Can a defendant who prevails in an exceptional patent infringement suit by invalidating the patent in inter partes review (IPR) recover its associated Patent Office-related attorney’s fees? A split three-judge panel of the Federal Circuit recently said no in Dragon Intellectual Property LLC v. Dish Networks LLC, Appeal Nos. 2022-1621, -1777, Slip Op. at 8 (Fed. Cir. May 20, 2024) (“Dragon V”). This blogsite previously discussed (link) several instances where courts, including the Federal Circuit, have authorized this recovery when the Patent Office proceedings substituted for aspects of the district court litigation between the same parties. How then did this two-judge majority conclude otherwise?Continue Reading Federal Circuit Holds Recoverability of Attorney’s Fees Does Not Extend to AIA Trials

The Patent Office is not supposed to issue separate patents for the same invention to competing inventors. Several statutory provisions empower the Office to reject pre-AIA patent application claims of the later inventor. But sometimes it’s not clear who is the later inventor. Those provisions are therefore unhelpful. So, the Patent Trial and Appeal Board administers an increasingly rare proceeding called an “interference” to assesses which inventor was the last to invent. Through this proceeding, the Office cancels as unpatentable (under pre-AIA 35 USC § 102(g)) the claims of the inventor the Board determines was last to invent.Continue Reading Patent Interferences May Not Involve Pure AIA Patent

The Chaos of Too Many Rules | Angry boss shout in chaos office because of failure deadline. Stressed vector cartoon characters.

Last year, a district court applied the doctrine of collateral estoppel to dismiss an infringement suit after the Patent Trial and Appeal Board decided to cancel the asserted patent’s claims in an inter partes review. In the ensuing appeal of the court’s decision, the Federal Circuit granted the patent owner’s (Jump Rope’s) unopposed motion for summary affirmance. Jump Rope Sys., LLC v. Coulter Ventures, LLC, Appeal 22-1624 (Fed. Cir. June 28, 2022). Jump Rope presented the unopposed motion after the Federal Circuit denied its motion that the court go en banc.  Jump Rope had sought a determination by the court as a whole that parallel civil litigation seeking to enforce those canceled claims was not moot and could proceed, potentially to an infringement judgment and consequent remedy. Jump Rope has since presented the same argument to the Supreme Court in a petition for a writ of certiorari. Brief of Petitioner, Jump Rope Sys., LLC v. Coulter Ventures, LLC, Sup. Ct. Dkt. 22-298 (Sept. 26, 2022).Continue Reading This Seems Absurd, but …

Admit One - Qualcomm v. Apple

In Qualcomm, Inc. v. Apple, Inc., No. 20-1558 (Fed. Cir. Feb. 1, 2022), the Federal Circuit concluded that a patentee’s admissions concerning the content of the prior art, contained in the specification of the challenged patent, cannot serve as a ground to invalidate that patent in inter partes review.  The court, therefore, vacated decisions of the PTAB canceling patent claims asserted by Qualcomm against Apple relating to “integrated circuit devices with power detection circuits for systems with multiple supply voltages.”
Continue Reading Patentee’s Admissions of Obviousness Insufficient Basis for Cancellation in Inter Partes Review

Duck horse - Bizarre Facts Beget Bizarre Result

Before the Federal Circuit’s recent decision in In re Vivint, Inc., Appeal 2020-1992 (Fed. Cir. Sept. 29, 2021), the Patent Trial and Appeal Board affirmed a reexamination examiner’s final rejection of Vivint’s patent claims as unpatentable over prior art. In due course, the Patent Office would have issued a certificate canceling those claims. But Vivint appealed the Board’s decision, not because the examiner’s/Board’s decisions were substantively incorrect, but because the Office should not have ordered reexamination. The AIA’s revisions to the Patent Act give the Board discretion to deny inter parties review and deny requests for ex parte reexamination that present “the same or substantially the same prior art or arguments previously … presented to the Office.”
Continue Reading Bizarre Facts Beget Bizarre Result

The Supreme Court Decides Arthrex, Giving the PTO Director Discretion to Review PTAB Decisions

On June 21, 2021, the Supreme Court issued a decision vacating the Federal Circuit’s judgment in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). As we previously explained, the Federal Circuit in Arthrex held that the AIA was unconstitutional in that administrative patent judges (APJs) have the authority of principal officers, but the statute provides for their appointment by the Secretary of Commerce, rather than by the President with the advice and consent of the Senate.
Continue Reading The Supreme Court Decides Arthrex, Giving the PTO Director Discretion to Review PTAB Decisions

The Supreme Court issued an order on October 13, 2020, granting and consolidating three certiorari petitions seeking review of the Federal Circuit’s judgment in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), reh’g denied, 953 F.3d 760 (Fed. Cir. 2020). We discussed the Federal Circuit’s judgment here and its decision denying rehearing here. The Supreme Court, at the government’s recommendation, asks the parties to address the following two questions.
Continue Reading Supreme Court to Review the Arthrex Decision

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

Back in 1988, the Federal Circuit reversed a district court decision that refused to award a party its reasonable attorney’s fees incurred in successfully litigating a patent’s validity before the Patent Office. PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565 (Fed. Cir. 1988). The Office determined that the patent asserted in litigation—stayed pending the Office’s review—was invalid and obtained through inequitable conduct. Nobody contested the district court’s conclusion that the case was exceptional.
Continue Reading Does Section 285 Permit an Award of Attorney’s Fees for Patent Office Proceedings?