Tag Archives: PTAB

IPR Estoppel Does Not Apply to ITC Investigative Staff

Judge Cheney of the United States International Trade Commission held that ITC Investigative Staff are not estopped from asserting invalidity of a patent based upon prior art that was previously asserted by a respondent in an IPR. See In the Matter of Certain Magnetic Tape Cartridges and Components Thereof, Inv. No. 337-TA-1058 at *106-107. While … Continue Reading

Successful IPR Petition Time Barred Under 35 U.S.C. §315(b) by Involuntarily Dismissed Complaint

In Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., Appeal Nos. 2017-1555, 217-1626 (Fed. Cir. Sept. 28, 2018), the Federal Circuit vacated the Patent Trial and Appeal Board’s final written decision in an IPR because institution of the IPR should have been time barred under 35 U.S.C. §315(b).  Additionally, the Federal Circuit declined to … Continue Reading

IPR Petition Fee Must Be Received Not Merely Tendered for Petition to be Afforded a Filing Date

In this informative opinion, Luv N’ Care, LTD v. McGinley, Case IPR2017-01216, Paper 13 (Sept. 18, 2017) the PTAB clarified that to be accorded a filing date, a petition must be complete, including receipt by the PTO of the petition fee for institution. As a result of a delay in payment of this fee, Luv N’ … Continue Reading

Tradeshow Catalog Qualifies as Prior Art

Update: On November 1, 2018, the CAFC issued a modified opinion and an order denying Contour’s petition for rehearing en banc.  The modified opinion is consistent with the original petition, discussed below, insofar as the PTAB decision was vacated and remanded, but adds the following statement at page 8: “When direct availability to an ordinarily … Continue Reading

PTAB Properly Applied the Printed Matter Doctrine

In Praxair Distrib. v. Mallinckrodt Hosp. Pdts., (Fed. Circ. May 16, 2018), the Federal Circuit affirmed the PTAB’s application of the printed matter doctrine in an IPR, and determined that all challenged claims were obvious. Mallinckrodt’s patent is directed to methods of treating newborns having low blood oxygenation with nitric oxide (NO) gas, “to dilate … Continue Reading

PTAB Was Wrong to Ignore an Applicant’s Prosecution Disclaimer Because of Examiner’s Reasons for Allowance

Despite disagreeing with the PTAB’s preferred claim construction, the Federal Circuit in Arendi S.A.R.L. v. Google LLC, Case No. 2016-1249 (Fed. Cir. Feb. 20, 2018) nevertheless determined that the PTAB had correctly canceled the challenged claims. The Board had offered two, alternative rulings invalidating all claims on obviousness grounds. In its primary ruling, the Board … Continue Reading

One Year Time Bar Runs from Date of Service, Regardless of Whether Suit is Dismissed

The Federal Circuit recently held that the statutory time bar in 35 U.S.C. § 315(b) precludes the PTAB from deciding an IPR petition filed more than one year after any of the petitioners have been served with a complaint alleging patent infringement, even if that complaint was voluntarily dismissed. Click-To-Call Technologies, LP v. Ingenio, Inc., … Continue Reading

Trial Practice Guide Updates and Future Fee Increases

Today’s Federal Register includes a notice that the Patent Office updated its August 2012 Trial Practice Guide. The Federal Circuit recently noted that the Practice Guide “is a thoughtful and useful resource to which individual Board members and the public might turn for guidance,” but “is not binding on Board panel members.” Application in Internet … Continue Reading

Federal Circuit Reverses, i.e. Overturns, Board’s Anticipation Decision Due to Overbroad Claim Construction

In TF3 Ltd. v. Tre Milano, LLC, Appeal 2016-2285 (Fed. Cir. July 13, 2018), the Federal Circuit reversed the Patent Trial and Appeal Board’s final written decision canceling claims directed to a hair styling device as anticipated by prior art.  The court concluded that the Board improperly broadened two claim terms beyond the description in … Continue Reading

Federal Circuit Affirms Tribal Sovereign Immunity Does Not Apply to IPR

The Federal Circuit recently affirmed the PTAB’s decision that tribal immunity cannot be asserted in an IPR (Saint Regis Mohawk Tribe v. Mylan Pharma Inc., Case No. 2018-1638 (Fed. Cir. July 20, 2018). On appeal, Allergan, Inc. (“Allergan”) argued that the Board improperly denied its motion to withdraw from IPR proceedings, and the Saint Regis … Continue Reading

PTAB Issues First Biotech/Pharma PGR Final Written Decision Based On Written Description Challenge

The Patent Trial and Appeal Board has received 37 petitions for post grant review of patents issuing from examination conducted by the Patent Office’s Group Art Unit 1600. The Board has issued four final written decisions thus far.  We discussed the first final written decision here, where all claims were upheld in the face of … Continue Reading

Federal Circuit Splits Hairs in Hair Removal Product Interference Proceeding

In General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., Case No. 2017-1012 (Fed. Cir. May 4, 2018), the Federal Circuit affirmed the PTAB’s August 2016 decision that General Hospital Corporation’s (GHC) claims involved in an interference proceeding (that GHC requested) failed to meet the written description requirement. But the court also vacated the PTAB’s denial of … Continue Reading

Mixed Result Upheld in Personal Audio IPRs

The Federal Circuit upheld the PTAB’s mixed decisions in IPRs filed by Google to challenge claims of two Personal Audio LLC patents asserted against Apple, Samsung, Amazon and Research in Motion, in addition to Google. Google LLC v. Personal Audio LLC, Nos. 2017-1162, -1166, -2110, -2111 (Fed. Cir. Aug. 1, 2018) (non-precedential).… Continue Reading

PTAB May Cite New References Not Cited in the IPR Petition

In affirming a PTAB IPR decision canceling claims for obviousness, the Federal Circuit concluded that the PTAB’s reliance on references not included in the original petition did not violate due process or the patent owner’s procedural rights under the Administrative Procedure Act (APA).  Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372 (Fed. Cir. 2018). Citing … Continue Reading

Contour of Soup Can Saves Gravity Feed Display Design Patent

Next trip to the grocery store, stop in the canned soup aisle and take a closer look at how the canned soups are displayed on the shelves. You may notice a gravity feed dispenser with a label area. Between 2002 and 2009, Petitioner Campbell Soup Co. purchased $31 million of Patent Owner Gamon’s gravity feed … Continue Reading

Written Description of a Genus Can Be Satisfied by Disclosure of Single Species in Predictable Arts

In Hologic, Inc. v. Smith & Nephew Inc., No. 2017-1389 (Fed. Cir. Mar. 14, 2018), the Federal Circuit concluded that disclosure of a species provides written descriptive support for a claimed genus where the invention was in a predicable field of art, the species was a well-known member of the genus, and other members of … Continue Reading

PTAB Failed to Properly Apply Test for Printed Publication

The Federal Circuit vacated and remanded the PTAB’s decision that a video demonstration and slides distributed by Petitioner Medtronic at three industry meetings and conferences were not publicly accessible and, thus, were not “printed publications.” Medtronic, Inc. v. Barry, Case no. 17-1169, 2018 WL 2769092 (Fed. Cir. June 11, 2018). Recent Board decisions have set … Continue Reading

Federal Circuit Requests Briefing from Patent Office Regarding § 315(b) Time-Bar Determinations

On June 7, 2018, the Federal Circuit in Wi-Fi One, LLC v. Broadcom Corp. requested that intervenor, Patent Office director Andrei Iancu, and appellee Broadcom, file a response to Wi-Fi One’s second petition for rehearing.  Wi-Fi One, Case No. 2015-1944, Docket No. 212 (June 7, 2018).  At issue was whether the court should grant Wi-Fi … Continue Reading

IPR and Estoppel after SAS Institute

The Supreme Court held on April 24, 2018 that if the Patent Office institutes and inter partes review (IPR) proceeding, it must issue a final written decision with respect to the patentability of every patent claim challenged by the petitioner. SAS Institute, Inc. v. Iancu, (discussed in greater detail here). Within days, the Patent Office … Continue Reading

Patent Office Proposes to Jettison BRI in AIA Trials

The Patent Office today issued a press release of its notice of proposed rulemaking that would replace the broadest reasonable interpretation standard the Patent Trial and Appeal Board applies to construe unexpired patent claims and proposed substitute (amended) claims in AIA trial proceedings with the Phillips standard applied in patent cases before federal district courts … Continue Reading

Tribal Sovereign Immunity Alone Cannot Protect Patents from IPR

In late March, the Federal Circuit issued an order staying the PTAB proceedings concerning numerous related IPRs of patents issued to Allergan, Inc. (“Allergan”), but assigned to the Saint Regis Mohawk Tribe (“the Tribe”). These IPRs were headed toward a final hearing on the merits previously scheduled for April 3rd. In those IPRs, the PTAB denied the Tribe’s … Continue Reading
LexBlog