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, 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

Federal Circuits 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 the general knowledge of those of skill in the art to modify the primary reference, without having to rely upon that combination.  The Federal Circuit therefore affirmed the Board’s decision that the challenged claims were invalid as obvious. Continue Reading

Time Bar Challenge Must Be Raised before the Board, Not Saved for Appeal

Since the Federal Circuit’s 2018 en banc decision in Wi-Fi One, LLC v. Broadcom Corporation, (discussed here) the court has reviewed a number of PTAB decisions on whether an IPR petition was filed more than one year after the petitioner was served with a complaint asserting the challenged patent, and thus time-barred under 35 U.S.C. § 315(b) (see here, here, here). But a patent owner’s time-bar challenge must be timely raised before the PTAB, and may be waived if raised for the first time on appeal. 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 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

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 for the Board’s conclusion that the claim was obvious and that there would have been a motivation to combine relevant prior art references.  In this appeal, the Federal Circuit determined that the only additional evidence that the Board cited on remand to support the conclusion that there would have been a motivation to combine the relevant prior art references was not part of the record before the Board.  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 a Board decision refusing to institute inter partes review because the petitioner apparently did not establish a book bearing a 1990 copyright date was publicly available before the 1995 date on which the application for the subject patent was filed. The case is Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential). 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. 19, 2019). However, the Court disagreed with the PTAB’s view that it “does not ‘have the authority…to deem service to have occurred and overlook errors in service’” where no district court has deemed service to have occurred. 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 reduce toxic effects of the anti-folate. Continue Reading

Haste Makes Waste?

If the Federal Circuit’s decision in Arthrex wasn’t sufficiently newsworthy, then look at what lurks in its wake. The day after the decision, the court issued precedential orders indicating that a timely Constitutional challenge apparently must be presented to the court in an opening brief. A few days after those orders, two of the court’s most senior active-service judges said that the court’s remedy in Arthrex (i) wasn’t required by Supreme Court precedent, (ii) imposed unnecessary burdens on all involved in AIA trials, (iii) requires hundreds of new proceedings, and (iv) involves decision-making that is itself unconstitutional. And a day later, another panel of the court issued an order soliciting briefing on those and other issues left in Arthrex’s wake, tacitly questioning the Arthrex panel’s decision.

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