To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Our precedent is clear—nothing more is required.
In Osseo Imaging, LLC v. Planmeca USA, Inc., the Federal Circuit addressed the qualifications necessary to
After the Supreme Court’s decision in United States v. Arthrex, Inc., the Patent Office implemented an interim process for the Director to review Patent Trial and Appeal Board decisions in AIA trials. The Office sought public feedback on the process last year (link) and received more than 4,000 responses (link)! The process has yet to be formalized via traditional notice and comment rulemaking, though someday, perhaps, it will. Until then, the Patent Office continues to offer new updates and information, most recently on July 24, 2023.Continue Reading PTAB Updates and Expands the Director Review Process and Offers Transparency in Ex Parte Appeals
In early February 2023, the Patent Office’s Director designated as precedential the Patent Trial and Appeal Board’s decision in Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (PTAB Aug. 24, 2022). In this decision, the Board denied a petition seeking inter partes review. The petitioner asserted the challenged patent claims were obvious over printed publication prior art. One of the claimed features was not asserted to be disclosed in the published prior art, but rather asserted to be part of an ordinarily skilled artisan’s common knowledge. The Board characterized this as a “conclusory assertion,” and gave little weight to the accompanying expert witness’s declaration cited in support. Why? Because the declaration, according to the Board, “merely repeats, verbatim, the conclusory assertion for which it is offered to support,” and “does not cite to any additional supporting evidence or provide any technical reasoning [in] support.” Id. at 15.Continue Reading No Weight for Unsupported Expert Witness Testimony
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 static, but rather one that shifts among trial participants. Third, when presented with a “highly relevant evidentiary conflict”—like conflicting fact-witness testimony—the Patent Trial and Appeal Board must resolve it “and make appropriate findings of fact.” Google, Slip Op. at 11. When it doesn’t do this, it’s getting the case back.
Continue Reading A Decision Poised to Pivot on Credibility
In ClearOne, Inc. v. Shure Acquisition Holdings, Inc., Appeal 2021-1517, Slip Op. at 2 (Fed. Cir. June 1, 2022), the Federal Circuit affirmed a Patent Trial and Appeal Board order that refused to authorize a sanctions motion the petitioner requested after the Board issued its final written decision granting (in relevant part) the patent owner’s motion to substitute claims. As basis for the motion the petitioner alleged the patent owner violated its duty to disclose prior art.
Continue Reading Satisfying the Duty of Disclosure in AIA Trials
Over a thorough dissent by Judge O’Malley, the Federal Circuit determined it lacked jurisdiction to review the Board’s decision to institute IPR despite an arbitration agreement between the parties. In re Maxpower Semiconductor, Inc., 2021-146, 2021-1950, 2021-1951, 2021-1952, 2021-1953, 2021 WL 4130639 (Fed. Cir. Sept. 8, 2021).
Continue Reading IPR Institution Despite Arbitration Agreement Is Not Appealable
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 the Board’s pre-Arthrex final written decision does not cancel—but rather upholds the patentability of—the challenged claims? Well, there’s an appeal for that.
Continue Reading The Arthrex Mulligan
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 Additional Views, Judge Stoll suggests that the en banc court reconsider the issue of assignor estoppel, because the court’s precedent permits an assignor of a patent to “circumvent the doctrine of assignor estoppel by attacking the validity of a patent claim in the Patent Office.”
Continue Reading Assignor Estoppel Does Not Prevent Reliance on PTAB Decision Canceling Claims
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 18-916, 2020 WL 1906544 at *4, __S.Ct. __ (2020).
Continue Reading PTAB Determination on One-Year Time Bar Cannot be Appealed
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, Inc., Appeal 2018-2140 (Fed. Cir. Mar. 23, 2020) (en banc). Apparently neither of the parties nor the government (PTO) found the original panel’s Halloween-day decision satisfying. Five separate opinions accompanied the order, which was hardly unanimous. One third of the circuit judges dissented, some having previously stated that aspects of the original panel decision were wrong.
Continue Reading A Fine Mess