Sections 102/103

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Headaches in Claiming Antibody-based Inventions Broadly

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 their broad breadth.* In Teva Pharmaceuticals Int’l GmbH v. Eli Lilly and Company, Appeals 2020-1747, -1748, and -1750 (Fed. Cir. Aug. 16, 2021), the Federal Circuit again dealt with patents broadly claiming antibodies.
Continue Reading The Headaches in Claiming Antibody-based Inventions Broadly

Cancelled - An Invalidated Patent Still Qualifies As 102(e) ArtOn 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 1337 (Fed. Cir. 2021). In reaching its conclusion, the court clarified that a prior art patent that has previously been invalidated still qualifies as prior art under pre-AIA 102(e).  Id. at 1345.
Continue Reading An Invalidated Patent Still Qualifies As 102(e) Art

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 skilled artisan to make the claimed invention.
Continue Reading Federal Circuit Finds Lack of Enablement in Prior Art Reference

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 claims were anticipated, despite the petitioner’s (Hunting Titan) failure to advance such a position. After vacating the decision of the panel, the POP granted DynaEnergetics’ motion to amend and its request for rehearing of that panel’s final written decision finding DynaEnergetics’ claims unpatentable. 
Continue Reading Rare Circumstances in IPRs are Even Rarer With Poor Strategy

Musician playing guitar

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 so, the Federal Circuit reminded the PTAB, and practitioners alike, of the proper standard for determining whether a reference is “analogous,” as well as how to appropriately apply that standard.
Continue Reading PTAB Plays Wrong Tune On Whether Reference is Analogous Art

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 “textile” in the preamble of both patents was not limiting (the term was limiting in one of the patents), the court concluded that this error did not affect the PTAB’s conclusions that all challenged claims were obvious.
Continue Reading Federal Circuit Provides some Clarity as to when a Claim Preamble is Limiting

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 Circuit went on to rule that the PTAB had erred in rejecting Apple’s arguments as to those claim, and remanded the matter to the Board for further review.
Continue Reading Fitbit Dodges a Bullet—Entitled to Appeal Portion of Apple’s Petition Which It Did Not Join

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 offers guidance in assessing what type of evidence may be persuasive in a PTAB’s assessment of the public accessibility of a journal article whose publication date is close to the challenged patent’s critical date.
Continue Reading Raiders of the Lost Art

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.
Continue Reading Patent Invalidated Despite Owner’s Argument Reinstated On Appeal

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

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.