Inter Partes Review / IPR

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In Donner Technology, LLC v. Pro Stage Gear, LLC, Appeal. No. 20-1104 (Fed. Cir. Nov. 9, 2020), the Federal Circuit vacated and remanded the PTAB’s decision that the Petitioner, Donner Technology, did not sufficiently prove unpatentability because a printed publication on which it relied was not sufficiently analogous to the claimed subject matter.  In doing so, the Federal Circuit reminded the PTAB, and practitioners alike, of the proper standard for determining whether a reference is “analogous,” as well as how to appropriately apply that standard.
Continue Reading PTAB Plays Wrong Tune On Whether Reference is Analogous Art

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 denying rehearing here. The Supreme Court, at the government’s recommendation, asks the parties to address the following two questions.
Continue Reading Supreme Court to Review the Arthrex Decision

The Patent Trial and Appeal Board designated as precedential two opinions with opposite outcomes on the issue of discretionary denial of inter partes review (IPR) petitions under 35 U.S.C. §314(a) in July.  In Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (May 13, 2020), the Board denied institution of an IPR due to a parallel district court proceeding in the Western District of Texas, whereas in Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-01393, Paper 24 (June 16, 2020), the Board instituted an IPR despite a parallel district court proceeding also occurring in the Western District of Texas. 
Continue Reading Opinions Designated As Precedential Illuminate How Factors Governing

A decision to stay patent infringement litigation falls within a federal court’s power to control its docket. But in determining whether to stay litigation pending the Patent Office’s inter partes review (IPR) of the patent, courts still are guided by three factors: (1) whether the stay will simplify the litigation, (2) whether a stay would unduly prejudice (or present a clear tactical disadvantage to) the patent owner, and (3) whether the litigation has progressed to some advanced stage (e.g., discovery is complete, a trial date is set, etc.). Yet since the Supreme Court’s 2018 decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) (discussed here), courts in the Eastern District of Texas have erected an unnecessarily high bar for stay-movants to leap.
Continue Reading Denying a Stay and Building an Airplane While Flying It

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 Circuit went on to rule that the PTAB had erred in rejecting Apple’s arguments as to those claim, and remanded the matter to the Board for further review.
Continue Reading Fitbit Dodges a Bullet—Entitled to Appeal Portion of Apple’s Petition Which It Did Not Join

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 pending the Office’s review—was invalid and obtained through inequitable conduct. Nobody contested the district court’s conclusion that the case was exceptional.
Continue Reading Does Section 285 Permit an Award of Attorney’s Fees for Patent Office Proceedings?

In General Access Solutions, Ltd. v. Sprint Spectrum L.P., Case No. 19-1856 (Fed. Cir. May 11, 2020) (non-precedential), General Access Solutions (“GAS”) appealed from two final written decisions of the Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”) proceeding holding that multiple claims of U.S. Patent Nos. 7,173,916 and 6,891,810 were obvious over prior art cited by Sprint Spectrum L.P. (“Sprint”). Specifically, the Board found certain claims to be unpatentable based on various grounds relying on U.S. Patent No. 7,366,133 (“Ahy”) as prior art under 35 U.S.C. § 102(e).
Continue Reading Incorporating Entire Arguments by Reference Can Lead to Disastrous Outcomes

In a decision issued on May 5, 2020, the Federal Circuit reversed a PTAB decision upholding patent claims challenged for obviousness. Uber Technologies, Inc. v. X One, Inc., 957 F.3d 1334 (Fed. Cir. 2020). The Board failed to properly apply the obviousness test of KSR International Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), which recognized that a person of skill in the art has good reason to pursue the use of a finite number of identified, predictable solutions to solve a problem.
Continue Reading PTAB’s Obviousness Analysis Inconsistent with KSR

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, 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 the Board’s pre-Arthrex final written decision does not cancel—but rather upholds the patentability of—the challenged claims? Well, there’s an appeal for that.
Continue Reading The Arthrex Mulligan

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.