The PTAB recently issued a final written decision in an inter partes review (IPR), refusing to cancel claims in Verinata Health, Inc.’s U.S. Patent No. 8,318,430. Ariosa Diagnostics v. Verinata Health, Inc., Cases IPR2013-00276 and -00277 (P.T.A.B. Aug. 15, 2016). The claims are directed to methods for determining the presence or absence of fetal aneuploidy in a fetus. This is the second such decision from the PTAB. The first decision was the subject of an appeal to the Federal Circuit. Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015). In that appeal, which we previously discussed, the court vacated the PTAB’s prior conclusion of nonobviousness because the court could not discern from the appeal record that the PTAB properly considered the prior art. In its recent decision, the PTAB has considered that prior art, but nevertheless reaches the same conclusion of nonobviousness.
Continue Reading PTAB Accords Little Weight to Evidence without Analysis or Explanation
Federal Circuit Identifies Limits to the Application of “Common Sense” in an Obviousness Analysis
In Arendi S.A.R.L. v. Apple, Inc., Appeal No. 2015-2073 (Fed. Cir. 2016), the Federal Circuit reversed the PTAB’s final written decision canceling claims for obviousness, on the basis that the PTAB improperly relied on “common sense” to determine that the claims were obvious.
The challenged patent is directed to a computer-implemented method for providing beneficial coordination between a first computer program displaying a document and a second computer program for searching an external information source. The Board determined that the claims were obvious over a single reference (Pandit), although Pandit did not expressly disclose a step of “performing a search” of an information source, as recited in the claims.
Continue Reading Federal Circuit Identifies Limits to the Application of “Common Sense” in an Obviousness Analysis
Federal Circuit Affirms PTAB Upholding Patent Claims
In what has been a rare outcome to date, the Federal Circuit in Apotex v. Wyeth, dkt. no. 2015-1871 (Fed. Cir. Aug. 16, 2016) affirmed in a non-precedential decision the PTAB’s final written decision in IPR2014-00115 that the challenged claims were not unpatentably obvious over three references. At trial, the PTAB found that Apotex did not sustain its burden of showing by a preponderance of the evidence that there was a reason to substitute the claim-recited antibiotic for a prior art antibiotic and that there was a reason to combine the three references. In its appeal, Apotex unsuccessfully argued that the structural similarity of the antibiotics provided a reason to substitute, and argued that the PTAB failed to consider reasons to combine other than solving the problem addressed by the Patent Owner.
Continue Reading Federal Circuit Affirms PTAB Upholding Patent Claims
Federal Circuit Refuses to Reweigh Factual Findings, But PTAB’s Conclusory Statements Are Insufficient
The Federal Circuit’s precedential decision in In re: Warsaw Orthopedic, Inc., No. 2015-1050, 2015-1058 (Fed. Cir. Aug. 9, 2016), highlights recurring themes in appeals of PTAB IPR decisions. On one hand, the Federal Circuit is reluctant to overturn a PTAB decision canceling claims for obviousness based on Patent Owner’s assertions that the PTAB failed to properly weigh certain facts found in reaching its decision. On the other hand, the Federal Circuit will not hesitate to vacate and remand PTAB decisions where the PTAB does not adequately describe its reasons for concluding a claimed invention is obvious.
Continue Reading Federal Circuit Refuses to Reweigh Factual Findings, But PTAB’s Conclusory Statements Are Insufficient
Federal Circuit Reaffirms that Phillips applies when Patent has expired
It is well accepted that the broadest reasonable interpretation (BRI) standard, which the PTO employs during patent examination, and not the Phillips standard applied in district court proceedings, is generally the proper standard to be used when interpreting claims in Post-Grant proceedings such as IPRs and reexamination proceedings. However, in In Re CSB-System International, Inc., Appeal No. 2015-1832, the Federal Circuit reminded the PTAB that the BRI standard is not to be applied in all Post-Grant proceedings. Instead, the Federal Circuit reaffirmed its precedent that “when an expired patent is subject to reexamination, the traditional Phillips construction standard attaches.” (p. 8). The court further held that the Phillips standard also applies when the patent expires during reexamination.
Continue Reading Federal Circuit Reaffirms that Phillips applies when Patent has expired
Who Must Bear the Burden of Proof Regarding Patentability of Amended Claims?
On August 12, 2016, the Federal Circuit issued an order vacating its decision in In re Aqua Products, Inc., 823 F.3d 1369 (Fed. Cir. 2016), and reinstating the appeal after granting the aggrieved patent owner’s petition for rehearing en banc. We wrote about this decision a few months ago:
The Federal Circuit confirmed in a precedential opinion that the burden to prove patentability of an amended claim in an IPR proceeding rests squarely with the patentee, and in deciding a motion to amend claims, the Board only need consider the arguments presented by the patentee, not perform a full reexamination of the proposed claims. In In re Aqua Products, Inc., Appeal No. 2015-1177 (Fed. Cir. May 25, 2016), the Federal Circuit affirmed the PTAB’s denial of patentee Aqua’s motion to substitute claims because Aqua failed to prove patentability of the substitute claims.
Continue Reading Who Must Bear the Burden of Proof Regarding Patentability of Amended Claims?
Secondary Considerations Change Panel’s Mind after Institution
The PTAB is not often persuaded by objective evidence of non-obviousness, i.e., secondary considerations, when the scope and content of the prior art includes all of the features recited in the claims. However, a pair of recent PTAB decisions, Innopharma Licensing, Inc. v. Senju Pharmaceutical Co., LTD., IPR2015-00902, Paper 90, and IPR2015-00903, Paper 82 (PTAB July 28, 2016), provides a rare example where the PTAB completely changed its mind after instituting the IPRs. The decisions offer the same message, and this post focuses on the decision in IPR2015-00902, where the PTAB found all of the challenged claims of U.S. Patent No. 8,669,290 not obvious over the applied prior art references based on the objective evidence of non-obviousness.
Continue Reading Secondary Considerations Change Panel’s Mind after Institution
Analogous Art: A Tale of Two Decisions
In two recent PTAB decisions, Tissue Transplant Technology Ltd. & Human Biologics of Texas, Ltd., v. Mimedx Group, Inc., Case IPR2015-00420, Paper 25 (PTAB July 7, 2016) and Dexcowin Global, Inc., v. Aribex, Inc. Case IPR2016-00440, Paper 13 (PTAB July 7, 2016), the Board reached opposite conclusions regarding whether the petitioner’s prior art was analogous to the challenged patents. It is well established that art is analogous when it is: (1) from the same field of endeavor as the claimed invention; or (2) reasonably pertinent to the particular problem faced by the inventor, if the art is not from the same field of endeavor. In re Bigio, 381 F.3d 1320, 1325-1326 (Fed. Cir. 2004). However, as these two decisions demonstrate, overcoming a non-analogous art challenge depends on how the petitioner characterizes the problem to be solved by the challenged claims and whether the petitioner can point to some area of overlap in the fields of endeavor of the prior art reference and the patented invention.
Continue Reading Analogous Art: A Tale of Two Decisions
Government Weighs in on Constitutionality of Inter Partes Review
Two petitions for certiorari are pending before the Supreme Court in which the aggrieved patent owners in MCM Portfolio LLC. v. Hewlett-Packard Co. and Cooper v. Lee are challenging the constitutionality of AIA trials. The Federal Circuit in MCM Portfolio upheld the PTAB’s authority to adjudicate the validity of issued patents, determining that IPR proceedings are not unconstitutional under Article III or the Seventh Amendment right to a jury trial. MCM Portfolio LLC. v. Hewlett-Packard Co., 812 F.3d 1284 (Fed. Cir. 2015). In Cooper, the district court granted summary judgment against Cooper on administrative exhaustion grounds and the Federal Circuit summarily affirmed. Cooper v. Lee, 86 F.Supp.3d 480 (2015); Cooper v. Lee, Nos. 2015-1483, 2016-1071 (Fed. Cir. 2016). The Government filed briefs in opposition to both petitions – the Cooper opposition brief was filed in April, and the MCM opposition brief was filed in June. A decision on the petitions is expected at the beginning of the Supreme Court’s October 2016 term.
Continue Reading Government Weighs in on Constitutionality of Inter Partes Review
PTAB Improperly Shifted Burden of Proof in IPR
In In Re Magnum Oil Tools International Ltd., the Federal Circuit reversed the PTAB’s final decision cancelling challenged claims for obviousness because the record did not include substantial evidence of a motivation to combine references, and because the PTAB improperly shifted the burden of proof on this issue to the patent owner.
Petitioner McClinton Energy Group filed an IPR petition challenging claims of a patent relating to technology for “fracking” (oil drilling using hydraulic fracturing). In fracking, a wellbore is drilled into the earth, and a fluid mixture is injected into the wellbore. Downhole plugs are used to divide the wellbore into separate sections so that different sections of the wellbore may be fracked at different times.
Continue Reading PTAB Improperly Shifted Burden of Proof in IPR