The Patent and Trial Appeal Board dismissed petitions for inter partes review challenging the claims of a patent owned by a state university that had neither waived the protections offered it by the Eleventh Amendment nor consented to the trial. Covidien LP v. University of Florida Research Foundation Inc., IPR2016-01274, -01275, -01276 (PTAB Jan. 25, 2017). Covidien LP filed three IPR petitions seeking review of U.S. Patent No. 7,062,251, which is owned by the University of Florida Research Foundation, Inc. (UFRF). In response, UFRF filed a motion to dismiss these petitions on the basis that UFRF is immune from being brought before the Board to adjudicate Covidien’s petitions. In dismissing the petitions, the Board applied Supreme Court and Federal Circuit precedent to determine that USRF is an arm of the State of Florida and is thus entitled to invoke sovereign immunity to bar institution of an IPR.
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PTAB Issues First Biotech/Pharma Post-Grant Review Final Written Decision – All Claims Survive
The first final written decision in a post-grant review of a patent arising from Art Unit 1600 issued November 14, 2016, in Altaire Pharm. Inc.. v. Paragon Bioteck, Inc., PGR2015-00011. PGRs allow challenge based on enablement, written description, indefiniteness, and subject matter eligibility, in addition to the novelty and obviousness bases available in IPRs, permitting petitioners to rely on arguments commonly used to invalidate biotechnology and pharmaceutical patents in litigation. Here, however, the PTAB instituted PGR based only on obviousness grounds, and ultimately determined that the petitioner did not meet its burden in proving the unpatentability of the challenged claims.
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Intuitive to Use Versus Use of an Element for its Intended Purpose – Is There a Difference?
Is there a difference between saying that it would be intuitive to use the features of one prior art reference in combination with another, versus saying that such a combination merely uses a prior art element for its established function? According to two recent decisions, the Federal Circuit apparently thinks so.
In In re: Van Os, Case No. 2015-1975 (January 3, 2017), the Court reversed and remanded the Board’s finding of obviousness, rejecting the Board’s conclusion that the combination of prior art references would have been “intuitive.” The case concerned an appeal of the Board’s decision to sustain the patent examiner’s rejection of Apple’s U.S. Patent Application No. 12/364,470 directed to a touchscreen interface in a portable electronic device that allowed a user to rearrange icons on a display.
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Purdue Not Estopped From Raising Invalidity Contentions at Trial That Were Submitted But Not Instituted During IPR
Recently, the Federal District Court for the District of New Jersey allowed Purdue Pharma to assert invalidity arguments in the litigation that were previously submitted in an IPR petition, but upon which IPR review was not instituted. See Depomed Inc. v Purdue Pharma LP, Civil Action 13-571, Order (D.N.J. Nov. 4, 2016). The Court rejected the patent owner’s arguments that Section 315(e) of Title 35 estopped Purdue from raising these argument.
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Federal Circuit to PTAB (Once Again) – Explain Yourself!!!
The Federal Circuit has once again vacated and remanded a PTAB decision on the basis that the PTAB did not adequately explain its reasons for finding a claimed invention obvious, but this time in the context of an appeal decision affirming an examiner’s rejection of pending claims.
In In re: Marcel Van Os et al., Appeal No. 2015-1975 (Fed. Cir. Jan. 3, 2017), the Federal Circuit vacated and remanded the PTAB’s affirmance, on appeal, of the examiner’s rejection of claims 38-41 of U.S. Patent Application No. 12/364,470 (“the 470 application”) as being obvious over U.S. Patent No. 7,231,229 (“Hawkins”) in view of U.S. Pub. No. 2002/0191059 (“Gillespie”).
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Federal Circuit to take AIA Time Bar issue En Banc
An updated discussion of this issue is available here: PTAB’s Time Bar Determinations Are Reviewable by the Federal Circuit
As we had predicted in a previous post, the Federal Circuit, on January 4, 2017, granted patent owner Wi-Fi One LLC’s petitions for rehearing en banc regarding the interpretation of, and interplay between, 35 U.S.C. § 314(d) (the No Appeal provision) and § 315(b) (the Time Bar provision). A few months ago, we wrote about the related decision Wi-Fi One, LLC v. Broadcom Corp., Appeal 2015-1944 (Fed. Cir. Sept. 16, 2016), which the court’s order vacates:
In WiFi, the patent owner (WiFi One, LLC) argued that the IPR petitioner (Broadcom Corporation) was in privity with entities accused (and eventually adjudged) in parallel district court litigation of infringing the challenged patent. Those entities, the patent owner argued, would have been timebarred from seeking IPR under 35 USC § 315(b).
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District Court Interprets the IPR Estoppel Provision Narrowly
Update (Jan. 13, 2017): The Delaware district court issued a short order on Jan. 11, 2017, maintaining the court’s earlier decision discussed in the post below.
An AIA trial is a relatively-inexpensive, partial substitute for challenging the validity of a patent. Yet, prospective AIA trial petitioners routinely struggle with the potential estoppel effect of not raising prior art before the Patent Trial and Appeal Board. Petitioners concerned about that issue may be encouraged by a recent Delaware district court decision interpreting the statutory estoppel provision and a 2016 Federal Circuit decision not to prevent an AIA trial petitioner from pursuing in court an invalidity argument based on prior art that the petitioner did not raise—but one might have thought reasonably could have raised—during the concluded AIA trial of the same patent-in-suit. The decision appears to render null an important phrase in that statutory provision. Intellectual Ventures I LLC v. Toshiba Corp., Civil Action No. 13-453, Slip Op. (DN 559) at 25–27 (D. Del. Dec. 19, 2016) (Memorandum Opinion).
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PTAB Should Have Canceled All Challenged Claims in CBM Reviews
In Apple, Inc. v. Ameranth, Inc. (Fed. Cir. 2016), the Federal Circuit reviewed the final written decisions in CBM reviews of three related patents owned by Ameranth, Inc., directed to computerized systems for generating and displaying menus for use in the restaurant industry. The court determined that the PTAB properly construed all disputed claim terms, determined that the patents are CBM patents, and determined that most challenged claims were unpatentable under § 101, but that the PTAB erred in concluding that some dependent claims were not unpatentable under § 101.
More specifically, the claims in the disputed Ameranth patents are directed to a “first menu that has categories and items, and software that can generate a second menu from the first menu by allowing categories and items to be selected.”
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Guidance on Requesting Motions for Sanctions
On November 10, 2016, the Intellectual Property Owners Association (IPO) hosted a panel discussion entitled Ethics in AIA Post-Grant Proceedings at the PTAB with the Honorable Thomas Giannetti, Lead Administrative Patent Judge of the PTAB.
The main topic of the discussion was guidance on motions for sanctions. The rules relating to trial practice before the PTAB allow the Board to impose an appropriate sanction on any attorney, registered practitioner or party that violates the PTAB’s rules after the offending party has had an opportunity to respond. 35 C.F.R. §42.11(d)(1). The Board has the authority to sanction parties or a party may file a motion for the Board to impose sanctions.
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Federal Circuit to PTAB (Again) – Explain Yourself!!
The Federal Circuit has once again vacated and remanded a PTAB final written decision on the basis that the PTAB did not adequately explain its reasons for finding a claimed invention obvious. In In re Nuvasive, Appeal No. 15-1670 (Fed. Cir. Dec. 7, 2016), the Federal Circuit reviewed the PTAB’s final written decision in IPR2013-00506 that concluded various claims of NuVasive, Inc’s U.S. Patent No. 8,361,156 were invalid as obvious over a combination of prior art references. The patent claims spinal fusion implants, and were challenged by Medtronic Inc.
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