Tag Archives: America Invents Act

Patent Interferences May Not Involve Pure AIA Patent

thumbnail image of DNA strandBy Sandip H. Patel on Posted in Biotechnology, Ex Parte, Interferences, Reexamination
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 … Continue Reading

This Seems Absurd, but …

By Sandip H. Patel on Posted in Estoppel, Inter Partes Review, IPR
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 … Continue Reading

Patentee’s Admissions of Obviousness Insufficient Basis for Cancellation in Inter Partes Review

By Thomas L. Duston on Posted in Inter Partes Review, IPR, Legislation, Sections 102/103
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 … Continue Reading

Bizarre Facts Beget Bizarre Result

By Sandip H. Patel on Posted in Ex Parte, Inter Partes Review, IPR, Reexamination
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 … Continue Reading

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

By Sandip H. Patel on Posted in Appeals, Inter Partes Review, IPR
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 … Continue Reading

Supreme Court to Review the Arthrex Decision

By Sandip H. Patel on Posted in Appeals, CBM, Covered Business Method, Inter Partes Review, IPR, Post Grant Review
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 … Continue Reading

Fitbit Dodges a Bullet—Entitled to Appeal Portion of Apple’s Petition Which It Did Not Join

By Thomas L. Duston on Posted in Amendments, Appeals, Claim Construction, Joinder, Sections 102/103
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 … Continue Reading

Raiders of the Lost Art

By Ryan J. Schermerhorn on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
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 … Continue Reading

Does Section 285 Permit an Award of Attorney’s Fees for Patent Office Proceedings?

By Sandip H. Patel on Posted in Inter Partes Review, IPR, Reexamination, Stays
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 … Continue Reading

Federal Circuit Reaffirms that Software is Patent Eligible

By Ryan N. Phelan on Posted in Appeals, Section 101
In Uniloc USA, Inc. v. LG Electronics USA, Appeal No. 19-1835 (Fed. Cir. Apr. 30, 2020), the Federal Circuit reaffirmed that software inventions are patentable in the U.S. with a bright-line statement: “Our precedent is clear that software can make patent-eligible improvements to computer technology, and related claims are eligible as long as they are directed to … Continue Reading

The Arthrex Mulligan

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Stays, Trial Procedures
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 … Continue Reading

A Fine Mess

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
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, … Continue Reading

Section 101 Challenges are Out of Bounds in IPR Appeals

thumbnail image of DNA strandBy Lynn L. Janulis, Ph.D. on Posted in Appeals, Biotechnology, Inter Partes Review, IPR, Section 101, Sections 102/103
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 … Continue Reading

Haste Makes Waste?

By Sandip H. Patel on Posted in Appeals, Covered Business Method, Inter Partes Review, Interferences
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 … Continue Reading

Fixing an Appointments Clause Violation

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
In Arthrex Inc. v. Smith & Nephew, Inc., Appeal 2018-2140 (Fed. Cir. Oct. 31, 2019), the Federal Circuit concluded that the PTAB’s Administrative Patent Judges (APJs) are “principal” officers and their appointment by the Secretary of Commerce therefore violates the Constitution’s Appointments Clause. The issue arose in an appeal of a decision by a panel … Continue Reading

PTAB Revises Trial Practice Guide To Reflect Recent Decisions On Claim Construction, Petition and Motion Practice

By Raymond R. Ricordati, III on Posted in Amendments, Claim Construction, Discovery, Institution / Denial, Trial Procedures
The Patent Trial and Appeal Board (PTAB) recently published a second update to its Trial Practice Guide (TPG). The TPG, initially released in 2012, was first updated in August 2018 (see here). This second update further revises and/or adds guidance relating to certain general procedures and many aspects of trial practice before the PTAB.… Continue Reading

Federal Circuit Addresses Constitutional Issue Supreme Court Left Open

By Sandip H. Patel on Posted in Inter Partes Review
In consolidated appeals of a trio of Board decisions canceling pre-AIA patents in inter partes reviews (IPR), the Federal Circuit held “that the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.” Celgene Corp. v. Peter, Appeals 2018-1167, -1168, -1169, Slip Op. at 3 (Fed. Cir. July … Continue Reading

USPTO to Patent Owners – Don’t Forget About Reexams and Reissues

By Heather R. Kissling on Posted in Amendments, Ex Parte, Inter Partes Review, IPR, Reexamination
Recently updated statistics from the USPTO provide little comfort for patent owners seeking to amend claims during an IPR proceeding.  The Motion to Amend Study, Installment 5 through FY2018, updated March 2019, reports that patent owners have filed a motion to amend in 326 of the 3,599 completed trials (9%) and in 90 of the … Continue Reading

Estoppel Remains Malleable

By Sandip H. Patel on Posted in Estoppel, Inter Partes Review, IPR
A few months ago, in BTG International Ltd. v. Amneal Pharmaceuticals LLC, the Federal Circuit invited the Patent Office’s views on the scope of the petitioner estoppel under 35 U.S.C. § 315(e)(2). We noted then that this is an estoppel a district court may apply, but the Patent Office may not. In response to the … Continue Reading

Have You Included Specific Reference to Every Document in Your Priority Claim?

By Lynn L. Janulis, Ph.D. on Posted in Appeals, Inter Partes Review
Incorporation by reference is not sufficient to satisfy specific reference to each prior-filed patent application to be entitled to an earlier priority date (Droplets, Inc. v. E*Trade Bank (887 F.3d 1309 (2018)). This appeal to the Federal Circuit stems from a dispute between Droplets, Inc. and E*TRADE Bank, over a patent (U.S. Patent No. 8,402,115 … Continue Reading

Federal Circuit Invites Patent Office to Open Pandora’s Box

By Sandip H. Patel on Posted in Estoppel, Inter Partes Review
It is puzzling, if not troubling, that the Federal Circuit recently invited (link) the Patent Office to submit a brief expressing its views on the scope of the petitioner estoppel under 35 U.S.C. § 315(e)(2), a veritable Pandora’s Box. It is puzzling because only the judiciary can apply this estoppel provision, the Patent Office cannot. … Continue Reading
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