written decision canceling all eight claims in U.S. Patent No. 8,488,173. The patent issued from an application that was the tenth continuation-in-part of a 20-year-old application that relies for priority on seven provisional applications. The decision may be noteworthy if only because it highlights how seemingly-minor changes to these applications over time influenced the PTAB’s interpretation of certain claim terms—an interpretation that finally led the PTAB and court to conclude the claims were not patentable, just as the patent is about to expire.
Continue Reading Claims Construed and Canceled as Patent Nears its Expiration Date

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?

Petitioners are finding themselves caught in a Catch-22.  The PTAB declares claims too indefinite under Section 112 to construe, but then declines to address the patentabilty of the claims.  Section 112 deficiencies are not grounds to challenge a patent in an IPR, but the PTAB has authority to find such deficiencies.

Recently, the PTAB decided that only some claims of Immersion Corporation’s U.S. Patent No. 8,659,571 were challengeable by Apple Inc. in an IPR because the ‘571 patent failed to disclose sufficient structure corresponding to the “drive module limitation” recited in claim 12 to determine the scope and meaning of claim 12.  Apple Inc., v. Immersion Corporation, IPR2016-01372, Paper 7 (January 11, 2017).
Continue Reading PTAB Declines to Institute IPR on Immersion’s Indefinite Means Plus Function Claims

In recent non-precedential decisions, Micrografx, LLC v. Google Inc., Case No. 2015-2090 (Fed. Cir. Nov. 29, 2016) (Micrografx I) and Micrografx, LLC v. Google Inc. (Micrografx II), Case No. 2015-2091 (Fed. Cir. Nov. 29, 2016), the Federal Circuit upheld three IPR final written decisions canceling challenged claims of Micrografx patents for anticipation, and denying a motion to amend claims. The court determined that any errors in claim construction were harmless, and that substantial evidence supported the PTAB’s findings of anticipation.
Continue Reading Federal Circuit Upholds Cancellation of Micrografx Patent Claims for Anticipation

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.