Chemical Company Developing Industrial Process Had Standing to Appeal

In E.I du Pont de Nemours & Co. v. Synvina C.V., No. 2017-1977 (Fed. Cir. Sept. 17, 2018), the Federal Circuit determined that the IPR petitioner, DuPont, had Article III standing to appeal an IPR final decision, although it had not been accused of infringement of patent owner Synvina’s patent, or engaged in activity that could be accused of infringement. The court explained that a controversy of sufficient immediacy and reality existed because DuPont, an avowed competitor of the patent owner, had taken and planned to take “action that would implicate” the patent under review. Specifically, DuPont had standing because it had built a manufacturing plant capable of operating within the parameters of the patent under review and had planned to engage in activities that could be accused of infringement. The court also noted that the record showed that DuPont had a non-hypothetical risk of infringement liability because the patent owner had refused to grant DuPont a covenant not to sue, and had argued before the PTAB that DuPont copied its patented process.  Continue Reading

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

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 proceedings dealing with the availability of conference and trade show materials as prior art. See, for example, PTABWatch posts here and here. Interestingly, the court affirmed the PTAB’s decision finding certain claims of the challenged patent anticipated by a trade show publication, whereas the court came to the opposite conclusion in a related ITC appeal based on the same publication.

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Confusion and Delay

In Oil States Energy Services., LLC v. Greene’s Energy Group, LLC, Justice Thomas, writing for a 7-2 majority of the Supreme Court, explained that inter partes review proceedings do not violate Article III or the Seventh Amendment of the Constitution. 138 S. Ct. 1365 (2018). But his opinion for the majority invited confusion and delay, upon the brink of which the Federal Circuit now stands. This stems from Oil States’ failure to explicitly challenge in the broad question its certiorari petition presented the retroactive application of inter partes review to its patent—a patent that issued before the procedure existed. Continue Reading

IPR Estoppel Does Not Apply to ITC Investigative Staff

Judge Cheney of the United States International Trade Commission held that ITC Investigative Staff are not estopped from asserting invalidity of a patent based upon prior art that was previously asserted by a respondent in an IPR. See In the Matter of Certain Magnetic Tape Cartridges and Components Thereof, Inv. No. 337-TA-1058 at *106-107. While this is an initial determination that has not been adopted by the Commission, this determination creates a huge loophole limiting the effect of estoppel before the ITC.

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“Comments Anyone?”: PTO Makes Proposed New IPR Amendment Process

On October 29, 2018, the Patent and Trademark Office published a request for comments on a proposal to establish a new procedure by which patent owners may seek to amend their claims during inter partes review. Comments are due on or before December 14, 2018. The PTO proposes a pilot program implementing the new amendment process to begin shortly after the deadline for comments.

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Rule Changes Will Advance a Famous Judge Rich Axiom

For AIA trial petitions filed after November 12, 2018, the Patent Trial and Appeal Board will construe claims challenged and proposed to be amended (narrowed) in these proceedings using the same claim construction standard that is used to construe the claim in a civil action in federal district court. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In these trials, the Board will also consider claim construction determinations made in proceedings in district courts or the International Trade Commission. A recent Federal Register notice includes the text of rules the Patent Office revised to implement these changes. Continue Reading

Successful IPR Petition Time Barred Under 35 U.S.C. §315(b) by Involuntarily Dismissed Complaint

In Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., Appeal Nos. 2017-1555, 217-1626 (Fed. Cir. Sept. 28, 2018), the Federal Circuit vacated the Patent Trial and Appeal Board’s final written decision in an IPR because institution of the IPR should have been time barred under 35 U.S.C. §315(b).  Additionally, the Federal Circuit declined to consider a challenge to a sanctions order by the Board because the amount of sanctions had not yet been quantified and thus the court lacked jurisdiction to review the order.  The court’s disposition of these issues remind practitioners that procedural timing is just as important as substantive argument in obtaining a desired legal outcome. Continue Reading

IPR Petition Fee Must Be Received Not Merely Tendered for Petition to be Afforded a Filing Date

In this informative opinion, Luv N’ Care, LTD v. McGinley, Case IPR2017-01216, Paper 13 (Sept. 18, 2017) the PTAB clarified that to be accorded a filing date, a petition must be complete, including receipt by the PTO of the petition fee for institution. As a result of a delay in payment of this fee, Luv N’ Care’s IPR petition was accorded a filing date ten days later than the date on which it filed the petition, and was ultimately barred by the one-year filing bar under 35 U.S.C. § 315(b).
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Attorneys’ Fees Not Awardable Expenses in Section 145 Actions

Update: On March 4, 2019, the Supreme Court granted the Government’s cert. petition to review the Federal Circuit’s judgment in NantKwest, Inc. v. Iancu, discussed in the post below. The Court’s docket for this case is 18-801.

In NantKwest, Inc. v. Iancu, No. 2016-1794 (Fed. Cir. Jul. 27, 2018) (en banc), the Federal Circuit decided en banc that attorneys’ fees are not “expenses” required to be paid by an applicant who appeals an ex parte prosecution case to the Eastern District of Virginia under 35 U.S.C. § 145. A Federal Circuit panel had earlier reached a contrary result, and the court sua sponte vacated the panel decision to take up the issue en banc. Continue Reading

Federal Circuit Puts Nail in Coffin For Petitioner’s Case Challenging Casket Patent

In Matthews International Corporation v. Vandor Corporation, No. 2017-1889 (Fed. Cir. Mar. 27, 2018) (non-precedential), the Federal Circuit affirmed the PTAB’s final written decision to uphold the claims of Vandor’s patent that Matthews challenged in inter partes review. The claims at issue “are directed to ‘a casket arrangement’ made of pliable material, such as cardboard,” in which side and end panels of the casket can be folded to allow the casket to be reconfigured and condensed for ease in shipping and storage. According to the PTAB and the Court, Matthews failed to prove by a preponderance of the evidence that the claims were anticipated by the prior art, even though the claims may be obvious.
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