Can a petitioner’s reply in an IPR proceeding present new arguments and evidence responding to a proposed claim construction first raised in the patent owner’s response? In Axonics, Inc. v. Medtronic, Inc., Nos. 2022-1532, 2022-1533 (Fed. Cir. Aug. 7, 2023), the Federal Circuit answered in the affirmative, vacating the PTAB’s final written decision of
A patent interference is an adversarial proceeding where each party is trying deprive its opponent of a patent on an invention that that the Patent Office has already decided is patentable. Long after the AIA became effective to phase out interferences, the Patent Trial and Appeal Board continues to declare and administer them where at least one of the parties has an interfering application or patent predating the AIA’s enactment. The Board declares interferences to avoid the embarrassment and marketplace chaos where the Patent Office issues two patents on the same invention to different parties, and to avoid awarding a patent monopoly to the entity who was not the first to invent.
Continue Reading Mine Your Patent Application and You Might Find a Licensee
In Shoes by Firebug LLC, v. Stride Rite Children’s Group, LLC, Appeals 2019-1622, and 2019-1623 (Fed. Cir. June 25, 2020), the Federal Circuit affirmed the PTAB’s IPR decisions that the claims of two challenged Firebug patents, directed to illumination systems for footwear, were unpatentable for obviousness. Although the PTAB erred in determining that the word “textile” in the preamble of both patents was not limiting (the term was limiting in one of the patents), the court concluded that this error did not affect the PTAB’s conclusions that all challenged claims were obvious.
Continue Reading Federal Circuit Provides some Clarity as to when a Claim Preamble is Limiting
In a recent precedential decision, the Federal Circuit affirmed a Patent Trial and Appeal Board decision, upholding an examiner’s final rejection of claims to a fishing method as unpatentable under 35 U.S.C. § 101. In re Rudy, Case 2019-2301, Slip Op. (Fed. Cir. Apr. 24, 2020). Appeals to both the Board and the Federal Circuit were cast by a pro se applicant, who is also a patent attorney.
Continue Reading So Long, and Thanks for All the Fish
In The Chamberlain Group, Inc. v. One World Techs., Inc., Case 18-2112 (Fed. Cir. Dec. 17, 2019), the Federal Circuit held the USPTO erred in determining that Chamberlain raised a new argument during the Board’s final hearing. There, Chamberlain argued that the prior art did not anticipate certain claims of the patent. The Federal Circuit explained that “Chamberlain was merely clarifying its earlier position” in response to One World’s reply brief and “not raising a new issue.” The Court, nevertheless, affirmed the Board’s decision canceling the challenged claims as anticipated by the prior art, noting that substantial evidence supported the finding.
Continue Reading Patent Invalidated Despite Owner’s Argument Reinstated On Appeal
The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., Appeals 2019-1169, -1260 (Fed. Cir. Feb. 4, 2020), is remarkable, but not for its holding: “the Board may not cancel claims for indefiniteness in an IPR proceeding.” After 10,000 IPRs, hardly anyone thought otherwise. But it’s interesting nonetheless that someone so boldly tried to persuade the Board and the court otherwise. A $4.3 million willful infringement judgment will lead even the biggest of corporations to give it a try.
Continue Reading Come on, Board, Finish What You Started
In FOX Factory, Inc. v. SRAM, LLC, Case Nos. 2018-2024, 2018-2025 (Fed. Cir. December 18, 2019), the Federal Circuit determined that the Board erroneously presumed a nexus between evidence of secondary considerations and the challenged independent claims. Petitioner FOX appealed the decisions of the Board in two inter partes reviews.
Continue Reading Federal Circuit Rejects Presumption of Nexus Between Claimed Invention and Evidence of Secondary Factors
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 PTAB Revises Trial Practice Guide To Reflect Recent Decisions On Claim Construction, Petition and Motion Practice
In Hamilton Beach Brands, Inc. v. F’real Foods, LLC, Appeal No. IPR2016-01107 (Fed. Cir. Nov. 16, 2018), the Federal Circuit affirmed the Patent Trial and Appeal Board’s final written decision in an IPR upholding the patentability of a patent claim under 35 U.S.C. § 103. Additionally, the court discussed but did not determine whether improper standing at the time of filing a complaint might impact the application of the one-year time bar under 35 U.S.C. §315(b). The decision provides a good opportunity for practitioners to brush up on the fundamentals governing obviousness determinations and suggests that the case law surrounding the one-year time-bar under §315(c) may still evolve.
Continue Reading FC Affirms Obviousness Decision by Board Trigger of Time Bar
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 Rule Changes Will Advance a Famous Judge Rich Axiom