Inter Partes Review / IPR

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

Double arrowsIn Hologic, Inc. v. Minerva Surgical, Inc., Case 19-2054 (Fed. Cir. Apr. 22, 2020), the Federal Circuit held that an assignor of a patent may rely on a PTAB unpatentability decision as a defense in infringement litigation, although the equitable doctrine of “assignor estoppel” prevents the assignor from directly challenging validity in the litigation. In Additional Views, Judge Stoll suggests that the en banc court reconsider the issue of assignor estoppel, because the court’s precedent permits an assignor of a patent to “circumvent the doctrine of assignor estoppel by attacking the validity of a patent claim in the Patent Office.”
Continue Reading Assignor Estoppel Does Not Prevent Reliance on PTAB Decision Canceling Claims

On April 20, 2020, the Supreme Court held that PTAB decisions instituting IPR are final and non-appealable and that the language of 35 U.S.C. § 314(d) “indicates that a party generally cannot contend on appeal that the agency should have refused “to institute an inter partes review.”  Thryv Inc. v. Click-To-Call Technologies LP, case number 18-916, 2020 WL 1906544 at *4, __S.Ct. __ (2020).
Continue Reading PTAB Determination on One-Year Time Bar Cannot be Appealed

Adidas successfully petitioned the Patent Trial and Appeal Board in 2012 to review a Nike shoe patent. During that review, Nike filed a motion to amend the patent by canceling all claims and substituting four new claims. The Board canceled the patent claims and found the new claims unpatentable. Among other things, the Board said that Nike—the patent owner—did not establish the new claims were patentable over the prior art.
Continue Reading The Long Run

In ATI Technologies v. Iancu, 920 F.3d 1362 (Fed. Cir. 2019), the Federal Circuit reversed the PTAB’s decision that the Patent Owner had not presented sufficient evidence to swear behind several prior art references.  In doing so, the Federal Circuit reminded the PTAB, as well as practitioners alike, of the proper standard of proof for demonstrating the diligent reduction to practice of an earlier purported conception.
Continue Reading PTAB Failed to Apply Standard of Diligence Properly

Update (Apr. 3, 2020): The Federal Circuit recently denied rehearing petitions in the Polaris appeals referenced below (see link and link), and also denied the PTO’s request to stay the mandate in the Arthrex appeal (see link).

The Federal Circuit recently issued an order denying multiple rehearing petitions in Arthrex Inc. v. Smith & Nephew, Inc., Appeal 2018-2140 (Fed. Cir. Mar. 23, 2020) (en banc). Apparently neither of the parties nor the government (PTO) found the original panel’s Halloween-day decision satisfying. Five separate opinions accompanied the order, which was hardly unanimous. One third of the circuit judges dissented, some having previously stated that aspects of the original panel decision were wrong.
Continue Reading A Fine Mess

In Koninklijke Philips N.V. v. Google LLC, Case No. 2019-1177 (Fed. Cir. January 30, 2020), the Federal Circuit determined that the Board erred in instituting inter partes review based on an obviousness combination that Petitioner Google did not advance in its petition.  Nevertheless, the Federal Circuit agreed that the Board could have properly relied upon the general knowledge of those of skill in the art to modify the primary reference, without having to rely upon that combination.  The Federal Circuit therefore affirmed the Board’s decision that the challenged claims were invalid as obvious.
Continue Reading Federal Circuit Affirms Use of “Common Sense” in IPRs

Since the Federal Circuit’s 2018 en banc decision in Wi-Fi One, LLC v. Broadcom Corporation, (discussed here) the court has reviewed a number of PTAB decisions on whether an IPR petition was filed more than one year after the petitioner was served with a complaint asserting the challenged patent, and thus time-barred under 35 U.S.C. § 315(b) (see here, here, here). But a patent owner’s time-bar challenge must be timely raised before the PTAB, and may be waived if raised for the first time on appeal.
Continue Reading Time Bar Challenge Must Be Raised before the Board, Not Saved for Appeal