As a standard of appellate review, “substantial evidence” is not peculiar to the Federal Circuit’s review of patent decisions from district courts and the Patent Office. All circuit courts are familiar with that review standard. They apply it routinely in deciding appeals. The standard originated with appeals of jury verdicts, in recognition of the role of credibility at trial. Under this standard, a judge determines not whether a jury’s decision was correctly made, but whether its decision could reasonably have been made based on the evidence it received. Recent opinions make apparent, however, that the Federal Circuit judges are divided and disagree on how to apply that standard.
Continue Reading The Federal Circuit’s Disagreement About What Constitutes “Substantial Evidence”
Federal Circuit Reverses PTAB’s Anticipation Decision: Proof of Prior Conception Improperly Excluded as Hearsay
The Federal Circuit reversed, in part, a PTAB final written decision after determining that several emails, wrongly excluded as hearsay, showed the inventor’s conception prior to allegedly anticipating art. In REG Synthetic Fuels, LLC v. Neste Oil Oyj, No. 2015-1773 (Fed. Cir. Nov. 18, 2016), the Federal Circuit reversed the PTAB’s finding that a prior art reference anticipated the challenged claims directed to a certain paraffin composition. The Federal Circuit determined that emails the PTAB wrongly excluded from evidence sufficiently established that the Patent Owner conceived the invention before the filing date of the prior art reference.
Continue Reading Federal Circuit Reverses PTAB’s Anticipation Decision: Proof of Prior Conception Improperly Excluded as Hearsay
APA Requires Notice of and Opportunity to Respond to Grounds for Cancellation
Notice of grounds for unpatentability in one proceeding does not provide notice in a second, related proceeding, even where the proceedings relate to the same patent, are between the same two parties, and include the same prior art reference. The Federal Circuit, in In re: NuVasive, Inc., Case Nos. 2015-1672 and 2015-1673 (Fed. Cir. Nov. 9, 2016), relied on the Administrative Procedure Act (“APA”) and determined that the PTAB had violated the patent owner’s right to an opportunity to respond to grounds for rejection in one proceeding, while simultaneously determining that the patent owner had an opportunity to respond to the same grounds for rejection in a companion case. In reaching its decision, the Court stated that “[t]he Director has furnished no persuasive basis on which we are prepared to hold that a (barely sufficient) notice in one proceeding constituted an obligation-triggering notice in the other proceeding in which a comparable notice was missing.” (p. 11).
Continue Reading APA Requires Notice of and Opportunity to Respond to Grounds for Cancellation
Prior Art Made Available at Members Only Gatherings May Not Satisfy “Publically Accessible” Requirement
On July 27, 2018, the Federal Circuit issued an opinion vacating the GoPro, Inc. decision discussed in the post below.
On June 11, 2018, the Federal Circuit issued a decision vacating and remanding the Medtronic decision discussed in the post below.
An updated discussion of the Medtronic decision is available here:
PTAB Failed to Properly Apply Test for Printed Publication
Two recent PTAB decisions highlight important developments in qualifying a publication as a reference, available as prior art. In one case, the PTAB concluded that a printed catalog did not qualify as a printed publication prior art because it was distributed only at a private tradeshow to persons not necessarily skilled in the art. In the other case, the PTAB concluded that a video and associated slide presentation did not qualify as printed publications because these materials were distributed only to experts at a private, invitation-only conference. These decisions interpret precedents from the Federal Circuit and offer simple examples of what type of publications may not qualify as prior art.
Continue Reading Prior Art Made Available at Members Only Gatherings May Not Satisfy “Publically Accessible” Requirement
PTAB Upholds Claims Under Narrowed BRI Construction on Remand
The PTAB’s recent decision on remand in Corning Optical Comm. v. PPC Broadband (IPR2013-00342, Paper No. 57), and the related decision on appeal (815 F.3d 747 (Fed. Cir. 2016)), serve as a reminder that the broadest reasonable interpretation (BRI) standard does not permit an unreasonably broad construction.
In addition, the PTAB’s related order (see Paper 55), denying the parties’ requests for further briefing on remand, indicates that, when the Federal Circuit bases its claim construction on a party’s construction advanced during an earlier proceeding before the PTAB, the PTAB may choose to base its remand decision on the arguments and evidence in the record, without need for further briefing.
Continue Reading PTAB Upholds Claims Under Narrowed BRI Construction on Remand
Proposed Rule to Recognize Patent Agent Privilege in PTAB Proceedings
In its Notice of Proposed Rulemaking published on October 18, 2016, the USPTO proposes to amend the rules of practice before the PTAB to “recognize that, in connection with discovery conducted in certain proceedings at the [USPTO], communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent as communications between clients and U.S. attorneys.” 81 Fed. Reg. 71653 (Oct. 18, 2016). The rule would apply to the various PTAB proceedings that entail discovery, including IPRs, PGRs, the transitional program for CBMs, and derivation proceedings.
Continue Reading Proposed Rule to Recognize Patent Agent Privilege in PTAB Proceedings
PTAB Denies Institution of 3 IPRS Against Biogen’s TYSABRI® (natalizumab)
On October 17, 2016, the PTAB denied institution of three IPRs [IPR2016-00912, IPR2016-00915, and IPR2016-00916] petitioned by Swiss Pharma AG against three patents owned by Biogen IDEC directed to its anti-α4 integrin antibody product, TYSABRI (natalizumab), marketed to treat multiple sclerosis and Crohn’s disease. The PTAB weighed the Petitioner’s assertions of routine experimentation against the Patent Owner’s arguments of unpredictability in deciding the outcome.Continue Reading PTAB Denies Institution of 3 IPRS Against Biogen’s TYSABRI® (natalizumab)
Ignore Occam’s Razor at your Peril
In IPR 2015-01127, PAR Pharmaceuticals, challenged claims 1-11 of USPN 8,404,215 owned by Horizon Therapeutics, LLC on grounds of obviousness over various combinations of six references. Lupin Ltd. and Lupin Pharmaceuticals, Inc. filed another challenge to the claims of the ‘215 patent on the same grounds using the same arguments and evidence as used by PAR. The Board joined the two proceedings and construed the claims-at-issue in accordance with the plain meaning of the recited terms, crediting the unrebutted testimony of Petitioners’ expert in holding the claims unpatentably obvious under 35 U.S.C. § 103(a) over various combinations of the cited art.
Continue Reading Ignore Occam’s Razor at your Peril
PTAB’s Reconsideration of Institution Decision Unreviewable on Appeal
In denying a petition for rehearing, the Federal Circuit determined in Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc. that under Cuozzo, the court lacks authority to review a PTAB decision that reconsidered an IPR institution decision, and then terminated the IPR because the petition failed to identify the real party in interest.
As we have previously discussed, the Supreme Court in Cuozzo determined that under 35 U.S.C. § 314(d), a PTAB decision on institution of an IPR is nonappealable, although such a decision might be appealable if it implicated constitutional questions or raised issues of the agency acting outside its statutory limits.
Continue Reading PTAB’s Reconsideration of Institution Decision Unreviewable on Appeal
Federal Circuit Declares Unreviewable PTAB’s Refusal to Apply Assignor Estoppel
The Federal Circuit continues to declare aspects of the PTAB’s work to be beyond its review. Most recently, in Husky Injection Molding Systems Ltd., v. Athena Automation Ltd., Case Nos. 2015-1726, 2015-1727 (Fed. Cir. Sept. 23, 2016), the Federal Circuit, in a 2-1 decision, concluded that it lacked authority to question the PTAB’s refusal to extend the equitable doctrine of assignor estoppel to PTAB proceedings. We previously reported on the Federal Circuit’s opinion regarding the merits of the PTAB’s Final Decision invalidating the Husky patent. The following discussion instead focuses on those aspects of the Federal Circuit’s opinion concerning appellate review of the Board’s decision to institute review.
Continue Reading Federal Circuit Declares Unreviewable PTAB’s Refusal to Apply Assignor Estoppel