Inter Partes Review

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In Oil States Energy Services., LLC v. Greene’s Energy Group, LLC, Justice Thomas, writing for a 7-2 majority of the Supreme Court, explained that inter partes review proceedings do not violate Article III or the Seventh Amendment of the Constitution. 138 S. Ct. 1365 (2018). But his opinion for the majority invited confusion and delay, upon the brink of which the Federal Circuit now stands. This stems from Oil States’ failure to explicitly challenge in the broad question its certiorari petition presented the retroactive application of inter partes review to its patent—a patent that issued before the procedure existed.
Continue Reading Confusion and Delay

Judge Cheney of the United States International Trade Commission held that ITC Investigative Staff are not estopped from asserting invalidity of a patent based upon prior art that was previously asserted by a respondent in an IPR. See In the Matter of Certain Magnetic Tape Cartridges and Components Thereof, Inv. No. 337-TA-1058 at *106-107. While this is an initial determination that has not been adopted by the Commission, this determination creates a huge loophole limiting the effect of estoppel before the ITC.
Continue Reading IPR Estoppel Does Not Apply to ITC Investigative Staff

In Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., Appeal Nos. 2017-1555, 217-1626 (Fed. Cir. Sept. 28, 2018), the Federal Circuit vacated the Patent Trial and Appeal Board’s final written decision in an IPR because institution of the IPR should have been time barred under 35 U.S.C. §315(b).  Additionally, the Federal Circuit declined to consider a challenge to a sanctions order by the Board because the amount of sanctions had not yet been quantified and thus the court lacked jurisdiction to review the order.  The court’s disposition of these issues remind practitioners that procedural timing is just as important as substantive argument in obtaining a desired legal outcome.
Continue Reading Successful IPR Petition Time Barred Under 35 U.S.C. §315(b) by Involuntarily Dismissed Complaint

In Matthews International Corporation v. Vandor Corporation, No. 2017-1889 (Fed. Cir. Mar. 27, 2018) (non-precedential), the Federal Circuit affirmed the PTAB’s final written decision to uphold the claims of Vandor’s patent that Matthews challenged in inter partes review. The claims at issue “are directed to ‘a casket arrangement’ made of pliable material, such as cardboard,” in which side and end panels of the casket can be folded to allow the casket to be reconfigured and condensed for ease in shipping and storage. According to the PTAB and the Court, Matthews failed to prove by a preponderance of the evidence that the claims were anticipated by the prior art, even though the claims may be obvious.
Continue Reading Federal Circuit Puts Nail in Coffin For Petitioner’s Case Challenging Casket Patent

Update: On November 1, 2018, the CAFC issued a modified opinion and an order denying Contour’s petition for rehearing en banc.  The modified opinion is consistent with the original petition, discussed below, insofar as the PTAB decision was vacated and remanded, but adds the following statement at page 8: “When direct availability to an ordinarily skilled artisan is no longer viewed as dispositive, the undisputed record evidence compels a conclusion that the GoPro Catalog is a printed publication as a matter of law.”  The modified opinion also deleted the following statements, parts of which were quoted in the blog, below: “Contrary to the Board’s conclusion, the attendees attracted to the show were likely more sophisticated and involved in the extreme action vehicle space than an average consumer. Thus, it is more likely than not that persons ordinarily skilled and interested in POV action cameras were in attendance or at least knew about the trade show and expected to find action sports cameras at the show. While the Board found that GoPro did not provide any evidence as to what products the companies at the trade show make, GoPro was not the only manufacturer of POV action cameras. The vendor list provided with Mr. Jones’s declaration listed a number of vendors who likely sell, produce and/or have a professional interest in digital video cameras.”

In a previous blog post, we reported that in a final written decision on October 26, 2016, the PTAB concluded that GoPro, Inc. (GoPro) failed to demonstrate that the challenged claims in a patent owned by Contour IP Holding LLC (Contour) were unpatentable. IPR (IPR2015-01080; “the GoPro IPR”)  GoPro asserted that the challenged claims were unpatentable in view of, among other references, a GoPro product catalog that included information for a digital video camera.Continue Reading Tradeshow Catalog Qualifies as Prior Art

Absent extraordinary circumstances, the Federal Circuit will not review Patent Trial and Appeal Board decisions refusing to institute inter partes review. The statute and a 2016 Supreme Court decision prohibit such review. 35 U.S.C. § 314(d); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140–42 (2016) (clarifying, however, that appellate review is appropriate to address “shenanigans”). The Federal Circuit has thus repeatedly held that parties may not sidestep this prohibition by styling an appeal as a petition for a writ of mandamus.[1] The court reiterated as much again in In re Power Integrations, Inc., Appeal Nos. 2018‑144, ‑145, ‑146, ‑147 (Fed. Cir. Aug. 16, 2018).
Continue Reading No Mandamus Relief from Shenanigan-less Non-institution Decision

In Praxair Distrib. v. Mallinckrodt Hosp. Pdts., (Fed. Circ. May 16, 2018), the Federal Circuit affirmed the PTAB’s application of the printed matter doctrine in an IPR, and determined that all challenged claims were obvious.

Mallinckrodt’s patent is directed to methods of treating newborns having low blood oxygenation with nitric oxide (NO) gas, “to dilate blood vessels in the lungs and … thereby improve blood oxygenation.” Generally, the claims recite methods of providing medical providers with NO gas, and information relating to treatment with NO.
Continue Reading PTAB Properly Applied the Printed Matter Doctrine

Despite disagreeing with the PTAB’s preferred claim construction, the Federal Circuit in Arendi S.A.R.L. v. Google LLC, Case No. 2016-1249 (Fed. Cir. Feb. 20, 2018) nevertheless determined that the PTAB had correctly canceled the challenged claims.

The Board had offered two, alternative rulings invalidating all claims on obviousness grounds. In its primary ruling, the Board construed the claims after rejecting the argument that a disclaimer was made during prosecution.
Continue Reading PTAB Was Wrong to Ignore an Applicant’s Prosecution Disclaimer Because of Examiner’s Reasons for Allowance

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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Update: The Supreme Court issued an order on June 24, 2019, granting a petition for a writ of certiorari to review the Federal Circuit’s judgment in Dex Media, Inc. v. Click-to-Call Technologies, LP,  899 F.3d 1321 (Fed. Cir. 2018). The Court will decide “[w]hether 35 U.S.C. § 314(d) permits appeal of the PTAB’s decision to institute an inter partes review upon finding that § 315(b)’s time bar did not apply.” The Court’s docket number for this case is 18-916, and its decision may be expected during the October 2019 term.

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Original Post: The Federal Circuit recently held that the statutory time bar in 35 U.S.C. § 315(b) precludes the PTAB from deciding an IPR petition filed more than one year after any of the petitioners have been served with a complaint alleging patent infringement, even if that complaint was voluntarily dismissed. Click-To-Call Technologies, LP v. Ingenio, Inc., et al., Case no. 2015-1242, 2018 WL 3893119 (Fed. Cir. Aug 16, 2018).
Continue Reading One Year Time Bar Runs from Date of Service, Regardless of Whether Suit is Dismissed

It is undisputed that institution of an inter partes review (IPR) is time-barred under 35 U.S.C. § 315(b) if the petition is “filed more than 1 year after the date on which the petitioner, the real party in interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent. The Court of Appeals for the Federal Circuit recently determined that the Patent Trial and Appeal Board’s time bar determinations are appealable. Since that decision, whether a party is considered “a privy of the petitioner” has been the source of recent dispute.
Continue Reading Federal Circuit Upholds Board’s Use of Control Standard of Privity to Assess Time Bar

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.