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In In Re: IPR Licensing, Inc., Appeal Nos. IPR2014-00525, IPR2015-00074 (Fed. Cir. Nov. 22, 2019), the Federal Circuit vacated the Patent Trial and Appeal Board’s decision that a claim was invalid as obvious.  The claim had previously been in front of the Federal Circuit in an appeal in which Federal Circuit found insufficient record support for the Board’s conclusion that the claim was obvious and that there would have been a motivation to combine relevant prior art references.  In this appeal, the Federal Circuit determined that the only additional evidence that the Board cited on remand to support the conclusion that there would have been a motivation to combine the relevant prior art references was not part of the record before the Board. 
Continue Reading Federal Circuit Vacates Board Obvious Decision Relying Upon Reference

On Winter’s eve, the Board’s Precedential Opinion Panel (POP) finally answered a question it posed in an April order: “What is required for a petitioner to establish that an asserted reference qualifies as [a] ‘printed publication’ at the institution stage?” As we earlier noted, the April order granted an aggrieved petitioner’s request for rehearing of a Board decision refusing to institute inter partes review because the petitioner apparently did not establish a book bearing a 1990 copyright date was publicly available before the 1995 date on which the application for the subject patent was filed. The case is Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential).
Continue Reading POP Hits a Softball

In a case involving online gaming, the Federal Circuit affirmed the PTAB’s decision that 35 U.S.C. § 315(b) did not bar instituting an IPR where the patent owner failed to preserve its arguments that service was perfected. Game and Technology Co., Ltd. v. Wargaming Group Limited, ___ F.3d __, 2019 WL 6121449 (Fed. Cir. Nov. 19, 2019). However, the Court disagreed with the PTAB’s view that it “does not ‘have the authority…to deem service to have occurred and overlook errors in service’” where no district court has deemed service to have occurred.
Continue Reading Game Not Over – No Estoppel Where Service Is Deemed Insufficient

Neptune Generics v. Eli Lilly & Company, Case No. 2018-1257, 2018-1258 (Fed. Cir. April, 2019), concerns an Eli Lilly & Co. patent protecting method of administering folic acid and a methylmalonic acid (MMA) lowering agent, e.g., vitamin B12. Specifically, the method concerns the administration of these products before administering pemetrexed disodium, an anti-folate chemotherapeutic, to reduce toxic effects of the anti-folate.
Continue Reading Section 101 Challenges are Out of Bounds in IPR Appeals

If the Federal Circuit’s decision in Arthrex wasn’t sufficiently newsworthy, then look at what lurks in its wake. The day after the decision, the court issued precedential orders indicating that a timely Constitutional challenge apparently must be presented to the court in an opening brief. A few days after those orders, two of the court’s most senior active-service judges said that the court’s remedy in Arthrex (i) wasn’t required by Supreme Court precedent, (ii) imposed unnecessary burdens on all involved in AIA trials, (iii) requires hundreds of new proceedings, and (iv) involves decision-making that is itself unconstitutional. And a day later, another panel of the court issued an order soliciting briefing on those and other issues left in Arthrex’s wake, tacitly questioning the Arthrex panel’s decision.Continue Reading Haste Makes Waste?

PTAB Should Have Determined that Gravity Feed Display Design Patent is Obvious

In Campbell Soup Co. v. Gamon Plus, Inc. (Fed. Cir. Sept. 26, 2019), the Federal Circuit vacated the PTAB’s decision (discussed here) upholding the validity of Gamon’s design patent D621,645 (“the ‘645 patent”) for soup can display racks.  The court determined that substantial evidence did not support the Board’s finding that Linz is not a proper primary reference for a design patent obviousness challenge. 
Continue Reading PTAB Should Have Determined that Gravity Feed Display Design Patent is Obvious

In Arthrex Inc. v. Smith & Nephew, Inc., Appeal 2018-2140 (Fed. Cir. Oct. 31, 2019), the Federal Circuit concluded that the PTAB’s Administrative Patent Judges (APJs) are “principal” officers and their appointment by the Secretary of Commerce therefore violates the Constitution’s Appointments Clause. The issue arose in an appeal of a decision by a panel of APJs canceling claims in Arthrex’s patent in a recent inter partes review (IPR). But because that decision occurred while there was an Appointments Clause violation, the court vacated and remanded the IPR to be decided by a different panel of APJs.
Continue Reading Fixing an Appointments Clause Violation

In Henny Penny Corp. v. Frymaster LLC (Fed. Cir. 2019), the Federal Circuit again upheld the PTAB’s application of its rule prohibiting petitioners from raising new arguments in a reply brief, and upheld the challenged claims as not unpatentable for obviousness, relying in part on secondary considerations evidence.
Continue Reading Don’t Save New Fish to Fry in Reply

Federal Circuit Affirms Obviousness Decision by Board, Finds No APA Violation Based on New Characterization of Passage Providing Motivation to Combine

In Smith & Nephew, Inc. v. Arthrocare Corp., Appeal No. IPR2016-00918 (Fed. Cir. Aug. 21, 2019), the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision in an IPR to invalidate patent claims on the basis of obviousness, determining that the Board did not violate the Administrative Procedure Act (APA) by describing the motivation to combine the teachings of the prior art in different language than that used in the petition.  Additionally, the court affirmed the Board’s claim construction as reasonable and found that subjecting a pre-AIA patent to inter partes review was constitutional when the patent issued after the passage of the AIA. 
Continue Reading Federal Circuit Affirms Obviousness Decision by Board, No Violation

In consolidated appeals of a trio of Board decisions canceling pre-AIA patents in inter partes reviews (IPR), the Federal Circuit held “that the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.” Celgene Corp. v. Peter, Appeals 2018-1167, -1168, -1169, Slip Op. at 3 (Fed. Cir. July 30, 2019). As we previously discussed (link), the Supreme Court’s decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365, 1379 (2018), left open this issue. The Board’s decisions on appeal pre-date Oil States and unsurprisingly, perhaps, Celgene did not therefore raise the issue before the Board. But Celgene and the Patent Office briefed this constitutional issue in the appeal and then addressed it at oral argument to the Federal Circuit’s satisfaction. In further view of the growing number of appeals raising this issue in the wake of Oil States, the court exercised its discretion to decide the issue.
Continue Reading Federal Circuit Addresses Constitutional Issue Supreme Court Left Open

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.