In The Chamberlain Group, Inc. v. One World Techs., Inc., Case 18-2112 (Fed. Cir. Dec. 17, 2019), the Federal Circuit held the USPTO erred in determining that Chamberlain raised a new argument during the Board’s final hearing. There, Chamberlain argued that the prior art did not anticipate certain claims of the patent. The Federal Circuit explained that “Chamberlain was merely clarifying its earlier position” in response to One World’s reply brief and “not raising a new issue.” The Court, nevertheless, affirmed the Board’s decision canceling the challenged claims as anticipated by the prior art, noting that substantial evidence supported the finding.
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The Arthrex Mulligan
The Federal Circuit, in Arthrex, concluded that the Patent and Trial Appeal Board’s Administrative Patent Judges were unconstitutionally appointed “principal” officers. The court therefore vacated the Board’s decision that canceled claims in an inter partes review and remanded so a new panel of APJs would re-decide the patentability of the claims. What happens, however, when the Board’s pre-Arthrex final written decision does not cancel—but rather upholds the patentability of—the challenged claims? Well, there’s an appeal for that.
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Assignor Estoppel Does Not Prevent Reliance on PTAB Decision Canceling Claims
In Hologic, Inc. v. Minerva Surgical, Inc., Case 19-2054 (Fed. Cir. Apr. 22, 2020), the Federal Circuit held that an assignor of a patent may rely on a PTAB unpatentability decision as a defense in infringement litigation, although the equitable doctrine of “assignor estoppel” prevents the assignor from directly challenging validity in the litigation. In Additional Views, Judge Stoll suggests that the en banc court reconsider the issue of assignor estoppel, because the court’s precedent permits an assignor of a patent to “circumvent the doctrine of assignor estoppel by attacking the validity of a patent claim in the Patent Office.”
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PTAB Determination on One-Year Time Bar Cannot be Appealed
On April 20, 2020, the Supreme Court held that PTAB decisions instituting IPR are final and non-appealable and that the language of 35 U.S.C. § 314(d) “indicates that a party generally cannot contend on appeal that the agency should have refused “to institute an inter partes review.” Thryv Inc. v. Click-To-Call Technologies LP, case number 18-916, 2020 WL 1906544 at *4, __S.Ct. __ (2020).
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The Long Run
Adidas successfully petitioned the Patent Trial and Appeal Board in 2012 to review a Nike shoe patent. During that review, Nike filed a motion to amend the patent by canceling all claims and substituting four new claims. The Board canceled the patent claims and found the new claims unpatentable. Among other things, the Board said that Nike—the patent owner—did not establish the new claims were patentable over the prior art.
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PTAB Failed to Apply Standard of Diligence Properly
In ATI Technologies v. Iancu, 920 F.3d 1362 (Fed. Cir. 2019), the Federal Circuit reversed the PTAB’s decision that the Patent Owner had not presented sufficient evidence to swear behind several prior art references. In doing so, the Federal Circuit reminded the PTAB, as well as practitioners alike, of the proper standard of proof for demonstrating the diligent reduction to practice of an earlier purported conception.
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Federal Circuit Nixes PTAB’s Same-party and New Issue Joinder Precedent
The Federal Circuit overturned PTAB precedent that broadly allowed joinder under 35 U.S.C. § 315(c), holding that (1) a party cannot be “joined as a party” to a proceeding if it is already a party to that proceeding, and (2) the statute does not authorize joinder of new issues.
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A Fine Mess
Update (Apr. 3, 2020): The Federal Circuit recently denied rehearing petitions in the Polaris appeals referenced below (see link and link), and also denied the PTO’s request to stay the mandate in the Arthrex appeal (see link).
The Federal Circuit recently issued an order denying multiple rehearing petitions in Arthrex Inc. v. Smith & Nephew, Inc., Appeal 2018-2140 (Fed. Cir. Mar. 23, 2020) (en banc). Apparently neither of the parties nor the government (PTO) found the original panel’s Halloween-day decision satisfying. Five separate opinions accompanied the order, which was hardly unanimous. One third of the circuit judges dissented, some having previously stated that aspects of the original panel decision were wrong.
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Federal Circuit Affirms Use of “Common Sense” in IPRs
In Koninklijke Philips N.V. v. Google LLC, Case No. 2019-1177 (Fed. Cir. January 30, 2020), the Federal Circuit determined that the Board erred in instituting inter partes review based on an obviousness combination that Petitioner Google did not advance in its petition. Nevertheless, the Federal Circuit agreed that the Board could have properly relied upon the general knowledge of those of skill in the art to modify the primary reference, without having to rely upon that combination. The Federal Circuit therefore affirmed the Board’s decision that the challenged claims were invalid as obvious.
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Come on, Board, Finish What You Started
The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., Appeals 2019-1169, -1260 (Fed. Cir. Feb. 4, 2020), is remarkable, but not for its holding: “the Board may not cancel claims for indefiniteness in an IPR proceeding.” After 10,000 IPRs, hardly anyone thought otherwise. But it’s interesting nonetheless that someone so boldly tried to persuade the Board and the court otherwise. A $4.3 million willful infringement judgment will lead even the biggest of corporations to give it a try.
Continue Reading Come on, Board, Finish What You Started