Sections 102/103

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Federal Circuit to Decide Whether KSR Applies to Design Patents

By Ryan J. Schermerhorn and Matt Nealon on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
On June 30th, the Federal Circuit granted a petition for re-hearing en banc in LKQ Corp. v. GM Global Tech. Operations LLC.[1] LKQ, an auto parts repair vendor for GM, successfully petitioned for inter partes review of GM’s design patent for a front fender design,[2] arguing it was anticipated by a prior art reference (Lain) … Continue Reading

Petitioner’s Analogous Art Argument was not so Obvious when Reversing the PTAB

By Joseph S. Sakevich on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
In Sanofi-Aventis Deutschland GMBH v. Mylan Pharms, Inc., No. 21-1981 (Fed. Cir. May 9, 2023), the Federal Circuit reversed the PTAB’s finding that Sanofi’s patent claims were obvious, determining the PTAB used the wrong test for deciding whether an existing patent was “analogous” to the one being challenged.… Continue Reading

PTAB Invalidates GUI, but Leaves Obviousness Test Gooey

By Jeremy R. Kriegel on Posted in Obviousness, Post Grant Review, Sections 102/103
On February 9, 2023 the PTAB issued a Final Written Decision in Early Warning Services, LLC and Samsung Electronics Co., Ltd. v. WePay Global Payments LLC, determining the design claim of US D930,702 (“D’702”) unpatentable, as both anticipated and obvious based on a single reference, Reddy, US 2018/0260806 A1 (“Reddy”). See Consolidated PGR2022-00031 and PGR2022-00045, … Continue Reading

A Decision Poised to Pivot on Credibility

By Sandip H. Patel on Posted in Inter Partes Review, IPR, Sections 102/103, Trial Procedures
The Federal Circuit’s recent decision in Google LLC v. IPA Technologies, Inc., Appeals 2021-1179, -1180, and -1185 (Fed. Cir. May 19, 2022), offers three instructive reminders. First, a publication disqualified from consideration as prior art during prosecution may be resurrected as prior art during an AIA trial. Second, the burden of producing evidence is not … Continue Reading

No design patents for you!–Extension of Fox Factory Complicates Reliance on Indicia of Non-Obviousness

By Jeremy R. Kriegel on Posted in Inter Partes Review, IPR, Sections 102/103
In Campbell Soup Co. v. Gamon Plus, Inc., the Federal Circuit reversed the PTAB’s finding that Gamon’s design patents on gravity-fed displays for soup were non-obvious. 10 F.4th 1268 (Fed. Cir. Aug. 19, 2021) (“Gamon II”). As the Supreme Court denied Gamon’s petition for writ of certiorari (in which Gamon argued it did not have … Continue Reading

Patentee’s Admissions of Obviousness Insufficient Basis for Cancellation in Inter Partes Review

By Thomas L. Duston on Posted in Inter Partes Review, IPR, Legislation, Sections 102/103
In Qualcomm, Inc. v. Apple, Inc., No. 20-1558 (Fed. Cir. Feb. 1, 2022), the Federal Circuit concluded that a patentee’s admissions concerning the content of the prior art, contained in the specification of the challenged patent, cannot serve as a ground to invalidate that patent in inter partes review.  The court, therefore, vacated decisions of … Continue Reading

The Headaches in Claiming Antibody-based Inventions Broadly

thumbnail image of DNA strandBy Sandip H. Patel on Posted in Biotechnology, Inter Partes Review, IPR, Sections 102/103
Recent Federal Circuit decisions call into question the value of patents broadly claiming inventions on antibodies and their function in treating debilitating diseases. The decisions in these cases originated in district courts and arguably swept aside the merits of scientific breakthroughs because the inventions claimed were not enabled or were otherwise insufficiently described to justify … Continue Reading

An Invalidated Patent Still Qualifies As 102(e) Art

By Julianne M. Hartzell on Posted in Appeals, Sections 102/103
On May 28, 2021, the Federal Circuit found obvious the claims of a patent directed to telepharmacy, describing a process allowing a pharmacist to remotely supervise and approve the work of non-pharmacists in filling drug orders. The court reversed the PTAB’s decision to the contrary. Becton Dickinson and Co. v. Baxter Corp. Englewood, 998 F.3d … Continue Reading

Federal Circuit Finds Lack of Enablement in Prior Art Reference

By William (Bill) J. Samore on Posted in Appeals, Covered Business Method, Inter Partes Review, IPR, Sections 102/103
In Raytheon Technologies v. General Electric Corp., Appeal 2020-1755, (Fed. Cir. April 16, 2021), the Federal Circuit reversed a PTAB inter partes review decision that determined Raytheon’s claims, directed to gas turbine engines, are unpatentable as obviousness over “Knip,” a 1987 NASA technical memo.  In particular, the court determined that Knip did not enable a … Continue Reading

Rare Circumstances in IPRs are Even Rarer With Poor Strategy

By Stephen J. Kudla on Posted in Amendments, Inter Partes Review, IPR, Sections 102/103
In Hunting Titan Inc. v. DynaEnergetics GmbH & Co. KG, Case IPR 2018-00600 (PTAB Jul. 6, 2020), the Patent Trial and Appeal Board’s Precedential Opinion Panel (POP) vacated the decision of another Board panel to deny patent owner’s (DynaEnergetics) motion to amend. In that vacated decision, the Board had sua sponte determined the proposed substitute … Continue Reading

PTAB Plays Wrong Tune On Whether Reference is Analogous Art

By Ryan J. Schermerhorn on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
In Donner Technology, LLC v. Pro Stage Gear, LLC, Appeal. No. 20-1104 (Fed. Cir. Nov. 9, 2020), the Federal Circuit vacated and remanded the PTAB’s decision that the Petitioner, Donner Technology, did not sufficiently prove unpatentability because a printed publication on which it relied was not sufficiently analogous to the claimed subject matter.  In doing … Continue Reading

Federal Circuit Provides some Clarity as to when a Claim Preamble is Limiting

By William (Bill) J. Samore on Posted in Claim Construction, Sections 102/103
In Shoes by Firebug LLC, v. Stride Rite Children’s Group, LLC, Appeals 2019-1622, and 2019-1623 (Fed. Cir. June 25, 2020), the Federal Circuit affirmed the PTAB’s IPR decisions that the claims of two challenged Firebug patents, directed to illumination systems for footwear, were unpatentable for obviousness. Although the PTAB erred in determining that the word … Continue Reading

Fitbit Dodges a Bullet—Entitled to Appeal Portion of Apple’s Petition Which It Did Not Join

By Thomas L. Duston on Posted in Amendments, Appeals, Claim Construction, Joinder, Sections 102/103
In Fitbit, Inc. v. Valencell, Inc., Appeal 2019-1048 (Fed. Cir. July 8, 2020), the Federal Circuit determined that Fitbit, who had successfully sought joinder in an IPR petition filed by Apple, had standing to appeal an adverse determination as to certain patent claims, despite Fitbit’s failure to join that portion of Apple’s Petition. The Federal … Continue Reading

Raiders of the Lost Art

By Ryan J. Schermerhorn on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
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

Patent Invalidated Despite Owner’s Argument Reinstated On Appeal

By John J. Lucas on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
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

Come on, Board, Finish What You Started

By Sandip H. Patel on Posted in Claim Construction, Inter Partes Review, IPR, Section 112, Sections 102/103
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 Vacates Board Obvious Decision Relying Upon Reference

By Kate Nuehring Su on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
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

Section 101 Challenges are Out of Bounds in IPR Appeals

thumbnail image of DNA strandBy Lynn L. Janulis, Ph.D. on Posted in Appeals, Biotechnology, Inter Partes Review, IPR, Section 101, Sections 102/103
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

By Jeremy R. Kriegel on Posted in Appeals, Discovery, Inter Partes Review, IPR, Sections 102/103
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

Federal Circuit Affirms Obviousness Decision by Board, No Violation

By Kate Nuehring Su on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
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

A Reference is Publicly Accessible if a Person of Ordinary Skill in the Art Could Access the Reference

By Julianne M. Hartzell on Posted in Inter Partes Review, IPR, Sections 102/103, Trial Procedures
In a recent decision vacating the PTAB’s finding that a draft standard for video coding emailed to a listserv was not publicly accessible, the Federal Circuit again corrected the PTAB’s application of the legal standard to determine the public accessibility of prior art. Samsung Electronics Co., Ltd. v. Infobridge Pte. Ltd., case no. 2018-2007, 2018-2012, … Continue Reading

FC Affirms Obviousness Decision by Board Trigger of Time Bar

By Kate Nuehring Su on Posted in Appeals, Claim Construction, Inter Partes Review, Sections 102/103
In Hamilton Beach Brands, Inc. v. F’real Foods, LLC, Appeal No. IPR2016-01107 (Fed. Cir. Nov. 16, 2018), the Federal Circuit affirmed the Patent Trial and Appeal Board’s final written decision in an IPR upholding the patentability of a patent claim under 35 U.S.C. § 103. Additionally, the court discussed but did not determine whether improper … Continue Reading

Trade Show Publication Dooms Patent in IPR Appeal Despite Contrary Decision in ITC Appeal

By Heather R. Kissling on Posted in Inter Partes Review, Printed Publication, Sections 102/103
Inter partes review not only provides a faster and cheaper way to challenge patent validity, but also expands the Patent Office’s ability to develop law on esoteric issues relating to prior art. The Federal Circuit’s decision Nobel Biocare Services AG v. Instradent USA, Inc. is another in a line of cases arising out of IPR … Continue Reading
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