In Raytheon Technologies v. General Electric Corp., Appeal 2020-1755, (Fed. Cir. April 16, 2021), the Federal Circuit reversed a PTAB inter partes review decision that determined Raytheon’s claims, directed to gas turbine engines, are unpatentable as obviousness over “Knip,” a 1987 NASA technical memo. In particular, the court determined that Knip did not enable a skilled artisan to make the claimed invention.
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Mine Your Patent Application and You Might Find a Licensee
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.
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PTAB Declines to Institute IPR on Immersion’s Indefinite Means Plus Function Claims
Petitioners are finding themselves caught in a Catch-22. The PTAB declares claims too indefinite under Section 112 to construe, but then declines to address the patentabilty of the claims. Section 112 deficiencies are not grounds to challenge a patent in an IPR, but the PTAB has authority to find such deficiencies.
Recently, the PTAB decided that only some claims of Immersion Corporation’s U.S. Patent No. 8,659,571 were challengeable by Apple Inc. in an IPR because the ‘571 patent failed to disclose sufficient structure corresponding to the “drive module limitation” recited in claim 12 to determine the scope and meaning of claim 12. Apple Inc., v. Immersion Corporation, IPR2016-01372, Paper 7 (January 11, 2017).
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Squeezing the ‘Antibody Exception’ to Written Description into a Corner
The PTAB has continued the trend of pushing the -“antibody exception” to written description into an ever-smaller corner. Claims to methods of using antibodies that bind Siglec-15 to impair osteoclast differentiation and inhibit bone resorption were deprived of priority because the parent application failed to disclose the “antigenic regions useful for generating antibodies having the desired functional properties.” Consequently, the claims were anticipated by the cited reference under 35 U.S.C. §102(a), and Patentee’s other evidence of prior conception, diligence and reduction to practice was insufficient to antedate the reference. Daiichi Sankyo Co., Ltd. v. Alethia Biotherapeutics, Inc., IPR2015-00291 (Paper No. 75, June 14, 2016) (final written decision).
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