IPR

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Denying a Stay and Building an Airplane While Flying It

A decision to stay patent infringement litigation falls within a federal court’s power to control its docket. But in determining whether to stay litigation pending the Patent Office’s inter partes review (IPR) of the patent, courts still are guided by three factors: (1) whether the stay will simplify the litigation, (2) whether a stay would unduly prejudice … Continue Reading

Raiders of the Lost Art

In Telefonaktiebolaget LM Ericsson, (“Ericsson”), v TCL Corporation, (“TCL”), 2017-2381, -2385 (Fed. Cir. Nov. 7, 2019), the Federal Circuit affirmed the PTAB’s decision that canceled claims in an Ericsson patent that TCL challenged based on its subsidiary finding that a German journal article TCL presented was indeed prior art.  The decision is important because it … Continue Reading

Does Section 285 Permit an Award of Attorney’s Fees for Patent Office Proceedings?

Back in 1988, the Federal Circuit reversed a district court decision that refused to award a party its reasonable attorney’s fees incurred in successfully litigating a patent’s validity before the Patent Office. PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565 (Fed. Cir. 1988). The Office determined that the patent asserted in litigation—stayed … Continue Reading

Incorporating Entire Arguments by Reference Can Lead to Disastrous Outcomes

In General Access Solutions, Ltd. v. Sprint Spectrum L.P., Case No. 19-1856 (Fed. Cir. May 11, 2020) (non-precedential), General Access Solutions (“GAS”) appealed from two final written decisions of the Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”) proceeding holding that multiple claims of U.S. Patent Nos. 7,173,916 and 6,891,810 … Continue Reading

Patent Invalidated Despite Owner’s Argument Reinstated On Appeal

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 … Continue Reading

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 … Continue Reading

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 … Continue Reading

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 … Continue Reading

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 … Continue Reading

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 … Continue Reading

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, … Continue Reading

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 … Continue Reading

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 … Continue Reading

Federal Circuit Rejects Presumption of Nexus Between Claimed Invention and Evidence of Secondary Factors

In FOX Factory, Inc. v. SRAM, LLC, Case Nos. 2018-2024, 2018-2025 (Fed. Cir. December 18, 2019), the Federal Circuit determined that the Board erroneously presumed a nexus between evidence of secondary considerations and the challenged independent claims.  Petitioner FOX appealed the decisions of the Board in two inter partes reviews.… Continue Reading

Federal Circuit Vacates Board Obviousness Decision Relying Upon Reference in Non-Instituted Ground for Motivation to Combine

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 … Continue Reading

POP Hits a Softball

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 … Continue Reading

Game Not Over – No Estoppel Where Service Is Deemed Insufficient

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. … Continue Reading

Section 101 Challenges are Out of Bounds in IPR Appeals

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 … Continue Reading

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 … Continue Reading

Fixing an Appointments Clause Violation

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 … Continue Reading

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 … Continue Reading
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