Tag Archives: PTAB

So, You Invented a Numerical Range

By Sandip H. Patel on Posted in Claim Construction, Inter Partes Review, IPR
In Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A., Appeals 2020-2073, -2142 (Fed. Cir. Nov. 24, 2021), the Federal Circuit affirmed a Patent Trial and Appeal Board’s final decision canceling claims in Indivior’s patent claiming a polymer matrix-containing film. Certain claims in the patent recited an amount of polymer matrix inadequately disclosed, according to the … Continue Reading

Federal Circuit Concludes that Reference Qualifies As Prior Art Based on Reply Evidence

By William (Bill) J. Samore on Posted in Uncategorized
In VidStream LLC v. Twitter Inc., Appeals 2019-1734, -1735, (Fed. Cir. November 25, 2020), the Federal Circuit affirmed a pair of PTAB inter partes review decisions that determined VidStream’s claims, directed to publishing content on social networking websites, are unpatentable as obvious over a five-way combination of references. Important, in this appeal, was the subsidiary … Continue Reading

Federal Circuit Finds Lack of Enablement in Prior Art Reference

By William (Bill) J. Samore on Posted in Appeals, Covered Business Method, Inter Partes Review, IPR, Sections 102/103
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 … Continue Reading

Federal Circuit Finds Loyalty Rewards Claims Ineligible

By William (Bill) J. Samore on Posted in Appeals, CBM, Section 101
In cxLoyalty, Inc. v. Maritz Holdings Inc., Appeals 2020-1307, -1309 (Fed. Cir. Feb. 8, 2021), the Federal Circuit affirmed a PTAB final written decision in a CBM proceeding canceling Maritz’s original claims related to a GUI for a customer loyalty program, as ineligible for patenting under 35 U.S.C. § 101.  The PTAB had granted Maritz’s … Continue Reading

Rare Circumstances in IPRs are Even Rarer With Poor Strategy

By Stephen J. Kudla on Posted in Amendments, Inter Partes Review, IPR, Sections 102/103
In Hunting Titan Inc. v. DynaEnergetics GmbH & Co. KG, Case IPR 2018-00600 (PTAB Jul. 6, 2020), the Patent Trial and Appeal Board’s Precedential Opinion Panel (POP) vacated the decision of another Board panel to deny patent owner’s (DynaEnergetics) motion to amend. In that vacated decision, the Board had sua sponte determined the proposed substitute … Continue Reading

PTAB Plays Wrong Tune On Whether Reference is Analogous Art

By Ryan J. Schermerhorn on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
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 … Continue Reading

Opinions Designated As Precedential Illuminate How Factors Governing Discretionary Denial of IPR Petitions Under 35 U.S.C. §314(a) Are Applied

By Kate Nuehring Su on Posted in Institution / Denial, Inter Partes Review, IPR
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 … Continue Reading

Raiders of the Lost Art

By Ryan J. Schermerhorn on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
In Telefonaktiebolaget LM Ericsson, (“Ericsson”), v TCL Corporation, (“TCL”), 2017-2381, -2385 (Fed. Cir. Nov. 7, 2019), the Federal Circuit affirmed the PTAB’s decision that canceled claims in an Ericsson patent that TCL challenged based on its subsidiary finding that a German journal article TCL presented was indeed prior art.  The decision is important because it … Continue Reading

Incorporating Entire Arguments by Reference Can Lead to Disastrous Outcomes

By John J. Lucas on Posted in Appeals, Inter Partes Review, IPR
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 … Continue Reading

Fast-Track Decisions on Ex Parte Appeals

By Sandip H. Patel on Posted in Ex Parte
On July 2, 2020, the Patent Office initiated the “Fast-Track Appeals Pilot Program,” which it designed to reduce the pendency of ex parte appeals. The program, effective for one year, is in a pilot stage to gauge the public’s interest and to assess its longer-term feasibility. The Office neither expects nor intends any delays for … Continue Reading

The Arthrex Mulligan

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Stays, Trial Procedures
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 … Continue Reading

PTAB Determination on One-Year Time Bar Cannot be Appealed

By Julianne M. Hartzell on Posted in Appeals, Inter Partes Review, IPR, Trial Procedures
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 … Continue Reading

The Long Run

By Sandip H. Patel on Posted in Amendments, Inter Partes Review, IPR
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 … Continue Reading

PTAB Failed to Apply Standard of Diligence Properly

By Ryan J. Schermerhorn on Posted in Appeals, Inter Partes Review, IPR
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 … Continue Reading

A Fine Mess

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
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, … Continue Reading

Come on, Board, Finish What You Started

By Sandip H. Patel on Posted in Claim Construction, Inter Partes Review, IPR, Section 112, Sections 102/103
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 … Continue Reading

Federal Circuit Vacates Board Obviousness Decision Relying Upon Reference in Non-Instituted Ground for Motivation to Combine

By Kate Nuehring Su on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
In In Re: IPR Licensing, Inc., Appeal Nos. IPR2014-00525, IPR2015-00074 (Fed. Cir. Nov. 22, 2019), the Federal Circuit vacated the Patent Trial and Appeal Board’s decision that a claim was invalid as obvious.  The claim had previously been in front of the Federal Circuit in an appeal in which Federal Circuit found insufficient record support … Continue Reading

Game Not Over – No Estoppel Where Service Is Deemed Insufficient

By Julianne M. Hartzell on Posted in Estoppel, Inter Partes Review, IPR, Trial Procedures
In a case involving online gaming, the Federal Circuit affirmed the PTAB’s decision that 35 U.S.C. § 315(b) did not bar instituting an IPR where the patent owner failed to preserve its arguments that service was perfected. Game and Technology Co., Ltd. v. Wargaming Group Limited, ___ F.3d __, 2019 WL 6121449 (Fed. Cir. Nov. … Continue Reading

Section 101 Challenges are Out of Bounds in IPR Appeals

thumbnail image of DNA strandBy Lynn L. Janulis, Ph.D. on Posted in Appeals, Biotechnology, Inter Partes Review, IPR, Section 101, Sections 102/103
Neptune Generics v. Eli Lilly & Company, Case No. 2018-1257, 2018-1258 (Fed. Cir. April, 2019), concerns an Eli Lilly & Co. patent protecting method of administering folic acid and a methylmalonic acid (MMA) lowering agent, e.g., vitamin B12. Specifically, the method concerns the administration of these products before administering pemetrexed disodium, an anti-folate chemotherapeutic, to … Continue Reading

Haste Makes Waste?

By Sandip H. Patel on Posted in Appeals, Covered Business Method, Inter Partes Review, Interferences
If the Federal Circuit’s decision in Arthrex wasn’t sufficiently newsworthy, then look at what lurks in its wake. The day after the decision, the court issued precedential orders indicating that a timely Constitutional challenge apparently must be presented to the court in an opening brief. A few days after those orders, two of the court’s … Continue Reading

PTAB Should Have Determined that Gravity Feed Display Design Patent is Obvious

By Jeremy R. Kriegel on Posted in Appeals, Discovery, Inter Partes Review, IPR, Sections 102/103
In Campbell Soup Co. v. Gamon Plus, Inc. (Fed. Cir. Sept. 26, 2019), the Federal Circuit vacated the PTAB’s decision (discussed here) upholding the validity of Gamon’s design patent D621,645 (“the ‘645 patent”) for soup can display racks.  The court determined that substantial evidence did not support the Board’s finding that Linz is not a … Continue Reading

Fixing an Appointments Clause Violation

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review, Trial Procedures
In Arthrex Inc. v. Smith & Nephew, Inc., Appeal 2018-2140 (Fed. Cir. Oct. 31, 2019), the Federal Circuit concluded that the PTAB’s Administrative Patent Judges (APJs) are “principal” officers and their appointment by the Secretary of Commerce therefore violates the Constitution’s Appointments Clause. The issue arose in an appeal of a decision by a panel … Continue Reading
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