The Federal Circuit upheld the PTAB’s mixed decisions in IPRs filed by Google to challenge claims of two Personal Audio LLC patents asserted against Apple, Samsung, Amazon and Research in Motion, in addition to Google. Google LLC v. Personal Audio LLC, Nos. 2017-1162, -1166, -2110, -2111 (Fed. Cir. Aug. 1, 2018) (non-precedential).
Continue Reading Mixed Result Upheld in Personal Audio IPRs
Play the Claim
Monsanto Technology LLC v. E.I. DuPont de Nemours & Co. Appeal 2017-1032 (Fed. Cir. Jan. 5, 2018), illustrates “[t]he life of a patent solicitor has always been a hard one.” [1] The case concerns an inter partes reexamination of a Monsanto patent in which the Patent Office concluded the claimed subject matter was inherently described in an earlier DuPont patent. The Patent Office reached this conclusion because DuPont presented during the reexamination its unpublished data regarding experiments described in its earlier patent. The Federal Circuit affirmed.
Continue Reading Play the Claim
Is the PTAB Bound by a Prior Federal Circuit Claim Construction?
In Knowles Electronics LLC v. Cirrus Logic, Inc., No. 2016-2010 (Fed. Cir. Mar. 1, 2018), the Federal Circuit affirmed a PTAB decision that upheld an examiner’s rejection of claims for anticipation in an inter partes reexamination (IPX). The same claims had earlier been challenged, and determined to be not invalid (over different prior art), in an ITC decision that was also affirmed by the Federal Circuit. MEMS Tech. Berhad v. Int’l Trade Comm’n, 447 F. App’x 142 (Fed. Cir. 2011). The decision in the IPX appeal turned on construction of a particular claim term (“package”), and according to a dissent authored by Judge Newman, the court should have reversed the PTAB’s decision due to claim preclusion, because the court had earlier construed the same term differently.
Continue Reading Is the PTAB Bound by a Prior Federal Circuit Claim Construction?
A Split Federal Circuit Panel “at Once Envisaged” Different Conclusions of Anticipation
Can the disclosure in a prior art reference be too extensive for the art not to anticipate? According to a recent decision, the Federal Circuit apparently thinks so.
In Microsoft Corp. v. Biscotti Inc., Case Nos. 2016-2080, -2082, -2083 (Fed. Cir. Dec. 28, 2017), a split Federal Circuit panel affirmed a Board’s decision—also a split decision with one judge dissenting—that the contested claims were not invalid for anticipation, determining that the factual findings of the Board’s majority were supported by substantial evidence. But, in dissent, Judge Newman criticizes the panel majority for misperceiving the law of anticipation and finding that a person of skill in the art would not “at once envisage” the claimed arrangement of limitations due to the breadth of disclosure in the prior art.
Continue Reading A Split Federal Circuit Panel “at Once Envisaged” Different Conclusions of Anticipation
Federal Circuit Again Reminds PTAB that BRI Must Be Reasonable
Last fall, the Federal Circuit reversed a PTAB decision that affirmed an Examiner’s rejection of various claims in an ex parte reexamination because the Examiner’s interpretation of the claims, which the PTAB upheld, was unreasonably broad. In re Smith International, Inc., Appeal No. 2016-2303 (Fed. Cir. Sept. 26, 2017). The court’s decision is noteworthy because it reinforces the bounds of the broadest reasonable interpretation claim construction standard the Patent Office must apply when assessing patentability, bounds that do not encompass the broadest possible interpretation.
Continue Reading Federal Circuit Again Reminds PTAB that BRI Must Be Reasonable
Federal Circuit Overturns PTAB’s Finding of Patent Validity
In a split opinion in Homeland Housewares, LLC v. Whirlpool Corporation, the Federal Circuit has again overturned a final written decision issued by the PTAB determining that challenged claims in an IPR were not unpatentable, a development that should at least cast doubt on the validity of patents that survive challenges at the PTAB.
Homeland initially petitioned the PTAB for an inter partes review of all claims of U.S. Patent No. 7,581,688 (“the ’688 patent”), assigned to Whirlpool, arguing that the claims were invalid as anticipated by U.S. Patent No. 6,609,821 (“the ’821 patent”).
Continue Reading Federal Circuit Overturns PTAB’s Finding of Patent Validity
Rejection of Claims Containing Functional Language and a Negative Limitation Affirmed by Federal Circuit
The Federal Circuit’s recent decision in In re Chudik, Appeal 2016-2673 (Fed. Cir. August 25, 2017) (non-prec.), offers patent practitioners a cautionary tale and good teaching points about the propriety of negative limitations and functional claim language. No two situations are the same, of course, but the case offers a real-world example of how claims reciting these types of features may be assessed by the Patent Office and the Federal Circuit.
Continue Reading Rejection of Claims Containing Functional Language and a Negative Limitation Affirmed by Federal Circuit
Claim Construction Sends Duke’s Patent Back to PTAB for Reconsideration, In Part
In a recent appeal from a PTAB final written decision, the Federal Circuit reversed the Board’s determination that all claims of a Duke patent were unpatentable (Duke Univ. v. BioMarin Pharm. Inc., Appeal No. 2016-1106 (Fed. Cir., April 25, 2017). The court concluded that certain of the Board’s claim constructions were incorrect, and that others, while appropriate, were mis-applied and reversed the Board’s decision on anticipation, as well as obviousness of some claims.
Continue Reading Claim Construction Sends Duke’s Patent Back to PTAB for Reconsideration, In Part
Federal Circuit Signals that PTAB Correctly Construed Most Signal Terms but Misconstrued one Other
In Wasica Finance GmbH v. Continental Automotive Sys., Inc., (Fed. Cir. Apr. 4, 2017), the Federal Circuit affirmed-in-part and reversed-in-part two PTAB final written decisions cancelling some but not all challenged claims of U.S. Patent No. 5,602,524 (“the ‘524 patent”). The PTAB and court decisions are interesting because together they highlight the consequence of not supporting seemingly strong arguments with expert witness testimony. Further, the decisions highlight the consequence of not explaining how facts implicate esoteric nuances in the patent laws.Continue Reading Federal Circuit Signals that PTAB Correctly Construed Most Signal Terms but Misconstrued one Other
CFAD Fails to Knock Out 4 Acorda Patents to Multiple Sclerosis Drug
A recent set of final written decisions in four IPRs against Acorda Therapeutics puts more marks in the loss column for Kyle Bass and the Coalition for Affordable Drugs. In IPRs 2015-01850, -01853, -01857 and -01858 (Coalition for Affordable Drugs v. Acorda Therepuatics Inc.), the Coalition for Affordable Drugs (CFAD) requested review of Acorda Therapeutics U.S. patents U.S. 8,440,703, U.S. 8,007,826, U.S. 8,663,865, and U.S. 8,354,437, respectively, directed to sustained release formulations of fampridine (4-AP) and methods for administering the drug to treat neurological disease, such as multiple sclerosis (MS). Certain aspects of the inventions in the four patents are directed to methods of increasing walking speed of patients with MS by administering 4-AP twice daily for at least two weeks, in a dose of about 10 to 15 mg of 4-AP. The PTAB instituted review of the issued claims in each of the four patents as potentially obvious in view of a combination of prior art, including an SEC filing by Acorda that included reference to ongoing clinical trials.
Continue Reading CFAD Fails to Knock Out 4 Acorda Patents to Multiple Sclerosis Drug