On October 24, 2017, the PTAB held its inaugural “Chat with the Chief” webinar. The main topic of the webinar was to discuss multiple petitions filed against the same patent. The PTAB sought to address concerns that have been raised by patent owners that challengers just keep filing petitions until something sticks, and that petitioners presenting multiple petitions unfairly gain an advantage by obtaining information from the Patent Owner’s response to the first petition or the Board’s Institution Decision that help provide a roadmap for the subsequent petition. The PTAB presents results from an internal study that appears intended to alleviate these concerns.
Continue Reading PTAB says 58% of Patents Survive Post-grant Proceedings Unchanged
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
Fractured Federal Circuit Reallocates Burden of Proof in AIA Trials
An eleven-judge en banc panel of the Federal Circuit issued its long awaited decision in Aqua Products, Inc. v. Matal, Appeal 2015-1777, on October 4, 2017, vacating and remanding the IPR final decision for the PTAB to determine whether the patent owner’s proposed amended claims are patentable. The court’s decision includes five separate opinions, though no majority opinion. The salient take-away, as Circuit Judge O’Malley’s opinion for a five-judge plurality concludes, is that “very little said over the course of the many pages that form the five opinions in this case has precedential weight.”
Continue Reading Fractured Federal Circuit Reallocates Burden of Proof in AIA Trials
Petitioner Made Rebuttal Argument in Reply, Not an Improper New Argument
PTAB rules prohibit raising new arguments in a reply brief, but it can be difficult to distinguish between an improper reply argument and a proper rebuttal. In Idemitsu Kosan Co. v. SFC Co., No. 2016-2721 (Fed. Cir. Sept. 15, 2017), the Federal Circuit determined that the IPR petitioner properly made a rebuttal argument—not a belated, new argument—in its reply brief, and the court affirmed the PTAB’s decision canceling the challenged claims for obviousness.
Continue Reading Petitioner Made Rebuttal Argument in Reply, Not an Improper New Argument
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
Late Payment of Petition Fee Thwarts IPR
If a Petitioner does not timely file the required petition fee, an IPR will not be instituted. In Cultec, Inc. v. Stormtech LLC [Case No. IPR2017-00526, Paper 14 (July 17, 2017)], consistent with earlier decisions, the Board denied institution of an IPR because the Petitioner, Cultec, Inc., did not pay the required filing fee until the day after filing its petition, which was one day after the statutory filing deadline under 35 U.S.C. § 315(b).
Continue Reading Late Payment of Petition Fee Thwarts IPR
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
Secondary Considerations Again Fail to Shore Up Patent Estate
In IPR 2016-00036, a Bosch windshield wiper patent succumbed to Costco’s challenge on grounds of obviousness. In its final written decision, the Board held claims 13, 17, and 18 of U.S. Patent No. 6,944,905 obvious. IPR 2016-00039, discussed here, is another Board decision holding obvious several claims of U.S. Patent No. 7,228,588, another member of Bosch’s windshield wiper patent portfolio. Unlike the Board’s finding in IPR 2016-00039 that PO failed to establish a nexus between proferred evidence and the claims sufficient to provide persuasive evidence of secondary considerations of non-obviousness, PO did establish that nexus in IPR 2016-00036. Even with that nexus, however, a preponderance of the evidence led the Board to hold the challenged claims unpatentably obvious.
Continue Reading Secondary Considerations Again Fail to Shore Up Patent Estate
IPR Challenge May Proceed Even in the Absence of Some Patent Owners
When a patent is co-owned by a state university and another party, an IPR may proceed against the remaining party even after the state university co-owner has been determined to have sovereign immunity from the proceeding. Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., [Case No. IPR2017-00572, Paper 32 (July 13, 2017)]. This recent decision was the first to address a situation where a university owned a patent jointly with a company. This decision follows two earlier cases, Covidien v. University of Florida , discussed here, and NeoChord, Inc. v. University of Maryland, Baltimore, [Case No. IPR2016-00208, Paper 28 (PTAB, May 23, 2017)], where the Board determined that sovereign immunity under the Eleventh Amendment as an “arm of the state” prevents an IPR from being instituted regarding patents owned by state universities.
Continue Reading IPR Challenge May Proceed Even in the Absence of Some Patent Owners
Eli Lilly Successfully Challenges U Penn Erbitux® Claims at PTAB, Derailing Infringement Suit
The PTAB recently canceled the University of Pennsylvania’s U.S. Patent No. 7,625,558, a potentially fatal blow to the University’s suit against Eli Lilly and Company alleging its cancer therapeutic Erbitux® (centuximab) infringes the patent. Eli Lilly and Co. v. Trustees of the Univ. of Penn., Case IPR2016-00458 (July 13, 2017). The PTAB’s decision resolved testimony from the parties’ competing expert witnesses in favor of the Petitioner (Eli Lilly and Company), thus highlighting how the PTAB’s scientific acumen can be leveraged to effectively short-circuit an otherwise expensive and time-consuming lawsuit.
Continue Reading Eli Lilly Successfully Challenges U Penn Erbitux® Claims at PTAB, Derailing Infringement Suit